IP Perspectives

Copyright Modernization Act sections now in force

On November 7, 2012, the majority of the provisions of the Copyright Modernization Act came into force.

Read more »


Counterfeit luxury products: not simply a question of trademark infringement

Deterring counterfeiters is especially important to luxury brand owners. For this reason, brand owners should always keep in mind that augmented damage awards may be available when seeking concurrent relief for copyright infringement as well as trademark infringement.

Read more »


From iTunes to the classroom — the Supreme Court of Canada cements fair dealing as a "user's right"

The Supreme Court of Canada has recently affirmed the broad and liberal interpretation to be applied to the fair dealing provisions in the Copyright Act as a "user's right" in two recent decisions, one related to free previews of musical works on a commercial website such as iTunes and the other concerning the copying of short excerpts from textbooks by teachers to provide to students as part of class instruction.

Read more »


Circumvention of Technological Protection Measures (TPMs) prohibited

While Technological Protection Measures have evolved over the years, they have been routinely circumvented by individuals seeking profit or seeking a challenge. As a result, the legality of circumventing TPMs has become a major point of contention.

Read more »


Recent decisions provide guidance for the determination of whether a representation in an advertisement is misleading

The determination that a representation in an advertisement is misleading can be difficult, particularly given that advertisers often use disclaimers. Two recent decisions have provided assistance in clarifying the test for determining if a representation is misleading and when disclaimers are sufficient to overcome a misleading representation claim.

Read more »


Federal Court interprets ambiguous licensing terms in favour of common usage in licensee's industry

Contra proferentem traditionally protects the vulnerable party to an agreement by providing that ambiguous terms in a contract be interpreted against the interests of the party who insisted upon them. Nevertheless, the Federal Court recently signalled its reluctance to invoke the doctrine in Catherine Leuthold v Canadian Broadcasting Corporation, 2012 FC 748, even for clearly weaker parties.

Read more »


Updating the online services of the Canadian Intellectual Property Office — a work in progress

The Canadian Intellectual Property Office (CIPO) is in the process of updating and redesigning their online filing and prosecution services, beginning with copyright applications, followed by industrial design applications, and eventually trademark and patent applications. Their goal is to have updated online services available for filing and prosecuting copyright and industrial design applications by the end of July 2013. Redesigning and expanding the corresponding online services for trademark and patent applications is a longer term project.


Follow @smartbiggar


Smart & Biggar/ Fetherstonhaugh is proud to have been recognized with four prestigious awards by the U.K. publication Managing Intellectual Property (MIP)
Read more »

Firm dominates in IAM Patent 1000 – The World's Leading Patent Practitioners 2012
Read more »

Smart & Biggar/ Fetherstonhaugh dominates the rankings in IP law in the 2012 edition of The Canadian Legal Lexpert® Directory
Read more »

Firm achieves top ranking in the International
Who's Who of Patent Lawyers
2012 edition
Read more »

Smart & Biggar/ Fetherstonhaugh named a leading firm in the 2012 edition of the PLC Cross-border Life Sciences Handbook
Read more »

Smart & Biggar/ Fetherstonhaugh tops WTR 1000 rankings and is recognized as a "trademark powerhouse"
Read more »

Smart & Biggar tops the rankings in Chambers Global — The World's Leading Lawyers for Business – "A really great IP boutique"
Read more »

Smart & Biggar/ Fetherstonhaugh recognized as "the biggest and deepest IP shop in Canada" by Benchmark Litigation Canada 2012
Read more »


John Bochnovic elected President of the International Association for the Protection of Intellectual Property (AIPPI)
Read more »

Daphne Lainson named among Canada's Leading Lawyers Under 40
Read more »

James D. Kokonis honoured as a Member of Distinction by the Intellectual Property Institute of Canada (IPIC)
Read more »

Smart & Biggar/ Fetherstonhaugh welcomes new associates
Read more »

Firm congratulates newest patent agents
Read more »


Learn more about our professionals' most recent speaking engagements
Read more »

To offer your feedback on this newsletter or any of its articles, please contact:




Elliott S. Simcoe

Christine N. Genge


Associate Editors



Jeff Leuschner

Cheryl M. Ng

Mark Pidkowich


The preceding is intended as a timely update on Canadian intellectual property law. To request a copy of any decision, paper or legislative document, or for more detailed information or to make suggestions, kindly contact an author of the relevant article or the editors, Elliott S. Simcoe or Christine N. Genge. The contents of this newsletter are informational only and do not constitute legal or professional advice. To obtain such advice, please communicate with our offices directly. To join the IP Perspectives mailing list, be removed from the mailing list or make changes to contact information, please send an email to ipperspectives@smart-biggar.ca.

Smart & Biggar/Fetherstonhaugh

Ottawa   /   Toronto   /   Montreal   /   Vancouver