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Canada

Intellectual Property

As of March 2010, the availability of time extensions for responding to the examiner's reports in connection with pending trademark and industrial design applications has become more limited. Unless there are circumstances that are beyond the applicant's control or which are otherwise exceptional to justify a further extension, only one extension of six months will be granted during prosecution.

The Trademarks Opposition Board has announced that it is planning to amend its practice to simplify and clarify the registrar’s benchmarks for granting extensions of time, including a cooling-off period. If the proposed changes are implemented, practice before the Trademarks Opposition Board could change dramatically.

The Canadian Copyright Board has helped to clarify the definition of the term 'audio recording medium' in the context of the private copying exemption. The board held that blank CDs are covered, but blank DVDs are not. The Canadian Recording Industry Association will have to consider the implications of this decision before formulating any litigation strategy against individual file sharers.

The Canadian Internet Registration Authority has announced that the domain name dispute resolution policy for .ca domain names is in force. Consequently, owners of Canadian trademarks now have a mechanism for disputing the registration of confusingly similar '.ca' domain names that is as quick and inexpensive as the Uniform Dispute Resolution Policy (UDRP) of the Internet Corporation for Assigned Names and Numbers (ICANN) for .com domain names.

The key issue arising from the US case of State Street Bank and Trust Co v Signature Financial Group Inc is whether business method patent applications corresponding to applications filed in the US Patent Office (and elsewhere) should be filed in Canada, notwithstanding the Canadian Patent Office's stance that business methods are not patentable.