Bill S-5, which purports to "lay the groundwork for future regulation on plain packaging", recently passed the first of a three-reading process in the Senate. The bill provides the governor in council with the power to make regulations establishing the plain and standardised packaging measures proposed by Health Canada's consultation document and addresses key concerns raised by stakeholders during the consultation period.
Canada's trademark regime is changing, bringing about dramatic amendments to the law, regulations and practice. These long-awaited changes will have a significant impact on brand owners in terms of both strategy and costs. In order to prepare for the changes, brand owners should consider renewing and classifying registrations, filing multi-class applications, pushing allowed applications to registration and ensuring that all portfolios are troll-proof before the new law enters into force on 17 June 2019.
Canada's trademarks profession had an exciting 2018. The long-awaited changes to the Trademarks Act were announced, many of which will bring Canada into line with the rest of the world. In addition, further unexpected legislative developments were announced, which will significantly affect trademark protection.
A number of trademark cases were heard by the Canadian courts in 2018, including a decision on a motion for summary judgment brought by Duracell, a decision on whether Imperial Tobacco Canada Limited's trademarks were confusing in light of new survey evidence filed on appeal and a decision on whether retail store services require a brick-and-mortar establishment or direct delivery of products to Canada to constitute use of a trademark in Canada.
The Canadian Intellectual Property Office recently revised its practice notice regarding name and surname objections. Previously, examiners had to locate a minimum of 25 listings in Canadian phone directories before a name and surname objection could be raised. The revised practice notice indicates that "to better reflect the purpose of paragraph 12(1)(a)", effective immediately, examiners are no longer required to find a minimum number of listings before an objection under this section can be raised.
Section 22 of the Trademarks Act, depreciation of a registered trademark's goodwill, is a potentially powerful yet generally underused weapon for dealing with damaging comparative advertising campaigns. Dilution-type claims to prevent comparative ads displaying a registered trademark are particularly complex as they require that the advertising actually 'use' the registered mark within the meaning of the Trademarks Act.
Bill S-5 recently passed the first of a three-reading process in the Senate. Key changes of particular interest to brand owners whose trademarks are in use in the marketplace include the repeal of provisions which allowed the use of a colouring agent to depict a trademark on a tobacco product and the addition of a section which prohibits the promotion of a tobacco product by using terms, expressions, logos, symbols or illustrations that are prohibited by the regulations.
Some of the top highlights from Canadian IP law and practice of 2015 include the conclusion of the Trans-Pacific Partnership negotiations, amendments to the Patent Act and the Trademarks Act providing a statutory privilege for confidential communications with patent and trademark agents and new Patent Office guidance on diagnostic method and medical use claims.
Can a book on a dark and dusty shelf in a public library render a patent obvious? In a recent decision the Federal Court of Appeal noted that none of the parties had made any submissions regarding whether codification of the test for obviousness changed the test for determining what documents would be included as part of the relevant prior art. In the absence of such submissions, the court applied the 'reasonably diligent search' test.