One Good Term Deserves Another: 60+ New Cannabis Terms for Canadian Trademark Applicants

In May 2021, CIPO added upwards of 60 cannabis- and marijuana-related terms to the Goods and Services Manual (the “Manual”).

Most of the new terms fall into Nice Classes 3 (non-medicated toiletry preparations), 5 (pharmaceuticals), and 30 (foodstuffs of plant origin). However, new terms have also been added in Class 16 (namely “printed publications in the field of cannabis”), 42 (“scientific research in the field of cannabis”) and 45 (“legal research in the field of cannabis”).

Many of the new terms describe medicinal uses of cannabis or marijuana, including the form in which the product is provided and the use covered by the description. Examples in this category include “marijuana oil for the relief of nausea”, “cannabis salve for the treatment of psoriasis”, and “cannabis capsules as a sleep aid”. The new entries in Nice Class 30 relate to snack foods containing cannabis, such as chocolate, cookies and granola.

Terms in the Goods and Services Manual are pre-approved by CIPO, meaning that they will be accepted without further specification if selected. This may help applicants avoid objections under s. 30(2)(a) of the Trademarks Act, which requires that applications contain “a statement in ordinary commercial terms of the goods or services in association with which the trademark is used or proposed to be use”. The level of specificity required may come as a surprise to foreign applicants, as they go beyond that which is required in many other countries.

In the absence of a pre-approved term, applicants and their trademark agents must rely on their judgment and more general criteria in order to define the goods or services covered by an application, such as analogies with other pre-approved terms or recently accepted applications. The addition of these terms may therefore remove a cloud of uncertainty faced by applicants in the cannabis space.

In adding these terms to the Manual, CIPO demonstrates its continued openness to facilitating filings related to cannabis and marijuana. Pre-defined terms for cannabis products date back to January 2018, when “dried cannabis” and “live cannabis plants” were added to the Manual, in the lead-up to the legalization of recreational cannabis in October of that year. 

Fasken’s team of experienced professionals are available to assist you with the full range of cannabis-related legal issues, including trademark matters.

Learn more about our Cannabis practice or Trademark practice.

Everyone’s a Critic: Copyright Considerations for YouTube and Twitch Reaction Videos (Part I)

A few months ago, my colleague Jay Kerr-Wilson published this blog post on the intellectual property issues surrounding the phenomenon of “Let’s Play” videos, a genre of online videos where an individual records and broadcasts themselves playing a video game. The individual might film themselves or just provide audio commentary, but in either scenario their own content is layered on top of the game that they are playing. The blog post discusses how this video genre could be considered copyright infringement with respect to the video game being played, as well as why generally we are not seeing infringement cases in this area because of the symbiotic relationship between content creators and video game publishers.

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Promoting Canadian Intellectual Property on World Intellectual Property Day

Today, April 26th, is World Intellectual Property Day.  This year’s theme is shining a light on the critical role of small and medium-sized enterprises (SMEs) in the economy and how they can use intellectual property (“IP”) to build stronger, more competitive and resilient businesses.

On April 19th, 2021, the Canadian government released its first budget under the COVID pandemic (“Budget 2021”).  Budget 2021 addresses the Government of Canada’s fight against COVID-19 and its desire to ensure a robust economic recovery.  As part of the latter, Canada is investing in innovation.

As the most highly educated country in the OECD, Canada is full of innovative and entrepreneurial people with great ideas. Those ideas are valuable intellectual property that are the seeds of huge growth opportunities. Building on the National Intellectual Property Strategy announced back in 2018, the government proposed further support to Canadian innovators, start-ups, and technology-intensive businesses.

Budget 2021 proposed the following

  • $90 million over two years, starting in 2022-23, to create ElevateIP, a program to help accelerators and incubators provide start-ups with access to expert intellectual property services.
  • $75 million over three years, starting in 2021-22, for the National Research Council’s Industrial Research Assistance Program to provide high-growth client firms with access to expert intellectual property services.

These direct investments would be complemented by a Strategic Intellectual Property Program Review that will be launched. It is intended as a broad assessment of intellectual property provisions in Canada’s innovation and science programming, from basic research to near-commercial projects. This work will make sure Canada and Canadians fully benefit from innovations and intellectual property.

Federal Court clarifies that proper process for bringing a claim under the notice-and-notice regime—somewhat

Internet Service Providers (ISPs) have seen an increase in litigation related to Canada’s notice-and-notice regime since it was added to the Copyright Act in 2012. Plaintiffs, generally the owners of copyright in films, have brought claims in Federal Court using various procedures. The Court recently released a decision offering guidance on the proper way to do so although there is still some uncertainty on this point.

The notice-and-notice regime set out in sections 41.25 and 41.26 of the Copyright Act, requires ISPs to forward notices of alleged infringement that they receive from copyright owners to subscribers. The ISPs also need to provide confirmation the copyright owners that the notices have been forwarded (or explaining why one could not be forwarded if that is the case), and to keep the information necessary to allow the subscribers’ identities to be determined. Failure by an ISP to comply with the notice obligations can result in statutory damages..

Plaintiffs have brought claims against several ISPs alleging that they have failed in their obligations to forward these notices for various reasons.

The most recent decision, TBV Productions, LLC v. Doe. found that the proper procedure by which a copyright owner can bring a claim for statutory damages for failure to forward a notice is to start an action. This finding, however, departs from a previous decision of the Federal Court, ME2 Productions Inc. v. Doe, which found that such a claim could proceed by way of motion.

Let’s look at TBV Productions v. Doe. first.

In this case, the plaintiff TBV Productions alleged that three ISPs had failed in their obligations to forward notices to its subscribers.

TBV Productions tried to have its claims against the various ISPs heard by way of a “show cause” motion. The claim was originally part of a Norwich motion by which TBV Productions sought the disclosure of the identities of allegedly infringing subscribers.  The Norwich portion of the motion was no longer at issue by the time of this hearing.

In its decision, the Court found that, in this case, the plaintiff copyright owner would have to bring a claim for damages for failure to forward a notice against an ISP by way of an action. The plaintiff in this case cannot bring it as part of a Norwich motion and will have to bring a separate own claim for damages.

This decision is certainly helpful although there is still some ambiguity in the law given the Federal Court’s earlier decision in ME2 Productions.

In that case, the Court allowed the claim for statutory damages to proceed by way of a motion in an effort to simplify and accelerate the process. Crucially, in that case, the Court was considering an appeal of a decision of a Prothonotary that had created this process and so was reviewing that decision on the standard of palpable and overriding error. The Court concluded that the Prothonotary did not make a reviewable error in reaching their decision and so the claim was allowed to proceed by way of motion.

The Court in TBV specifically addresses the ME2 case in its decision, distinguishing it on the grounds that, in ME2, the claim for damages was tied to the ISP’s alleged failure to keep proper records and so the disclosure and statutory damages issue were intertwined. TBV differed in that the parties had settled the issue of disclosure and so the issue remaining before the Court related only to the damages claim. The Court also emphasized that the ME2 decision was an appeal of a decision of a Prothonotary and so the standard of review played a key role in that decision. Ultimately, the Court found that the circumstances in TBV were sufficiently different from those in ME2 to justify a requirement to pursue a damages claim by way of action.

So while the TBV case offers guidance, ISPs still have to face some uncertainty regarding the proper procedure to defend such a claim in addition to the claim itself. This will likely result in an initial discussion (and potentially disagreement) between the copyright owner and the plaintiff to try and determine if the claim for statutory damages should proceed by way of an “ME2 process” or a “TBV process”.

Fasken acts for several ISPs and advises them on their obligations under the notice-and-notice regime. Let us know how we can help you with notice-and-notice regime compliance and litigation.

Mind the GAP: The PMPRB Changes Definition of GAP Medicines and Reduces Compliance Timeline

On January 15, 2021, the Patented Medicines Prices Review Board (“PMPRB”) initiated a consultation on two proposed amendments to the new PMPRB Guidelines (“Guidelines”): (1) the definition of Gap medicines; and (2) the compliance timeline for Grandfathered and Gap medicines. 

According to the PMPRB, the two amendments were required due to the change in the coming-into-force date of the Regulations Amending the Patented Medicines Regulations (“Regulations”), which was pushed from January 1, 2021 to July 1, 2021.

And so, on March 17th, the PMPRB rendered its decision.

Definition of Gap Medicines.

Under the Guidelines, Gap medicines were defined as those which were assigned a DIN was on or after August 21, 2019 (the date the Regulations were adopted) and were first sold in Canada prior to January 1, 2021. Following the consultation, the PMPRB has extended the date of first sale to July 1, 2021. This means the Gap medicine provisions in the Guidelines will now apply more broadly.

Gap medicines are subject to the harshest price standards under the Regulations. More specifically, the Maximum List Price (“MLP”) for this category of medicine is  the lower of:

• the median international price for the medicine in the PMPRB11; and

• the medicine’s ceiling under the previous Guidelines.

In contrast, the MLP for Grandfathered medicines (i.e. those launched prior to August 21, 2019) is the lower of:

• the highest international price; and

• the medicine’s ceiling under the previous Guidelines.

By contrast, the MLP of new medicines (i.e. those with a first sale after July 1, 2021) is determined only by reference to the median international price for the medicine in the PMPRB11.

The revised definition of Gap medicines works against the interests of patentees, as medicines that were launched between January 1, 2021 and March 17, 2021 (i.e., today) will now be subject to more stringent limits on the MLP set out above.

New Compliance Timelines.

The PMPRB has also modified the compliance timeline for Gap medicines and grandfathered medicines. The initial version of the Guidelines stated that patentees of these products would have two reporting periods (i.e. until July 1, 2022) to ensure the MLP was consistent with the median international price. This timeline has been shortened to December. 1, 2021

While the federal government delayed the coming into force of the Regulations “to minimize the imposition of new administrative burden on industry as patented drug manufacturers face increased demands related to supply chains and shortages of existing products and, potentially, new treatments and vaccines in response to COVID-19”, patentees of Gap medicines who are now subject to more stringent price regulation may be wondering whether the administrative burden was actually minimized at all.