Draft Guidelines Published by the Patented Medicine Prices Review Board

The Patented Medicine Prices Review Board (the “Board”) recently published draft Guidelines to replace the current Compendium of Policies, Guidelines and Procedures, leading up to the coming into force of the amended Patented Medicines Regulations on July 1, 2020. The draft Guidelines are needed to facilitate the implementation of the upcoming changes to the Regulations, including: (i) the additional price regulatory factors for consideration by the Board when assessing whether the price of a patented medicine is excessive; (ii) updates to the schedule of comparator countries to be used by the Board for international price comparisons; and (iii) changes to reporting requirements for patentees. Interested parties can make written submissions to the Board on the draft guidelines during the consultation period, which ends on February 14, 2020.

For a more detailed review of the draft Guidelines, please refer to the Fasken bulletin PMPRB Publishes Draft Guidelines to Operationalize Amendments to the Patented Medicines Regulations authored by Ingrid VanderElst and Mark Vanderveken.

Sights and Smells: a New World of Senses in the Field of Non-traditional Trademarks

Introduction

The revised Trademarks Act came into force on June 17, 2019 and brought new waves of changes to the trademark legal landscape in Canada. The Act is now more harmonized with international practices and standard procedures of trademark law by adhering to international treaties and implementing the International Classification of Goods and Services for the Purposes of the Registration of Marks (Nice classification) and the Madrid Protocol for trademark applications with the World Intellectual Property Association, allowing access to more than 100 jurisdictions worldwide in a single application.

Non-Traditional Trademarks

To align Canadian trademark law with international standards, the revised Act now recognizes new non-traditional trademark signs, such as colours, three-dimensional shapes, holograms, moving images, modes of packaging goods, sounds, scents, tastes, textures and the positioning of a sign. This amendment opens the door for businesses in the Canadian market to let creativity run free and protect innovative forms of marketing.

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Destruction and Delivery Up: a Year in Review

Copyright and trade-mark owners whose IP is infringed may seek a variety of remedies against the perpetrators, including damages, injunctive relief and legal costs. Psychologically though, destruction and delivery up may provide the most satisfaction. Specifically provided for in the respective statutes,  these remedies allow the successful plaintiff to either compel the infringer to destroy the counterfeit items under oath or actually take possession of them. In this post, we survey destruction and delivery up orders granted and denied in 2019. Overall, the year’s rulings are mixed, demonstrating that even as the victim of infringement, “you can’t always get what you want.”

Luxury Goods

Luxury goods are common targets for counterfeiters, as this year’s crop of destruction and delivery up orders illustrates. Appearing four times before the Federal Court was Nathalie Marie Tobey, aka Nathalie Henrie. Operating out of a clandestine retail establishment on Old Yonge Street, Ms. Tobey was accused of selling counterfeit Givenchy, Louis Vuitton, Dior and Celine merchandise.  Her defence was essentially that a well-informed member of the public would not confuse the goods she was selling with the plaintiffs’. Justice Norris dismissed this defence as having “no hope of success whatsoever,” before ordering the delivery up of all goods bearing the plaintiff’s subject trademarks, at least, those not already seized by the Toronto Police Service.

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IP Strategies for the Cannabis Industry

How the Canadian cannabis industry has sparked interest in one of the lesser known IP rights

Introduction

Intellectual Property (“IP”) typically provides a significant commercial advantage in the marketplace.  With the legalization of cannabis in Canada in 2018 and increasing competition among cannabis producers, the cannabis industry has been exploring ways to protect its cash crop.  Given that proprietary varieties of cannabis plants are highly valued in the cannabis industry, a lesser known and very specific type of IP right called Plant Breeders’ Rights (“PBR”) may see a rise in prominence.  Cannabis producers would be well advised to consider how PBR can be used to protect their commercially valuable proprietary varieties and supplement their existing IP arsenal.

PBR Eligibility and Scope of Protection

The federal Plant Breeders’ Rights Act enables the protection of a plant variety where that variety is:

  1. new, in that its propagating or harvested material has not been sold by or with the concurrence of the breeder inside or outside Canada within a prescribed time period (either one, four, or six years) before the filing date of the application;
  2. by reason of its identifiable characteristics, it is clearly distinguishable from all varieties whose existence is a matter of common knowledge at the filing date of the application;
  3. stable in its essential characteristics, in that after repeated propagation it remains true to its description; and
  4. having regard to the particular features of its sexual reproduction or vegetative propagation, it is sufficiently homogeneous (i.e. in the event of sexual reproduction or vegetative propagation in substantial quantities, any variations in characteristics are predictable, capable of being described, and commercially acceptable).
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Minority Report: How Canada’s Electoral System Disrupts Copyright Reform

Canadian elections have a tendency to disrupt copyright reform initiatives and the 2019 contest which resulted in a minority Liberal government under Prime Minister Justin Trudeau is no exception.

The trend started in 2005, when the Liberal Government of Prime Minister Paul Martin introduced Bill C-60, An Act to Amend the Copyright Act, which was Canada’s first attempt at adopting the comprehensive amendments required to ratify the two WIPO internet treaties that had been negotiated in 1996 and signed by Canada in 1997.

The minority Liberal government was defeated by a vote of no confidence in November 2005, killing Bill C-60.

After the general election in January 2006, the defeated minority Liberal government was replaced by a minority Conservative government under Prime Minister Stephen Harper. The Conservatives tabled Bill C-61, An Act to Amend the Copyright Act, in June 2008. The bill was substantially similar to the Liberals’ copyright reform legislation.

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