Category Archives: Analysis

Analysis, Canada, Trademark

Canada’s Trademark Modernization Continues: NICE Classification and Registered Marks

Earlier this year, the trademark system in Canada was modernized to bring in the Nice classification system.  The Nice classification system is an international classification system that is used to classify goods or services into 34 classes for goods and 11 classes for services for the purposes of registering trademarks.  As part of this modernization, the Canadian Trademarks Act was amended to add section 44.1, which provides the following:

44.1 (1) The Registrar may give notice to the registered owner of a trademark requiring the owner to furnish the Registrar, in the prescribed time and manner, with a statement of the goods or services in respect of which the trademark is registered, in which those goods or services are grouped in the manner described in subsection 30(3).

(2) The Registrar may amend the register in accordance with the statement furnished under subsection (1).

(3) If the statement required by subsection (1) is not furnished, the Registrar shall by a further notice fix a reasonable time after which, if the statement is not furnished, the Registrar may expunge the registration of the trademark or refuse to renew it.

(4) Any question arising as to the class within which any goods or services are to be grouped shall be determined by the Registrar, whose determination is not subject to appeal.

As a result, owners of existing trademark registrations in Canada will be required to classify the listed goods and/or services in order to maintain rights to the mark in Canada or the registration will be expunged.  We note the Canadian Trademarks Office allows six-months to respond to this notice.  The deadline to classify is extendable for another six-months but under limited exceptional circumstances.  If the deadline to classify is missed, a notice of default will issue which provides two-months to respond failing which will result in the expungement of the registration.

If a response is filed on or before the deadline to classify, the Canadian Trademarks Office will either accept the proposed classification of the goods and services, or issue an action requesting amendments.

Please note these notices issue to the agent of record noted on the registration.  If the trademark owner renews directly or a third party renews the registration on behalf of the trademark owner, the agent of record will receive the notice only.

If you require any assistance with the above (or any other trademark matters), don’t hesitate to contact the Fasken IP group. 

Analysis, Canada

Can Canadian Courts Issue Site-Blocking Orders?

Can Canadian Courts Issue Site-Blocking Orders? Prior to last Friday, it would have been unprecedented. With the Federal Court’s decision in Bell Media Inc v GoldTV Services (2019 FC 1432), that is no longer the case.

Although it is a single trial court decision, owners of Canadian copyrights and their lawyers now have an affirmative answer and even a test to apply to the issue.

The case relates to two websites, GoldTV.biz and GoldTV.ca, which offered an unauthorized subscription service allowing users to stream copyrighted content. The copyright owners and exclusive licensees (Rogers Media Inc., Groupe TVA Inc. and Bell Media Inc.) objected to this, alleging infringement.

Conspicuous by his, her, or their absence were John Doe 1 and John Doe 2, the respective operators of the sites. Despite the plaintiff’s diligent efforts, identifying these entities proved impossible, with the judges in earlier stages of the proceedings commenting that this was likely due to “obvious efforts to remain anonymous and avoid legal action by rights holders…”

Caught in between were the nation’s internet service providers (ISPs). Indeed, in the absence of the defendant and faced with ongoing infringement of their rights, the plaintiffs sought site-blocking orders against eleven major ISPs. Of these, four consented to the order and four took no position. Distributel and Cogeco sought to vary the language of the order, and only TekSavvy opposed the order on the merits.

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Analysis, Patents

Fasken and IPIC hold Seminar on Patenting Artificial Intelligence

On November 13, 2019, the Intellectual Property Institute of Canada (IPIC) and Fasken held a webinar on advanced patent prosecution strategies for patenting artificial intelligence (AI) related inventions.

Isi Caulder from Bereskin & Parr and I spoke on a number of topics including:

• AI Industry Trends to Watch
• Claiming Strategies
• Satisfying Subject Matter and Enablement Requirements
• AI Patenting Considerations in Canada, the U.S. and Europe
• Enforcement Considerations and Trends

Hosted in the Toronto office of Fasken, the seminar was webcast to Fasken’s Montreal, Ottawa, Calgary and Vancouver offices. The aim of the seminar was to provide attendees with understanding and insight into intellectual property (IP) and patent prosecution strategies for AI-based systems while considering the evolving subject matter/enablement landscape and current enforcement trends. We also considered more esoteric topics such as whether AI-based systems could be considered inventors under the patent system.

If you are interested in AI and IP law, please reach out for more information as any of the participants would be more than happy to discuss this ever changing area with you.

Learn more about our IP practice.

Analysis, Canada, Copyrights

The Ins and Outs of Canadian Copyright: Movies and the real and substantial connection test

A recent decision of the Ontario Superior Court of Justice sheds some light on the application of the “real and substantial connection test” under Canadian copyright law where alleged infringement takes place across geographic borders. In Pourshian v. Walt Disney Company, an Ontario court allowed an action for copyright infringement to proceed against three Walt Disney Company related entities based on a movie distributed through Canadian movie theaters.

The plaintiff, Damon Pourshian, filed a Statement of Claim against a group of companies related to the Walt Disney Company. He alleged that Pixar’s award-winning animated film, “Inside Out”, released in 2015, infringed his copyright in a short film that he created in 1998 also entitled “Inside Out”. In Pourshian’s film, five organs—Heart, Stomach, Colon, Bladder, and Brain—guide the protagonist’s behaviour while in Pixar’s film, five emotions—Joy, Sadness, Anger, Fear, and Disgust—influence the protagonist’s behaviour.

In response, the defendants filed a motion to set aside service of the Statement of Claim and to stay the action on the grounds that the defendants are incorporated and have their principal places of business in the United States, that Pixar’s “Inside Out” was made in California, and as a result Canada’s Copyright Act does not have extraterritorial application. The main issue on the motion. therefore, was whether the Ontario court should assume jurisdiction over Pourshian’s action.

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Analysis, China, Trademark

Growth in Chinese Trademark Applications by Canadian Companies Reflects New Business Reality

The Canadian Intellectual Property Office (“CIPO”) recently released its annual report, IP Canada Report 2019, on the statistics and trends regarding the intellectual property (“IP”) system in Canada and use of IP globally by Canadian companies. One interesting development highlighted in the report is that the number of Canadian companies filing trademark applications in China has seen steady growth over the past decade with 3,401 applications in 2018, a 265% increase since 2008.

This is likely due to several factors, including the growth in consumer spending in China; however, Canadian businesses who do not intend to sell their goods within the Chinese market may still want to consider registering their trademarks in China. China has a “first-to-file” trademark system and no “use” requirement, meaning valuable marks can be registered in the names of third parties looking to take advantage of business owners who fail to protect their IP in China. 

Chinese trademark registrations are important for companies that manufacture their goods in China for export to Canada and other jurisdictions. Chinese border services may detain goods due for export, however, on the basis that they infringe the registered Chinese trademark rights in an effort to crack down on counterfeits. In order to avoid these types of disputes, and incurring significant costs in getting the goods out of detention, we recommend that all companies manufacturing goods in China register their trademark with the Chinese National Intellectual Property Administration to allow for the easy export of their goods from China.

If you would like to discuss registering a trademark in China or elsewhere, please contact a member of the Fasken IP team.