Category Archives: Canada

2019 was “Marked” by Significant Changes to Canada’s Trademarks Legislation

trademark lawyers and attorneys, faksen

After much anticipation, Canada’s new Trademarks Act (the “Act”), came into force on June 17, 2019. The Act introduced significant changes to Canadian trademarks laws which, together with the associated Trademarks Regulations, align Canada’s trademark prosecution and enforcement processes with those of the United States and the European Union, and facilitate Canada’s implementation of international intellectual property treaties.

Some of the key changes under the new Act are outlined below:

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Federal Court rejects controversial copyright litigation strategy

On November 12th, the Federal Court of Canada dismissed a motion for certification of a reverse class action lawsuit that was brought against potentially thousands of Canadiansby Voltage Pictures, LLC, a Canadian film production company (“Voltage”).

Voltage was able to identify thousands of IP addresses that were alleged to have infringed copyright by offering or uploading its films through BitTorrent, a peer-to-peer file sharing platform.

In 2016, it brought a motion for an order to certify its application as a respondent class proceeding. The proposed class respondents were all those individuals whose internet accounts had been detected as involved in direct or indirect infringement of its films or offering the copyrighted works for download.

Voltage has already brought 96 of these lawsuits against classes of unnamed defendants in the United States, according to an affidavit which was submitted to the Court. This litigation strategy has often been dubbed “copyright trolling” by its opponents.

A preliminary issue which was raised before the Court was the respondents’ lack of an incentive to defend themselves. This issue was solved through the intervention of the Samuelson-Glushcko Canadian Internet Policy and Public Interest Clinic (CIPPIC), which submitted strong arguments against certification.

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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

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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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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