Key Estate Planning Considerations for Individuals with IP (Part I: Introduction & Copyrights)

This is the first entry in a three-part blog series about the interaction between estates law and intellectual property law. Part I will introduce Ontario’s succession law regime, and provide an analysis of succession law vis-à-vis copyright law. Part II will apply this analysis to trademark law. Finally, Part III will examine this area in relation to patent law, as well as provide some concluding thoughts and considerations.

In the world of will-making, when we think about how the assets of the will-maker (usually referred to as the “testator”) are going to be distributed, we often think about what’s going to happen to their real estate, their vehicles, their jewellery or their other personal belongings. While it is natural for us to first turn our mind to property that is physical or tangible, it is important to ensure that we turn our focus to intangible property as well, as such property often requires more attention and direction.

One form of property that undoubtedly fits this definition is intellectual property. In making provision for one’s friends and family in their will, it is important to consider the financial and sociocultural impact of any intellectual property they may own, and manage such property accordingly. In this blog post, we will go over some key legal considerations, under Ontario and federal law, for the transfer of copyrights, trademarks and patents upon an individual’s death.

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A Recent Look at Interlocutory Injunctions in Trademark Infringement Cases

Interlocutory injunctions remain difficult to obtain in trademark infringement cases. To obtain an interlocutory injunction, the moving party must satisfy a three-part test. A party must show that:  (1) a serious issue has been raised; (2) irreparable harm will result if the injunction is not granted; and (3) the balance of convenience favours the moving party. Over the years parties seeking injunctive relief in trademark infringement cases have faced difficulty satisfying the irreparable harm branch of the test. In order to satisfy the court that irreparable harm will result, the court requires clear and non-speculative evidence of harm that could not be compensated for by an award of damages at trial. This has proven to be difficult for parties for among other reasons, the fact that often in these cases it is in fact possible to quantify the harm that has and/or will be done and accordingly compensate the moving party through an award of damages at trial. Canadian courts have recently provided more insight on the evidence required to support a request for injunctive relief.

In the 2017 decision of Sleep Country Canada Inc. v. Sears Canada Inc., 2017 FC 148, Sleep Country Canada Inc. (“Sleep Country”) was granted an interlocutory injunction against Sears Canada Inc. (“Sears”) to prevent Sears from using its slogan: “THERE IS NO REASON TO BUY A MATTRESS ANYWHERE ELSE”, pending the final determination of Sleep Country’s trademark infringement action against Sears. Sleep Country alleged that Sears’ slogan infringed Sleep Country’s trademarked slogan of “WHY BUY A MATTRESS ANYWHERE ELSE”. The court accepted Sleep Country’s arguments and found that on a balance, there was a likelihood of confusion between the time of the motion and the disposition of the infringement action and that this confusion would result in lost sales as a result of consumers being less aware and familiar of the slogan’s association to Sleep Country. The court found that these associations would consequently result in a loss of distinctiveness for the brand of Sleep Country and this would in turn have an effect on the goodwill established by Sleep Country.

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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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