Trends, analysis and insights in IP Law
The Canadian Intellectual Property Office (“CIPO”) continues to provide updates on the continuing disruption to IP office deadlines under the Patent Act, Trademarks Act and/or Industrial Design Act caused by the COVID-19 outbreak. As we reported previously, March 16th to July 17th were considered “designated days” under the applicable Canadian intellectual property legislation; the time to respond to certain CIPO actions therefore had been extended to July 20th.
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Cease and desist letters are an important part of a lawyer’s tool kit: they notify the recipient of a claim, and ideally lead to the client resolving an issue without litigation. However, receiving such a letter can be unpleasant. They may even seem excessive, as if they were intended to achieve the maximum possible threatening effect. In Fluid Energy Group Ltd. v. Exaltexx Inc. (“Fluid v. Exaltexx”), Justice McHaffie of the Federal Court found that that indeed appeared to be the intention of Fluid’s letters, taking the unusual step of issuing an injunction ordering Fluid not to communicate with Exaltexx’s suppliers with respect to such suppliers’ alleged infringement of Fluid’s patents.
Where is the line between an appropriate cease and desist letter and one worthy of an injunction? In the case of letters alleging patent infringement, strangely enough, the answer may lie in section 7(a) the Trademarks Act, which was the basis for Exaltexx’s motion for the interlocutory injunction. That section reads: “No person shall … make a false or misleading statement tending to discredit the business, goods or services of a competitor…” This provision, however, must be read down so as to include only statements relating to the competitor’s intellectual property.
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The rapidly evolving coronavirus pandemic continues to have a significant impact on intellectual property rights holders in Canada and around the world. As noted in our most recent IP bulletin, the Canadian Intellectual Property Office (“CIPO”) recently announced that, due to the COVID-19 pandemic, March 16, 2020 to March 31, 2020 inclusive will be considered “designated days” under the applicable Canadian intellectual property legislation. This means that if a CIPO deadline under the Patent Act, Trademarks Act and/or Industrial Design Act falls on any of these “designated days”, the time period to respond will be extended to the next business day (e.g. April 1st, 2020).
To assist those having or seeking patent rights in Canada, CIPO has now prepared a series of Frequently Asked Questions (“FAQs”) regarding the COVID-19 service interruptions and patent prosecution matters before CIPO. Information on service interruptions with respect to the Trademarks Opposition Board (“TMOB”) can be found here.
CIPO is careful to point out that the answers provided are only a guide and should not be considered legally binding. CIPO recommends that everyone consult a registered patent agent who can advise on any specific situation. Anyone concerned about Canadian patent prosecution deadlines should review all of the FAQs provided on the CIPO website and consult a Canadian patent agent as applicable.
To that end, Fasken’s IP group is taking steps to ensure continuity of our services to our clients over this period, largely by working remotely. Please don’t hesitate to reach out, should you need assistance. In the meantime, we will continue to keep you informed of any developments as they occur.
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The coronavirus pandemic is having a significant impact on our personal lives, our countries and our economies! Canada’s Intellectual Property Office is no exception. While the Canadian Intellectual Property Office (“CIPO”) currently remains open and in operation, significant delays in all CIPO services should be expected.
More importantly, CIPO has, on account of the unforeseen circumstances resulting from COVID-19, recently announced that for now March 16, 2020 to March 31, 2020 inclusive will be considered “designated days” under the applicable Canadian intellectual property legislation. This means that if a CIPO deadline under the Patent Act, Trademarks Act and/or Industrial Design Act falls on any of these “designated days”, the time period to respond will be extended to the next business day (e.g. April 1st, 2020). CIPO has also indicated that, if the circumstances that led to this designation continues, CIPO may decide to extend the applicable time period. CIPO’s decision coincides with fee, rule and procedural accommodations by other intellectual property offices, including the EU Intellectual Property Office and the United States Patent and Trademark Office.
Fasken’s IP group is taking steps to ensure continuity of our services to our clients over this period, largely by working remotely. As CIPO’s online solutions are available 24/7 and from anywhere, we are available to continue to assist our clients during this period. Please don’t hesitate to reach out, should you need assistance. In the meantime, we will continue to keep you informed of any developments as they occur.
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The past two months have been marked by unprecedented turmoil for the British royal family, after the announcement by the Duke and Duchess of Sussex, Prince Harry and Meghan Markle, that they would step down as senior members of the royal family and entertain their own financial independence. Under a new working arrangement, they will be free to earn professional income and will have more liberty to pursue their charitable endeavours. Further details on the specific arrangements can be found here.
In anticipation of their new projects, a trademark application and a domain name registration for SUSSEX ROYAL had been sought in the UK. Following a recent intervention by Her Majesty the Queen herself, however, the use of the term “royal” has now been disallowed. Since the Duke and Duchess of Sussex would no longer be serving as “royal” members and representatives, as they gave up their royal duties, then there was no justification for them to further use this term. The UK trademark application for SUSSEX ROYAL was thereby withdrawn.
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