Barristers and Solicitors
Patent and Trademark Agents

Grace Period Expires for Compliance with Anti-Spam Laws

On July 1, 2017, CASL provisions establishing a private right of action come into force. This will mean that any affected individual may sue an organization as well as its officers, directors and agents for CASL violations. Class actions are expected to follow. Compliance is more critical than ever.

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THE CANADA 150 LOGO

Canadians are getting excited about Canada’s 150th Birthday in 2017.Canada’s sesquicentennial symbols can be used for both commercial or non-commercial purposes at no charge, but it is necessary to apply for permission in advance.

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Misleading Advertising is Risky

In the modern digital economy, consumer confidence can be especially valuable to a business so stretching the truth in advertising can be risky. Two recent cases show that misleading advertisements about QUALITY and SALE PRICE can have consequences. Public interest favours honest business practices.

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Photos on Social Media not 'Free' for the Taking

The Quebec small claims court has provided a timely reminder that photographs posted on social media are not "free" for the taking. In law, ignorance is not an excuse. At the very least, the author should be recognized and some due diligence undertaken to obtain permission from the copyright owner

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Playing Games with IP

The Government of Canada has launched a new interactive game which explores IP strategies for a couple of simulated business ventures. It demonstrates the business value of IP and its fun! At least we thought so...

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Images of Currency in Advertising

Images of Canadian coins and bank notes CANNOT be freely reproduced in marketing and advertising materials. To avoid the risk of criminal and civil sanctions, it is advisable to seek permission from the appropriate authority BEFORE reproducing images of coins or bank notes for any purpose.

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ADVERTISING WITH ONLINE REVIEWS & ENDORSEMENTS: What are the Rules?

With the explosion of social media and online retailers, online reviews and endorsements have become an important tool for both consumers to research purchases and businesses to advertise. But when the line between independent reviews and advertisements is blurred, there can be legal consequences.

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Patents & the Doctrine of Promised Utility in Canada

In November, the Supreme Court will hear an appeal respecting the controversial “promised utility doctrine” that has recently threatened the validity of many patents issued in Canada. This article explains the controversy and its impact on international patentees like the pharmaceutical industry

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Youtube Exception is Subject to Conditions

This exception was introduced into the Canadian Copyright Act in 2012 for user-generated content that is derived from pre-existing works, like a "mash-up" of video clips from multiple sources. It is often forgotten that such content must satisfy a number of conditions to qualify for the exception.

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Gov't Consultation on Regulation of 'Self-Care Products'

Health Canada recently launched a public consultation respecting the regulation of "self-care products" in which they propose to require a new disclaimer on labels indicating that "low-risk" products have not been reviewed by Health Canada. This includes cosmetics, shampoo, sunscreen and vitamin

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Non-Disclosure Agreements that Expire?

In Canada, exclusive rights in trade secrets and confidential information may be owned indefinitely so why do so many non-disclosure agreements in circulation have expiration dates or time limits? The answer is in US law and represents a dangerous trap for the unwary trying to do business in the US.

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Domain Name Arbitrations & Trademark Infringement

Contrary to the expectations of many, the mandatory dispute resolution process for domain name disputes cannot be used to successfully resolve many cases of trademark infringement that involve domain names. Instead, the parties must still seek relief from a court of competent jurisdiction.

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TV Boxes Cross the Line: Inducing Copyright Infringement

On June 1, 2016, the Federal Court granted an interlocutory injunction prohibiting five named defendants from continuing to sell and promote the sale of “preloaded” TV boxes. The court also granted the plaintiffs the right to add defendants to the action and injunction order as deemed necessary.

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WHEN IS A TRADEMARK NOT A TRADEMARK?

Where use of a mark does not enable consumers to recognize goods or services as originating from a particular business, it may not constitute use of the mark as a trademark. It may be "fair use" of the trademark or the mark may not qualify for trademark status. Context is central to the analysis.

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Web Sites: The Intellectual Property Issues

A host of legal issues can arise in the operation of a web site. To avoid compromising the value of this virtual property, it is important for businesses to understand the various IP components of its web site. In this article, we review the typical IP issues that arise and how to manage the risks.

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TRADEMARKS – CLASSIFYING GOODS AND SERVICES TO AN INTERNATIONAL STANDARD

In anticipation of adopting several international treaties, CIPO has recently made it possible to classify goods and services for trademark applications according to the Nice Agreement. This article explains the expected impact of this change for Canadian trademark applicants.

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Patent Prosecution Highways: Fast-Tracking International Patent Applications

The fundamental goal of the various PPH initiatives is to provide predictable and fast prosecution of patent applications and to mitigate the workloads of the national patent offices. This article provides a summary of the various PPH initiatives and explains how they improve upon on the PCT system.

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Circumventing 'Paywall' = Copyright Infringement

Small claims court finds copyright infringement for circumventing the "paywall" for a web site publication and awards both compensatory and punitive damages.

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Astroturfing: Fake Online Reviews Result in $1.25 Million Penalty

Astroturfing is the practice of circulating fake endorsements of a business or product via the Internet. The practice is illegal and penalties can be substantial. Bell Canada recently agreed to a $1.25 million penalty for reviews and ratings posted on iTunes and Google Play by its employees in 2014

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Copyright in 'Happy Birthday to You'

To the surprise of most, Warner/Chappel Music Inc. claims to own title to copyright in the lyrics for the song "Happy Birthday to You" and has, until recently, collected royalties for their use in film productions. However, this revenue stream MAY have finally been cut off by a California court.

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RESETTING THE COPYRIGHT BALANCE: Collective Societies & Tariffs

In light of recent Supreme Court decisions and Copyright Act amendments, many believe collective societies are asking to be paid for copies when no royalty should be due. This article summarizes these legal developments and how they were recently applied to approve a new tariff for Access Copyright.

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Privacy Commissioner: Harvesting Email Addresses

The Privacy Commissioner of Canada has published a welcome guide to issue of email harvesting under Canada's anti-spam legislation.

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Legislative Amendments: Extending Time & Privilege

Under new federal legislation, (1) communications with patent and trademark agents are now confidential and protected the same way as those with a lawyer; and (2) extensions of time to file documents will now be granted by CIPO in the event of "force majeure" events like ice storms and blackouts.

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Crowdfunding: Taxable Income?

The CRA takes the position that, in general, crowdfunding funds received for the development of a new product by a business is taxable income unless the taxpayer can show that the funds are a loan, a capital contribution or another form of equity.

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Can Actors have a Copyright Interest in their Film Performance?

Unlike the US, Canada does recognize actors (and other performers) as enjoying copyright in their performances. Canada also recognizes that performers enjoy "moral rights" in their performance and these rights may restrict how the film producer may ultimately use a performance.

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Special Protection for Child Performers

Ontario's Protecting Child Performers Act, 2015, S.O. 2015, C.2 received royal assent on May 5, 2015. It will come into force in February 2016. In sum, this legislation sets minimum standards for all persons under the age of 18 years who receive monetary compensation for their performances.

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Amendments to Trademark & Patent Act Delayed

After repeated assurances from the federal government that recent amendments to the Trademarks Act and the Patent Act would be implemented by late 2015 or early 2016, it now appears that these amendments may not be implemented before 2017.

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Legislative Amendments: Modernizing the Industrial Design Act

On December 16, 2014, amendments to the Canadian Industrial Design Act received royal assent. When implemented later in 2015 or early 2015, the amendments will clarify and rationalize industrial design practice in Canada and bring it into alignment with international standards.

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Entertainment Law

In January 2015, Michele Ballagh attended the Entertainment Law Certificate program offered by the professional development program at Osgoode Hall Law School. A natural extension of our existing intellectual property law services, we look forward to working with clients in this new field.

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Patent Act Amendments

On December 16, 2014, amendments to the Canadian Patent Act received royal assent and are expected to be implemented in late 2015 or early 2016. The amendments contain several measures intended to increase flexibility in the patent process and provide relief from minor omissions and errors.

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USPTO Reduces TM Fees

Some welcome news for the new year! Effective January 17, 2015, the USPTO is reducing application and renewal fees for trademark applications filed via the Internet.

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Misleading 'Invoices' related to Trademark Applications

The World Intellectual Property Office (WIPO) recently issued a warning that an entity named the "World Intelligent Property Office" has started to send misleading "invoices" to the holders of international trademark registrations recorded under the Madrid Protocol. If an applicant retains an ag

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Are Your Common Law Trademarks at Risk?

The potential for conflict between registered trademarks and common law trademarks is longstanding. Recent amendments to the Trademarks Act have drawn renewed attention to the issue. Some have even alleged that the amendments are unconstitutional. This article will try to explain the controversy.

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Canadian Government Moves Forward in Overhaul of Trademark System

On October 2nd, the federal gov't took two new steps in its ambitious plans to overhaul protection for trademarks in Canada: (1) CIPO released new trademark regulations for consultation; and (2) its anti-counterfeiting act passed through final reading in the house AND first reading in the senate.

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Trademark Amendments Coming Into Force Late 2015/Early 2016

In recent consultations with the profession, the Canadian Intellectual Property Office has advised that it now expects to fully implement ALL the recent amendments to the Canadian Trade-marks Act at the same time, likely in late 2015 or early 2016.

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Speaking Engagement: New Trademark Laws

Michele has organized and will be participating in a presentation by the Hamilton Law Association to its members on September 16th reviewing dramatic changes to Canada's trademark registration process.

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Trademark & Copyright Enforcement: New Measures Target Counterfeit Goods

In pending legislation subtitled the Combating Counterfeit Products Act, Canada is proposing to introduce new border control measures that will allow IP owners to register their trade-marks with the Canadian Border Services Agency to be pro-actively monitored.

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TRADE-MARKS REVISED: CANADA IS CHANGING ITS REGISTRATION SYSTEM

Canada’s trade-mark laws are expected to undergo extensive and significant amendments over the next 12 -24 months. Parliament recently passed legislation to implement the Nice Agreement, the Singapore Treaty and the Madrid Protocol. Implementation is suspended until new regulations are ready.

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TRADE-MARKS REVISED: FILING INT’L APPLICATIONS THROUGH CANADA

Canada’s trade-mark laws are expected to undergo extensive and significant amendments over the next 12 – 24 months. This post will review the international registration system to be introduced with implementation of the Madrid Protocol – likely in 2015 or later.

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Canada's Copyright 'notice and notice' regime

The "notice and notice" regime will require ISP's to receive and deliver notices of alleged infringement to their account holders. Introduced in 2012, implementation of this regime was delayed to consider whether regulations were required. But now the regime is coming into force in January 2015.

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Industrial Designs: An often Overlooked but Versatile Monopoly

In this article, we will address an often overlooked form of intellectual property protection that is available to all types of businesses, namely, industrial designs. An industrial design can protect the ornamental appearance of many articles from chairs to air fresheners to screen displays for ...

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Trade-Marks: Prioritizing Applications for Registration

Almost all businesses have several trade-marks that deserve the protection provided by a trade-mark registration. However, a new business often has little income and many expenses so filing multiple trade-mark applications at the outset can be prohibitively expensive. In this issue, we will discu...

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Copyright Amendments Now in Force

On November 7, 2012, most provisions of the controversial Copyright Modernization Act (“CMA”) came into force. In this article, we briefly review some of the significant amendments implemented. Digital LocksThere are now broad prohibitions on tampering with or r...

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Narrowing the Sole Rights of Copyright Owners

The summer of 2012 was significant for developments in Canadian copyright law. First, the much debated amendments to the Copyright Act were finally passed and received Royal Assent on June 29, 2012. They will come into force on a day to be fixed by cabinet. Given that these amendments have not...

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Non-Traditional Trademarks: Recent Developments in Canadian Trademark Practice

The iconic roar of the MGM Lion is poised to become Canada’s first registered sound trade-mark. The roar has been featured in MGM films since 1928, and has been the subject of a US trade-mark Registration since 1986.On March 1, 2012, the Federal Court of Canada set aside a refusal by th...

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