Ontario Assn of Architects v Assn of Architectural Technologists of Ontario

• 
  Is a self-regulatory professional body a public authority for the purpose of adopting official marks?
  
  • 
    whether AATO was subject to a sufficient degree of government
    
• 
  Control
  
• 
  Three part-test:
  
  • 
    (a) there must be a duty to the public;
    
  • 
    (b) there must be a significant degree of governmental control, and
    
  • 
    (c) any profit earned must be for the benefit of the public and not for private benefit.
    
• 
  Public benefit and government control in the form of government supervision
  
• 
  Held: No significant degree of governmental control although the public benefits from the proper performance by the AATO of its functions.
  
• 
  Not entitled to “official marks”
  

• 
  A trade name is the name under which you conduct your business.
  
• 
  A trade name can be registered under the TMA only if it is also used as a TM
  
  • 
    Superstore doesn’t print their name on the goods like Starbucks does.
    

• 
  Not required by law to use symbols
  
• 
  TM can be used with registered or unregistered TM
  
• 
  ® can only be used once the TM is registered.
  
  • 
    Help against defendant claiming innocent infringement – being unaware is not an excuse when a TM is registered.
    
• 
  You always get protection as long as you use it
  

-For registration: use or proposed use is required

Proceedings to expunge (if not used)

Unauthorized use – accuse someone of using your TM (have to prove the TM as a TM)

Can defend through “proof of non-use”

• 
  “use” for wares, s.4(1); “use” for services s.4(2)
  

Use of mark on the ware itself:

At the time of the transfer of the property in or possession of the wares, in the normal course of trade, it is marked on the wares themselves or on the packages in which they are distributed or it is in any other manner so associated with the wares that notice of the association is then given to the person to whom the property or possession is transferred
Notice of association must occur at time of transfer of property:
Use in case of services:

If used or displayed in the performance or advertising

COURT: Trademark must be related to plaintiffs wares. Notice of association is not created when customer buys the new product. No association at time of transfer of money for services.

Was there prior use by Timothy’s that could prevent Starbucks from registering?

Although they may have sold a large quantity, “Christmas Blend” on board was not enough to constitute a notice of association. Might need additional receipt marks or marks on box/packaging.
“When used in combination with other materials that show the trade-mark to the consumer at the time the wares are transferred, such as invoices”
Is a mark used when in a TV commercial, a flier or on the internet

• 
  Service - Yes
  
• 
  Wares - No
  

Need not be in a “normal course of trade” for services – CMB Kabushiki Kaisha v Lin Trading

“Normal course of trade” in a relationship between a manufacturer (TM owner) in a foreign country and a distributer in Canada.

In a sale by the foreign trade mark owner to a Canadian wholesaler of wares impressed with his mark, “in the normal course of trade” resulted in the “use when product was sold to distrubtor, not to consumer.

Course of trade occurs at any time during the chain. Once the original sale is made to the Canadian company that is in the course of trade.
Gesco Industries Inc v Sim & McBurney

Does a trademark used in association with services applied to a product before it is sold constitutes “use” in association with services, independently of the wares (S.4(2), or just use in association with wares s.4(1)?

The services may be ancillary to the wares, but [still, TM is] used in association with the services.

• 
  Use of mark for promotional/charity purpose might not be “in the course of normal trade”, might be passing off instead
  

Must prove use for application, prove lack of non-use for expunging, use of alternative TM

• 
  Need to be known to be associated with good in some way (used on good or packaging or in any other form of creating notice of association)
  
• 
  Must be notice of association at time of transfer.
  
• 
  Must be used in the course of trade
  
• 
  Temporal dimension – connection at time between buyer and seller
  
• 
  Advertising on TV by someone else, action in passing off, maybe TM
  
• 
  Using a mark in a non-commercial context ……….?
  
  • 
    Gifts and Donations do not count as use in normal course of trade
    

Normal course of trade requirement not included

Was the sale to LIN the first use of the trademark in Canada? Or was it when item sold to end consumer.

Sale to Lin Counted as first use in Canada, in the normal course of trade.

Prevents licensed dealer from claiming monopoly over their TM.

• 
  Does a trademark used in association with services applied to a product before it is sold constitutes “use” in association with services, independently of the wares (s.4 (2), or just use in association with wares (s.4(1)?
  
  • 
    Held; The services may be ancillary to the wares, but [still, TM is] used in association with the services.
    

Just because you developed the goods later on does not mean you didn’t use tm in relation to services

• 
  s. S. 12(1): A TM is registrable if it’s not
  
  • 
    (a) Primarily merely name or surname of an individual living or who has died within 30 years
    
  • 
    (b) Clearly descriptive or deceptively misdescriptive in English or French of the character/quality of wares/services or of the conditions of production/persons employed in their production/place of origin
    
  • 
    (c) Name in any language of any of the wares or services in connection with which it is used
    
  • 
    (d) Confusing with a registered TM (confusing defined in s. 6(2); factors in s. 6(5))
    
  • 
    (e) Mark prohibited by s. 9 or 10
    

Section 12(1)(A)

• 
  Is the mark:
  
  • 
    (2) Primarily
    
  • 
    (3) Merely
    
  • 
    (4) Name or surname of an individual living/died in last 30 years?
    

• 
  FIOR (fluid iron ore reduction) – primarily merely a name (was found in a phonebook)
  
• 
  A. Is it a word? (Can it be used as a mark? Yes)
  
• 
  B. Name or surname of an individual who is living? (Yes – phonebook)
  
• 
  C. Merely a name or surname? (No – invented for trademark purpose)
  
• 
  D. Primarily merely?
  
  • 
    what would be the response of the general Canadian public to the word? Is its main/principal character that of a surname?
    
• 
  re Fior:
  
  • 
    A person in Canada of ordinary intelligence and of ordinary education in English or French would be just as likely, if not more likely, to respond to the word by thinking of it as a brand or a mark of a business than as a name/surname.
    
    • 
      Would they associate it with anything other than a last name. Just as likely or more likely to associate it with a brand rather than a name.
      
    • 
      Internet age: may be easy to find, may be common in other countries
      

• 
  Is it or word? Yes, but … obsolete as a word, used in coleslaw, no one knows why though
  
• 
  Is it a surname? Yes,
  
• 
  Merely a name or surname? Mostly used as a surname
  
• 
  Primarily merely?
  
  • 
    A person in Canada of ordinary intelligence and of ordinary education in English or French would immediately respond to the trade mark “Coles” by thinking of it as a surname and would not be likely to know that “Coles” has a dictionary meaning
    
    • 
      Most think of it as a name, cannot register it.
      

Given as a TM later, can become distinctive, acquire a secondary meaning that can be TM’d.

• 
  Depicted, written or sounded
  
• 
  Clearly descriptive or deceptively misdescriptive
  
• 
  In the English or French language
  
• 
  Of the
  
  • 
    Character of the wares/services in association…
    
  • 
    Quality of the wares in association…
    
  • 
    Conditions of production
    
  • 
    Persons employed in their production
    
  • 
    Place of origin
    

Is “Better than Bouillon” clearly descriptive or misdescriptive of quality of product

SQF: Comparing its product to another product quality wise.

• 
  Is “BETTER THAN BOUILLON” as a mark clearly descriptive of the quality of the product?
  
  • 
    clearly describe as a matter of first impression that the Applicant’s soups and soup bases are “better than bouillon,” contrary to s. 12(1)(b).
    
    • 
      Doesn’t matter whether it is true or not
      
• 
   Why prohibited?
  
  • 
    Don’t want monopoly over words in public domain like “better than” – would limit scope of public domain for commercial traders to use.
    
  • 
    Describing quality of product not allowed (quality can be different than character)
    
• 
   All descriptions under the list in 12 (1)(b)
  
• 
  “Deceptively misdescriptive”: marks deceiving the public through false information.
  
  • 
    Trademark law is designed to be a shorthand help, using this term is deceit
    
  • 
    Eg. “Liver Dinner” for cat food with not much liver
    
• 
  Are descriptive always unregistrable?
  
  • 
    s.12 (2): not, not if used in Canada by the applicant or his predecessor in title as to have become distinctive at the date of filing
    
    • 
      “finger lickin good [kfc]” if used long enough, may acquire distinctiveness/secondary meaning and become registrable
      
  • 
    Conditions in s. 14
    

12(c)

• 
  Is the mark the name in any language of any of the wares or services in connection with which it is used?
  
  • 
    “Cerveza” – beer in Spanish, cannot be TM’d
    

• 
  The mark “INSTANT BREAKFAST” for use in association with wares: “fortified powder food for mixing with milk”
  
• 
  Held: the appropriate description in ordinary commercial terms for the applicant’s product is “instant breakfast.” … on the evidence, … the same situation pertained at the date of the filing of the application. 
  
  • 
    The product itself is instant breakfast, (just like beer), essentially the same, cannot be TM’d
    
    • 
      Restricting marketplace – every other person couldn’t use name of product.
      
• 
  Generic mark
  
  • 
    Might have been distinctive in the past, generic now.
    

12A-C prohibits tm, but if they have become distinctive at time of filing, may be allowed to get TM

• 
  When does a mark becomes distinctive?
  
  • 
    Secondary meaning. Acquires a reputation (Camel Hair Belt) (McDonalds)
    
• 
  Directly: name or surname or word that is descriptive or deceptive when used in association with a product may doesn’t distinguish a product
  
• 
  Indirectly: source
  
  • 
    Reputation in connection with a ware
    
  • 
    intensive sales or customer association through advertisement of those words or names with a product
    
• 
  Offensive marks. S 9 (1) (j) (Cannot be registered originally) (May still get TM protection)
  
  • 
    Has it become distinctive enough to surpass vulgarity?
    
• 
  Confusing with a TM s.12 (1) (d) (or registration pending)
  
  • 
    Cannot let someone come and register the same mark for a similar product
    
• 
  Geographical Indications for wines and spirits s. 12 (1) (g)-(h) (Comes from WIPO agreement)
  
  • 
    Subsequent bilateral trade agreements allow some geographical indicators to be allowed Trademark protection.
    
  • 
    GIs for Agricultural Products?
    
    • 
      Okanagan Wine prevented from being tm’d
      
  • 
    Secondary meaning? Consorzio del Prosciutto di Parma v. Maple Leaf Meats Inc. (C.A.), 2002
    
    • 
      Parma used by Maple Leaf for so long that it no longer references Italy, recognizes secondary meaning of maple leaf ham.
      

S.9. (1) 

• 
  the Royal Arms, Crest or Standard;
  
• 
  the arms or crest of any member of the Royal Family;
  
• 
  emblem of the Red Cross, United Nations
  
• 
  Flags of States
  

I) Government Symbols

• 
  Arms, crests, and flags of Canada, its provinces, and municipalities
  
• 
  Armorial bearings by the Governor General
  
• 
  Armed forces
  

• 
  Operating for the public benefit and subject to significant government control or financing
  
• 
  BLUENOSE
  
  • 
    Province of Nova Scotia and the Bluenose II Preservation Trust Society
    

Canada Post vc Geolytica

Titles “physical therapist”, “physiotherapist”

The Canadian Alliance of Physiotherapy Regulators

• 
  Notify TMO, need not show “use” or proposed use.
  
• 
  distinctiveness or secondary meaning
  
• 
  Even if it conflicts with existing trademarks
  
• 
  Cannot be opposed
  
• 
  No procedure for removing unused or undistinctive marks
  
• 
  COC can easily oppose the registration of regular trademarks it finds objectionable
  
• 
  COC can even stop pending registration even if it already doesn’t have official mark
  

• 
  Enhanced protection to Olympic and Paralympic-related words, images and expressions
  
• 
  Easier to obtain injunctions to restrain uses in connection with business
  
• 
  Prohibits so called “ambush marketing”  marketing where you’re not supposed to during certain events (not allowing officially licensed advertisers to lose their market share)
  

Preferential level of protection that other TM’s do not need. Controversial as no need for use is required.

Domain names?

• 
  Register someone’s domain name as your trademark?
  
  • 
    In principle you can, but you still may be passing off.
    
  • 
    Regulated by CIRA, ICANN, the WIPO Domain Name Dispute Resolution
    
    • 
      Technically not really trademark issues, resolved in the different channels
      

Technically you can as you are not using the trademark, but that can also be subjected to passing off.

If trademark is for services that are used in Canada, can prevent it from being used as TM

• 
  “use”?
  
• 
  Registered trademark well-known? depreciation of the goodwill
  
  • 
    law society of BC: goodwill associated with its lawsociety.bc.ca and lsbc.org vs lawsocietyofbc.ca and lsbc.ca that linked with pornographic sites.
    
    • 
      Able to stop them, no use as trademark but depreciates good will
      

• 
  A registered trademark owned indefinitely s. 46 (Renewed ever 15 years)
  
• 
  Licensed or transferred– s. 48, 50
  

Defendant produced souvenirs that “explore canada” – flag design was similar to TH. TH company that registered trademark went through a number of transfers. It licensed its things appropriately.

IMD: Because of transfers, original owner is no longer associated. Has been transferred to so many owners that they would not know who the original owner is.

Court: license/transfer will have impact, but original transfer didn’t change anything. Goodwill was transferred appropriately.

IMD is a licensee, use of goods would still be attributed to owner. Logo still deemed to be owned by original owner due to: license and control

Para. 75: the use, the advertisement and the display of the trade-mark by the licensee will be deemed made by the owner if there is:

• 
  a licence
  
• 
  A certain control over the character and the quality of the wares.
  

• 
  1. Expungement proceedings under s. 45 – prove non-use for last 3 years
  
  • 
    Must “use” mark in the way use is defined in section 4.
    
  • 
    Defense: “special circumstances” for the non-use.
    
    • 
      Gowling LaFleur Henderson case – gifting doesn’t constitute normal course of trade (gifts, donations, promotional) consignment counts.
      
  • 
    Special circumstance: length of time trademark has not been used, are there valid reasons for non-use? (Was use difficult for reasons beyond ones control), is there a serious intention to shortly resume use.
    

• 
  2. s. 57 action, grounds in s. 18
  
  • 
    not registrable at the date of registration s. 12 and 13
    
  • 
    abandonment see Promafil Canada Ltée v Munsingwear Inc (Abandonment cannot be assumed from non use) – Penguin case
    
• 
  Owner using bigger penguin, did the implicitly abandon slimmer penguin?
  
  • 
    Must show registered TM no longer in use in Canada
    
  • 
    Need to show intention to abandon mark.
    
  • 
    person not entitled to register the mark s.16 (someone else using mark, can’t use my mark)
    
  • 
    loss of distinctiveness
    

All categories include “use” but in differing forms.

• 
  Use of precise TM s. 19
  
• 
  Confusing uses of TMs s. 20
  
• 
  Uses that depreciate the value of goodwill s.22
  
• 
  Protection against passing off s. 7
  
  • 
    Very narrow kind of passing off, only with respect to use of marks.
    

becomes not distinct if consumers would be confused

• 
  Eligibility for registration s.12(1)(d)), s. 16
  
• 
  Unauthorized use of mark that is confusing with a registered trade-mark s 20
  
• 
  s. 6(2): Confusion arises if it’s likely, in all the surrounding circumstances (some set out in s. (6(5)), that the prospective buyer will think that the wares/services associated with both TMs come from the same person.
  

Two users of trademark that are substantial similarity. Confusion or likelihood of confusion comes into the picture.

• 
  Inherent distinctiveness of the marks
  
  • 
    Extent to which they’ve become known
    
  • 
    Can be strongly or weakly distinctive.
    
    • 
      If there are not many products that have similar marks, it might be strongly distinctive. Not the only factor
      
• 
  Length of time in use
  
• 
  Nature of wares/services/business
  
  • 
    Likelihood of confusion by using the mark in association with non related goods is less.
    
  • 
    Similar domain of products, more likely
    
• 
  Nature of the trade
  
  • 
    Luxury items (champagne)
    
  • 
    Commonplace, every day items
    
• 
  Degree of resemblance between two TMs
  
• 
  Other circumstances (not exhaustive)
  
  • 
    Knowledge of similarity personally, fraud, intent to commit fraud or cause confusion etc
    

• 
  Actual confusion?
  
  • 
    Need either actual confusion or possibility of confusion.
    
• 
  Onus?
  
  • 
    Party that is trying to register (applicant) must try to prove its not confusing.
    
  • 
    Opposing party: No need to actually prove confusion, must show likelihood.
    
• 
  Perspective for consumer confusion?
  
  • 
    Average buyer
    
  • 
    Attributes?
    
    • 
      Ordinary hurried purchaser (ordinary caution, average intellect)
      
      • 
        More money to spend than time
        
    • 
      Imperfect recollection
      
      • 
        Goodwill is perhaps all they will remember
        
    • 
      Functionally bilingual
      

• 
  Identical marks or names may co-exist in similar, but quite different, lines of business without confusion
  

• 
  Famous marks?
  
  • 
    Reputation spills over into other business. Buyers may infer a common source of trade.
    

• 
  Held: test is not whether mark is famous
  
  • 
    Some trade-marks so well known that consumers would infer a connection in use with any wares/services Eg. Virgin Conglomerate : tv, internet, telephone, airline, insurance, superstores
    
    • 
      Use of Virgin mark may be confusing given breadth of business they undertake.
      
  • 
    Confusion analyzed in the totality of the circumstances
    
• 
  S. 6(5):
  
  • 
    A) Is Barbie inherently distinctive?
    
    • 
      Not really, just a womans name.
      
    • 
      Created words are more distinctive
      
  • 
    Other circumstances –evidence of actual confusion?
    
• 
  Character Merchandizing: Products associated with films or shows.
  

Red Green show objected to registration of Possum Lodge, they used the “possum lodge” in every show. Could be confused as to being the same source.

Need proof of use in technical sense (under s.4)

• 
  “Use” as a trademark, not any use
  
  • 
    Notice of association at time of transfer, mark on goods, etc
    
  • 
    Eg: X: “BROOKS” in association with shoes
    
    • 
      Y: “BROOKS shoes: nearly same quality as Adidas but with a cheaper price”
      
      • 
        Use: needs to be printed on shoe or mark is there at time of transfer. Use must be used to distinguish services or wares from others.
        
• 
  Nature and purpose of the use
  
  • 
    If providing with consumers with information and not to distinguish source, it would not be infringement. How do consumers understand Y’s use of Brooks.
    
• 
  Consumers’ perception of Y’s use
  

Use to confuse, reduce good will etc

• 
  Facts?
  
  • 
    Clairol brought suit against Revlon due to using hair shade colours on boxes. Clairol has two trademarks to hair colour products
    
• 
  “Use” in s. 19?
  
• 
  1) S. 4(1) deals with use in association with wares; s. 4(2) deals with use in association with services
  
  • 
    Presence of defendants thing on plaintiffs package is use, was not in brochures
    
  • 
    only the question of association or no association
    
    • 
      There is association if there is printed marks on the package, but not for advertising purposes
      
• 
  Use via 2.b – Distinguish particular wares from others. Not used in this way.
  
• 
  2) s. 19: “use” as a TM – definition of trademark for the purposes of distinguishing wares and services
  
  • 
    Did use depreciate good will?
    
• 
  Held:
  
  • 
    Looking at the packages, the marks Miss Clairol and Hair Color Bath are not intended to indicate and do not indicate to that the contents of the package are the defendants’ goods.
    
  • 
    Unlikely that any prospective purchaser would be likely to be deceived by the marks, as they appear on the package, into thinking that they were intended to indicate the origin of the goods in the package.
    
  • 
    No success under section 19 – doesn’t refer to use of defendants good when relating to (2.e)
    

First element: Use under section 4 with package not brochures

Second element: Relate s.4 to s.2(b) – if not used as trademark to distinguish goods, no infringement.
22(1): Use that depreciate value of goodwill

• 
  1) “Use” to be understood as use which any person may make, in association with goods or services within the meaning of s. 4
  
• 
  2) Whether the use is likely to depreciate the value of the goodwill attaching to the mark
  
  • 
    A) Goodwill of a business distinguished from goodwill attaching to a trade mark
    
    • 
      Is there goodwill? Must prove entitlement to claim under S.22
      
      • 
        Secondary meaning or use of mark for use in specific good
        
  • 
    B) “depreciate the value” of such goodwill
    
    • 
      Reduction of the esteem
      
    • 
      Direct persuasion and enticing of customers
      
      • 
        They would be otherwise likely to buy from the original TM holder.
        
      • 
        Purpose must not be underhanded. If it is informational that’s fine.
        

Did the use in the brochure depreciate good will?

Defendant must have used the mark as per S.4 as well as S.2(5)
Purpose was to appeal to Clairol’s customers habit of buying what they have bought before or that they would buy from Clairol at all.

• 
  Can’t use competitor’s trade mark for purpose of:
  
  • 
    Appealing to competitor’s customers
    
  • 
    To weaken their habit of buying
    
    • 
      what they have brought before
      
    • 
      the likelihood that they would buy competitor’s goods
      
      • 
        the use made by the defendants of the plaintiffs’ trademarks Miss Clairol and Hair Color Bath on its packages was and is a use of them in a manner likely to depreciate the value of the goodwill attaching thereto within the meaning of section 22(1) of the Act
        
• 
  Use that emphasizes differences in services, products etc?
  
• 
  Use that suggests interchangeability?
  
  • 
    interchangeable use of a mark that has goodwill= depreciation of goodwill
    
• 
  Use that merely creates mental association?
  

Use under s4,19,22 are different

• 
  Held:
  
  • 
    No evidence of “depreciation” or likelihood “of depreciating the value of the goodwill attaching” to the claimant’s trade-marks
    
  • 
    Clothing didn’t diminish goodwill, consumers not mislead to think Clicquot is source.
    
    • 
      Using it for any other good would “dilute [US]” it. Even if not related to original trade channel, still dilutes it. Doesn’t exist in Canada, but we have depreciation of good will.
      
  • 
    Depreciation: super weapon which, in the interest of fair competition, needs to be kept in check
    
  • 
    Use under S.19? – YES, allowed because marks are similar but different trades
    

Holding: Depreciation of good will doctrine must be very narrowly applied. Simply because consumers connect the two items, doesn’t let you get depreciation of good will remedy. If use is a strong linkage between dress shops and champagne, could end up depreciating. Must be strong connection not just mental association.

Accurate information protects consumer information and shortcuts, not designed to protect marks

Take overall context for why information/competitors mark was used.
Cliquot – Eventually consumers view about the luxury item will diminish, but only if they link the products. If there is no connection there may be use but no diminishing of the good will.

It is ok for there to be a link, but not a strong one.

• 
  Importation of goods legally marked with TM in other jurisdiction, sold side by side with goods bearing same mark in Canada
  
• 
  Seiko v. Consumers Distributing
  
• 
  Heinz v. Edan Foods
  
  • 
    Am ketchup, with Am TMs,
    
  • 
    Confusing with Can ketchup with Can TMs?
    
    • 
      Not whether product is lawfully imported: is it sold in Canada wrt confusing mark?
      
  • 
    Mark virtually identical – confusion likely.
    

May lead to issues.

Cannot prevent parallel importation through trademark.

Injunction: Interlocutory or permanent

Damages/accounting of profits

Policy
IP – Policy

• 
  Started as monopoly in defined territorties – later had reciprocal protection through treaties.
  
• 
  Many laws are uniform across the world, countries amended laws to make them meet treaty requirement
  
• 
  Lots of pressure to create global relations after WW2 (United nations created for this purpose) GATT operated as additional framework
  
• 
  Dispute system was fairly unoperational in the beginning. When trade agreements were being renegotiated, IP issues were picked up and linked to international trade.
  
  • 
    Negotiation originally was going to be restricted but became more a uniform set of norms and rules for everyone.
    

WIPO – dealt with public interest desire for regulation of IP outside of international trade.

WHO, FAO organizations dealt health/food safety concerns. Wanted to proceed with something that would help people be aware of their concerns.

UNCTAD – how is IP preventing the poor societies from growing? What about aboriginals

How does IP law support scientists efforts for tropical/3^rd world diseases that can be cured and help to save lives compared to cosmetic purposes.

Right of farmers to propogate seeds vs crop manufacturer (Monsanto) – how do we deal with heritage seeds, blow by.
Modern copyright regime that recognizes individual contributions to the development of art and culture. What is the link
Open Source Movement
Changing IP attitude towards the internet, software patents, dna patents etc

Infringement

Software patent – tied to machine so its ok

Which party is infringing?

Section 42 – infringing – anything patent holder has the ability to do (Make the glasses)(Sell the glasses)

Indirect infringement / Direct infringement

Tina printed the items, solid print as well, eye candy.

Restrictions on use/sale/resale

Any possible defences 55.2 private use, non commercial/ repair?
Secondary infringement – how did their engagement get sponsored? Did it infringe?

First prove infringement by someone first

Did they knowingly exercise influence?
Q2 – Trademark act protects registered and unregistered but this is unregistered

Statutory passing off (7b) – still based on elements of common law. – ceib geigy

Federal courts have jurisdiction – increased expertise and knowledge

Provincial common law jurisdiction otherwise.

Was there good will associated with mark

Was there a deceptive use / misrepresentation

Not exactly the same mark, confusing use. They had protection due to using exact same mark, can prevent use of confusing mark as well.

Title?

Common law passing off, fair use

How were designs taken? Fair use cch and phone book cases.
Confusion

Prior use

IP MASTER FIRAC

Patents
Introduction and Justification
Teva Canada ltd v Pfizer Canada Inc
Facts: Teva brought a suit against Pfizer attempting to invalidate their patent over inadequate disclosure of the patent. As a generic drug manufacturer, invalidating the patent would allow them to begin marketing and selling Viagra in generic form. The disclosure listed “preferred compounds” which could be used in curing erectile difficulties. That being said, it wasn’t clear which compounds worked or which compound was the preferred method of implication.
Issue: What amount of disclosure is necessary for a patent to be granted?

What underlying issues frame the amount of disclosure necessary?

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  Patents are not accolades or awards, they are designed to stimulate the economy and creativity and provide an incentive for people to come up with something of utility. The government provides patent protection in order to assure them that their hard work will not be in vain
  

Policy: Do people only create patents for themselves? Are they interested for others? What about non-commercial patents or patents that people do not wish to commercially exploit?

Can also characterize the rights sought in the patent, what if you abdicate or assign all rights?

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  Clearly there is incentive to underemphasize the patent, makes evergreening easier, makes replication harder, makes selection patents harder.
  

Holding: Insufficient disclosure rendered

Section 27(3) Lays out disclosure requirements

Section 27 (4) – If one or more claims are void for failure to meet S.27/58 requirements, valid claims may still survive.

Section 53(1) – If proper disclosure is wilfully withheld for “purpose of misleading” – patent can be void

“We must look to the whole of the disclosure and the claims to ascertain the nature of the invention and method of its performance”

“Section 27(4) provides that the claim or claims must define the subject matter of the invention distinctly and explicitly” Here the failure of the disclosure was not the drug itself which was known, but the use to which the drug was being put IE: Using Sildenafil to treat ED.

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  Manufacture is described as being the product of the “hands of man” analogies are not appropriate – dictionary definition (physical labor or mechanical power necessary)
  
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  Composition of matter refers to the checmical compounds, compositions and molecules in their base form, not in their matured form – explicit rejection of “anything under the sun” [US] approach (Bastarache)
  
  • 
    Animals have numerous unique qualities that transcend matter (Bastarache)
    

Analysis: The courts pointed out that higher life forms possess characteristics that transcend simply the genetic material of which they are composed. Additional natural phenomenon such as the mothers composition, diet, environment etc all have an affect on the mouse. Lower life forms which can be manipulated to the point of being entirely uniform may qualify as “compositions of matter” (Diamond v Chakrabarty)

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  By including certain exhaustive definitions, parliament chose not to have “everything under the sun” – this logic intrinsically applies to higher life forms not being included.
  

Can a mere algorithm be patentable? Is Amazon’s program more than a mere algorithm?

Can a business method be patentable?

Ratio: “Use” is only a means to be applied, “Method” involves directing a person skilled in the art to take steps to reach the result. Every step in the method leads to the inevitable result tied to a physical good (a sold item) ergo it is a method. It also satisfies the “trying to solve a problem” stage of inventions as well.

1. 
   It must have a practical method of application
   
2. 
   It must be a new and inventive method of applying skill and knowledge
   
3. 
   It must have a commercially useful result
   

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  Mere algorithms are not patentable, when tied to a discernable physical result (art) it may become a method.
  
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  Business methods are normally not patentable but may be under certain circumstances.
  

Analysis: The courts adopted a purposive construction of the claims. The method of the patent created a discernable effect on the people using it. It changes the way people shop. The series of events that take place in the background thus constitute an art via method wherein a practical effect occurs. The business method itself may even be considered to be attached to a physical item (the computer and its goods). Unlike Bilski, the Amazon patent functions by itself. Bilski was simply trying to amalgamate tons of data with which someone would do what they pleased with it.

But, where a business method has a practical application it may be patentable.

BUT, there is no bare “practical application” test. (Always inevitable to be practical)

“A novel business method may be an essential element of a valid patent claim”

Issue: Selection patents might allow for evergreening, constantly burrowing down within ones own patents.

Do their claims do more than describe the way the body works when utilizing these drugs?

Old section 41 in patent act actually used to restrict scope of patents, had humane consideration built in.

Current act has no humane considerations but international administration consider them.
Higher Life Forms
Harvard Mouse – Considerations