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IP FrameworkGrace Kim

- IP FRAMEWORK -PATENTS

INTRODUCTIONA patent is a limited term monopoly for an invention (20 yr protection from the filing date: s.45(2) Patent Act). It is a right granted by statute to exclude others from making, using or selling one’s invention. The rationale for patents is to stimulate the creation & development of new technologies “designed to advantage research and development and to encourage broader economic activity”. (Free World Trust)

Patents can be described as a bargain as the inventor is granted exclusive rights in a new & useful invention for a limited period in exchange for disclosure of the invention, so that society can benefit from this knowledge (Teva). Jurisprudence shows us that insufficient disclosure can invalidate the patent (Teva) and the extent of disclosure must be as such to “enable a person skilled in the art/field of the invention to produce it using only the instructions contained in the disclosure” (Consolboard). *Note: Info on Filing date, claim date; Fees; Extent of disclosure notes – p.8 ,9MOPOP - Manual of Patent Office Practice

RIGHTS & TERMS OF THE PATENT (p.24 – 26 CAN) Who has title? Inventor or their legal rep (s.42) Who owns patent & patent rights? Generally inventor. Maybe employer with contract or gov (s.20) What is term of protection? 20 years from the filing date of patent (s.45) What is the scope of patent rights? The rights are limited by scope of claim in patent. What is the nature & content of the rights? Only patentee (and patentee’s legal reps) has exclusive

right of “making, constructing and using the invention and selling it to others to be used” s.42 How can patent rights be lost? May be lost as a re-examination of patent commissioner s.48.1(1) or

through impeachment s.60

WHEN LOOKING AT WHETHER TO GRANT PATENT RIGHTS:For a valid patent: first, the invention at issue needs to be under patentable subject matter. Second, it needs to meet the 3 criteria for patent protection: utility, novelty and non-obviousness.

STEP 1: PATENTABLE SUBJECTABLE MATTERIn Canada, patents are granted for inventions. According to s.2 of the Patent Act, “invention” means any new and useful (or any new and useful improvement in) art, process, machine, manufacture or composition of matter. However, these recognized category of patentable subject matter are neither definitive nor exhaustive and is further developed in case law.

i. ArtIn Shell Oil, Art is defined as an “act or series of acts performed by some physical agent upon some physical object and producing in such object some change either of character or condition”. According to MOPOP s 12.02.01 – both method and use are form of art.

a) Method – is a manner of achieving result through step or series of steps to arrive at the desired result Amazon.com – patent allowed for one-click method (computerized business method) for

internet shopping

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b) Use – is a manner of achieving result thru the application of a means but without any specific steps. (new medical use for a known drug; or new use for an old/known compound)

ii. ProcessProcess can be described as a systematic series of interdependent actions or steps. According to MOPOP s.12.02.02 a mode of operation by which a result or effect is produced by physical or chemical action can be considered a process.

In Canada, computer processes are not patentable unless they are tied to a larger invention b/c you can’t patent abstract ideas/algorithms (Amazon).

o In US, a process does not necessarily have to be tied to a machine, a transformation or a concrete tangible result to be eligible subject matter for a patent. Bilski

No explicit Canadian jurisprudence on excluding business method/process from patentability (Amazon.com)

iii. MachineMachine can be described as the mechanical embodiment of any function or mode of operation designed to accomplish a particular effect (MOPOP s.12.02.03).

iv. Manufacture“Manufacture” is the process of making articles or material (in modern use on a large scale) by the application of physical labor or mechanical power, or the article or material such a process.

Harvard College – non-human transgenic mammals are not manufactures.

v. Composition of Matter“Composition of matter” can include chemical compounds, composition & substances as well as, new molecules, purified substances and even isolated microorganisms. However, there’s ongoing debate on whether life forms are composition of matter. Re Abitibi said micro-organisms, yeasts, moulds, fungi, bacteria, etc., are lower life forms that can be patentable.

Harvard College – Ruled that transgenic non-human mammals (such as mice) are not composition of matter. Body of mouse is composed of various ingredients but does not consist of ingredients that have been mixed together by a person. “Composition of matter” does not include higher life forms whose genetic code has been altered in this manner.

vi. Improvements thereuponAny improvement in any art, process, machine, manufacture or composition of matter may constitute an invention and may be patented. Improvement has to be novel, useful & not obvious.

Apotex – conditions to find a selection patent (definition in CAN p.13)

vii. Non-patentable subject matter1) Discoveries

A discovery reveals something which already exists in nature and thus, can’t be said to be an invention.

2) Mere Scientific Principle/Abstract Theorem 27(8) PA – “no patent shall be granted for any mere scientific principle or abstract theorem”. This goes back to the idea of non-patentable discoveries, as it is a law of nature that already existed and you can’t claim patents on the application of these principles.Mayo Collaborative – No patent for law of nature, so no patent for process reciting law of nature unless that process has additional features that makes it more than simply describing.

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Myriad – US CoA - isolated human genes patentable, markedly diff from how they exited in nature; US SC – isolated human gene not patentable, not a creation. Merely separating gene from surrounding material is not an invention.

Computer programs – not patentable if comp program has mathematical algorithm that reflect an abstract theorem (Schlumberger). According to 16.02 of MOPOP, computer-implemented invention “may be claimed as a method (art, process or method of manufacture – Motorola), machine (generally, a device that relies on comp for its operation) or product (an article of manufacture).

Business Methods – could be patentable if invention disclosed is something more than a “mathematical formula” and such exclusive rights are not to just the underlying abstract algorithm, but to the invention that results in a real change in a tangible thing (art). (Amazon)

3) Professional Arts/Skills – professional arts/methods are not arts that fall under patentable material under s.2 because they reflect the personal knowledge & capacities that one would expect from anyone skilled in the field (Lawson).*Exception: patent on use (of drugs) for treatment & device of diagnosis accepted, but NOT for method treatment.

4) Higher Life Forms/Living Things – higher life forms under present law are generally unpatentable, as they are held to be more than mere “composition of matter” like lower life forms (Harvard College); *Note: Court in Harvard said the distinction is pretty arbitrary and given complexity of issue, it does not have competence to re-draw the line drawn by Patent Office.

STEP 2: CRITERIA FOR PATENT PROTECTIONIn order to be patentable, an invention must possess utility (must work), novelty (must be new & not previously disclosed), non-obvious (inventive), not an obvious or mere workshop improvement over what was known before.

1. UTILITYs.2 of the PA sets out an “invention” to be useful. To meet this utility requirement, the invention does what the patent says it will do (Teva). There are guidelines for ‘utility’ set out in jurisprudence (Laboratories Servier, Adir Oril, Servier Canada):

o “Mere scintilla” of utility will suffice if specification doesn’t promise specific resulto If specification sets out an explicit “promise”, utility measured against that promiseo Marketability is not an issue; an invention does not have to be sufficiently useful to support

commercialization o Utility has to be made at the time of the claim date, in case of earlier applications o Invention has to be useful on the filing date of patent applicationo Sound Prediction – Where utility can be predicted in advance of actual testing, patent may be

granted on sound prediction. (see Wellcome for test - p.18)

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2. NOVELTYs.2 of the PA also sets out an “invention” to be new. Patent bargain between the state & inventor is that they disclose in return for exclusive rights for a limited time. So as set out in s.28.2 of PA, subject-matter of claim must not be previously disclosed because patents target new inventions.

Q: Ask if the invention has been already disclosed (anticipated)? To see if disclosure has occurred “in such a manner that the subject-matter became available to the public in Canada or elsewhere”, we use the two-step anticipation test formulated in Sanofi (p.20). For there to be anticipation, there must be both disclosure & enablement of the claimed invention (Abbott):

(1) Prior Disclosure - Does the prior patent disclose the subject matter, sufficient enough that a person skilled in art understands what it is, without trial & error?

(2) Enablement – If there’s sufficient disclosure, does it enable a person skilled in the art to carry out what is disclosed? Trial & error permitted. Factors to consider if it was enabled. (p.21)

Conclusion: If the prior patent provides sufficient disclosure, and also enables a person skilled in art to carry out what’s disclosed, this amounts to disclosure, and thus, the subsequent invention is not novel.

3. NON-OBVIOUSNESSs.28.3 of PA sets out that invention must not be obvious. The standard is that it must not be obvious a notional skilled person who is endowed with ordinary skill, ordinary creativity and common sense (Sanofi) as well as technologically adaptable, aware of prior art, reasonable & make logical inquiries.

“Obvious-to-try test” for selection patents – Sanofi p.23

PATENT INFRINGEMENT There needs to be a valid patent to claim a patent infringement suit [see above for valid patent]. There is no definition of ‘infringement’ in the Patent Act but from s.42, it can be determined that infringement arises from doing anything that the patentee has exclusive right to do (“making, constructing and using the invention and selling it to others to be used”) without the consent of the owner. On ‘selling’ and ‘use’ (p.25)

2 types of infringement:1. DIRECT INFRINGEMENT (primary)

Direct infringing is doing what the patent holder has the exclusive rights to do – Making, constructing, using the invention and selling it to others to be used

2. INDIRECT INFRINGEMENT (secondary)(Apotex) For indirect infringement to be found: 1. There is act of infringement completed by the direct infringer2. Acts of the alleged inducer influenced the infringer3. Inducer knowingly exercised influence

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DEFENCES TO PATENT INFRINGEMENT (more detail p.29) Deny the validity of the patent – s.59 Users’ Rights - s.55.2

(1) Regulatory approval requires using the patented invention (ex – generic birth control pharmaceutical prep prior to expiry of brand name company’s patent)

(6) Exception to patent rights I. For purpose of experimentsII. Non-commercial purpose/private purposeIII. Providing access to pharmaceuticals to developing countries – ss.21.01, 21.2IV. Repair of a patented article (Gilbert Tech)

APPROACHES TO CLAIM CONSTRUCTION – INTERPRETING PATENT CLAIMSIn Canada, the scope of patent claims are interpreted in a purposive construction approach (claims construction). By using the purposive approach, Courts will look at the express language of the patent claim itself to understand the claim. Purposive interpretation of the claim is not based on the “spirit of the invention/central claim drafting principle” (Europe) nor is it based on interpretation from other extrinsic factors like the US.

Free World Trust is the authority on the purposive interpretation of patents. Interpreting the claims in a way that would make the invention work/success, instead of a way

that would make the invention fail and find fault; claims are interpreted purposively, rather than the literal claim of the patent.

Purposive construction allows judges to interpret the claim mindful of the purpose & intent of the inventor, in addition to the what the literal meaning of the patent claim (Whirlpool)

Free World Trust – Court accomplished this purposive motive by categorizing elements into essential & non-essential elements; and there will only be an infringement by the new invention if only the essential element is the same as the last patent

o Factors that determine elements of claim that are essential vs non-essential (p.29)

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COPYRIGHT INTRODUCTION

Copyright is the right to prevent others from doing a variety of things with respect to something that is copyright-protected (s.3) for a certain period of time (life of author + 50 yrs - s.6). Copyright in Canada is a creation of statute (Copyright Act) and the rights & remedies it provides are exhaustive as provided by the statute. The CA provides both economic (s.3) and moral (s.14.1, 14.2) rights to a work that is protected. The purpose of copyright is to achieve a balance between promoting public interest in the encouragement and dissemination of the works of the art and intellect (Theberge); copyright recognizes users’ rights, not just the creators. Also, copyright protection provided irrespective of quality, legality or moral content, although still subject to criminal law (Kenrick & Co, Delrina Corp).

RIGHTS & TERMS OF COPYRIGHT (p.42 – 52 CAN)- Who owns the rights? Generally, the author s.13(1). Exception – employer is owner if employee is

under contract of service OR if work was made in course of employment (Mattel). o Owner of CR can assign all or parts of rights in the work, or license uses of the work - 13(4), Shawo Joint authorship – Beaudrau v Lin (p.55) , Neugebauer (p.44)

- Terms of Copyright? “Works” = Life of author + 50 years (s.6). Neighbouring rights = 50 yrs (s.15) - What are the rights? Rights outlined in 3(1)Reproduction, Performance in public, Communication to the public by telecommunication, Authorization Also Moral Rights under 14.1(1) and moral rights of performances 17.1(1) – p.72

LEGISLATION – COPYRIGHT ACTCopyright in works3(1) For the purposes of this Act, “copyright”, in relation to a work, means the sole right to produce or reproduce the work or any substantial part thereof in any material form whatever, to perform the work or any substantial part thereof in public or, if the work is unpublished, to publish the work or any substantial part thereof, and includes the sole right

(a) to produce, reproduce, perform or publish any translation of the work…

Conditions for subsistence of copyright5 (1) Subject to this Act, copyright shall subsist in Canada, for the term hereinafter mentioned, in every original literary, dramatic, musical and artistic work if any one of the following conditions is met:

(a) in the case of any work, whether published or unpublished, including a cinematographic work, the author was, at the date of the making of the work, a citizen or subject of, or a person ordinarily resident in, a treaty country;

ROADMAP – COPYRIGHT QUESTIONFirst, see if it’s copyrighted material (scope/validity of CR):

- Is it “work”? Or other subject matter/neighbouring rights?- Does it meet the criteria of CR? - Is P owner/author of that work?

Second, If copyrighted material – Was CR infringed? - Did D do something only P can do under 27(1)?

Third, are there any defences/exceptions to CR infringement?

Potential Issues to flag:- Particular work under

consideration – is it under subject matter of CR?

- Owner/author of that work (maybe joint ownership)

- Scope and validity of CR (criteria for CR)

- Copyright infringement- Defences

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VALIDITY OF COPYRIGHT1. IS IT A “WORK” FOR THE PURPOSE OF COPYRIGHT?s.5 of the Copyright Act provides that copyright in Canada subsists in “every original literary, dramatic, musical and artistic work”. What constitutes as “every original…work” is defined in a non-exhaustive list in s.2, and furthermore, jurisprudence has shown us what constitutes as a “work” for the purposes of CA.

1) Literary work (p.32)Literary work must have substantial meaning to be copyrightable (Exxon Corp, Francis Day). Literary merit and quality are not factors in determining work (University of London Press).

s.2 – include tables, computer programs* and compilation of literary works. Francis Day – Titles can be copyrightable when “what is copied is substantial part of their work” Exxon Corp – A single word is generally not copyrightable. Literary work needs substantial meaning.

2) Dramatic work (p.33)Dramatic work is described as work of action, with or without words or music, which is capable of being performed before an audience. Common law shows that it must have a story, or a thread of consecutively based events and not of a random nature (FWS Joint Sports).

FWS Joint Sports – sports games generally are not copyrightable, unpredictability of action is diff from dramatic work.

3) Artistic work (p.34)Artistic work finds expression in a visual medium and questions of artistic merit, and actual aesthetic value are not relevant to determining something as artistic work (DRG Inc).

s.2 – include “paintings, drawings, maps, charts, plans, photographs, engravings, sculptures, works of artistic craftsmanship, architectural works, and compilations of artistic works”

4) Musical work (p.34)Musical work defined by s.2 to mean “any work of music or musical composition, with or w.o words, and incl. any compilation thereof”. It can’t be trivial that it could be characterized as purely a mechanical exercise.

5) Compilations & Collective Works (p.35)-- Compilations are work resulting from the selection/arrangement of the original works of others OR the selection of data. -- Collective work can be “any work written in distinct parts by diff authors or in which works or parts of works of diff authors are incorporated” (Robertson) and “an encyclopedia, dictionary, yearbook…newspaper, review, magazine or similar periodical” – s.2

6) Other Subject Matter / “Neighbouring Rights” The rights attached to these neighbouring rights are less extensive than the rights attached to “works” under s.3 (ex – shorter term of protection: only 50yrs (s.23) for neighbouring rights)

Part II of CA outlines 3 types of other subject matter that are not “works” as defined in the CA:1. Performer’s Performances (s.15) – see p.492. Sound Recordings (s.18) o Re: Sound – “sound recording” for purpose of CA excludes any pre-existing sound recordings

that are part of a movie soundtrack.3. Communication signals (s.21) – see p.49o s.2 - “Radio waves transmitted space w/o any artificial guide, for reception by the public”

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2. DOES IT MEET THE CRITERIA OF COPYRIGHT?To meet the subsistence of copyright, “work” must be an expression of an idea that is fixed, original and appropriately connected to Canada.

Copyright protection is given to the expression of ideas, not just mere ideas (Kenrick & Co, Baker) “Weeding Out” method (Canada) – “have to ‘weed out/remove’ from CR protections, those portions

which cannot be protected by CR”. CR only protects original expression, not the idea underlying that expression (Delrina Corp)

a) Fixation The CA does not expressly specify that fixation is a requirement under the CA, but this is imposed by judicial interpretation. “For copyright to subsist in a ‘work’ it must be expressed to some extent at least in some material form, capable of identification and having more or less permanent endurance” (Canadian Admiral Corp)

Gould – Oral statements = no CR; Fixating convos in notes = CR b/c of own thought & decision Theberge – Mere act of re-fixation is not CR infringement. Not reproduction thru inc. of copies

b) Original Copyright protects only original work (s.5 – “every original…work”). Original work is not just stating mere facts or ideas nor expressions that are merely copied. In Canada, the test for originality is shown in CCH case.Canadian Test for Originality (CCH) - For a work to be “original” within the CA, it must:

a. Originate from the author (personal contribution of the author)b. Be original in the quality of the work itself:

Be more than a mere copy of another work. Be an exercise of skill & judgment. The exercise of skill & judgment required to produce

the work must not be so trivial that might be characterized as purely mechanical exercise The work doesn’t necessarily have to be creative (in being novel, or unique), but

it must require some skill & judgment “skill” – use of one’s knowledge, developed aptitude or practised ability in

producing work “judgment” – use of one’s capacity for discernment or ability to form an opinion

or evaluation by comparing diff possible options in producing the work

c) Work must be appropriately connected to Canada Author should be either a citizen, or subject of, or ordinarily resident in a treaty country – s.5(1)(a)

IN CONCLUSION, THIS IS (not) A “WORK” THAT IS AN EXPRESSION OF IDEA THAT IS ORIGINAL, FIXATED AND APPROPRIATELY CONNECTED TO CANADA, THEREFORE (does not) COPYRIGHT SUBSIST IN THIS WORK.

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COPYRIGHT INFRINGEMENTPRIMARY INFRINGEMENTs.27(1) of CA says that it is an infringement of copyright to do anything only the owner of the copyright has the sole right to do, without the consent of the CR owner. s.3(1) lists the sole rights of the CR owner, some of which include: reproduction, performance in public, communication to public by telecommunication and authorization.

1. Infringement by ReproductionWhether there was copyright infringement is a question of fact, as copyright law accepts that 2 diff authors can create same/similar works without any copying taking place. Mere reproduction may be allowed, but substantial reproduction may amount to infringement (Cinar).

2-part infringement analysis for non-literal copying:1) Did the D have access to P’s work at any point so that copying is factually possible; AND

[This asks whether the copyrighted work is the source] Infringement inferred from access, but proof of independent creation rebuts inference of copying

2) Are the 2 works “substantially similar” such that a finding of copying can be supported? The Courts use the qualitative and quantitative standard (holistic approach) (Cinar) to see whether there has been substantial taking to amount to copyright infringement by the defendant. The courts considers a number of factors to assess whether there has been a substantial taking (cited in Hager, from U&R Tax Services):

Quality & quantity of the material taken Extent to which D’s use adversely affects P’s activities and diminishes value of P’s CR Whether material taken is CR protected subject matter Whether D’s intentionally appropriated P’s work to save time & effort Whether material taken is used in same/similar fashion as P

INFRINGEMENT CASES: Boudreau v Lin – For joint ownership in CR, there needs to be substantial or significant contribution

to the work by each party Hager – qualitative and quantitative standard to assess whether there’s substantial taking. D

infringed CR: the quotes in P’s books were not available at large, P’s book was source of CR material. REPRODUCTION CASES:

Doral Boats – an intermediate copy can still amount to CR infringement; even if you didn’t copy the original source & copy the secondary source, there can still be a breach of CR over original work.

Apple Comp – reproduction does not need to be in human readable form – it includes “copying in any material form whatever” (s.3)

Theberge – reproduction requires an additional copy; re-fixation is not reproduction – no extra copy Crookes – Hyperlinking on its own, does not constitute reproduction [related to P2P]

2. Infringement by performance in public – p.49Under 3(1), the CR owner the “sole right to perform the work, or any substantial there part of in public”. To claim CR breach for performance, P has to show that (1) substantial part of the work was performed and (2) it was performed to the public (Canadian Admiral Corp)

Canadian Admiral Corp – performance in private homes of subscribers of D’s company was not public Public v private sphere in jurisprudence – p.493. Infringement by Communication to the public by telecommunication – p.50

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CASES: CCH – fax transmission of a single copy to a single individual is not communication to public but if

there was a series of single faxes to a number of diff individuals – it could amount to communication CAIP (Tariff 22) – participants in telecommunications (like ISPs) who only provide “means of

telecommunication necessary” (like ISPs) are deemed not to be communications under 2.4(1)(b) ESA v SOCAN – downloading is reproduction, not communication Rogers v SOCAN – If content is intentionally made available to anyone who wants to access it, it’s

treated as communicated ‘to the public’ even if users access the work at diff time & place; or a point-to-point transmission

4. Infringement by Authorization – p.52 CASES:

CCH – Merely providing instrument by which 3rd party may infringe is not authorization. By having photocopier in library did not amount to CR infringement (had no sufficient control over patrons).

CAIP (Tariff 22) – authorization will not be presumed by merely providing the means to infringe. It’s presumed the means (ex – server) will be used lawfully. So as long as intermediaries (like ISPs) are content neutral they will not be infringing CR - unless they sanction, approve, or countenance more than allowing the mere use of equipment (ex – server).

BMG Canada – P2P programs; merely placing files in a shared directory in a computer where that copy can be accessed via P2P services does not amount to distribution, and hence authorization.

SECONDARY INFRINGEMENTPursuant to s.27(2) CA, secondary infringement arises when a person sells, rents, distributes, trades in, exhibits, imports infringing copies of works or possesses them for purposes in circumstances where that person knew or should have known the copies infringed CR. Test for Secondary Infringement (CCH)

1. The copy must be the product of primary infringement2. The secondary infringer must have known or should have known that he/she is dealing with a

product of infringement This “knowledge” standard is the notice of facts by a reasonable man (Milliken)

3. The secondary dealing must be established; that is, there must have been a sale CASES:

Kraft Canada – s.27(2)(e) protects Canadian CR holders against parallel importation where goods are imported to Canada for the purposes that amount to secondary infringement. This protection is extended to CR owners, assignees, but not exclusive licensees.

OTHER INFRINGMENT 27.1 – Infringement thru parallel importation of books 27(3) – infringement by means of the internet or another digital work (diff from communication, or

downloading) 27(2.3) – infringement by means of Internet or another digital network, to provide service primarily

for purpose of enabling acts of CR infringement if actual infringement occurs from this service. Infringement in computer programs – Abstraction analysis, Delrina Corp (p.39, p.56)

DEFENCES & EXCEPTIONS, USERS’ RIGHTS Defendant can DEFEND by claiming that:

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1. Copyright does not subsist in the work2. CR Has expired3. P is not owner4. No infringing Act: (Users’ rights – see below)

- Public interest defence – when CR protected work advances public interest, it can be used as a defence to CR infringement. (James Lorimer & Co)

OR can prove that one of the EXCEPTIONS applies.1. Miscellaneous exceptions – p.602. Private copying regime – p.61

- Section 79, 80 – reproducing musical work in a sound recording…onto a recording medium for private use… does not constitute as infringement of CR (BMG Canada)

- Can. Private Copying Collective – mp3 players do not fall under s.80 exception for infringement; this device is not ordinarily used for a recording purpose

3. Private use – p.62- Section 29.22 & 29.23 – not an infringement of CR for an individual to reproduce for

private purposes limitations in these sections

4. Common carrier exceptions – p.63- Section 2.4(1)(b) – participants in telecommunications (like ISPs) who only provide

“means of telecommunication necessary” (like ISPs) are deemed not to be communications (CAIP v SOCAN)

- Section 31.1 – now states that ISPS do not infringe by providing cache or access to internet

5. Fair dealingInstead of a defence/exception to copyright infringement, fair dealing is a users’ right put in place “in order to maintain proper balance between rights of CR owner and the users’ interests” (CCH).

Under fair dealing, individuals have a “right” to use the whole or a substantial portion of a CR-protected expression for the purpose of research, private study, education, parody or satire (s.29), criticism or review (s.29.1) and news reporting (s.29.2), providing this use is “fair dealing”.

CASES CCH – fair dealing test; yes, the copies are fair its purpose was research Michelin – You can’t use another person’s property in the expression of labour

disputes; in this case, it was not a criticism or parody using that CR-protected thing – the pic was just placed in the protest.

Productions Avanti – porn is not parody to exercise this fair dealing exception.

6. Exceptions related to artistic works used in industrial contexts- Section 64 provides that where artistic works are applied to a useful articile and the

article is reproduced in quantities over 50, it is no loner an infringement of CR for anyone to make the article in question

- Governed by 64 and 64.1

TRADEMARKS

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INTRODUCTIONTrademarks are a mark used for the purpose of distinguishing that person’s wares or services from those of others in the marketplace. The purpose of trademarks are to “assure consumers that they’re buying from the source from whom they think are buying and is also receiving the quality which they associate with that particular TM” (Mattel USA).

Justification for trademarks are that it promotes economic efficiency in consumer search cost, protects trademark owner’s proprietary interest (although the mark itself is not a proprietary interest), and protection for the consumer in identifying brands they want. Trademarks in itself are not a proprietary interest, but are used to avoid confusion in the marketplace (Pink Panther case)*Note: Property Interest in Personality - p.71 CAN

PASSING OFFPassing off is a common law tort that acts as a protection of unregistered trademarks. It protects a trader against a competitor who creates a likelihood of confusion in the market by causing confusion as to the source of his wares/services. The Court in Ciba-Geigy said that there is a consumer protection dimension to this tort the purpose is not only to prevent unfair competition but also “to protect all persons affected by the product”.

Passing-off requires 3 necessary components (Ciba-Geigy)1. The existence of goodwill or reputation by the plaintiff2. Deception of the public due to a misrepresentation and;3. Actual or potential damage to reputation

1. GOODWILL / REPUTATIONFor the 1st element, P is required to establish that it has goodwill or reputation associated with a particular markLook at the strength of the association between the mark and the wares/services to determine goodwill.

Factors that show proof of goodwill: - Secondary meaning – if you can prove this, you don’t need to show other factors to goodwill- Strength of association between its mark and its company as a trade source- The length of time the wares/services has been in the market- The degree of distinctiveness of the mark;

o But similarity in feature that’s essential to the proper functioning doesn’t affect distinctiveness (Kirkbi)- The volume of publicity and sales- Conduct of the defendant; proof of intentional copying (doesn’t automatically bring an assumption Ray Plastics – high distinctiveness of black & yellow snowbrush, large volume of sales, intentional

copying and substantial advertising proved reputation of product.

Secondary Meaning – is associated to the particular guise, particular name, or particular appearance of a product – that over time has been established. Goodwill/reputation is the general sense of association. But if distinction turns on the specific “getup” or “distinguishing guise” of the mark, the assessment is on the secondary meaning of that specific mark.

Secondary Meaning - through Product Appearance

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Product’s appearance or packaging may give an association with a particular source. Product appearance is more likely to be considered distinctive of a particular trade source when it’s a design, embellishment or other non-essential feature that is applied to the underlying product. (Ex – lemon shaped lemon juice bottle)

Oxford Pendaflex – file trays may have looked similar but were not distinctive to associate it with P; Mere similarity or appearance is not enough. Must establish that confusion is created in the mind of consumer – whether or not they can identify the source.

Secondary Meaning - in Descriptive Name Reddaway – camel hair belting; a use of common words/descriptive words may have acquired a

secondary meaning, so that purchaser would associate words with their reputation

Issues with Goodwill Geographic limits of goodwill (p.75) – Protection against PO is available only where there is goodwill/reputation in the area. Even if they don’t have operation in the area, foreign goodwill can be recognized if P can prove that there is likelihood of confusion with consequential injury to the P. (Orkin)

Loss of reputation – mark becomes generic (p.76) – Reputation is lost when mark becomes generic (when cx treat it as name of product itself, rather than as a mark indicating specific trade source) because it has lost its association to the trade source, and now is just a general description.

- Institut National – champagne not generic

Loss of reputation – mark no longer used (p.77) – Even when business stops, they may still keep for a period of time the goodwill attached to the business and as long as that goodwill remains, the rights attached to the mark also remains. (Ad-Lib – retained goodwill of the club name)

2. MISREPRESENTATIONFor the 2nd element, P must be able to show that D misrepresented his/her wares or services as those of P in a manner that was likely to cause consumer confusion (Kirkby). Test person for confusion is the average or ordinary consumer in the chain of consumption (Ciba-Geigy, Institut National)

Institut National - Factors for determining if D’s product is likely to consumer (p.79) Seiko Time – grey marketing; test person is ordinary consumers

Specific Issues Passing off in the Internet – BCAA – Test person in this case is “casual or hurried observer” (p.80) Meta Tags & Domain Names – Dentec – standard is source confusion for domain names & meta-tags p.81 Reverse Passing Off – Bristol Conservatories (p.80)

3. DAMAGEFor the 3rd element, P must establish in passing off action is harm or damage.

If P wants just an injunction, P only needs to show that there is likelihood of damage. To claim for damages, proof of actual harm required

o Loss of trade (Ray Plastics), Loss of goodwill and reputation, Dilution of goodwill

If all 3 elements can be made out by the P, the tort of Passing Off can be successfully made against the D.

DEFENCES TO PASSING OFF TORT

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1. Argue that P has failed to make out the 3 elements of passing-off2. Using your own name in the conduct of business. There’s conditions:

o Must be surname (not nickname, or given name)o Used honestly; Without the intent to trade on the goodwill or reputation of another businesso But, Court could require party to use name in a manner that is not confusing with an already

existing business (Reddaway)3. Could argue that it holds a TM registration for the mark it is using

DAMAGES & REMEDIES TO PASSING OFF Remedies under s.7(b) of TA are provided under s.53.2 Damages may be awarded as compensation for actual harm suffered Other remedies incl. permanent injunctions, order of disgorgement of profit, etc Punitive damages ordered only when D’s conduct has been particularly egregious

RELATIONSHIP & CONTRAST BETWEEN PASSING OFF AND TM LAW

PASSING OFF TRADEMARKSUsually requires a symbol/feature to be used AND a market reputation before protection can be claimed

TM “use” suffices for a claim; doesn’t need to prove reputation

PO accords local protection (where goodwill exists) Registered TM offers protection nation-widePO requires P to prove the existence & extent of its reputation each time an action is brought

TM registration is presumed valid for ALL wares & services for which it’s registered

Confusion or misrepresentation alone does not suffice in PO, have to show damage or injury

“Use” of same mark OR confusingly similar mark is prohibited for registered TMs, no need for actual damage

TRADEMARKSs.2 “Trademark” means(a) “a mark that is used by a person for the purpose of distinguishing or so as to distinguish wares or services manufactured, sold, leased, hired or performed by him from those manufactured, sold… of others”(b) a certification mark,(c) a distinguishing guise, or(d) a proposed trade-mark

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Types of Trademarks:- Ordinary marks – p.82- Distinguishing Guise - p.83

o Defined in s.2 “the way goods are shaped, wrapped, packaged, colored; the appearance of which is used” can constitute a T. Distinguishing guise has limitations under s.13(1):a. It can only be registerable once it has acquired distinctiveness thru use and;b. It cannot be primarily a functional feature (Glaxo). It must not unreasonably limit the

development of any industry nor interfere w/ any utilitarian feature embodied in guise.- Certification Mark – p.84

o Defined in s.2: represents a defined standard from those who do not have this mark. Rules - s.23 - Collective Marks – p.84

o Ex – geographical indication - s.11.12 - Okanagan wine mark – each wine producer has proprietary interest in that mark

- Official Marks – s.9(1)(n)(iii) ex – Olympic Marks – p.84 o ON Association of Architects – only public authorities may register an official mark

RIGHTS & TERMS OF COPYRIGHT (p.98) Term? A registered trademark can be owned indefinitely - s. 46 allows renewal of TM

every 15 years Licence (just permission to use) s.50 or Transfer (assignment of all rights) of TM – s.48

TRADEMARK ACT Registration of marks used or made known in Canada16. (1) Any applicant who has filed an application in accordance with section 30 for registration of a trade-mark that is registrable and that he or his predecessor in title has used in Canada or made known in Canada in association with goods or services is entitled, subject to section 38, to secure its registration in respect of those goods or services, unless at the date on which he or his predecessor in title first so used it or made it known it was confusing with

(a) a trade-mark that had been previously used in Canada or made known in Canada by any other person;(b) a trade-mark in respect of which an application for registration had been previously filed in Canada by any other person; or(c) a trade-name that had been previously used in Canada by any other person.

Effect of registration in relation to previous use, etc.17. (1) No application for registration of a trade-mark that has been advertised in accordance with section 37 shall be refused and no registration of a trade-mark shall be expunged or amended or held invalid on the ground of any previous use or making known of a confusing trade-mark or trade-name by a person other than the applicant for that registration or his predecessor in title, except at the instance of that other person or his successor in title, and the burden lies on that other person or his successor to establish that he had not abandoned the confusing trade-mark or trade-name at the date of advertisement of the applicant’s application.

Rights conferred by registration19. Subject to sections 21, 32 and 67, the registration of a trade-mark in respect of any goods or services, unless shown to be invalid, gives to the owner of the trade-mark the exclusive right to the use throughout Canada of the trade-mark in respect of those goods or services.

REGISTERABILITY OF TRADEMARKSQ: Is this mark registerable? Can A prevent B from registering their mark?

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s.12(1) outlines some barriers to registering an original mark. However marks from (a), (b) and (c) can become registerable if it has become distinctive through the use of the specific wares/services through secondary meaning. Distinctiveness can be achieved through the USE (p.92) of the specific wares and services. *Note: There are also unregisterable marks (ex: official marks, offensitve marks, etc) – p.97, 98

12(1)(a) – “Not Registerable if Surname”12(1)(a) prevents registration of: Primarily merely name or surname of an individual living or who has died within 30 yrs

Standard Oil v Canada – Test to see if it’s a trade-name or surname Coles – applied Standard Oil test. Meaning of word will be determined on average consumer’s basic

understanding of it. Coles (bookstore) denied TM as general public would think it’s primarily a surname.

12(1)(b) – Descriptive Marks12(1)(b) prevents registration of: Clearly descriptive or deceptively misdescriptive of character or quality of wares/services…12(2) – Descriptive marks CAN be registerable if the description acquired secondary meaning.

This can cover words depicted, written or sounded; in both the English or French Language of the:o Character of the wares/services in association… Unilever Canada (misled consumers by

the “better than bouillon” descriptive statement)o Quality of the wares in association…o Conditions of productiono Persons employed in their productiono Place of origin (example – “truly from the Okanagan valley”)

12(1)(c) – Names of wares or services12(1)(c) prevents registration of: “the name in any language of any of the wares/services in connection with which it is used”

Generic marks can be come registerable, if it can prove distinctiveness – so that it doesn’t just describe what the product is but who the source is.

General Foods –instant breakfast” is a commercial term of the product. Can’t register mark under 12(1)(c).

12(1)(d) – Confusing TMsConfusing marks under 12(1)(d) are not registerable. See p.18 for test to see if confusion arises

REMOVING EXISTING TRADEMARK [action against TM owner]Q: Can you invalidate this TM? There are two ways to remove an existing TM from registrar: (1) expungement proceedings under s.45; and (2) s.57 action, with grounds in s.18

1. EXPUNGEMENT – s.45Under s.45, the person can apply to have a TM expunged on the basis that it has not been “in use” (see p.18 framework) in association with the named wares/services at any time for the previous 3 years.

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

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To defend successfully, the TM owner to defend they need to show:a) That the mark has been in “use” (defined in s.4) at anytime within this period; OR

“use” by licensee will suffice as long as there’s license and control by owner (Tommy Hilfiger)b) That “special circumstances” for non-use exist that excuses the TM owner, and expungement

will fail (Gowling)3 factors to consider on determining if special circumstances for non-use are established: (Cited in: Harris Knitting Mills)

1) The length of time during which the TM has not been used. 2) Whether the registered owner’s reasons for not using the mark were circumstances

beyond their control.3) Whether there exists a serious intention to shortly (before the notice) resume use (but

Court in Scott Paper, said this factor was not irrelevant)

2. SECTION 57 ACTIONS ON THE GROUNDS OF s.18s.57 gives the Federal Court jurisdiction to strike/amend TM on the grounds that it “does not accurately express or define the existing rights of the [registered owner] of the mark”. The main grounds for attacking TM registration under s.57 are provided in s.18 of the Act:

18(1) the registration of a TM is invalid If(a) TM was not registerable at date of registration - refers to ss 12 (mark) & 13 (guise)(b) TM was not distinctive at the time proceedings bringing the validity of registration into

question are commenced – loss of distinctiveness(c) TM has been abandoned – intention to abandon is necessary

Promafil – To find abandonment of TM, must show (1) the mark is no longer used in Canada and; (2) there’s intention to abandon the mark.

o Use of new mark can be abandonment of old mark; but small, & unimportant diffs b/w various designs are explainable, and is not abandonment of old mark

(d) And subject to s.17, the applicant for registration was not the person entitled to secure the registration – this refers back to s.16 for basis of registering a mark and s.17 limits recourse of this ground to certain persons and adds further onus to such parties.o If someone used the mark first, then the next person is not entitled for registration (first-

in-use, first-in-right principle) – Quaker Oats

TRADEMARK INFRINGEMENT [action commencing from TM owner]There are various grounds for TM infringement:

1) Unauthorized “use” of the identical TM s.192) Confusing uses of TMs s. 203) Uses that depreciate the value of the goodwill s. 224) Protection against passing off s. 7(b):

Protects users of registered and unregistered TMs

*Note: Overview of “use” in TrademarkSee more p.91-94

Registration S. 4(1) - Used with respect to

goods/wares S. 4(2) - Used with respect to

servicesInfringement

S. 19 – use in a technical senseo Ownership Rightso Use of precise TM by any othero Along with s. 4(1) or (2)

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CONCEPT OF “USE” – p.92 “Use” is important concept to show position (if someone opposes your TM saying they used it first) and also important for expungement. “Use” is defined in s. 4 TMA for wares & services:

Use of a mark on the WARE itself s. 4(1):TM is deemed to be USED in association with WARES if, at the time of the transfer of the property or possession of the waresin 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.

Printed TM materials that come with product (like brochures, pamphlet) may create notice of the association even if TM not marked on the ware itself (Syntex)

Use in the case of SERVICES s. 4(2): TM is deemed to be USED in association with SERVICES,if it’s used or displayed in the performance or advertising of those services.

CASES – “use”Syntex - For notice of association, if it’s not marked right on pkg, then mark must come to attention of transferee in a DIRECT way at the TIME OF TRANSFER.

Printed TM materials that come with product can create notice of association (ex - brochures)Timothy Coffee – mail order catalogues, order forms can be considered “use” under s.4 when used in combination with other materials such as invoices, that creates notice of association CBM Kabushiki - “normal course of trade” can occur when foreign TM owner sells marked ware to Canadian wholesaler, even if it’s not the final consumer

INFRINGEMENT CLAIMS

1. Unauthorized “use” of the identical TM – s.19s.19 concerns with the exclusive “use” of the exact, identical trademark – not just any use.

To make a successful claim

under s.19, there is a 2-part test (Clairol):1. Was the mark in question used in association with wares s.4(1) or services s.4(2)?

If no use under s.4, fails here.2. If found that there was “use” under s.4, then was the mark in question “used” as a identical

trademark under s.19? “Use” as a trademark depends on (1) nature & purpose of the use and; (2) consumer’s perception of Y’s use

Clairol – it was use under s.4, but the use of marks “Miss Clairol & Hair Color” on D’s product were not used to indicate the contents of the package as their own by using the exact trademarks. s.19 fails.

[But there was infringement under s.22 here – see p.105]

2. Confusing “uses” of TMs – s.20, s.6

*Note: Overview of “use” in TrademarkSee more p.91-94

Registration S. 4(1) - Used with respect to

goods/wares S. 4(2) - Used with respect to

servicesInfringement

S. 19 – use in a technical senseo Ownership Rightso Use of precise TM by any othero Along with s. 4(1) or (2)

Rights conferred by registration19. Subject to sections 21, 32 and 67, the registration of a trade-mark in respect of any goods or services, unless shown to be invalid, gives to the owner of the trade-mark the exclusive right to the use throughout Canada of the trade-mark in respect of those goods or services.

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For confusing marks you can go two ways:1. Deem infringement under s.20 with respect to confusing TMs and trade names; or

- In infringement, the TM owner has to show that the use by D is infringement

2. Grounds of opposition for TM registration under s.12(1)(d) or s.16.- In grounds of opposition, the applicant of the TM has to show no confusion (see S&S)

TEST for confusion (see S&S p.107)As per 6(2) confusion arises is it’s likely, in all 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. Factors to consider on whether or not confusion exists are listed in s.6(5):

a. Inherent distinctiveness of the marks - Extent to which they’ve become knownb. Length of time in usec. Nature of wares/services/businessd. Nature of the trade e. Degree of resemblance between two TMs

The test person for confusion is the average buyer who is generally:- An ordinary hurried purchaser; Has imperfect recollection and is; Functionally billingualCASES - confusion- S&S Production - analysis for confusion; Grounds of opposition to registering a TM – p.107- Mattel – In test for confusion, whether a mark is not determinative. Totality of circumstances is

weighed.

3. Uses that depreciate the value of the goodwill – s.22To make a successful claim under s.22(1) there is a 2-part test (Clairol, Veuve Clicquot):1) Was the mark in question used in association with wares s.4(1) or services s.4(2)?

If no use under s.4, fails here.

When mark or name confusing6.(1) For the purposes of this Act, a trade-mark or trade-name is confusing with another trade-mark or trade-name if the use of the first mentioned trade-mark or trade-name would cause confusion with the last mentioned trade-mark or trade-name in the manner and circumstances described in this section.(2) The use of a trade-mark causes confusion with another trade-mark if the use of both trade-marks in the same area would be likely to lead to the inference that the goods or services associated with those trade-marks are manufactured, sold, leased, hired or performed by the same person, whether or not the goods or services are of the same general class.

What to be considered(5) In determining whether trade-marks or trade-names are confusing, the court or the Registrar, as the case may be, shall have regard to all the surrounding circumstances including

(a) the inherent distinctiveness of the trade-marks or trade-names and the extent to which they have become known;(b) the length of time the trade-marks or trade-names have been in use;(c) the nature of the goods, services or business;(d) the nature of the trade; and(e) the degree of resemblance between the trade-marks or trade-names in appearance or sound or in the ideas suggested by them.

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2) If found there was “use” under s.4, determine whether this “use” is likely to depreciate the value of the goodwill attaching to the mark. For this to occur claimant must establish:

A) There has to be a goodwill.o Mark is sufficiently well-known to have significant goodwill

B) And there has to be some sort of depreciation.o Depreciating the value of the goodwill or reducing the esteem of the product

Could be done through direct persuasion and enticing of customers (Clairol) But simple mental association not enough, must show evidence of

depreciation or likelihood of depreciation (Clicquot)

4. Protection against passing off – s.7(b)7(b) of TMA - No person shall… direct public attention to his goods, services or bus in such a way as to cause or be likely to cause confusion in Canada…

Steps to find Passing-off under 7(b)1. Under s.7(b) a registered or unregistered TM must be valid for passing off to be found2. A TM is valid, when it is currently in use to distinguish a parties wares3. To be in “use” of wares the mark must be stamped on the wares themselves at the time of sale

or somehow associated with the wares at the time of sale – s.4(1). To be in “use” of services mark must have been used/displayed in performance or advertising of those services - s.4(2)

4. Actual or potential damage is a necessary element in finding liability under s.7(b). In the absence of evidence of damage the court cannot conclude that there is liability.

CASES- Nissan v BMW – passing off action fails against Nissan; BMW could not prove that notice of

association had been given of the M mark on their car designs

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Web viewA single word is generally not copyrightable. ... “Radio waves transmitted space w/o any artificial guide, ... Unilever Canada