June 10, 2015
A recent decision of the United States Court of Appeals for the Federal Circuit (M.Z. Berger & Co, Inc., v. Swatch AG  Fed. Cir.) has clarified the standards applicable to determining whether an applicant relying on an “intent-to-use” basis had the required “bona fide intention” to use the mark in commerce when the application was filed. Lanham Act § 1(b).
Prior to amendment of the Lanham Act in 1988 to permit intent-to-use filings, U.S. law required proof of use in commerce at the time of filing the application. For such use-based applications, the applicant must show a “bona fide use of a mark in the ordinary course of trade.” Lanham Act §§ 1(a), 45. However, an intent-to-use applicant must only have “a bona fide intention, under circumstances showing the good faith of such person, to use a trademark in commerce” at a later date.
June 3, 2015
A recent decision of the Full Federal Court of Australia (Bristol Myers Squibb Company v Apotex Pty Ltd  FCAFC 2) has resolved uncertainty about the requirements for an exclusive licence of a patented invention.
The Patents Act 1990 (Cth) provides that an exclusive licensee holds a licence from the patentee to exploit the patented invention, in the patent area, to the exclusion of the patentee and all others. The Act defines “licence” as a licence to exploit, or to authorise the exploitation of, a patented invention.
The Act also provides that an exclusive licensee has standing to commence patent infringement proceedings, in addition to the patentee.
April 29, 2015
The IP bar in Canada has long been awaiting a decision from the Federal Court on the issue of the use of trademarks in a competitor’s metatags, and that decision has now arrived, with what to many is a surprising result. The Federal Court’s recent decision in Red Label Vacations Inc. v. 411 Travel Bags Limited 205 FC19 is in my view a departure from where it appeared that the courts in Canada seemed to be heading.
A metatag is a word or phrase placed in the source code of a website that enables it to be found by search engines to assist in indexing and ranking search results. Metatags are concealed in the webpage’s metadata, and are not visible to consumers.
April 22, 2015
All businesses have valuable intellectual property, not just “tech” focused businesses such as software developers or pharmaceutical companies. However advisers may need to translate for their clients what they mean in practical terms when they use the words “intellectual property”, in order for clients to appreciate its value and take steps to protect it. For example, instead of talking in terms of trade marks and copyright, a business owner might more readily recognise the value in their trading or product names, logos, manuals, systems, standard operating procedures and process instructions. Ideally this type of a conversation would be followed with a recommendation that the business conduct an “IP audit”. This will help a business to identify and prioritise assets for protection.
April 14, 2015
One of the most common provisions in franchise agreements is the “forum-selection” clause. Under these provisions, the parties agree that any lawsuit filed by either one of the parties will be brought only in a court in a specified city and state. The chosen court will almost always be in the city where the franchisor has its home office.
A forum-selection clause is used as a cost-shifting tool in franchise contracts. The franchisor, which presumably has a large number of franchisees in diverse geographic locations, would find it financially burdensome to have to hire different lawyers in a number of different states to defend or prosecute lawsuits against its franchisees. Using the forum-selection provision, it shifts the burden of traveling for a lawsuit (and obtaining counsel in a sometimes-remote forum) to the franchisee.
April 10, 2015
The Canadian anti-spam law (“CASL”) came into effect on July 1, 2014 and includes the ability to levy severe administrative monetary penalties of up to $10 million for one violation of CASL. In March, 2015, the Canadian Radio-television and Telecommunications Commission (“CRTC”) gave its first indication on issuing penalties and addressing violations of CASL by rendering two decisions dealing with CASL violations.
On March 6, 2014, the CRTC issued a notice of violation against Academie Compu.finder (“Compu.finder”) which included an administrative monetary penalty of $1.1 million dollars. Compu.finder had 30 days to pay the penalty, make written representations regarding the allegations or enter into a written undertaking with the CRTC regarding the penalty and compliance steps.
April 9, 2015
Are you operating a franchise system without realizing it? If you are licensing to others the right to use your trademark for a fee, the answer could be yes. Under both federal and some state laws, a business relationship may be a franchise — even if neither of the parties intended to create one.
At the federal level, the Federal Trade Commission (“FTC”) is the body that regulates franchising nationwide. It does so under a law known as the “Franchise Rule,” which creates a structure of regulations that governs franchises in the United States. Under the Franchise Rule, any person or corporation that sells franchises is obligated to provide its prospective franchisees with a disclosure document, known as the Franchise Disclosure Document (“FDD”). The FDD must contain disclosures pertaining to the company, its officers, the expected initial investment, fees, and other aspects of the franchise relationship.
April 1, 2015
The Trademark Clearinghouse (“TMCH”) Sunrise Period for the new gTLD .SUCKS launched March 30, 2015 and is open until May 29, 2015. During this sunrise phase, trademark holders who have registered their trademark registrations with the TMCH will be eligible to register the corresponding .SUCKS domain. The General Availability period opens June 1, 2015, at which time anyone will be able to register a .SUCKS domain.
While .SUCKS is a gTLD meant for gripe sites, what may cause even more justifiable griping among brandowners is that the cost for a .SUCKS domain name registration during the sunrise phase is a very hefty $2,499 (U.S.).
March 30, 2015
The recent amendments to Canada’s Trade-marks Act present many interesting opportunities and challenges to brand owners and their counsel. This article focuses primarily on the impacts for Canadian trademark applications that are pending at the time the amended Act comes into force—that is, applications that have been filed with the Canadian Intellectual Property Office (CIPO) but that have not yet issued to registration.
As a preliminary comment, there is, unfortunately still no clarity about when the amendments to the Act will come into force. When the amending legislation was passed, CIPO initially indicated that the effective date could be as early as late 2014; subsequent projections were revised to mid-to-late 2015. More recent comments from CIPO suggest that mid-2016 is a more realistic timeframe. The delay is apparently related to the magnitude of the IT changes required, particularly as connected to implementation of the Madrid Protocol, to which Canada is becoming a party.
March 18, 2015
IP owners continue to get punishment dished out to them, and not on a consensual basis. A recent decision of the UK’s Court of Appeal has reviewed the rules that dictate when parallel (or “grey”) market product can be rebranded to match the brand used by the market leader in the national market concerned.
The scope of the Court’s powers to effectively ignore what would be a blatant infringement of IP in the name of the single EU market may come as a surprise to some IP owners.