Latest Publications

Share:

Intellectual Property Meets Real Property: Recent Copyright Infringement Cases

Two recent copyright infringement disputes involved the rare intersection of intellectual property with real property. In the first, the Ontario Court of Appeal determined who owned copyright in land surveys deposited with...more

Open Court Principle Means No Secret Proceedings If They Would Directly Affect a Competitor's Rights

Equip: IP Litigation Case of the Week - Courts in Canada are presumed to be open and accessible to the public. Although a party’s commercial interests can be protected, a court will not grant a confidentiality order if...more

Funding Arrangements in Private Litigation Are Private Matters—Not to Be Scrutinized by the Federal Court or the Defendant

Equip: IP Litigation Case of the Week - The cost of litigation can be a non-starter for an intellectual property owner with a strong infringement case. Litigation funding enterprises can help where the cost of litigation...more

Pharma and Biologic Disputes in Canada – New Regulations Take Effect September 21, 2017

Pharma and biologics manufacturers will soon have big decisions to make regarding their pharmaceutical and biological product strategy in Canada. On September 6, 2017, the Governor General in Council, on recommendation of the...more

Stand and Deliver—Federal Court Enforces Trademarks For "Stork" Lawn Signs Announcing New Births

A single product can, in some circumstances, attract more than one form of intellectual property (IP) protection. For example, if functioning as an indicator of source, a product itself can attract trademark protection while...more

No Second Chance: Default Judgment Stands Against Infringers without a Reasonable Explanation for their Delay

Some defendants have the mistaken belief that court deadlines are inherently flexible, and that even a default judgment can be set aside with a simple “mea culpa”. Not so. Without a reasonable explanation—and proof supporting...more

AT&T's GO PHONE Trademark Registration Saved by Roaming Services Offered in Canada

A recent decision involving an AT&T trademark demonstrates how the global reach of technology businesses can sometimes result in a blurring of markets and make documentation of trademark use in Canada difficult to retrieve...more

The Best Defence Is a Good Offence: How to Get Rid of Threatening Trademark Registrations

In Ontario cottage country, locals have been confronted with the registration of the trademark HALIBURTON, the name of the county in which they operate. The registration may threaten uses made by other businesses in the area....more

Going to California—Google Asks U.S. Court to Declare Supreme Court of Canada's Global Injunction Unenforceable

The Supreme Court of Canada recently confirmed the availability of a novel form of worldwide injunction whereby Google, a non-party to the litigation, was required to block worldwide access to websites operated by a...more

Pharma and Biologics Disputes in Canada—Big Changes for Big and Small Molecule Litigation

The patent litigation that propels generic and biosimilar products to market will soon change dramatically. July 15, 2017, marked the release of long-awaited proposed amendments to the Patented Medicines (Notice of...more

University's Infringing Reproductions Fall Short of Fair Dealing

The fair dealing user right, as an exception to copyright infringement, has its limits. The fact that a use falls within an enumerated purpose under the Copyright Act is no guarantee of immunity from infringement. To avoid...more

Procure and Enforce—Canada's Highest Court Hands IP Owners Two Wins in Three Days

The Supreme Court of Canada has issued two IP decisions in the span of three days—both of which spell victory for IP rights-holders. One case confirms the availability of a novel form of worldwide injunction where a non-party...more

United Airlines Grounds Complaint Website

A joke does not work if it needs to be explained. While some complaint and parody websites may constitute fair dealing, close copying of trademarks and copyrighted works, combined with mean-spirited commentary, will not fly....more

Captain Morgan Defeats Admiral Nelson in a Rum Branding Battle

The victory in the fight between two rum competitors demonstrates that unregistered trade dress rights are alive and well in Canada, admissible survey evidence remains a useful tool for proving confusion, and a competing...more

Federal Court Strikes Patent Infringement Action Where Plaintiff Could Not Articulate How Its Rights Were Infringed

A patent owner cannot sue in the hopes that the necessary facts to support infringement will emerge during discovery. From the outset, a plaintiff must be able to frame its rights and how those rights have been infringed....more

Tips to Set Your Business up for Successful IP Litigation

Delay in asserting IP rights can be detrimental to obtaining quick injunctive relief, and evidentiary gaps can make your case a non-starter. It is therefore important for a business to be prepared to advance claims against...more

US Supreme Court Ruling on Exhaustion of Patent Rights is Welcome News for Canadian Exporters of Refurbished Goods

In the United States, once a patentee has sold its product—whether domestically or internationally—its patent rights in that product are exhausted; the patentee can no longer use patent law to control refurbishing or resale...more

Evidence of Actual Confusion Is Not Determinative in Trademark Infringement Cases

To succeed in a trademark infringement case, a plaintiff must prove a likelihood of confusion—that a casual consumer would likely be confused into thinking the source of the defendant's products or services is the same as or...more

Unique but Not Distinctive–Colour and Shape Trademark Applications Rejected for Asthma Inhalers

Trademark protection for the shape and colour of pharmaceutical products remains elusive. Even if the appearance of a tablet or inhaler is unique, a trademark registration will be rejected without evidence that physicians,...more

Higher Costs Awards for the Winning Party in Federal Court IP Cases

In Canada, the losing party pays the winner’s litigation costs. For years, costs awards were assessed in accordance with a tariff and were generally inadequate. The Federal Court's recent trend in awarding lump sum costs...more

IP Trials with Less Tribulation: New Federal Court Guidelines Promote Cooperation and Efficiency

This week's most noteworthy development is not a single case—it is a practice direction that will govern how all complex intellectual property cases will be tried. The new Trial Management Guidelines formalize trial...more

An Obligation to Compensate a Patentee for Infringement May Not End When the Patent Expires. For the First Time, the Federal Court...

An infringer's liability to compensate a patent owner may not end when the patent expires. The Federal Court has made a novel award of "springboard" profits, requiring an infringer to account for profits it made even after...more

Just How Predictable Must the Invention Be to Lose Patent Protection? Depends on the Inventive Concept

Only a true invention can be patented; a patent claim to an invention is not valid if the invention was obvious. Assessing obviousness can be thought of as bridging the gap between two cliffs: on one side is the existing...more

Yes—Copying Photographs from the Internet Can Get You into Trouble

Although it happens all the time, reproducing photographs found on the internet for use in business is fraught with risk. Businesses should only copy images where there is clear permission to use them—or face a substantial...more

Why Brand Owners Need to Keep a Paper Trail

Good evidence wins cases. In a trademark opposition, evidence demonstrating how and for how long a mark has been used in commerce (for example, on hangtags, labels, packaging, signage, invoices and online platforms) can be...more

31 Results
/
View per page
Page: of 2

"My best business intelligence,
in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up using*

Already signed up? Log in here

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.