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TESTS
Patents
o Interpret patent to find if it 1) infringes prior patent or 2) it will be approved as a patent
o In order to do claim construction, the entire patent must be read purposively and through the eyes of a skilled person in pursuit of a fair interpretation of what is
being described in the claim
o Must separate essential elements from inessential elements. The essential elements will be included within the patents fence.
o Once the patents claims are purposively construed, and the parameters are drawn, the issue becomes whether the patent is patentable subject matter pursuant to
s2. This is known as the validity inquiry (patentable subject matter, utility, novelty, obviousness s2)

Patent requirements
o Permissible subject matter: not medical, business methods,
o Novel: the invention cant be previously disclosed (unless by inventor special rules) s28.2
o Non obvious: an objective inquiry taking place on the claim date s28.3
o Utility: low bar must merely do what you say it does

the claims achieve the promise in the patent specification: s2

Reproducibility is a factor here

Where cannot prove promise, use doctrine of sound prediction (the application must disclose a factual basis and sound line of reasoning for the invention)
o Sufficiency: must disclose enough for those skilled in the art to reproduce it s27(3)(b)

Must describe the NATURE of the invention (failure = patent failure due to ambiguity)

Must describe HOW to put the patent into operation (failure = patent failure due to insufficiency)
Patent infringement/construction

Infringement
o If the essential elements of the patented invention are present in the thing in issue, then that thing is infringing.
o If theres variation between the infringing patent and the real patent, you need to find out whether the variation is an essential/non essential part of the real patent (whether
it falls within the monopoly as defined by the claims)

There is infringement if all the essential elements of a claim are included in the defendants product or method1. Non essential elements can be varied or omitted entirely
and there will still be infringement

Steps
o Interpreting the patent through the eyes of an ordinary person killed in the art, prior to any validity and infringement analysis, with regard to the intent of the
inventor
o Must read the entire patent, not just the claims
o Use
o Test: whether the inventor has been deprived, in whole or in part, directly or indirectly, of the full enjoyment of the monopoly conferred by the patent
o Possession of a patented object or an object incorporating a patented feature may constitute use of the objects stand by or insurance utility and thus constitute
infringement
o Possession (at least in commercial circumstances) raises a rebuttable presumption of use)
o The absence of intention to employ or gain any advantage from the invention may be relevant to rebutting the presumption of use raised by possession
o Non commercial use

1 Sante, Eli Lilly v Apotex 2009

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55.2 (1) It is not an infringement of a patent for any person to make, construct, use or sell the patented invention solely for uses reasonably related to the
development and submission of information required under any law of Canada, a province or a country other than Canada that regulates the manufacture,
construction, use or sale of any product.
(6) For greater certainty, subsection (1) does not affect any exception to the exclusive property or privilege granted by a patent that exists at law in respect of acts
done privately and on a non-commercial scale or for a non-commercial purpose or in respect of any use, manufacture, construction or sale of the patented
invention solely for the purpose of experiments that relate to the subject-matter of the patent

Interpreting claims
o Not pith and substance but purposive. Look at words as defined and intended to be used in the patent
o claims may cover actions (i.e. methods, processes and uses) in addition to things (i.e. apparatuses, compositions and products)
o cascading claims
o first claim is the broadest, last claim is the most narrow
o the useful claim is at the end concerning an individual compound

Patentable subject matter

o In order for art, process or method of manufacture to be patentable subject matter, there should be a commercial factor
o It is the subject matter defined by the claim and not the invention or what the inventor claims to have invented that must be assessed for compliance with s2

The subject matter defined by the claim is to be assessed on the basis of a purposive construction, rather than on the basis of either a literal interpretation of
the claim or the substance of the invention

A scientific or technological in nature requirement for a claimed art as set out in s2 is vague and should not be used as a standalone basis for assessing the
patentability of subject matter
o
o S2 categories
o Art

The drawing of land boundaries is a professional skill and not a manual art

Methods of medical and surgical treatment are considered to fall outside the manual and productive arts. When applied to the human body, such methods are
not considered as producing an economic result, nor to produce a vendible product

However, methods for diagnosing physical disease or medical conditions in the human body (as long a no steps or surgery or therapy are involved) are
considered to be patentable. Such methods fall outside the fine art of professional skill if they are operable, controllable and reproducible. Methods of
diagnosis (such as determination of immunochemical antibodies in human body fluids) are considered to have practical commercial application

Defining art: Not all methods or processes fall within the meaning of Art art cannot take its broadest possible meaning

Manual or productive arts

o Process (s2):

A particular method of operation in any manufacture / Way in which an operation is performed. Means or method used or available for obtaining a given result

even where the method is known and the materials are old, a process will be patentable where it entails the application of the method to the materials to
produce a new and useful compound or result

you cant get a PROCESS PATENT for new medical/surgical treatment using a pre existing product; methods of medical treatment are not contemplated in the
definition of invention as a kind of process (plus its not economic)

o machine

a machine is the mechanical embodiment of any function or mode of operation designed to accomplish a particular effect
o manufacture

manufacture refers to a process for making articles or material by the application of physical labor or mechanical power. It also defines the article or material
that is the result of such a process

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composition of matter

this is said to include chemical compounds, compositions and substances

the expressions manufacture and compositions of matter include a product, as well as the process by which the product is made. Both may be patentable if
novel, inventive and useful
controversial subject matter
o computer inventions

computer inventions directed to computer related subject matter may be framed as claims to a method, machine or manufacture (products)

computer related subject matter must meet the criteria of s2. if the crux of the invention is non technological, the inclusion of a computer will not be enough to
transform the subject matter and place it within the scope of s2
o software: patent protection for novel software has been sought by drafting claims to the software in combination with computer hardware. However, such claims will
be rejected if the court determines that the crux of the invention resides in the computer program itself Schlumberger
o

Novelty (test) = test for anticipation

o Anticipation is met if the invention is disclosed, either by a single prior publication or the prior use of a product, and if the disclosure enables a PSITA to make/use the
invention (Sanofi)

2 step test

is the disclosure available to the public all in one place?

o A prior, single publication
o That contains all the information needed to produce the claimed invention without the exercise of any inventive skill
o That is so clear a direction that a skilled person reading and following it would in every case and without the possibility of error be led to the
claimed invention
o There is no room for experiments or errors or reference to external documents (Sanofi)
o Note:

must be disclosed to the public (physical invention, journal articles)

the disclosure must be without restriction (if theres a confidentiality agreement, still able to file the patent)

must disclose what it is + how it works

Could a PSIA who has seen the journal article or application, be able to reproduce the patent? (enablement step)

Factors:
o 1) can look at the entire patent (including specification and claims)
o 2) PSIA can use her general knowledge to contain the information in the prior patent
o 3)
o 4) obvious errors/omissions in the prior patent wont prevent enablement if reasonable skill/knowledge in the art could readily correct the
error or find what was omitted

PSIA: Somebody who has encyclopedic knowledge of patent applications and journal articles in the patent field doesnt mean they know
everything; simply everything in the field that the people in the field should already know

There is no room for experiments or errors or reference to external documents. Routine trials are acceptable; however, prolonged or arduous trial
and error constitute undue burden.

the journal article or application doesnt need to contain every element, merely be sufficient for the PSIA to reproduce the patent 2

if the patents subject matter has been disclosed (in one single source) so as to have become available to the public anywhere in the world, the invention is
old and unpatentableAn invention isnt novel if you can look at a single, prior publication and find in it all the information needed to produce the claimed

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Disclosure by prior use o A PSITA, in accordance with known and analytical skills at the time of sale or use, can analyze (reverse engineer) the product, without resulting to using inventive skill,
and can discover the elements of the claims

Obviousness (test)

Is it something that would be obvious to a PSIA? Would the PSIA be able to create the invention without an difficulty? (and thus render a monopoly as unfair)?

Test for obviousness:

o Identify the notional person skilled in the art (what do they do?) and their relevant common general knowledge (what do they know?)
o Identify the inventive concept of the claim in question (or construe it, if necessary)
o Identify the differences between the state of the art and the inventive concept of the claim
o Do these differences constitute steps that would have been obvious to the PSIA (without any knowledge of claimed invention) or do they require any
degree of invention?

Obvious to try (Sanofi)

o In areas where advances are often won by experimentation, an inventive step may not have been obvious per se, but it may have been obvious to
try. A test for pharmaceuticals, but not restricted to pharmaceuticals applies to areas where experimentation wins advances
o Factors for obvious to try include:

Is it more or less self evident that what is being tried out to work?

Were finite number of identified predictable solutions known to PSIA?

What are the extent, nature and amount of effort required to achieve the invention? Does it require routine trials or non routine prolonged
and arduous trials?

Is there a motive provided in the prior art to find the solution the patent addresses?
o PSIA person skilled in the arts

Somebody who has encyclopedic knowledge of patent applications and journal articles in the patent field doesnt mean they know
everything; simply everything in the field that the people in the field should already know

Have common general knowledge of prior art (in addition to the articles)

Difference between claim and state of the art Is that difference obvious (something the PSIA would logically take?) or not?
o Indicators of non obvious

Commercial success people wont pay for something thats obvious

Utility

Must have a practical end to the invention (low bar a toy can be practical)

Reproducibility: has to work, and has to consistently work

o Cant be mere guesswork

Must perform (must do what it claims to do)

o Can work forwards and backwards
o Work backwards have it work consistently and it performs what you claim
o Work forwards sound prediction/scientific basis (doctrine of sound prediction)

Cant guess that its going to work but OK if you have a sound basis/prediction for it
o Cant be a mere placebo effect e.g. x ray glasses

Doctrine of sound prediction (test for granting a patent based on a sound prediction)
o 1) a factual basis for the prediction e.g. testing on animal or related cells that might hold predictive weight with humans
o 2) the inventor must, at the date of the patent application, be able to connect the facts to the desired result i.e. show how this drug would actually treat HIV in
humans

invention
To anticipate an invention, a single publication or single use must reveal ALL details of the publication (cant combine 2 documents to come up with a prior art)

Sufficiency Of Disclosure

Test: does the specification adequately describe the invention to a person skilled in the art?
o the patent specification is addressed to a person skilled in the art it doesnt impose upon the inventor an obligation to establish the utility of the invention

Correctly and fully describe the invention and its operation or use

Set out clearly the various steps to enable any person skilled in the art to make, construct, compound or use it

In the case of a machine, explain the principle of the machine and the best mode in which the inventor has contemplated the application of that principle and

In the case of a process, explain the necessary sequence, if any, of the various steps, so as to distinguish the invention from other inventions
o The patents claims merely describe the monopoly. If the patent as a whole fails to sufficiently disclose the invention, the patent cant be saved by applying the
sufficient disclosure test to a single claim
o The validity analysis takes place BEFORE the severance of invalid claims from the patent

THUS, IF THE DISCLOSURE IS INSUFFICIENT FOR ALL THE CLAIMS, THE PATENT IS HELD INVALID (whole patent valid first, then sever
claims not sever undisclosed claims, then uphold patent if theres at least one disclosed claim)

The lower courts did this backwards: they severed the invalid claims THEN determined if the disclosure met the claim asked for

The courts should have determined if the disclosure met ALL the claims (each monopoly) asked for, before severing invalid claims from the patent
o Cascading claims OK. The skilled reader knows that the useful claim is at the end concerning an individual compound
o

The specification must end with claims defining distinctly and in explicit terms the subject matter of the invention for which an exclusive privilege is claimed s27(4)

Normally, without reference to extrinsic evidence. There is a presumption that the specification accurately reflects the intent and understanding of the inventors.

Patent failed because the presence of other non-useful embodiments meant that a skilled person couldnt identify the invention without further testing

The court is strict regarding the requirement to make full and complete disclosure of the invention. In Pioneer H-Bred, the SCC found that a deposit of seed samples
of the claimed new soybean variety was not sufficient compliance with the disclosure requirements prescribed by s27. Although the public could obtain access to the
samples through the depository and there was evidence that use of depositories was relatively common practice, the court held that the Patent Act required full and
complete disclosure to be made in the specification itself, and that access to other sources was not contemplated by the legislation3.
best mode (machines)

s27(3); requires the specification in the case of a machine, to explain the principle of the machine and the best mode in which the inventor has contemplated the application of
that principle
there is no statutory duty to disclose the best mode of applying the invention, where the invention is not a machine. However, the duty to act uberrimae fides requires that
nothing useful in respect of carrying out of the invention may be withhold, and so requires the applicant to disclose the best mode where applicable.
Arguably, the obligation may be implied by s27(3)(a) to correctly and fully describe the invention
o Selection patent 2 requirements
1) the inventors must have done some empirical research that enables them to discover that certain members of the known class possess special qualities that
are specific, undiscovered and attributable to the class from which they have been selected (they must have something different from the original class).
Mere verification (that is, confirming predict or predictable qualities of known compounds) will not suffice
2) the select compound must have some advantage over the class as a whole. There is no special requirement or specific threshold that the advantage must
meet. The advantage may be a disadvantage to be avoided. Where the evidence shows that the selected compound doesnt have any advantage over
compounds in the previous genus patent, the patent is not a valid selection patent
o For a selection patent to be valid, it should disclose a substantial advantage to be secured or disadvantage to be avoided by the use of the selected members that
was not disclosed in the prior genus patent. There must be a special advantage arising from the selected substances and any advantage, novel property or
use must be fully characterized in the description
o Double patenting (prohibited)
o 2 branches to double patenting:
1) same invention (identical or coterminous claims)

3 The Canadian Patent Act and Patent Rules have since been amended to provide for recognition of biological deposits
pursuant to the Budapest Treaty. However the reference to the deposit must be made in the specification at the time of
filing. It is intended to supplement, not to replace or diminish the written description of the invention that is
contemplated by s27(1)

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2) obviousness double patenting (claims not patentably distinct)
an inventor is only entitled to one patent for each invention (s36(1))

o
general
o Patent specification

Disclosure (inventors duty)

Title, field, background, summary, brief description, detailed description

Governments duty

Claims what the invention has value for defines the monopoly
Who is the inventor?
o Inventor: somebody who came up with the invention or substantially contributed to it.
o Test for inventor:

1) Person who does something new

2) Person puts it into practice

3) Must have evidence that they did so

o Multiple inventors

Test: would a PSIA with the advice of all the people youve named as inventors be able to recreate the invention?

Mustve contributed to the inventive concept (idea some independent thought)

Merely carrying out instructions from other people insufficient

Better to include more rather than less people, otherwise youll have 3P challenging the patent
o

Ownership of patent (rights to sell, license)

to prove a claim against an infringer,

o 1) the plaintiff is the owner of a patent #1
o 2) the patent is valid and enforced #2
o 3) the defendant did that which only the owner could do #3
o 4) they did a thing (use, sell, manufacture) that was contrary to a claim #4

Presumption:
o inventor = first owner.
o If theres more than one owner, they will all be co-owners

Difference between joint ownership & co-ownership

o Joint ownership: both own the whole (100%)
o Co-ownership: each owns a certain percentage (e.g. 25%)

Track the chain of title from inventor to owner

If theres co-ownership, you want to make sure all the parts are accounted for, otherwise some portions of the invention will fall through the cracks

Licensing
o If you have joint ownership, neither party can license the invention unless the other party agrees
o Co-ownership: each can do what they want with their quarter of the property, and cant stop the other from doing what they choose to do with their quarter

Survivorship
o In the absence of agreement, theres a presumption of equal co-ownership

Employee v employer ownership

o Presumption: inventions made by employees, whether made at work or using personal resources, are made by employees themselves

Exception: the job of the employee is to invent

Employer issue: employer thinks they should get a % of ownership because they contributed resources answer: you dont get a % of ownership unless you
contribute to the inventive step
o At CL, independent contractors are presumed to own the fruits of their own labor, unless the contract says otherwise

The employer may be able to lay claim to licensing rights, but not ownership rights
o TEST FOR INDEPENDENT CONTRACTOR

1) degree of control **most important factor

2) ownership of tools

3) risk of profit/risk of loss more like to be an independent contractor

4) integration of employees work in employers business (the work forming part of the business)
grant of patents
o everyone who makes a patent will be granted rights to (s55)

1) make

2) use

3) sell
exceptions to a claim for infringement owners rights
o education 55(6)

even though the patent act doesnt provide that people can use a patent for educational purposes, general purposes, personal purposes, theres an
understanding at CL that you must be allowed to do so

Vaver states that the test is a non trivial use prof thinks its not the size of use, but what its used for

No explicit CL exception but its implied

o subsequent innocent purchaser (someone who, innocently, buys a thing that infringes a patent i.e. the thing was made by an infringer based on the infringement)

prof thinks theres no downstream exception

as a lawyer, be careful that your client thinks shes entitled to a thing because they purchased something from someone
o fixing a patent

if the patent has come to the end of its useful life, you need to seek another copy

if youre just doing minor modifications to keep it going, thats permissible

o anything that falls outside of the disclosure prior art
o products falls outside the disclosure/process

e.g. Schmeiser v Monsanto: Schmeiser didnt go outside the process didnt matter that he didnt apply glyphosate to the seed court thought that he was
inside the process
o gilette defense
o before the patent was issued, I was using the invention then, the way Im using it now
o I dont know why Im infringing it (dont have a specific defense)
o However, I cant be infringing because I was doing the same thing before the patent was issued, as Im doing now
o
defenses against infringements

the plaintiff is not the owner the chain of assignment from the inventor to the owner doesnt lead to the plaintiff
o alternative version: the patent doesnt list all owners

patent invalid
o technical reasons

patent has expired

patents fees not paid (some patents need to be paid at intervals)

o not new lacks novelty

show a prior disclosure/prior art wherein all the steps are displayed OR

disclosure of that particular itself (it leaked out)

o patent is obvious
o

based on existing prior art, any person skilled in the art couldve created it a mixture of known elements
not useful

doesnt work OR

inadequate disclosure doesnt tech what it purports to teach

not an invention/not patentable

a living organism, a recipe, a theorem

Trademarks

Registrability

Is it a trademark?

A mark isnt defined in the TMA but must be VISIBLE

o Therefore: Can be a sign, logo, letters, colors or a combination of these

Not trademarks

motion marks and scents

Use

In order to obtain trademark rights, the trademark must be used by the person for the purpose of distinguishing their goods/services from those of
others (s2). S2 provides that use in relation to a trademark means any use that by s4 is deemed to be a use in association with goods.

See below for difference in use for goods v services (advertising OK)

Distinctiveness
o Without distinctiveness, theres no goodwill or reputation that can be attributed to any particular trade source
o Test: whether a clear message has been given to the public that the wares with which the trademark is associated and used are the wares of the TM
owner and not those of another party (connection between goods and source of goods)
o Test factors

Length of time of use

Nature and extent of use

Nature and volume of advertising

Loss of distinctiveness through

o Lack of use, trademark becomes generic through overuse, multiple users of the same trademark (trademark no longer capable of identifying
a particular source), change in origin of product thats not properly signaled to consumers

Prohibited marks

Clearly descriptive/deceptively misdescriptive - s12(1)(b)

o test: the immediate first impression formed by an ordinary, everyday purchaser of the wares or services
o if the trademark is in common use in the trade for describing the character/quality of the goods, OR is the generic term for them in the
market, the mark is not registerable unless the words have acquired through their use in association with the wares or services, a secondary
meaning so as to have become distinctive of the wares or services of a particular person and no one else. The onus on a person who
attempts to establish a secondary meaning is a heavy one which is almost impossible to prove once it has been established tha thte mark
has been used both as the name of the product and is descriptive of it

lacking distinctiveness s38(2)(d)

o a trademark must be distinctive at the time of registration as opposition may be based in lack of distinctiveness pursuant to s38(2)(d).
distinctive means that the trademark actually distinguishes the goods in association with which its used by its owner from he goods of
others OR that it is adapted to distinguish them (s2). A mark that is adapted to distinguish is one that doesnt depend upon use for its
distinctiveness because its inherently distinctive, like a coined or invented word

Is the trademark in question confusing with a registered trademark pursuant to s6?

o Pursuant to s19(12)(1)(d), a trademark thats confusing with a registered trademark wont be registrable. Additionally, a trademark thats
confusing with one thats previously been used in Canada or was made known in Canada is also not registrable s16(1).

o For the statutory test of confusion, see Mattel. The standard is the point of view of the average hurried customer.
o

Personal names s12(1) - Test for whether a word is a personal name (the perception of the Canadian public test)
o 1) Are the trademarked words a name of a living person or someone who died within the last 30 years, contrary to s12(1)(a)?

this includes people anywhere in the world with that name

Marco Pecci case the name was completely fictitious and registration was allowed because there was no evidence it was a real
person
o 2) is the name/surname primarily merely a name/surname?

primarily merely has 2 components

merely is addressed first: it must be established that the word has a meaning other than as a name

primarily is addressed second: given that a word has meaning as both a name and otherwise, the word will be registrable
if the general public in Canada would equally or more likely respond to the word as a trademark rather than as a
name

Would the general public of Canada find the chief or main character of the word to be a surname or is it principally or
equally a word invented to be used as a trademark?

This test permits words which have other meanings in addition to being names to be registered (but not if the secondary meaning
is obscure Coles)

Exception to personal name prohibition

o 12(2): provides that a trademark may be registered if its been used in Canada by the applicant or her predecessor in title in a manner
which made it distinctive as of the date on which an application for registration is filed. Thus, if a star has used her name in Canada in
association with wares or services, it could be argued that the name has become distinctive and is registrable
official marks

The test for public authority status has 2 parts

o 1) ongoing government supervision

ongoing government influence on the organizations governance and decision-making

incorporation by legislation insufficient

supervision must be conducted by a level of government in Canada

o 2) acting for the public benefit

considers the organizations objects, duties and powers, including the distribution of its assets

legally enforceable duty to the public not necessary

benefit to members is not a fatal factor

Overlap between trademark and patent law

o Doctrine of functionality

prevents functional features from becoming protected elements of registered and unregistered trademarks alike trademark law only
protects non functional features (cant be a backup plan when patent expires)

but if the distinguishing guise is not functional (like Crocs), can use it to protect the distinguishing guise
Infringement (common law or statutory)

Finding confusion / S6(5) (for passing off and s20 infringement)

o Inherent distinctiveness and the extent to which the mark has become known

The more distinctive a mark, the more likely theres confusion

Generic marks can gain distinctiveness over time, therefore mark has become known can defend against genericness of mark
o Length of time the trademarks or trade names have been in use

Trademarks used for a very short time = less likely to find confusion
o Nature of the wares, service or business

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Field of activity canning fish and producing fresh dairy products (even though part of the food industry) can be different fields of
activity, as long as there is no reasonable connection in the minds of consumers between the two activities or products

The further apart in character that different produces or services are, the less likely there will be confusion

Mattel: the product line will be a significant obstacle for even a famous mark to leap over
o Nature of the trade

Mode of carrying on business e.g. same or different business facilities

Factor: consider the class of person seeking access to the services and the manner in which they do it
o Degree of resemblance in appearance or sound or in the ideas suggested by the marks
Passing off (3 requirements) Ciba Geigy
o 1) Goodwill

P must have a protectable reputation in its TM at the date D starts using its impugned TM

Requires distinctiveness of a single source

Isnt necessary that the MT owner carry on business in Canada for there to be goodwill - Orkin
o 2) Misrepresentation causes deception of public

use of confusing TM amounts to a misrepresentation that P is the source of goods, or that D has a business association with or license from
or connection with P

Must cause deception within the actual area in which the goodwill is established (or loss of sales, damage to reputation etc)

Deceptive intent is not required (can be unintentional)

o 3) Actual or potential damage

examples: Lost sales, damage to reputation, loss of control over the use of the get up, loss of opportunity to expand

often these damages are tough to prove, and nominal damages are sough instead

Not strictly necessary to prove monetary loss to establish damages Orkin

S20 test (no need to show goodwill in the mark (registration suffices) unlike passing off)
o 1) the true trademark is registered
o 2) there was a sale/distribution/advertisement
o 3) of any goods or services
o 4) in association with a confusing trademark or trade name
o 5) by someone without authority to use the registered trademark
Confusion (test)

Courts look to factors (c) (e) [nature of goods/businesses and degree of resemblance between the marks) first
o (c) Nature of wares, services, business

are they in the exact same business?

o (e) degree of resemblance between the marks in appearance, sound or idea suggested

look to the dominant or striking aspects of the marks in particular e.g. portions that are unusual or particularly distinctive
Mattel

dont take into account geographic area of use or intended use Alavida

intention doesnt matter because once TMed, owner can use it any way they want

dont take into account the cost of services or likelihood of consumer research (test of impression) - Alavida
o (d) nature of the trade

whats the marketplace like?

Consumers are public or other?

What kind of stores are they sold in (e.g. online v hard copy?)
o (a) inherent distinctiveness and extent to which theyve become known

Distinctive marks get more protection than descriptive ones

o (b) length of time in use

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Case law on s6(5), confusion

Average purchaser test:

o Imperfect recollection, somewhat in a hurry (no time to do research)

Test of first impression

o Not after deliberation
o Doesnt particularly matter if a service is more expensive and thus more likely to elicit consumer research since it is FIRST IMPRESSION
not after research Alavida

Look to the entirety of the mark do not dissect or compare portions of marks

Confusion is inferred actual conflicting use or use in different geographic areas is irrelevant (just pretend they will be used in the same area)

the test to be applied is a matter of first impression in the mind of a casual consumer somewhat in a hurry who sees the mark, at a time when he
or she has no more than an imperfect recollection of the prior trade-marks, and does not pause to give the matter any detailed consideration or
scrutiny, nor to examine closely the similarities and differences between the marks Clicquot cited in Alavida
exceptions to s20 trademark infringements:

infringing trademark is a personal name

infringing trademark doesnt depreciate the goodwill in the trademark AND its not the geographical name of place of business or true
description of the goods
S22 test (depreciation of goodwill) (Veuve Clicquot test)

1) the registered trademark should be USED by the defendant in connection with the goods

2) the registered trademark should be sufficiently well known to have goodwill attached to it

3) the trademark should have been used by the defendant in a manner that was likely to have an effect upon the goodwill (that is,
linkage)

4) the likely effect would be to depreciate the value of the registered owners goodwill (that is, damage)
o s22 action requires s4 use

the plaintiff must show the D used a sufficiently similar mark to the registered mark to evoke in a relevant universe of consumers a mental
association of the 2 marks that is likely to depreciate the value of the goodwill attaching to the registered mark
o to evaluate whether theres enough goodwill in a mark that it could be depreciated includes factors such as:

whether the mark retains its source significance when encountered outside the context of goods and services with which the mark is used
by the TM owner

the marks degree of recognition by customers

the sales volume and market penetration of the associated products

the extent of the duration of advertising and publicity for the mark

the marks geographic reach

the marks degree of inherent distinctiveness

whether the associated products have a narrow or specialized channel of trade and if there are multiple channels of trade
exceptions to s22 infringement
o s21: concurrent use of confusing mark (good faith prior to registration)

bona fide use of confusing by defendant prior to registrant filing trademark application

if court finds its not contrary to the public interest, the confusing name can continue to be used in a defined territorial area with the
possibility of provisions requiring specified distinction from the registered mark
o s32: marks can be territorially restricted

s12(2) marks with acquired distinctiveness may be territorially restricted at registrars discretion depending on the area in which they are
found to have established distinctiveness

12(2) marks: personal names, descriptive marks

explanation: depreciation of goodwill occurs
o 1) when the esteem of goods or prestige of mark decreases OR
o 2) customers are directly persuaded to buy goods bearing the trademark, when they would not otherwise do so

12
o
o

pharma

Test:

3) tarnishing of mark from a negative association

Similarities in size, shape and color of a pill can find a passing off action if the get up has required distinctiveness and copying is likely to lead to
confusion
Likelihood of confusion must be more than minimal

domain names

Both CIRA and ICANN have dispute resolution policies

For both must establish

o 1) the domain name is identical or confusingly similar to a trademark in which the complainant has rights
o 2) the domain name owner has no rights or legitimate interests in respect of the domain name
o 3) the domain name has been registered and is being used in bad faith

Test for suing an almost identical website:

Show that goodwill of its site is strong and widespread enough for deception or confusion to follow from how the defendant runs his site
Canada passed CDRP

Remedies:

Transfer/cancellation of domain name

1 or 2 arbitrators
o can choose arbitrator
o must meet Canadian presence requirements before transfer

o
defenses to infringement trying to get the mark invalidated/unregistered
o Your trademark can be expunged if :

It loses its distinctiveness

Is abandoned (Promafil) s18

Non-registerability at time of registration

expungement (through s18 or s45, based on earlier use or use of a mark varying from registration)

S18 (must show intention to abandon)

registration is invalid if
o I) TM wasnt registrable at date of registration
o ii) TM wasnt distinctive at time of proceedings questioning validity of trademark
o iii) TM was abandoned

abandonment requires more than non use; intention to abandon must be shown using a mark with differences from registered
trademark doesnt equal abandonment

Expungement for use of a mark varying from registration

Still constitutes use if dominant features maintained and differences are so unimportant as not to mislead an unaware
purchaser Promafil
o maintenance of identity and recognizability of dominant features

maintains recognizability

the law must take into account of economic and technical realities. The law of TM doesnt require the
maintaining of absolute identity of marks in order to avoid abandonment, nor does it look to miniscule
differences to catch out a registered TM owner acting in good faith and in response to fashion and other
trends. It demands only such identity as maintains recognizability and avoids confusion on the part of
unaware purchasers
o differences are so unimportant as not to mislead an unaware purchaser

Test for minimum similarity of trademark

13
o
o
o

S45 expungement

Owner must show use within last 3 years

o Use must be in the normal course of trade
o Must show use for each good/service

Goods/services for which use is not shown will be struck from the registration
o 3 year grace period after date of registration

No expungement on technical grounds

Test for use (s45 expungement and initial registrability of trademark)

Consider s4s constituent elements of use in order to establish rights in the trademark because in the absence of use, a registered trademark can
be expunged (s45(3))
o In order to obtain trademark rights, the trademark must be used by the person for the purpose of distinguishing their goods/services from
those of others (s2). S2 provides that use in relation to a trademark means any use that by s4 is deemed to be a use in association with
goods.

Mattel: the mark must be used in connection with the goods for which the party has applied
o Wares v services

4(1) wares:

a trademark is deemed to be used in connection with WARES if, at the time of transfer of the property in, or transfer of
possession of, such wares, in the normal course of trade, its marked on the wares themselves or on the package in which
theyre distributed OR its 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
o its sufficient for the TM to appear elsewhere than on the product itself so long as notice of the association is
given to those for whom its intended
o there need not be a sale for there to be a use as a transfer of possession in the normal course of trade can
amount to use
o for the use of a mark in advertising and promotional material to be sufficiently associated with a ware to
constitute use, the advertisement and promotional material wouldve to be given at the time of transfer of the
property or in possession of the wares

4(2) services

a trademark is deemed to be used in association with services if its used or displayed in the performance of advertising
for such services. 2 elements are thus required in order to constitute use in relation to services
o ONE: the trademark must be used to distinguish services and
o Use or display of the trademark in the performance or advertising of the service in Canada but it may be
sufficient if the TM owner is offering and is prepared to perform that service in Canada. However, its been found
that a mark displayed in the pre-launch advertising of a service thats not yet available doesnt constitute use
o
o Expungement based on earlier use

if an unregistered trademark was in use prior to the registration of a competing trademark, then the owner can apply to have the registered trademark
expunge

can only bring application for expungement based upon earlier se if brought within 5 years of the date of trademark registration
Remedies
o after the issue of the patent infringer is liable for all damage sustained by the patentee s55(1)

damages award to put the patentee in the position she would have been if the harm had not been committed

could include what she would get from sales or royalty (Monsanto)

The maintenance of the identity of the mark by the trademark owner

The recognition of the mark when the new variant replaces the old mark
The preservation of dominant features in the new variant

14
o
o

punitive damages are also possible

before the patent issues, but after publication of the patent infringer is liable to pay a reasonable compensation to the patentee s55(2)
alternatively, the patentee can elect for an accounting of the profits instead

an equitable/discretionary remedy that the court can refuse (for example, if the patentee has unclean hands)

how much D made with patented invention how much D would have made = $$
injunctive relief s57(1)

this is an equitable/discretionary remedy

difficult to receive a preliminary injunction as irreparable harm is difficult to prove as one must show that $ is not adequate

once infringement is proven, patentee receives presumption of permanent injunction

Injunction

Interlocutory
o 1) must demonstrate a serious question to be tried. Whether the test has been satisfied should be determined by a motions judge on the basis of
common sense and an extremely limited review of the case on the merits
o 2) must convince the court that it will suffer irreparable harm if the relief is not granted

irreparable harm either cannot be quantified in monetary terms or cant be cured, usually because one party cant collect damages from the
other (mareva injunction)

the leg of the test where the plaintiff normally fails

o 3) must show that the balance of convenience favors the granting of the injunction

must provide a reason for the court disrupting the status quo

anton piller order

very powerful likened to a search warrant- could be seen as granting police powers to a civil litigant prevents destruction of trial evidence

a pre-trial remedy that gives the plaintiff access to defendants property to search for, retrieve and preserve evidence for later use at trial

has clear uses in trademark infringement, passing off or depreciation of goodwill where physical evidence of the defendants counterfeit
products is necessary to proving the case

brought in an ex parte motion must present both sides (because its ex parte) including points that are detrimental to the moving partys case

test (6 requirements first 4 are important)

o 1) plaintiff must show she has a strong prima facie case against the defendant
o 2) the damage to the plaintiff caused by the defendants alleged actions must be very serious

e.g. the plaintiff will be unable to prove its case without the evidence possessed by the defendant, or a terrible financial impact
o 3) the plaintiff must establish that the defendant has the necessary evidence in its possession
o 4) there must be a real possibility that the defendant may destroy the evidence
o 5) the inspection does not harm to the defendant or its case
o 6) the interest of justice isnt brought into disrepute by the issuance of the order

you could seek both injunctions together: an anton piller to protect your case (from evidence removal) and a mareva (to ensure that the plaintiff receives
compensation of she wins the trial)

Mareva (test)

interlocutory injunction that allows you to freeze another partys assets serves to prevent a party from disposing of its assets or removing them from
the courts jurisdiction

typically brought ex parte

test:
o 1) full and frank disclosure by the plaintiff
o 2) full and fair particulars of the plaintiffs claim
o 3) assets of the defendant within the jurisdiction
o 4) a risk of removal of those assets by the defendant before judgment
o 5) an undertaking by the plaintiff as to damages

15
even if all 5 elements are proven, the court wont issue a mareva injunction if it would restrain the defendant from carrying on the ordinary course
of its business
only granted if the plaintiff has a strong prima facie case against the defendant

Determining infringement Patents

Determining jurisdiction, liability, infringement s54-58

federal court v provincial court

o you can bring an infringement action in provincial court s54(1)
o but only federal court can invalidate a patent and give an order enforceable across Canada

the first step of infringement is construing the claims. Once the claims are construed, it becomes a factual inquiry: was there infringement (Whirlpool)

The PA grants patentees the exclusive right to

o Make the invention
o Construct the invention
o Use the invention
o Sell the invention

For there to be an infringement,

o
the infringing device must take all of the essential elements of the invention

There is no infringement if an essential element is different or omitted (Free world trust)

There may still be infringement if non essential elements are substituted or omitted
o Use: has the inventor been deprived of the full enjoyment of the monopoly conferred by the patent? Consider these principles (Monsanto)

Use in its ordinary dictionary meaning, denotes utilization with a view to production or advantage

All commercial benefits to be derived from the invention belong to the patent holder

Possession of the patented object (or object incorporating a patented feature) may constitute use of the objects stand-by or insurance utility and thus
constitute infringement

Possession, in commercial circumstances, raises a rebuttable presumption of use of the patent

Intention is irrelevant generally irrelevant to determining whether there has been use, but the absence of intention to employ/gain advantage from the
invention may be relevant to rebutting this presumption of use

Stand by use: even if you dont actively use the patent, you can still have standby use of the patent
o Components: where a defendants commercial/business activity involved a thing of which a patented part is a significant component, infringement is established Monsanto

federal court v provincial court

o you can bring an infringement action in provincial court s54(1)
o but only federal court can invalidate a patent and give an order enforceable across Canada
o

Inducing infringement: inducing another to infringe (by selling unassembled portions of a patented invention) is itself infringement

Improvements: creating an improvement doesnt grant rights to the underlying invention s32
o
and so use etc of the improved invention may be infringement

Right to sue: the owner of a patent has the right to sue but licensees cant sue unless the owner is a co-plaintiff or confers the right to sue in the license

remedies

3 monetary + 1 injunctive remedies for trademark infringement

o damages
o accounting of profits
o punitive damages
o injunction

trademark remedies

16
the destruction, exportation or other disposition of any offending wares etc
special interlocutory injunction s53

apply for interim custody of offending wares imported into or about to be distributed in Canada
o trademark: to pass the high bar of an interlocutory injunction, the moving party must link confusion between two competing products to a loss that cant be
compensated by damages
injunctions
o the plaintiff in a trademark action must be entitled to a perpetual injunction and to relief before the trial of the action such as an Anton Pillar order and an interlocutory
injunction. Where the alleged infringement relates to the use of an allegedly infringing trademark on a website, there is authority that an interlocutory injunction may be
made restraining the transfer of the website to a third party
o
interlocutory injunction
o intended to prevent irreparable damage to a plaintiff that would be suffered during litigation
o excessive delays in bringing a motion of an interlocutory injunction may harm the moving partys case
o test

1) must demonstrate a serious question to be tried. Whether the test has been satisfied should be determined by a motions judge on the basis of common
sense and an extremely limited review of the case on the merits

2) must convince the court that it will suffer irreparable harm if the relief is not granted

irreparable harm either cannot be quantified in monetary terms or cant be cured, usually because one party cant collect damages from the other
(mareva injunction)

the leg of the test where the plaintiff normally fails

3) must show that the balance of convenience favors the granting of the injunction

must provide a reason for the court disrupting the status quo
mareva v anton piller
o anton piller order seeks to preserve evidence for use at trial, a mareva injunction seeks to preserve the plaintiffs access to a defendants assets in the event that the
plaintiff is successful at trial
o
o

remedies patents

after the issue of the patent infringer is liable for all damage sustained by the patentee s55(1)
o damages award to put the patentee in the position she would have been if the harm had not been committed

could include what she would get from sales or royalty (Monsanto)
o punitive damages are also possible

before the patent issues, but after publication of the patent infringer is liable to pay a reasonable compensation to the patentee s55(2)

alternatively, the patentee can elect for an accounting of the profits instead
o an equitable/discretionary remedy that the court can refuse (for example, if the patentee has unclean hands)
o how much D made with patented invention how much D would have made = $$

injunctive relief s57(1)

o this is an equitable/discretionary remedy
o difficult to receive a preliminary injunction as irreparable harm is difficult to prove as one must show that $ is not adequate
o once infringement is proven, patentee receives presumption of permanent injunction

Industrial design

17
When you apply a design to an article thats not purely functional
Hybrid between patent & trademark
ID cant be registered if its too similar to a pre-existing industrial design
If registered, youre protection from an identical design
S17 (only examinable section)

Defense of infringement: if copier didnt know it was an industrial design (innocent infringer defense)

But, protection = design deemed to be protected (more powerful than trademark or copyright can get damages)
Plant Breeders Rights
o Certified seed (seed that will reproduce with the same characteristics)
o PBR protects all the progeny descending from the cross-breeding seeds (not the cross breeding seeds themselves, but the results)
Integrated Circuit Topography:
o Physical layout of computer chips not covered in class
o Used by airplane manufacturers
o
o
o
o
o

PATENTS

Patent interpretation, patent disclosure requirements

At the end of the specification, there must be a claim defining distinctly and in explicit terms the subject matter of the invention for which a patent is claimed s27(4)
Whirlpool:

18
o claims should be construed purposively
o the same claim construction should be used for all purposes
Pioneer Hi-Bred 1989
An attempt was made to patent a hi-bred soy bean type plant
SCC
Whether seed deposited with Commissioner was sufficient disclosure?
sufficiency of

The FCA rejected the American notion that patents should include anything under the sun that is made by man
disclosure

Parliament subsequently enacted legislative provisions 38.1 that reversed the basic decision of this case
Pfizer v Teva

whether Pfizer made adequate disclosure to teach patent and fulfill patent bargain
sufficiency of
disclosure
Consolboard v

disclosure requirements
MacMillan Blodel

the patent specification is addressed not to the public, but to persons skilled in the particular art

test for whether theres been sufficient disclosure: whether the specification adequately describes the invention for a PSIA, though, in
the case of highly technical/scientific patents, that person may be someone possessing a high degree of expert scientific knowledge and skill
in the particular patent field

Free World Trust

purposive
construction (v
literal?)

utility:
o
Purposive construction
Look at the words as defined and intended to be used in the patent not really pith and substance analysis claim set out as constructed
Textbook uses pith and substance approach which prof thinks wasnt used in Whirlpool
Novelty/inventive ingenuity/utility

Gibney v Ford
novelty requirement
Apotex v Wellcome
utility sound
prediction
Shell Oil
inventive ingenuity

Not patentable because there was disclosure by public release

Researchers found that AZT was useful for AIDS

Upheld doctrine of sound prediction

Sound prediction = sound basis for believing that the patent would work

Inventive ingenuity improvement on old invention or new uses for old compounds
Selection patent/double patenting

Camco v Whirlpool
1999 FCA
double patents

Sanofi v Apotex
selection patents

two earlier patents were developed in the field of washing machine agitators. The patent that was critical here has the added feature of
flexation. The argument made by the infringer was that this was a case of double patenting
Double-patenting has two aspects:
1) Is it exactly the same invention as you have already got a patent for, but dressed up in different words?
2) is the second patent only a non-obvious extension of the first invention?
In either case, there has to be a distinct invention. Whatever sets the subsequent patent apart must make it a separate invention

selection patents should be valid. For patent 1 (genus patent), you dont have to say how it works or why, thus if the inventor later figures out the
how and why, and finds out how to improve on it, you should grant them renewed protection

an evergreening patent case can file for disclosed compounds

analyzes obviousness

obvious to try
o
Patentable subject matter

19
Harvard College v Canada
higher life forms
Monsanto v Schmeiser
(SCC, 2004)
higher life forms

Schlumberger Canada
1981
software abstract
theorem?

A program was developed for measuring seismic activity

To decide whether there is an invention, you have to look at what is discovered

What the appellant claims as an invention is merely the discovery that by making certain calculations according to certain formulae, useful
information can be extracted from particular measurements

This is not an invention within the meaning of s2

They werent trying to patent the cookie nor the software for enabling the one click. They were simply trying to patent the directness of the one
click process

Court: the definition of a patent states process therefore a process must be patentable. The mere fact that its a business process doesnt
preclude something from being patentable

Didnt approve the patent but sent it back to the Patent Commission

Prof: although theres no longer an absolute rule that business processes cant be patented, theres much more scrutiny of them compared to
other inventions

Monsanto sold a herbicide under the name Round Up Monsanto developed a particular Canola seed that was resistant to Round Up and
they got a patent. Protection would be afforded through a contract requiring the purchase of new seeds each season. Schmeiser had a farm in
Alberta which had the seed in it

Canada v Amazon
business
methods/software

Tennessee Eastman v
Canada, 1974
surgical/medical
methods
professional skill

TRADE SECRETS
Lac Minerals v Corona

Cadbury Schweppes

Shafron KRG

Junior company Corona wanted to enter a relationship with LAC and shared information about a possible gold location as part of the precontractual negotiations. LAC refuses to enter into the contract and buys the property for themselves.
The location of a gold mine is a trade secret and was communicated in confidence. Although never expressly stated, the industry customs
indicated confidentiality was implicit.
FBI had a contract to can Clamato. Cadbury put in a restrictive convenant saying that they could not make a clam/tomato beverage. There was
never express disclosure of the actual recipe, but FBIs privileged dealings enabled them to conclude what the recipe was
3 part test applied:
o 1) Cadbury put time and effort in and Cadbury tried to keep it secret
o 2) it was communicated in confidence
o 3) misused
trade secrets in employer-employee relationships different test for trade secret obligation

20
TRADEMARKS
Trademark as alternative to patent protection
Kirkbi v Ritvik
Lego had a patent on their Lego blocks. When that patent ran out, they tried to TM the appearance of the block (with the rows of bumps on the
top)

overlapping rights (TM and Patents)

doctrine of functionality - you cant TM a utilitarian feature of a product. TM only protects fanciful, non useful, pretty parts of the product

no misrepresentation/confusion as to the source of origin (between Lego Blocks and Mega Blocks)
Test for confusion, transcending wares

Veuve Clicquot

outlines s22 infringement requirements (depreciation of goodwill)

o claimants mark was used in a manner likely to have an effect on that goodwill (i.e. linkage)
o the likely effect would be to lower the value of the goodwill (damage)

dont need to prove that depreciation did occur, but that it was likely to occur

test for goodwill (factors)

Veuve Clicquot = classy champagne, Cliquot Boutique = cheap womens wear

trademarks have co
Pink Panther v United

United has trademarks Pink Panther; applicant has beauty store and beauty products and wants to trademark with pink panther use of
Artists
mark in altogether different areas

6(5) test

famous marks dont prohibit use by others, but may mean that its more difficult to prove that it wont confused however, if the wares are
substantially different, then monopoly will still not extent
Mattel Inc

Mattel opposed the use of the name Barbies in association with a bar & grill restaurant chain in Montreal

can famousness transcend product lines/industries?

test for confusion: casual consumer somewhat in a hurry (imperfect recollection)

did pink panther skew the test making (c) and (d) determinative factors in s6(5) test?
Masterpiece v Alavida

Masterpiece living vs Masterpiece the art of living (two diff marks both used for retirement services). Alavida registers for it, and
Masterpiece seeks to have it expunged

Held: trademark should be expunged unregistered use precedes registered trademark

test for confusion

Geography: Geography not a factor in statutory test for confusion: The two companies were operating in different provinces.

Cost: where there is a strong resemblance btw marks and factors like those in s. 6(5) are present, cost is unlikely to be a big factor.

Perspective: casual consumer, not expert evidence of confusion

Pharma
Can the look of a pill be a distinguishing trademark?

Rule: the relevant consumers (physicians, pharmacists and patients) must relate the trademark to a single source of manufacture, and thereby use the mark to
their prescribing/dispensing/purchasing choices
the products color (pills getup/dressing) is a non traditional trademark and requires a high evidential burden to establish that the mark serves to distinguish one
manufacturers goods from those of others (prof: probably not registrable)

21

Ciba-Geigy Canada v
Apotex

Eli Lilly v Novopharm

passing off
Ciba sold a pharmaceutical (Metoprolol) in a tablet having a particular size, shape and color (i.e. a get up)
Complained that Apotex had mimicked the size, shape and color of the drug
issue: whether in a passing off action involving drugs with similar appearance, a plaintiff is required to establish that the public affected by the
risk of confusion includes not only health care professionals, but also the patients who consume the drugs?
Trademark owner marketed brand name in yellow and green capsules. One expiry of patent, competitors began marketing generic drug in
similar capsules. Trademark owner commenced 3 actions for injunctions restraining competitors from selling, advertising or distributing
capsules similar in size shape and color, on basis that this constituted passing off. Actions were dismissed because they failed to
establish that
o The get up had acquired secondary meaning
o That use of similar capsules would cause confusion in market
Applied Ciba Geigy (Similarities in size, shape and color of a pill can find a passing off action if the get up has required
distinctiveness and copying is likely to lead to confusion. Likelihood of confusion must be more than minimal)
Most consumers would associate the pills appearance with the character of the medicine, rather than the source of the pill. Thus, pills hadnt
acquired required distinctiveness and there was no (significant) likelihood of confusion

Bayer Co v American
Druggists Syndicate

aspirin was validly registered. Trademark had lost its distinctiveness

Pepsi Cola Co Canada v

the Coca Cola

Coca Cola doesnt want Pepsi using the word Cola. Pepsi says Coca Colas TM is invalid
Coca Cola trademark was registered in 1905 in distinctive script form, and re-registered not in distinctive script but in ordinary typewritten form
in 1932

General Motors Corp v

Bellows

P owns the trademark FRIGIDAIRE. The defendant owns the trademark FROZENAIRE. FRIGIDAIRE was the first one placed on the register.
P wanted an order expunging from the register FROZENAIRE as applied to electric refrigerators and refrigeration on the grounds that such
mark was similar to its earlier registered mark FRIGIDAIRE for fridge apparatus
Issues:
o Is Frigidaire descriptive, and therefore should be expunged?
o Is frozenaire objectionable as being similar to Frigidaire?
Descriptive
o The word FRIGIDAIRE is within the immediate category of terms that would first occur to the mind of an alert manufacturer of
refrigerators bent on announcing her goods by means of suggestive words
The question of similarly of marks is to be determined as a matter of first impression
In determining the issue of similarity of a mark with a registered mark under s2, similarity of idea simpliciter isnt the test. the idea must not
only be similar, but must also be of such a nature as to link the article with the person who assumes the responsibility for the character or
quality of the wares.

In determining similarity, the entire circumstances of the trademark must be considered, such matters as price, the class of people
purchasing, the manner of purchase and the marks themselves. Says that buying a fridge is a big decision, so people will think about it
and not be confused --- overruled in Clicquot
Assignments/licenses

22

Licensing is valid under s50 if

o Owner has direct/indirect control of the character/quality of the wares or services
o Use, advertisement or display of the TM by the TM licensee has the same effect as the owners use, advertisement or display of the TM
problems with loss of distinctiveness often occur when a Trade-Mark is assigned or licensed and the message to the public doesnt adequately indicate who the owner is
risk of consumer deception
Transfer of trademark ownership = risk of loss of distinctiveness s48(2)
we allow assignments & transfers, but the requirement that a Trade-Mark be distinctive is paramount s2, Brecks Sporting Goods
transfers that dont adequately communicate the message of a change in source leave the marks vulnerable to a loss of distinctiveness (a transfer can give multiple people
the right to use a trademark create confusion as to what the source of the product is. This confusion can lead to a loss of distinctiveness.

Brecks Sporting Goods v

Magder

Promafil Canada Ltee v

Munsingwear

Mepps was a trademark used for fishing tackle imported from France from French manufacturer, assembled in Canada. Trademark owned
by French manufacturer transferred to American company, who then transferred it to Canadian company

Canadian companys registration of the trademark was challenged on grounds of

issue: source didnt change, but ownership of trademark did. Did this create confusion?

Held: yes
o Canadian trademark statute doesnt explicitly protect against public deception; but can be implicitly found in the definition of
distinctiveness in s2 and in the application of s18
expungement , abandonment

Appellant registered TM (design of penguin) for use in association with clothing. Design for mark on wears was different from the design of the
registered mark. The respondent brought action to invalidate the registration based on non-use, abandonment, and lack of distinctiveness.

Not abandonment TMA tolerates multiple variations of the mark so long as the differences are minor so as not to mislead the purchaser

No abandonment where a registered mark has made a simultaneous use of slightly different variants of the mark provided that the continuing
commercial impression remains the same

Outline NB: best to register all variants

Prohibited marks
Coles Book stores

Cole is a surname and means cabbage but is rarely used. COLES is not merely a surname but is primarily merely a surname and
therefore not registrable
Even though a word is primarily merely a name (therefore it is both a name and an obscure word), it is still unregistrable, just like pure names
What matters is the perception of the average Canadian

Techniquip v Canadian
Olympic Assn

official marks

Found that because there was no motion of action, the mark wasnt prohibited

The public was able to draw fine distinctions between the stick figures

Ontario Assn Architects v

Assn of Architectural
Technologists

clamped down on rampant adoption of public authority trademarks by quasi-public authorities.

The test for public authority status has 2 part

o 1) ongoing government supervision

ongoing government influence on the organizations governance and decision-making

incorporation by legislation insufficient

supervision must be conducted by a level of government in Canada

o 2) acting for the public benefit

23

Orkin Exterminating v
Pestco

Ciba Geigy v Apotex

Kirkbi v Ritvik

considers the organizations objects, duties and powers, including the distribution of its assets
legally enforceable duty to the public not necessary
benefit to members is not a fatal factor

Passing off
common law passing off
definition of use advertising OK?

Trademark infringement was claimed on basis of name even though Orkin was not doing business in Canada.
They showed that people in Canada knew what Orkin Exterminating was and they were able to prove the three elements for passing off
who are the customers of pharmaceutical drugs? Physicians, pharmacists or patients?
-confusion must be avoided in the minds of all customers, whether direct (retailers) or indirect (consumers)
Passing off - s7(b)
the 3 necessary components of a passing off action are:
1) the existence of goodwill

Claimant must establish goodwill in respect of the distinctiveness of the product

Evidence of goodwill solely attached to the techniques and processes which create the product wont do
2) deception of the public due to misrepresentation

Misrepresentation may be willful, negligent or careless

3) actual or potential damage to the plaintiff

John SC and Son v

Marketing International

Patent Act
definition
2
42

27(1)
28.1(1)

invention is any new and useful art, process, machine, manufacture or composition of matter, or any new and useful
improvement in any art, process, machine, manufacture or composition of matter

patent contents (what the monopoly is): patentee has sole right to make, use and sell the product and/or process
covered by the claims of the patent

buying something gives purchaser implied license but cant reproduce it; this would constitute infringement
Commissioner shall grant patent if the application is filed in Canada in accordance with the Patent Act and all other
requirements of Patent Act are met
Claim date in an application for a patent in Canada (the "pending application") is the filing date of the application, unless
there is a previously filed application:
(a) the pending application is filed by a person who
(i) has previously regularly filed in Canada an application for a patent disclosing the subject-matter defined by
the claim, or
(ii) is entitled to protection under the terms of any treaty or convention relating to patents to which Canada is a
party and who has previously filed in any other country that by treaty, convention or law affords similar protection
to citizens of Canada an application for a patent disclosing the subject-matter defined by the claim;
(b) the filing date of the pending application is within twelve months after the filing date of the previously regularly filed
application; and
(c) the applicant has made a request for priority on the basis of the previously regularly filed application.

24
(2) In the circumstances described in paragraphs (1)(a) to (c), the claim date is the filing date of the previous regularly
filed application.

requirements
27(3)

27(4)

the specification of an invention must

(a) correctly and fully describe the invention and its operation/use as contemplated by inventor
(b) set out clearly various steps in a process, or method of constructing, making, compounding or using a machine,
manufacture or composition of matter,
.. so clearly, concisely and exactly
.. as to enable any person skilled in the art/science to which it pertains/is most closely connected to make, construct,
compound or use it
specification must end with claim(s) defining distinctly and in explicit terms the subject matter of the invention for which
an exclusive privilege or property is claimed
what may not be patented

27(8)
28.2(1)

no patent to be granted for any mere scientific principle or abstract theorem

invention must be new (s2): means no previous disclosure of subject matter
(a) anticipation: inventor cannot disclose own invention more than a year before inventor files to public in Canada or
elsewhere this discloses the inventor herself; or by person who obtained knowledge directly/indirectly from application

28.3
32
34.1(1)
43(1)
43(2)

(b) prior art: any disclosure before claim date by someone other than inventor, patent is invalid due to anticipation
invention must not be obvious
patents may be granted on improvements
prior arts claims about patent applications may be filed
form/duration of patents
once issued, patents are valid in absence of evidence to the contrary
patent term

47(1)
47(2)
48(1)
48.1(1)

new/amended patents may be issued for patents that are defective/inoperative due to insufficient description/specification
effect of new patent
patentee may disclaim anything included in patent by mistake
anyone may request re-examination of patent claim by filing prior art (patents, public applications for patents, printed
publications) and paying fee
assignments

49(1)
49(2)

patents may be assigned or bequeathed; absent assignment/bequest, may be granted to personal representatives of
deceased inventors estate
assignees may object to inventors filing patent after assigning rights

25
50(2)

assignments or grants or conveyances of exclusive rights made in Canada must be registered with Patent Office

51

assignments are void unless registered before assignee registers claim

void patents

53(1)
53(2)

patent is void if any material allegation in the patent application is untrue, or if the specifications/drawings contain less
than is necessary to obtain their purported end, and omission is willfully misleading
if 53(1) omission or addition was involuntary error, court shall decide based on facts and patent held valid
patent infringement

54(1)
54(2)
55(1)
55(2)
55.2(1)
56(1)

infringing action to be brought in court of record of province

nothing impairs jurisdiction of Federal Court under s20.9 of FCA
liability for patent infringement = damages sustained by patentee after patent granted
liability for infringement before patent granted = reasonable compensation from time patent is laid open for the public, to
time when patent is granted
not patent infringement for any person to make, construct, use, sell patented invention solely for uses reasonably related
to development and submission of information required under any Canadian law
Patent doesnt affect purchaser who bought before patent issued; cannot reproduce but can sell it

PBRA

General

5.1
o Harvest material

5.2
o rights for other varieties (varieties that are confusingly similar to the protected varieties)

5.3
o users rights
o farmers privilege can only be exclusively used on the farmers land

Term of Plant Breeders Rights (monopoly)

o 20 years

s10.1 Trademarks Act

o Plant breeders marks have trademark value