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What the IP Profession is talking about

I am back from my duties at the Annual Convention of the Intellectual Property Institute of Canada, which took place October 11 through 13 in Niagara Falls. I have always indicated that what is happening in the profession is reflected in the topics dealt with at the conference. The following topics were addressed at the conference, listed by title and followed with a brief explanation:

IP and Innovation – A fireside Chat with Innovation Science and Economic Development Parliamentary Secretary David Lametti
This session discussed the Liberal Government’s Innovation Strategy

The College and Professional Ethics:  What it means for IP Professionals.
This session discussed the creation of the equivalent of the Law Society for the IP Profession, in order to maintain high standards.

The Law of Utility in Canada – Where are we now and where are we going?
This session discussed the recent Supreme Court of Canada AstraZeneca Canada Inc. v. Apotex Inc. decision which discredited a previous line of cases that invalidated patents for useful inventions that did not deliver everything “promised”.

Post-Final Practice – Understanding your options at the end of the line.
This session discussed options when a patent application is met with a “Final” rejection.

Who’s Offended? – A review of the Laws on Obscene, Scandalous, and Immoral Marks in Canada, the U.S. and the EU.
This session discussed the balance between the protection of the public, freedom of commercial speech and property rights, in light of recent U.S. developments with the Slants Case and the Washington Redskins Case.

Sounds, Scents, Flavours, – an Update on Non-Traditional Marks in Canada, the US and EU.
This session discussed new ways in which businesses are distinguishing their products in the market place.

Updating Your Toolkit for Fighting Obviousness Issues Post-Sanofi
This session discussed ways of countering a rejection by a Patent Examiner that an invention is “obvious”.

Use it or Lose it: Non-Use Cancellation Proceedings
This session discussed ways of removing from the Register Trademarks that are no longer in use and the evidence that must be filed to retain a Trademark on the Register when a notice to prove continuing use is received.

Trademarks, Copyright and VQA: Branding and Marketing Issues for Wineries in Canada
The Niagara region has a number of significant wineries.  This session provided an opportunity to place industry representatives on a panel for an in-depth discussion of the Intellectual Property Issues faced by wineries.

Women in IP Networking Group Reception
This reception was intended as a networking session for women involve in Intellectual Property, men were invited.

Canadian Intellectual Property Office Update
An address with a question and answer session was presented by the Commissioner of Patents, Registrar of Trademarks and Chief Executive Officer of the Canadian Intellectual Property Office, Johanne Belisle.

Keep it or Share it:  Confidential and Proprietary Information in Joint Ventures
This session discussed the area of trade secrets, and issues around divulging trade secrets in commercial negotiations.

Canada’s Innovation Strategy
This session dealt in much greater depth with the Government’s Innovation Strategy and the public consultations that were held to get public input on the Innovation Strategy.

Copyright: Fair Dealing and Technological Protection Measures
This session discussed fair dealing as an exception to copyright infringement and the prohibition against circumventing technological protection measures.

Updates from the Patent Branch
This was an address with a question and answer session by Agnes Lajoie, the Director General of the Patent Branch and Assistant Commissioner of Patents.

Updates from the Trademarks Branch
This was an address with a question and answer session by Mesmin Pierre, the Director General of the Trademark Branch.  The profession was updated on a number of changes that are scheduled to take effect in 2019.

Talking to Your Client – The New Conversation
Corporate executives who hire Intellectual Property Professionals gave their views on how the IP profession can communicate better with their clients.

Top Intellectual Property Cases of the Year
This session dealt with the 10 top cases in each of the areas of Patents, Trademarks and Copyright/Design.

.CA Domain Name Disputes

The Canadian Internet Registration Authority (CIRA) has a mechanism for resolving domain name disputes.  This domain name dispute resolution mechanism is available to all Trademark owners. A CIRA panel hearing a domain name dispute has the power to order the transfer of a domain name from an offending party to a complainant.

It is important to note that once a CIRA panel has made a ruling in a first proceeding, there is nothing in the rules of CIRA that prevents a second proceeding from being initiated relating to the same domain name issue involving the same two parties.  This is exactly what happened concerning the Trademark PicMonkey.  A first CIRA panel ruled against the complainant, as there was inadequate evidence on two keys issues.   The first issue was a lack of evidence that the complainant had used the Trademark in Canada prior to the offending party registering their domain name.  The second issue was a lack of evidence that would tend to show “bad faith” on the part of the offending party.

The complainant consulted a legal firm familiar with domain name disputes.  It was determined that there was sufficient evidence on those two key issues.  Prior to the domain name being registered by the offending party, the complainant’s PicMonkey site had been accessed over 41,000 times by Canadian IP addresses.   There was also evidence that the offending party was a “cyber-squatter” who tied up domain names to a number of well-known third party brands. A second proceeding was launched and a second CIRA panel ruled in the complainant’s favour ordering the offending party to transfer the domain name to the complainant.

There are a number of lessons to be learned from the PicMonkey experience.  The first lesson is that it is critical that a Trademark owner place before any CIRA panel the best possible evidence.  A CIRA panel will only order the transfer of a domain name when the evidence is clear.  The second lesson is that, if you are a complainant who has handled a first CIRA proceeding yourself and messed up, it is possible to retain competent legal counsel and launch a second proceeding with better evidence.

Breaking News for Online Businesses

There have been some recent court decisions that will be of interest to online businesses. Once an “online” business is successful, it is just a matter of time before competitors try to divert traffic intended for the successful business to their own competing websites.  One way of diverting traffic is through the use of websites with similar names.  With the rapid rise of social media, such as FACEBOOK, aggressive competitors are also establishing social media accounts with similar names.   Another way, a more legitimate way, is through the acquisition of “sponsored” links, such as GOOGLE ads.   These sponsored links appear in the search results whenever keywords associated with the successful business are entered into the search engine.

The old news is that in the case Michaels v. Michaels Stores Procurement Co, decided March 15, 2016, Canada’s Federal Court of Appeal stated that the Federal Court had jurisdiction to order the transfer of a confusing domain name.  The new development is that in the case of Thoi Bao Inc v. 1913075 Ontario Ltd, decided December 7, 2016, Madam Justice McDonald of the Federal Court went a step further and ordered the defendant to transfer to the plaintiff his FACEBOOK account, his TWITTER account and “any other social media accounts under his ownership or control” that were confusing with the business of the plaintiff.   In light of this decision, a successful business now has a remedy to use against competitors who are diverting traffic through the use of confusingly similar social media account names.

The other development relates to “passing off”, the court-created protection against trade misrepresentations.  In order to be successful in an action for “passing off”, among other things, the plaintiff must show that there has been misrepresentation creating confusion in the public.  The old news is that purchasing sponsored links, in and of itself, does not constitute “passing off”.   This was established in the Federal Court decision in Vancouver Community College v. Vancouver Career College (Burnaby) Inc., in which the Trial Judge held that the time frame for determining whether there was confusion was when the consumer reached and viewed the defendant’s website.   The Trial Judge found that there was nothing confusing at the defendant’s website and thus that any confusion was not sufficient to meet the requirements for “passing off”.  The new development is that on January 26, 2017 the Federal Court of Appeal reviewed the Trial Judge’s decision.  The Appeal Court determined that the Trial Judge had erred and that the correct time to assess confusion was when the consumer viewed the search engine results page.  The Court of Appeal noted that the sponsored link merely indicated VCCollege.ca, without any content that would distinguish the defendant’s business from that of the plaintiff.  In the circumstances, the sponsored link was confusing and constituted passing off.  If your successful business has been the target of intentionally confusing sponsored links, you now have a remedy.  Conversely, if your business pays for sponsored links, you must ensure that your sponsored links identify your business and are not confusing.