The US Copyright Office has introduced a "small claims court" for resolving claims. The three-member expert tribunal is designed to be faster, user-friendly and less expensive than court for claims less than $30,000 US. Both parties must agree to participate and injunctive relief is not available.
On June 24, 2022, amendments to the Copyright Act came into force which extend the basic term of copyright protection in Canada to the life of the author plus 70 years. This amendment was a term of the 2018 NAFTA trade agreement and brings Canada into harmony with the law in the US and Europe.
In recent amendments to the Trademarks Act, a new provision was introduced for the summary expungement of official marks. In anticipation of the amendment coming into force, CIPO has issued a DRAFT practice notice for public comment. While overall beneficial, new risks are raised for official marks.
In a pilot program intended to address the major backlog of pending trademark applications, the Canadian Intellectual Property Office ('CIPO') has started using artificial intelligence to conduct preliminary examinations of the associated goods and services identified in pending applications
The Canadian Intellectual Property Office proposes to increase to its fees again. The proposed increase is a 25% jump for most fees. This is in addition to fee increases of at least 25% for trademarks that were introduced in June 2019. One notable exception are small entity fees for patents.
On December 1st, 2021, the Canadian Intellectual Property Office registered an artificial intelligence tool as a co-author for an artistic work. This marks the first time a non-human has been attributed copyright authorship in Canada and raises multiple policy questions.
The Province of Ontario has quietly passed a regulation to create a new gov't agency with the mandate to increase public access to resources related to intellectual property, including the development of curricula for our post-secondary institutions. This is a welcome initiative.
On June 28, 2021, the College of Patent Agents and Trademark Agents (CPATA) was established as the professional regulator of patent and trademark agents in Canada. Overall, the new requirements are expected to lead to the consolidation of IP services in law firms that specialize in such services.
In Canada, many government fees payable with respect to trademarks are subject to annual adjustments. As of January 1, 2022, some fees will be reduced by 0.2%. Unfortunately, this means that the sums payable are often irregular sums making quick calculations of filing costs challenging.
As of January 1, 2022, Michele Ballagh will carry on practice as BLAZE IP. Michele's address and telephone number will remain unchanged, but her business name, email and web site have been updated. Please update your records.
The USPTO is raising its official fees for trademark matters effective January 2, 2021. This includes fees to file new applications which will increase from $275 US to $350 US per class for applications that do not use a standard pre-approved identification of goods and services.
Even where there is no likelihood of confusion, a registered trademark can be protected from "depreciation" per section 22 of the Trademarks Act. This additional protection can be valuable where others try to trade on the goodwill in an established brand to promote a business in a different market.
Since legislative amendments came into force June 17, 2019, trademark examiners may object to an applied-for-mark on the ground that the mark is “not distinctive”. This is a controversial objection which, if raised, can increase the cost of a typical trademark application and the risk of rejecti
In April, the appeal decision was released in an ongoing copyright dispute between York University and Access Copyright. The appeal resulted in divided success and, subject to any further appeal to the Supreme Court, may be a pyrrhic victory for both parties.
Domain name disputes are common because many business owners do not understand the technology or appreciate the significance of their administrative choices. Two recent decisions in different forums show that, when disputes arise, there are strategic options to recover control over domain names.
The World Intellectual Property Organization (WIPO) has recently launched WIPO PROOF; a new online business service, that provides tamper-proof evidence of the existence at a point in time of any digital file, and that it has not been altered since that time.
The United States Patent & Trademark Office (USPTO) has introduced a pilot program that would prioritize the examination of patent applications for products or processes that are subject to U.S. Food and Drug Administration (FDA) approval for use in the prevention and/or treatment of COVID-19.
Have you been waiting for ages to hear back from the Canadian Intellectual Property Office about a pending trademark, patent or industrial design application? You are not alone. CIPO confirms that wait times have increased in almost all areas of practice, but particularly for trademark applications.
Amendments to the Patent Act came into force October 30, 2019 which are intended to shorten the time period for the prosecution of new applications and to simplify the administrative procedures. Critically, applicants no longer have the automatic right to reinstate abandoned applications.
When sending a “cease and desist” letter, the goals may be straightforward but the risks are not always clear. This article will review the risks that can arise for both clients and their legal counsel when sending demand letters alleging the infringement of intellectual property rights.
As of June 17, 2019, trademark application and renewal fees will become dependent upon the number of Nice Classes that apply to the goods and services in the application/registration. For the unwary, the statutory date for calculating the applicable fees creates the potential for unexpected fees.
It is a misconception a trademark registration, patent or industrial design authorizes use of the subject matter in the jurisdiction(s) where issued. Unfortunately, this is not true and can be the subject of considerable confusion. The use of trademarks containing regulated words can be restricted.
As of June 17, 2019, Canadian businesses will be able to file trademark applications in other countries through the Madrid international system for the registration of marks. While an exciting opportunity, it is a complex and confusing system. The assistance of knowledgeable counsel is recommended.
The USMCA free trade agreement proposes to introduce some significant changes to the law governing intellectual property in Canada.This article will review the proposed changes in each field of intellectual property law.
On October 17, 2018, the marketing and sale of cannabis will no longer be a criminal offence in Canada. However, the government has done its best to remove the appeal of cannabis products by introducing a strict regulatory regime to govern the promotion and packaging of such products.
Privacy law is undergoing rapid development in our digital age. Longstanding assumptions need to be re-evaluated. Persons and businesses that routinely photograph or film individuals in public spaces should consider requesting written consents - especially for any commercial publication.
In 2014, the government passed legislation to make sweeping changes to trademark law in Canada. After several years of consultation, the changes are now expected to come into force in early 2019. Businesses should consider steps to avoid the increased fees and to protect their brands before 2019.
When business submit documentation to government authorities or use documents obtained from government authorities, the question as to who owns copyright is often overlooked. As governments adopt new technology to disseminate such documents, there can be unexpected consequences for business.
Adopting trademarks with geographic significance requires careful consideration. The recent implementation of CETA has expanded protection for appellations of origin beyond wine and spirits to other food and agricultural products, including cheeses, oils, spices, cured meats, vinegars and fruit.
On July 12, 2017, the Federal Court held that Copyright Board Tariffs are mandatory and York University's "Fair Use Guidelines" were not fair. As a result, York could not rely on the "fair dealing" exemption for educational purposes under the Copyright Act to avoid the fees due under the Tariff.
On June 28, 2017, the Supreme Court released its decision upholding a global injunction requiring Google to de-index certain web sites to prevent the sale of counterfeit goods via the Internet. While controversial with the public, the decision is less controversial from a legal perspective.
On June 30, 2017, the Supreme Court released a seminal decision in Canadian patent law which struck down the controversial "Promise Doctrine" that has made it more difficult to secure valid patent protection in recent years. Canada is now back in step with international patent utility standards.
When defining the intellectual property rights granted by a contract, it is prudent to reference the language used in the relevant legislation for the subject IP. Each form of IP has a different bundle of rights. If different language is adopted, it is wise to include a definition in the contract.
On July 1, 2017, CASL provisions establishing a private right of action come into force. This will mean that any affected individual may sue an organization as well as its officers, directors and agents for CASL violations. Class actions are expected to follow. Compliance is more critical than ever.
In the modern digital economy, consumer confidence can be especially valuable to a business so stretching the truth in advertising can be risky. Two recent cases show that misleading advertisements about QUALITY and SALE PRICE can have consequences. Public interest favours honest business practices.
The Quebec small claims court has provided a timely reminder that photographs posted on social media are not "free" for the taking. In law, ignorance is not an excuse. At the very least, the author should be recognized and some due diligence undertaken to obtain permission from the copyright owner
The Government of Canada has launched a new interactive game which explores IP strategies for a couple of simulated business ventures. It demonstrates the business value of IP and its fun! At least we thought so...
Images of Canadian coins and bank notes CANNOT be freely reproduced in marketing and advertising materials. To avoid the risk of criminal and civil sanctions, it is advisable to seek permission from the appropriate authority BEFORE reproducing images of coins or bank notes for any purpose.
With the explosion of social media and online retailers, online reviews and endorsements have become an important tool for both consumers to research purchases and businesses to advertise. But when the line between independent reviews and advertisements is blurred, there can be legal consequences.
In November, the Supreme Court will hear an appeal respecting the controversial “promised utility doctrine” that has recently threatened the validity of many patents issued in Canada. This article explains the controversy and its impact on international patentees like the pharmaceutical industry
This exception was introduced into the Canadian Copyright Act in 2012 for user-generated content that is derived from pre-existing works, like a "mash-up" of video clips from multiple sources. It is often forgotten that such content must satisfy a number of conditions to qualify for the exception.
Health Canada recently launched a public consultation respecting the regulation of "self-care products" in which they propose to require a new disclaimer on labels indicating that "low-risk" products have not been reviewed by Health Canada. This includes cosmetics, shampoo, sunscreen and vitamin
In Canada, exclusive rights in trade secrets and confidential information may be owned indefinitely so why do so many non-disclosure agreements in circulation have expiration dates or time limits? The answer is in US law and represents a dangerous trap for the unwary trying to do business in the US.
Contrary to the expectations of many, the mandatory dispute resolution process for domain name disputes cannot be used to successfully resolve many cases of trademark infringement that involve domain names. Instead, the parties must still seek relief from a court of competent jurisdiction.
On June 1, 2016, the Federal Court granted an interlocutory injunction prohibiting five named defendants from continuing to sell and promote the sale of “preloaded” TV boxes. The court also granted the plaintiffs the right to add defendants to the action and injunction order as deemed necessary.
Where use of a mark does not enable consumers to recognize goods or services as originating from a particular business, it may not constitute use of the mark as a trademark. It may be "fair use" of the trademark or the mark may not qualify for trademark status. Context is central to the analysis.
A host of legal issues can arise in the operation of a web site. To avoid compromising the value of this virtual property, it is important for businesses to understand the various IP components of its web site. In this article, we review the typical IP issues that arise and how to manage the risks.
In anticipation of adopting several international treaties, CIPO has recently made it possible to classify goods and services for trademark applications according to the Nice Agreement. This article explains the expected impact of this change for Canadian trademark applicants.
The fundamental goal of the various PPH initiatives is to provide predictable and fast prosecution of patent applications and to mitigate the workloads of the national patent offices. This article provides a summary of the various PPH initiatives and explains how they improve upon on the PCT system.
Astroturfing is the practice of circulating fake endorsements of a business or product via the Internet. The practice is illegal and penalties can be substantial. Bell Canada recently agreed to a $1.25 million penalty for reviews and ratings posted on iTunes and Google Play by its employees in 2014
To the surprise of most, Warner/Chappel Music Inc. claims to own title to copyright in the lyrics for the song "Happy Birthday to You" and has, until recently, collected royalties for their use in film productions. However, this revenue stream MAY have finally been cut off by a California court.
In light of recent Supreme Court decisions and Copyright Act amendments, many believe collective societies are asking to be paid for copies when no royalty should be due. This article summarizes these legal developments and how they were recently applied to approve a new tariff for Access Copyright.
Under new federal legislation, (1) communications with patent and trademark agents are now confidential and protected the same way as those with a lawyer; and (2) extensions of time to file documents will now be granted by CIPO in the event of "force majeure" events like ice storms and blackouts.
The CRA takes the position that, in general, crowdfunding funds received for the development of a new product by a business is taxable income unless the taxpayer can show that the funds are a loan, a capital contribution or another form of equity.
Unlike the US, Canada does recognize actors (and other performers) as enjoying copyright in their performances. Canada also recognizes that performers enjoy "moral rights" in their performance and these rights may restrict how the film producer may ultimately use a performance.
Ontario's Protecting Child Performers Act, 2015, S.O. 2015, C.2 received royal assent on May 5, 2015. It will come into force in February 2016. In sum, this legislation sets minimum standards for all persons under the age of 18 years who receive monetary compensation for their performances.
After repeated assurances from the federal government that recent amendments to the Trademarks Act and the Patent Act would be implemented by late 2015 or early 2016, it now appears that these amendments may not be implemented before 2017.
On December 16, 2014, amendments to the Canadian Industrial Design Act received royal assent. When implemented later in 2015 or early 2015, the amendments will clarify and rationalize industrial design practice in Canada and bring it into alignment with international standards.
In January 2015, Michele Ballagh attended the Entertainment Law Certificate program offered by the professional development program at Osgoode Hall Law School. A natural extension of our existing intellectual property law services, we look forward to working with clients in this new field.
On December 16, 2014, amendments to the Canadian Patent Act received royal assent and are expected to be implemented in late 2015 or early 2016. The amendments contain several measures intended to increase flexibility in the patent process and provide relief from minor omissions and errors.
The World Intellectual Property Office (WIPO) recently issued a warning that an entity named the "World Intelligent Property Office" has started to send misleading "invoices" to the holders of international trademark registrations recorded under the Madrid Protocol. If an applicant retains an ag
The potential for conflict between registered trademarks and common law trademarks is longstanding. Recent amendments to the Trademarks Act have drawn renewed attention to the issue. Some have even alleged that the amendments are unconstitutional. This article will try to explain the controversy.
On October 2nd, the federal gov't took two new steps in its ambitious plans to overhaul protection for trademarks in Canada: (1) CIPO released new trademark regulations for consultation; and (2) its anti-counterfeiting act passed through final reading in the house AND first reading in the senate.
In recent consultations with the profession, the Canadian Intellectual Property Office has advised that it now expects to fully implement ALL the recent amendments to the Canadian Trade-marks Act at the same time, likely in late 2015 or early 2016.
Michele has organized and will be participating in a presentation by the Hamilton Law Association to its members on September 16th reviewing dramatic changes to Canada's trademark registration process.
In pending legislation subtitled the Combating Counterfeit Products Act, Canada is proposing to introduce new border control measures that will allow IP owners to register their trade-marks with the Canadian Border Services Agency to be pro-actively monitored.
Canada’s trade-mark laws are expected to undergo extensive and significant amendments over the next 12 -24 months. Parliament recently passed legislation to implement the Nice Agreement, the Singapore Treaty and the Madrid Protocol. Implementation is suspended until new regulations are ready.
Canada’s trade-mark laws are expected to undergo extensive and significant amendments over the next 12 – 24 months. This post will review the international registration system to be introduced with implementation of the Madrid Protocol – likely in 2015 or later.
The "notice and notice" regime will require ISP's to receive and deliver notices of alleged infringement to their account holders. Introduced in 2012, implementation of this regime was delayed to consider whether regulations were required. But now the regime is coming into force in January 2015.
In this article, we will address an often overlooked form of intellectual property protection that is available to all types of businesses, namely, industrial designs. An industrial design can protect the ornamental appearance of many articles from chairs to air fresheners to screen displays for ...
Almost all businesses have several trade-marks that deserve the protection provided by a trade-mark registration. However, a new business often has little income and many expenses so filing multiple trade-mark applications at the outset can be prohibitively expensive. In this issue, we will discu...
On November 7, 2012, most provisions of the controversial Copyright Modernization Act (“CMA”) came into force. In this article, we briefly review some of the significant amendments implemented. Digital LocksThere are now broad prohibitions on tampering with or r...
The summer of 2012 was significant for developments in Canadian copyright law.
First, the much debated amendments to the Copyright Act were finally passed and received Royal Assent on June 29, 2012. They will come into force on a day to be fixed by cabinet. Given that these amendments have not...
The iconic roar of the MGM Lion is poised to become Canada’s first registered sound trade-mark. The roar has been featured in MGM films since 1928, and has been the subject of a US trade-mark Registration since 1986.On March 1, 2012, the Federal Court of Canada set aside a refusal by th...
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