CIPO has announced a consultation on Trademark Opposition Board procedures, including costs awards, confidentiality and case management. Continue reading TMOB
US Supreme Court
Earlier today, the US Supreme Court agreed to take up Jack Daniel’s Properties, Inc. v. VIP Products LLC on “whether humorous use of another’s trademark as one’s own on a commercial product is subject to the Lanham Act’s traditional likelihood-of-confusion analysis, or instead receives heightened First Amendment protection from trademark-infringement claims”. The defendant sells a “Bad Spaniels” squeaky dog toy.
Today, the Supreme Court issued its decision in Nova Chemicals Corp. v. Dow Chemical Co., 2022 SCC 43 regarding the quantification of an accounting of profits as a result of patent infringement. The majority dismissed the appeal with a focus on the ‘non-infringing option’: “a non-infringing option helps courts isolate the profits causally attributable to the invention from the profits which arose at the same time the infringing product was used or sold, but which are not causally attributable to the invention.” The majority also upheld springboard profits, saying, “a portion of such post-expiry profits may be causally attributable to infringement of the invention.” Continue reading Supreme Court
US Supreme Court
On Friday, the US Supreme Court granted review in two IP cases:
- Amgen Inc. v. Sanofi – on patent enablement and whether the full scope of the patent has to be enabled.
- Abitron Austria GmbH v. Hetronic International – on the scope of the Lanham Act on extraterritorial sales that never reach the United States or confuse US consumers.
COVID Practice Notice
The Federal Court has issued an updated Practice Notice on the Court’s “transition back to in-person hearings”. For hearings scheduled in January 2023 and beyond, the presumption will be in-person except for motions scheduled to be heard for a duration of two hours or less, as well as certain IRPA and Citizenship Act proceedings. “The Court encourages parties to all modes of hearings to proceed on the basis of an electronic record” Continue reading COVID Practice Notice
Nathalie Goyette, Partner at Davies Ward Phillips & Vineberg LLP in Montréal, was appointed a Judge of the Federal Court of Appeal. Judicial appointments were also made today in British Columbia, Newfoundland and Labrador, and the Tax Court of Canada.
A couple of developments in Europe that may be of interest: 1) The long awaited United Patent Court is scheduled to open its doors and accept cases as of April 1, 2023; and 2) the EPO is abolishing the “10-day rule” for responding to deadlines, effectively reducing the time available to respond.
Earlier this week, Justice Guy Régimbald, a partner at Gowling WLG in Ottawa was appointed to the Federal Court. Judicial appointments were also made this week to the courts in Quebec and Newfoundland and Labrador. Continue reading Federal Court
An order in council published in today’s Canada Gazette has put into force various amendments to among others, the Judges Act, and the Federal Courts Act to change the title of prothonotaries of the Federal Court and Tax Court of Canada from “prothonotary” to “associate judge”. Continue reading Associate Judge
On Monday, the Patent Rules for patent examination procedures were amended to include claim fees for patent applications having more than 20 claims at any point during prosecution, and a request for continued examination after three office actions. Several other procedural changes were made as well.