Articles

Technology is everywhere and is changing how we communicate and carry on our daily lives. This article highlights three technology issues that are changing the legal landscape.

Due to the flexible nature of the law of claims construction in Canada, the meaning of the commonly used transitional phrase "consisting essentially of" may surprise foreign lawyers and patent practitioners.

The Federal Court’s decision in Sleep Country Canada Inc v Sears Canada Inc, granted a rather rare interlocutory injunction prohibiting the use of a slogan pending the final determination of a trademark infringement action. Sears Canada Inc. was enjoined from using their newly adopted slogan that stated “There is no reason to buy a mattress anywhere else”, as it was confusing to Sleep Country Canada Inc.’s (“Sleep Country”) trademarked slogan “Why buy a mattress anywhere else".

On June 30, 2017, the Supreme Court of Canada unanimously granted AstraZeneca’s appeal in the long-awaited conclusion of the “Promise Doctrine” saga in AstraZeneca Canada Inc v Apotex Inc. The primary legal consequence of this decision is that the Supreme Court of Canada has reset the utility test and eliminated the Promise Doctrine.

Amendments to the Trade-Marks Act made in 2014, despite not being fully implemented yet, have already encouraged squatting and over-claiming, and have resulted in a 75 per cent increase in the number of Canadian applications waiting to be registered, from 40,000 in 2014 to nearly 70,000, the CBA National IP Section says in a letter to Innovation, Science and Economic Development Canada.

The British Columbia Court of Appeal (BCCA) in Vancouver Community College v. Vancouver Career College (Burnaby) Inc. recently decided that use of a trademark as a keyword advertisement constituted passing off of a trademark, unanimously reversing the trial judge’s decision. The BCCA held that trademark confusion occurs at the moment the consumer first encounters the trademark in the search results, and not the moment the consumer clicks on the link and arrives at the landing page.

In a major victory for Nintendo, the Federal Court of Canada awarded $12.7 million in damages for circumventing technological protection measures and copyright infringement. This decision (Nintendo of America Inc. v Jeramie Douglas King et al, 2017 FC 246) was the first substantive application of the anti-circumvention rules introduced in Canada in 2012, and will be of significance to content creators who are considering the use and enforcement of TPMs to protect copyrighted content.