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Intellectual
Property

CBA Intellectual Property Section

Articles are published by the Intellectual Property Section. Members interested in posting articles are encouraged to send them to the Section by email: CBAI_P@cba.org.

Today
Today

Case summary: Court grants unopposed application to add inventors and a co-owner to a granted patent

  • July 26, 2024
  • David Schnittker

The Applicants in this case sought three outcomes: 1) to have three inventors added as named co-inventors on a Canadian patent where only one inventor was listed previously; 2) to have an entity (“Koroyd SARL”) added as a co-owner of the Canadian patent; and 3) to have the name of the currently registered owner (“Smith Optics, Inc.”) of that patent replaced with its correct legal name (“Smith Sport Optics, Inc.”).

Intellectual Property

Court considers trademark and copyright claims between former business partners

  • July 26, 2024
  • Veronica Van Dalen

This decision relates to an action under subsections 7(b), (c), and (d) of the Trademarks Act, with respect to the unregistered trademark, “WANAKOME.” The action also involved a challenge to a defendant’s copyright registration for the artistic work used in the Wanakome logo.

Intellectual Property

Case summary: fair dealing of online subscribed articles, and password sharing

  • July 26, 2024
  • Jane Byun

The Attorney General of Canada (AGC) sought summary judgment against the Plaintiff, Blacklock’s Reporter (BR), which launched an action against Parks Canada. BR is an Ontario-based online news corporation which offered subscription-based articles on its website, covering politics, legislation, parliamentary committees, federal bureaucracy and courts.

Intellectual Property

Case summary: Trademark Opposition Board’s finding of non-registrability upheld

  • July 23, 2024
  • Kathryn Zanetti

The Appellant, Promotion in Motion, Inc. (“PIM”), appealed the decision of the Trademarks Opposition Board refusing its trademarks applications for SWISSKISS and SWISSKISS & Design [the “SWISSKISS Trademarks”]. The opposition was brought by Hershey Chocolate & Confectionery LLC [Hershey], who opposed the applications based mainly on its registered KISSES trademark (TMA733,263) and KISS trademark (TMA833,060).

Intellectual Property

Application seeking expungement of trademark dismissed for undue delay under Rule 167

  • July 23, 2024
  • Susan O’Neil

The Applicant filed a Notice of Application to have the Respondent’s trademarks expunged in early 2017. In 2023, the Respondent sought an order under Rule 167 of the Federal Courts Rules (the “Rules”) to dismiss the underlying Notice of Application for delay, asserting substantial delays were attributable to the Applicant or its counsel or both. After considering three periods of delay, the Court granted an order to dismiss the Applicant’s expungement Application.

Intellectual Property

Case summary: Federal Court dismisses motion for bifurcation

  • July 23, 2024
  • Homira Haqani

This case concerned Alexa Translations, the plaintiff, which provided translation and language interpretation services using a proprietary AI Platform. This AI platform was tailored for various Canadian sectors including legal, financial and securities. Alexa Translations owned the trademark “ALEXA TRANSLATIONS” as well as other unregistered trademarks.

Intellectual Property

Case summary: Federal Court of Appeal rules on the invalidity of a patent infringement claim for overbreadth and insufficiency

  • July 23, 2024
  • Divyanshu (Divy)

The appellants (“Eli Lilly Canada” and others) brought an infringement claim against each of the respondents for infringement of the appellants’ patent (the “784 Patent”) relating to CIALIS tadalafil. The respondents brought a motion for summary trial, alleging that the asserted claims of the 784 Patent were invalid for overbreadth and insufficiency.

Intellectual Property

Case summary: sworn affidavit of documents considered a solemn statement until proven otherwise

  • July 23, 2024
  • Jane Byun

The Plaintiff Seylynn (North Shore) Development Limited Partnership (“Seylynn LP”) and the Defendants to the Counterclaim Seylynn (North Shore) Properties Phase II Limited Partnership, Denna Development Corp., and Denna Properties Corp. (“Seylynn Group”), brought a motion in writing for an order that the Defendant/Plaintiff by Counterclaim, Abo Taheri (“Taheri”), serve and file an accurate and complete Affidavit of Documents.

Intellectual Property

Case summary: Court strikes statement of defence to counterclaim after defendants failed to meet discovery obligations

  • July 23, 2024
  • Michal Kasprowicz

The Defendants moved for an order to compel the Plaintiff to provide answers to certain discovery questions and to strike the statements of defence to counterclaim of Ms. Wan Ling Leung and Mr. Edbert Joaquin. The Court resolved issues regarding outstanding answers with reasons given at the hearing, while the issue of striking the pleading was reserved.

Intellectual Property