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Significant Changes to Trade-marks Act introduced by Budget Bill C-31

Last week, the federal government introduced significant changes to the Trade-marks Act by tabling the omnibus budget bill, Bill C-31, the Economic Action Plan 2014 Act, No. 1 on March 28, 2014. The “monster” Bill makes changes to nearly forty different pieces of legislation, and is designed to enact measures in last month’s federal budget. The trademark amendments will allow Canada to meet its international treaty obligations (including the Nice Agreement, Singapore Treaty, and the Madrid Protocol). According to the government summary, the proposed changes make the Trade-marks Act consistent with the Singapore Treaty, add authority to carry the Madrid Protocol into effect, and simplify the trademark application filing requirements.

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IP Treaties

The government has tabled five intellectual property treaties in the House of Commons:

  • Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (“Madrid Protocol”),
  • Singapore Treaty on the Law of Trademarks (“Singapore”),
  • Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (“Nice”),
  • Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs (“Hague”), and
  • the Patent Law Treaty.

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IP at the USSC

On Friday, the United States Supreme Court granted cert in four IP related proceedings: POM Wonderful v. Coca-Cola – standing under the Lanham Act to challenge labelling; Limelight Networks v. Akamai Technologies – does inducing patent infringement require direct infringement; Nautilus v. Biosig Instruments – standard for indefiniteness in patent claims; and ABC, Inc., v. Aereo, Inc. – copyright infringement and public transmissions over the Internet.

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Copyright Curiosity

Earlier today, the Supreme Court of Canada released its decision in Cinar Corporation v. Robinson2013 SCC 73. The Court upheld the findings of liability and modified the award of damages, including punitive damages. Some of the issues considered by the Court included determining “substantial part”, the admissibility of expert evidence, disgorgement of profits under the Copyright Act and punitive damages.

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Canada Gazette Publication

A series of IP related regulations were published in today’s Canada Gazette (Part II): a) changes to the Patent Rules and Trade-mark Regulations relating to the agent examinations; b) changes to the Patent Rules relating to final actions and c) regulations associated with Canada’s anti-spam legislation. Check the specific regulations for the coming into force dates of each amendment.

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