Yesterday, the US Supreme Court issued its decision in Abitron Austria GmbH v. Hetronic Int’l, Inc. on the foreign reach of the Lanham Act that prohibit trademark infringement, finding that the implicated sections are not extraterritorial and extend only to claims where the infringing use in commerce is domestic.
Tag Archives: Trademark
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.
Agent Renewals
Just a reminder that patent and trademark agent renewals are due by March 31st. The coming-into-force date for the College of Patent Agents and Trademark Agents is expected to be “spring of 2021” and any fees after that date will need to go to the new College. Continue reading Agent Renewals
Foreign Updates
A couple of non-Canadian developments that may be of interest:
- a majority of the US Supreme Court allowed the registration for the trademark “Booking.com” in the face of arguments that it was generic: “According to the PTO, adding “.com” to a generic term—like adding “Company”—can convey no source-identifying meaning. That premise is faulty, for only one entity can occupy a particular Internet domain name at a time, so a “generic.com” term could convey to consumers an association with a particular website.”
- the UK Supreme Court in Regeneron Pharmaceuticals Inc v Kymab Ltd considered patent sufficiency: “The disclosure required of the patentee is such as will, coupled with the common general knowledge existing as at the priority date, be sufficient to enable the skilled person to make substantially all the types or embodiments of products within the scope of the claim.”
NAFTA 2.0
Bill C-4 was introduced today to implement the Canada-US-Mexico trade agreement. The IP related changes are substantially the same as those included in Bill C-100 introduced last May. Bill C-4 include a new criminal provisions on trade secrets, trademark changes on importation and in-transit goods, and some changes on copyright term (although not a general extension to life+70).
Trademarks
Amendments to the Trademarks Act and Regulations will come into force on June 17, 2019 implementing the Madrid, Nice and Singapore treaties.
Happy World IP Day
A number of interesting announcements on World IP Day. The focus of the international focus on IP was on Powering change: Women in innovation and creativity. In Canada, the government announced a National IP Strategy having a number of components including $85.3 million over five years to help Canadian businesses, creators, entrepreneurs and innovators understand, protect and access IP. Announced for IP tools, was more efficient dispute resolution and tariff setting at the Federal Court (more judges) and Copyright Board through more funding, formation of a patent collective, improvements to IP used in standards-setting processes, and an IP-specific marketplace. Announced legislative changes include:
- establishing minimum requirements for patent demand letters;
- excluding settlement demands from the copyright Notice and Notice regime;
- Requiring ‘use’ of a trademark to enforce it within the first three years;
- affirming the patent research exemption;
- clarifying the role of standard essential patents;
- allowing continued use of IP by licensees in liquidation proceedings; and
- creating a College of Patent and Trademark Agents to regulate agents.
In Europe, the UK announced today that it had ratified the Unified Patent Court (UPC) Agreement.
Updates
Here are several news items that may be of interest:
- An Order in Council has indefinitely suspended implementation of the private right of action under CASL, Canada’s anti-spam legislation. The private right of action was scheduled to come into force on July 1, 2017.
- CIPO has advised that it will beginning a series of consultations over the summer on proposed regulatory amendments for Industrial Design Regulations, Trade-marks Regulations, Patent Rules relating to implementation of the Hague Agreement, Madrid Protocol, Singapore Treaty, the Nice Agreement and the Patent Law Treaty.
- Global Affairs Canada has announced consultation on the renegotiation and modernization of the North American Free Trade Agreement (NAFTA). The government invites submissions on a variety of topics including intellectual property.