Proposed Changes to Canadian Trademark Regulations: Enhancing Efficiency and Addressing Official Marks

As discussed in my short article of July 10, 2024, important changes to the Canadian Trademark Regulations have been proposed. The changes have not yet come into effect and are still subject to change. The consultation period closed on July 8, 2024. In future articles, I will discuss comments that are being debated and next steps in the implementation process.

One set of changes is directed at improving the efficiency of the trademark dispute resolution process. Another set of changes enables the Registrar to inactivate official marks.

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Important Amendments to Canadian Trademark Regulations

On June 8, 2024, proposed amendments to Canada’s Trademarks Regulations were published in the Canada Gazette. The public consultation period is open until July 8, 2024, and comments will be posted on the Canada Gazette website following the end of the consultation period.

A coming-into-force date has not yet been set but the Canadian Intellectual Property Office indicates that sufficient time will be provided to ease the transition.

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Cinema and copyright: limitations of transfer agreements and exploitation licences

Facts

The first plaintiff, a company, was established in 1989. Its sole partners were:

  • GZ and GS, cinematographers;
  • SE (who had the pseudonym “L”), actor, writer, and screenwriter (second plaintiff); and
  • KF, director.

Each partner had a 25% stake in the company. The company’s purpose was to exploit the film (R), the filming of which was completed in 1983. Based on the above agreements, the first plaintiff claimed to be the beneficiary of all kinds of IP rights and the right to exploit the film by 70%, while the Hellenic Film Center was the beneficiary of the remaining 30%.

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Seedlings of Ideas For Artificial Intelligence: Learning From A Genetic Resources/Traditional Knowledge Treaty, The Plant Patent Act, & Nico Tanner

The World Intellectual Property Organization announced on May 24, 2024, a treaty on intellectual property, genetic resources, and associated traditional knowledge that was twenty-five years in the making.  As WIPO’s press release noted, “[n]egotiations for this Treaty began at WIPO in 2001, initiated in 1999 with a proposal by Colombia, where discussions were notable for their inclusion of Indigenous Peoples as well as local communities.” Because the treaty has importance in and of itself for the subject matter it covers, we will describe its substance. But because it also provides an example of process and structure that could help address concerns over the ownership of works created by deploying artificial intelligence (especially when coupled with an understanding of the history of laws governing US plant patents), we will also look at its evolution to help us think outside the box that some have worked themselves into on artificial intelligence works questions. Plus, I had not focused a piece on a treaty since 2016 (when I wrote about the TRIPS treaty on geographic indicators) and 2015 (when I wrote about the Trans-Pacific Partnership on trade secrets), so I seemed overdue.

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The ownership debate: Intellectual property in AI. Who does it belong to?

With the rise in the use of artificial intelligence (AI) in all forms, the question is becoming more present than ever – who owns the intellectual property in a work created with the use of AI?

In Australia, there is currently no law specific to the ownership of intellectual property created in computer-generated works, whether that be art, music drafting documents, or other written works.

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IP ├ IP???: The Logic Of Election Year Legal Disputes Over Proprietary Intangibles

Title? Typo? Cryptic code? Equation?

Really it is a combination of three of the four. In other words, it is not a typo (You can look elsewhere in this piece for those).

One key to understanding the reference above is the mathematical logic symbol ├, which is known as the “’turnstile’…because of its resemblance to a typical turnstile if viewed from above. It is also referred to as tee.” It is meant to mean “yields” or “entails,” and here the familiar initials “IP” are used to the right of the turnstile with question marks as an indication of “intellectual property” (that “umbrella term for a set of intangible assets or assets that are not physical in nature”) and the questions it raises. The “IP” to the left of the turnstile is not tautological—it stands for “interesting politics,” leaving the tail of the title to be a logic language shorthand for “Interesting Politics Yield Intellectual Property Questions.” 

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U.S. House Unveils the Latest Attempt at a U.S. Privacy Law: The American Privacy Rights Act

The United States is among the minority of large economies in the world without a comprehensive national privacy law. In the absence of such a law, numerous states are filling the void with a complex assortment of often inconsistent privacy laws.

However, unexpected legislative developments in the U.S. House of Representatives will potentially resolve the challenges raised by the current patchwork of conflicting state laws. On April 7, 2024, House members announced a draft bill for the American Privacy Rights Act (APRA). The bill still has many hurdles to overcome and may ultimately share the same fate as prior failed attempts at a federal privacy law. But if enacted, the APRA would upend the U.S. privacy landscape.

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New Guidance on the Subject of Comparative Advertising and Dilution of Goodwill

In 2023, the Federal Court of Canada released its decision in Energizer Brands, LLC and Energizer Canada Inc. v. Gillette Company (2023 FC 804). The decision clarifies some of the laws applicable to comparative advertising in this country and should guide the conduct of parties that engage in this form of commercial activity.

Energizer sued Duracell over a sticker advertising campaign that claimed that Duracell’s batteries lasted longer than their Energizer equivalents. The Duracell advertisements referred to Energizer both directly and indirectly with phrases such as “the bunny brand” or “the next leading competitive brand”.

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Should Disclaimers Always Be Made in U.S. Trademark Applications?

Suppose you have a pending U.S. trademark application for your trademark on goods or services for your business and a term or wording in the trademark is descriptive of your goods or services. During the examination of your trademark application, the examining attorney refuses registration because the term is merely descriptive of your goods or services and requires a disclaimer. Should you always agree to the disclaimer because your trademark application will be passed onto publication? The answer is NO! and you should argue against the requirement for a disclaimer particularly if the descriptive term is a unitary or incongruous term or a double entendre.

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Comma, Comma, Comma, Comma, Comma Chameleon: How Punctuation Can Color IP & Other Legal Rights

“[T]he comma…this capricious bit of punctuation…”

United States v. Ron Pair Enterprises, Inc., 489 US 235, 249
(1989) (O’Connor, J, dissenting)

For want of a comma, we have this case.”

O’Connor  et al. v. Oakhurst Dairy et al.,
851 F.3d 69, 70 (1st Cir. 2017)

“But, when pressed, I do find I have strong views about commas.”

Holy Writ by Mary Norris
THE NEW YORKER, February 16, 2015

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