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Federal Court Upholds Expungement of AVIREX Trademark for Non-Use

If you are a fan of the classic movie Top Gun, you may be familiar with the AVIREX brand of leather jackets worn by Tom Cruise and other actors. But did you know that the AVIREX trademark was recently expunged in Canada for non-use? Background of the Expungement Case In a recent decision, the Federal Court dismissed an appeal by Centric Brands Holding LLC (Centric), the current owner of the AVIREX trademark, from a decision of the Registrar of Trademarks to expunge...

Ip Update: Patent Box

Enhancing Canadian Innovation: Introducing the Patent Box Regime

In an exciting development for the Canadian innovation landscape, the federal government has announced its intention to explore the implementation of a patent box regime. This strategic move is designed to foster the creation, commercialization, and retention of intellectual property (IP) within Canada. Understanding the Patent Box Regime A patent box regime is a fiscal policy that offers preferential tax treatment for income generated from patented innovations. The aim is to incentivize companies to develop and commercialize their IP domestically, rather than...

Trademark Law Update

Upcoming Changes to Extension Periods in Trademark Opposition and Section 45 Proceedings in Canada

Effective December 1, 2023, significant changes are coming to the Canadian Trademark Opposition Board's handling of opposition and Section 45 non-use cancellation proceedings. These changes aim to streamline the process and reduce the overall time taken for resolutions. Here’s what you need to know: Reduced Extension Times From December 1, 2023, extension periods will be cut by up to 50%. To benefit from the current longer extension periods, requests must be filed before this date. The reduction in extension times means...

IP Decisions: Canada (Attorney General) v. Benjamin Moore & Co. (2023 CAF 168)

Federal Court of Appeal Overturns Federal Court’s Test for Patentable Subject Matter of Computer-Implemented Inventions

In a recent Canadian decision, the Federal Court of Appeal (FCA) rejected the Federal Court’s (FC) attempt to provide a general test for determining the patentable subject matter of computer-implemented inventions. Specifically, the FCA found that the FC erred in imposing a test that was not based on any binding authority.  The FCA remitted the patent applications at issue to the Commissioner of Patents (CP) for redetermination of patentability to be carried out on an expedited basis, in light of...

IP Decisions: 2023 FC 804: Energizer Brands, LLC v. Gillette Company

2023 FC 804: Energizer Brands, LLC v. Gillette Company

On July 6, 2023, the Federal Court of Canada announced its decision in a trademark dispute between Energizer Brands and the Gillette Company in a case about comparative advertising.  In particular, this dispute involved Energizer and Duracell, the two leading battery brands in Canada. Moreover, Energizer asserted that Duracell's use of Energizer's trademarks in their advertising depreciated the value of these trademarks. The Heart of the Matter Specifically, Duracell's battery packages had affixed labels that bore phrases that caught Energizer's attention. Duracell...

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Important Updates on Canadian Intellectual Property Regulations

This is to advise of some significant changes to the Canadian Intellectual Property regulations. These regulations pertain to the Patent Rules, Trademark Regulations, Industrial Design Regulations, and Copyright Regulations. Amendments to these Rules were registered on June 1st.  They incorporate government fee increases of approximately 25%, as well as an expansion of the definition of 'small entity'. Most of the amendments will come into force on January 1, 2024. CIPO's Fee Schedule The major change is that the Canadian Intellectual Property Office (CIPO)...

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Pros and Cons for Making a Trademark Search Prior to Filing a Trademark Application 

Conducting a trademark search prior to filing a trademark application can be beneficial but it is important to weight out the pros and the cons.  You can read about the pros & con for making a trademark search prior to filing a trademark application by clicking here to go to our knowledge center. 

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2022 FC 923: Benjamin Moore and Co. v. Attorney General of Canada

Benjamin Moore & Co. appealed the decisions made by the Commissioner of Patents on CA 2,695,130 & CA 2,695,146 that the claims for these applications do not comprise patentable subject matter, under section 2 of the Patent Act, as the Commissioner determined the essential elements of each invention constituted a mere abstract theorem. The Commissioner erred by applying the wrong test for claim construction and patentable subject matter. She did not use the purposive construction approach to determine whether the actual...

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Amendments to the Canadian Patent Rules to Introduce Excess Claims Fees and Requests for Continued Prosecution (RCEs) Coming into Force October 3, 2022

Amendments to the Canadian Patent Rules to Introduce Excess Claim Fees and Request for Continued Examination (RCEs) Coming into Force October 3, 2022 Amendments to the Canadian Patent Rules were registered on June 2, 2022. Amendments relating to sequence listings come into force on July 1, 2022 while all other rule changes come into force on October 3, 2022. These Rule Amendments have been published in the Canadian Gazette, Part II, Volume 156, Number 13  on June 22, 2022.   The Rule...

Amendments to the Canadian Patent Rules to introduce Excess Claims Fees and Requests for Continued Prosecution (RCEs).

Patent Rule amendments were published July 3, 2021 in the Canada Gazette to streamline the patent examination process allowing Canada to implement the patent term adjustment obligation set out in the Canada-United States-Mexico Agreement (CUSMA). (For more information and a detailed list of the changes please see the Canada Gazette, Part 1, Vol. 155, NO. 27: Rules Amending the Patent Rules.) A Part II publication of the Patent Rule amendments in the Canadian Gazette is expected in about 6 months bringing...