Publications

Packed with valuable information, our publications help you stay in touch with the latest developments in the fields of law affecting you, whatever your sector of activity. Our professionals are committed to keeping you informed of breaking legal news through their analysis of recent judgments, amendments, laws, and regulations.

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  • The Canada-European Union Comprehensive Economic and Trade Agreement (CETA) is coming into force today!

    It is today, September 21st 2017, that Bill C-30 1 comes into force. As a result of its provisions, several Canadian laws are amended in order to allow for implementation of the Canada–European Union Comprehensive Economic and Trade Agreement “CETA” 2. Chapter 20 of the CETA deals with the commitments made by signatories in relation to intellectual property rights. Here is a summary of the principal changes brought to the legislative schemes governing these rights: Trade-marks Expressions that depict the place of origin of goods are not registrable as trade-marks under the Trade-marks Act 3. Only the designation of wines and spirits by Geographical Indications “GIs” can be protected under this act 4. CETA broadens the protection to more than 170 GIs, which are listed under Annex 20-A of the agreement. From this day forward, in Canada, it is prohibited to use a GI in association with a product if it does not originate from the territory specified in Annex 20-A, or if it does originate from the specified territory but was not produced in accordance with the laws and regulations governing the specified territory. Subject to certain exceptions provided by law, the use of terms such as “kind”, “type”, “style” or “imitation” in combination with a listed GI is also prohibited. These prohibitions will undoubtedly prompt changes in advertising, packaging and procurement of food-related products sold in Canada. Therefore, agri-food companies can benefit from a better understanding of their rights in relation to the use of GIs and should consider taking concrete actions in response to imminent competition. Our previous newsletter provides a series of recommendations to that effect.  Patents The legal regime governing patent protection of innovative drugs and marketing of generic equivalents has been considerably modified in order for Canada to meet its CETA undertakings. A more detailed analysis of the new provisions will be published shortly; however it is relevant to summarize their substance as follows: – Patent Term Extension In order to compensate for time spent in research and obtaining marketing authorization 5, that is, a Notice of Compliance “NOC”, Canada’s Minister of Health is now authorized to issue a certificate of supplementary protection “CSP” to patentees with patents relating to new human and veterinary drugs. The term “new” refers to a drug containing active ingredients that have not been previously approved in a NOC. A CSP confers the exclusive right to prevent the manufacture, use or sale of the patented drug. The CSP is also subject, like a patent, to a validity challenge. Capped at a maximum of 2 years, the precise term of a CSP is set to be the difference between the date of the filing of the patent application and the date of issuance of the authorization for sale (NOC), minus five years. The Minister of Health can reduce this calculated term taking into account delays caused by the NOC applicant. A single CSP may be requested for a product, even though the product may be protected by more than one patent. The term of protection takes effect upon the expiry of the basic patent and, in cases where several patentees hold a patent protecting their respective products, at the expiration of the patent of the holder who files the application for additional protection. Other conditions apply. – Equal Rights of Appeal and the End of “Dual Litigation” In Canada, the right of a pharmaceutical company to market a generic version of a patented drug product is conditional upon obtaining a NOC issued by Health Canada certifying the bioequivalence of the generic product. Before proceeding with the sale of a generic version of a brand name drug, the generic company must provide the manufacturer of the brand name drug with a notice of allegation indicating “NOA”: that it accepts that the generic product will not be sold before the patent expires, or that the patent is invalid, or that the generic company does not infringe any patent claim relating to the medicinal ingredient, the formulation, the dosage form or the use of the medicinal form. Until now, the brand manufacturer could respond to the NOA by initiating a summary court proceeding to obtain a prohibition order preventing Health Canada from issuing a NOC to the generic manufacturer. If the Court application was rejected, the brand manufacturer could theoretically appeal the decision to higher Court. However, the appeals were generally rejected as rendered moot by the issuance of a NOC by Health Canada immediately after the first Court decision. Although the allegations of patent invalidity and infringement were examined by the Court in the proceedings described above, the decisions on these matters were not final. Consequently, the same parties could engage in an infringement or invalidity action, in parallel or subsequently, to debate the allegations. By ratifying the CETA, Canada committed to ensuring that the pharmaceutical linkage mechanism provides all litigants with equivalent rights of appeal. Accordingly, the Patented Medicines (Notice of Compliance) Regulations  6 were amended to allow the Court to grant an injunction against a generic company to stop acts of counterfeiting. This remedy can now be ordered despite the issuance of a NOC by Health Canada. The amended Regulations also replace the summary procedure described above by a complete action enabling the Court to rule definitively on issues of invalidity and infringement. This new framework will limit the parties from engaging in parallel actions on the same issues, thus reducing the risk of conflicting judgments. Copyrights The Copyright Act  7 has been amended in 2012 to reflect the standards established by the World Intellectual Property Organization  8. No further modifications were required to ensure Canada’s compliance with the CETA’s requirements. Industrial Design Under the CETA, Canada has committed to make all reasonable efforts to accede to the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs. Although the Hague System is not yet in force in Canada, many amendments have already been made to the Industrial Design Act 9 and proposed industrial design regulations have been drafted 10 to facilitate Canada’s adherence to the Hague System. Plant Varieties By ratifying the CETA, Canada has committed to cooperating with the European Union countries to promote and strengthen plant variety protections on the basis of the 1991 Act of the International Convention for the Protection of New Varieties of Plants. Canadian legislation has not been affected by this commitment. Canada–European Union Comprehensive Economic and Trade Agreement Implementation Act, L.C. 2017, c. 6. The complete text of the CETA, online: http://www.international.gc.ca/trade-commerce/trade-agreements-accords-commerciaux/agr-acc/ceta-aecg/text-texte/toc-tdm.aspx?lang=eng.  Trade-marks Act, R.S.C., 1985, c. T-13, section 12(1)b).  Trade-marks Act, supra note 3, section 2.  Government of Canada, « REGULATORY IMPACT ANALYSIS STATEMENT», Canada Gazette, Vol. 151, no 28, July 15, 2017, available online : http://www.gazette.gc.ca/rp-pr/p1/2017/2017-07-15/html/reg16-eng.php.  DORS/93-133.  R.S.C., 1985, c. C-42.  WIPO Copyright Treaty; WIPO Performances and Phonograms Treaty.  R.S.C., 1985, c. I-9 Government of Canada, «Proposed Industrial Design Regulations draft», online : http://www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr04255.html.

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  • What every agri-food company must know about the new geographical indications which will come into force on September 21st

    While negotiating the Comprehensive Economic and Trade Agreement between the EU and Canada (CETA) with the European Union, Canada has agreed to modify its legislative scheme governing Geographical Indications («GIs»). In this context, Canada has recognized protection for 179 new GIs. The new provisions relating to GI descriptions will come into force on September 21st, 2017. What do these provisions mean for agri-food companies? Will these companies have to modify their labelling information, packaging or promotional material? For a better understanding of what lies ahead, here is a summary of the new legislative scheme and its exceptions, along with a set of recommendations. Goudreau Gage Dubuc, one of the leading intellectual property firms in Canada, joins Lavery Lawyers. The two firms have integrated their operations in order to offer their clients a complete range of legal services. The integration consolidates Lavery’s multidisciplinary approach. As the largest independent law firm in Quebec, Lavery is continuing to grow by adding the expertise brought by lawyers, patent agents and trademark agents specializing in intellectual property law, who belong to one of the most respected teams in the country. To learn more, visit www.YourIPLawyers.ca. --> THE NEW LEGISLATIVE SCHEME 1. Updated definition: Previously limited to wines and spirits, the new GI regime will soon be broaden to include agricultural foods and products. Regions renowned for products such as cheeses, meats, fruits and vegetables, as well as other food products, will have the right to request that their name be recognized as a GI. 2. New GIs: The complete list of the new GIs can be found here. The most well-known GIs among the following categories are: Cheeses: Feta, Gorgonzola, Parmagiano Reggiano, Pecorino Romano, Comté, Roquefort, Brie de Meaux, Morbier, Epoisses, Beaufort, Bleu d’Auvergne, Mozzarella di bufala Campana, Gouda Holland; Meats: Jambon de Bayonne, Prosciutto di Parma, Proscuitto di S. Daniele, Prosciutto Toscano, Prosciutto di Modena, Mortadella Bologna; Oils, nuts and olives: Huile d’olive Kalamata, Huile d’olive de Haute-Provence, Huile essentielle de Haute-Provence. 3. Restrictions: Unless a specific exception applies, it will be prohibited to use a GI (or a translation thereof) if: the product does not originate from the region indicated by the GI; the product originates from the region indicated by the GI but was not produced or manufactured in accordance with the laws and regulations governing this region. To be noted: these restrictions apply only to the GIs indicated in the GIs list. Accordingly, the use of terms such as « parmesan », « pecorino », « mozzarella », « brie », « gouda », « mortadelle » and « prosciutto » will remain legal. 4. Other prohibitions: By no means will a company be allowed to designate or present a product in a manner that is misleading as to its geographical origin. When deciding whether the public could possibly be misled as to the place of origin of a product, one can consider the visual aspect of the product’s presentation. For example, flag illustrations and emblematic colors that evoke a certain region may create a false impression as to the origin of a product. It should be noted that these prohibitions apply even if the true place of origin of a product is indicated on the packaging. Moreover, the addition of expressions such as “kind”, “type”, “style” or “imitation” will not constitute an acceptable defense, unless a specific exception to that effect has been stipulated by law. 5. Prohibited actions: the new legislation not only prohibits promoting and selling goods likely to mislead customers as to their origin, but also prohibits manufacturing, preparing, packaging, labelling, importing and advertising such goods. EXCEPTIONS Many exceptions are provided by law and are worthy of consideration: 1. Trademarks: trademarks that have been registered, applied for or used in good faith as of September 21st, 2017 will not be affected by the new legislative scheme. This exception can also be invoked in regard to any new GI added to the GIs list in the future. 2. Prior use of the terms Feta, Gorgonzola, Asagio, Fontina and Munster: Any persons, including their successors and assignees, who made commercial use of the above-mentioned indications prior to October 18th, 2013 can continue to use them. These terms may also be used in combination with expressions such as “kind”, “type”, “style” or “imitation”, as long as the place of origin is legible and visible on the product. 3. Prior use of terms Jambon de Bayonne and Beaufort: Any persons, including their successors and assignees, who made commercial use of these indications for at least 10 years prior to October 18th, 2013 may continue to use them. It is to be noted that a business having used these terms for less than 10 years prior to October 18th, 2013 will benefit from a transitional period of 5 years to modify its usage. 4. Use of terms Jambon Forêt-Noire, parmesan, orange Valencia, bacon tyrolien, bière bavaroise, bière Munich and fromage St-George: These terms may be used under the new legislative scheme, so long as their usage does not mislead the public regarding the origin of the product they are associated with. 5. Translations: the new provisions do not prohibit the use of a translation of a GI that is identical to a term commonly used as the name of a product in Canada. RECOMMENDATIONS In order to face the new GIs and the upcoming competition in the agri-food industry, companies should consider the following recommendations: going through the GIs list and identifying which ones are currently used by the company; taking an inventory of labels, packaging and promotional materials featuring GIs; analyzing the CETA’s provisions to determine if the company can benefit from any exceptions; documenting prior use of GIs for the purpose of invoking prior use exceptions; reviewing the chains of title relating to GIs to confirm ownership and making sure to have written assignments; evaluating the benefits of filing an application for the registration of all marks containing geographic references (including logos or images evoking a specific region); implementing a monitoring system to identify an potentially oppose to new GI requests; protecting the company’s geographic designations through (i) certification marks under The ­Trade-Marks Act, (ii) the Act respecting reserved designations and added-value claims in force in the province of Québec, and (iii) the new legal protection system offered to GIs, once these provisions come into force. Do not hesitate to contact our team for all inquiries related to GIs and the protection or defense of your trademarks.

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  • A picture is worth a thousand woes!

    A recent Federal Court decision 1 reiterates the importance of protecting the main design elements featured on products and packaging. This decision also recalls the dangers of too closely mimicking the appearance of a competitor’s products. Goudreau Gage Dubuc, one of the leading intellectual property firms in Canada, joins Lavery Lawyers. The two firms have integrated their operations in order to offer their clients a complete range of legal services. The integration consolidates Lavery’s multidisciplinary approach. As the largest independent law firm in Quebec, Lavery is continuing to grow by adding the expertise brought by lawyers, patent agents and trademark agents specializing in intellectual property law, who belong to one of the most respected teams in the country. To learn more, visit www.YourIPLawyers.ca. --> In its ruling, the Federal Court sided with Diageo Canada Inc. (“Diageo”) and ordered Heaven Hill Distilleries, Inc. (“Heaven Hill”) to cease the sale of its ADMIRAL NELSON’S rum. The Court came to this decision after concluding that the design elements of the ADMIRAL NELSON’S label caused confusion with the label of CAPTAIN MORGAN bottles of rum.   In addition to having to cease selling and promoting its product, Heaven Hill will have to comply with the following order from the Court (unless an appeal is filed): destroy the bottles and all material containing the image in question (including all packages, labels, and advertising material); pay damages to Diageo or pay to Diageo the profits made from the sale of its ADMIRAL NELSON’S rum. Here are some tips to remember in order to avoid conflicts and the drastic consequences that may follow: seek advice from experts before adopting visual elements similar to those of your competitors; carry out searches for the main design elements that you intend to use on your labels and packaging; protect the main design elements that distinguish your products to be in a strong position to act against competitors if need be. Prevention is better than cure! Diageo Canada Inc. v. Heaven Hill Distilleries Inc.and al 2017 FC 571

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  • New regulations for the owners of non-French trade-marks

    On November 24th, 2016, the Quebec government has adopted new regulations regarding the public display of non-French trade-marks in Quebec. The new regulations may be summarized as follows: trade-marks do not have to be translated into French but French language must be sufficiently present in all signs on the exterior of buildings. Here are several important points worth remembering: Scope of the new regulations: the new regulations only apply to signs on the exterior of buildings, and they are not aimed at product labels or packaging, nor are they aimed at websites or social media.   Signs on the exterior of buildings include: signs on roofs, as well as on bollards and other structures independent from buildings; signs placed outside premises, kiosks or counters located inside buildings; signs placed inside buildings or premises if they are intended to be seen from outside. Goudreau Gage Dubuc, one of the leading intellectual property firms in Canada, joins Lavery Lawyers. The two firms have integrated their operations in order to offer their clients a complete range of legal services. The integration consolidates Lavery’s multidisciplinary approach. As the largest independent law firm in Quebec, Lavery is continuing to grow by adding the expertise brought by lawyers, patent agents and trademark agents specializing in intellectual property law, who belong to one of the most respected teams in the country. To learn more, visit www.YourIPLawyers.ca. --> Sufficient presence of French: The presence of French language will be deemed sufficient if the sign includes a French generic term or descriptor of the products or services; a French slogan or any other term providing information related to the products or services, provided that such French terms are: permanently visible as the trade-mark being displayed; and legible in the same visual field as that of the trade-mark.   The presence of French shall be deemed satisfactory if the French terms are designed, lighted, and situated so that they can be easily read at the same time as the trade-mark. This does not necessarily require that the French terms be present in the same place, in the same number, in the same materials or in the same size as the trade-mark. In order to assess the legibility of the French terms, the legislator has gone so far as to provide distinct points of reference namely: from the sidewalk, for the exterior of buildings; from the middle of a corridor, for a premises in a building; and from a highway, for trade-marks visible therefrom.   The legibility of a French term will be considered insufficient if it is necessary to be within one meter of a display to read it, unless the legibility of the mark also requires such proximity. Deadline to comply with the new regulations: Since November 24, 2016, any new signs on the exterior of buildings (or any replacement signs) must respect the new regulations. Owners of signs mounted before November 24, 2016 benefit from a transitional period until November 24, 2019 to comply with the new regulations.   Please do not hesitate to contact the members of our team for any questions concerning the Charter of the French Language and its regulations.

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  • Update: Metatags at the Federal Court of Appeal

    In December 2015, the Federal Court of Appeal rendered its judgment in the case of Red Label Vacations Inc. (redtag.ca) v. 411 Travel Buys Limited (411travelbuys.ca) 1. The Court dismissed all grounds of appeal and upheld the decision of the Federal Court. Background and Federal Court decision Red Label Vacations and 411 Travel Buys are two competing businesses offering online services related to the travel industry. Red Label noticed that some of its metatags incorporating its registered trademarks were copied into 411 Travel’s web pages. Metatags are words or phrases embedded in a website’s source code that are used by search engines to classify and rank web pages when a user conducts a search. Red Label brought an action against 411 Travel for copyright infringement, trademark infringement, passing off and depreciation of goodwill. The Federal Court dismissed all claims alleged by Red Label, who appealed the decision 2.   Goudreau Gage Dubuc, one of the leading intellectual property firms in Canada, joins Lavery Lawyers. The two firms have integrated their operations in order to offer their clients a complete range of legal services. The integration consolidates Lavery’s multidisciplinary approach. As the largest independent law firm in Quebec, Lavery is continuing to grow by adding the expertise brought by lawyers, patent agents and trademark agents specializing in intellectual property law, who belong to one of the most respected teams in the country. To learn more, visit www.YourIPLawyers.ca. --> Federal Court of Appeal (FCA) decision Concerning trademark infringement The FCA first dealt with the issue of trademark infringement. The Court held that the trial judge did not err in finding that there was no “use” of Red Label’s registered trademarks in a manner to establish infringement according to the Trademarks Act. Although Red Label’s trademarks were copied into 411 Travel metatags, none of the metatags appeared in the visible portion of 411 Travel’s website. In that sense, 411 Travel did not use Red Label’s trademarks in order to associate its services with those of Red Label. Although the FCA has not concluded that there was trademark infringement in this particular case, the Court has somehow left open the possibility that “use” of a registered trademark in metatags may, in some cases, lead to an action for trademark infringement. At paragraph 22 of the decision, the Court commented as follows: “While, in some situations, inserting a registered trade-mark (or a trade-mark that is confusing with a registered trade-mark) in a metatag may constitute advertising of services that would give rise to a claim for infringement, in this case, this reference to “Book Online with Red Tag Vacations” cannot be considered to be advertising the services of 411 Travel Buys in connection with the services offered by Red Label.” [Emphasis added] However, it should be noted that the Court has not provided any specific details on when and how the unauthorized use of trademarks in metatags could give rise to a claim for infringement under the Trademarks Act. Concerning passing off and depreciation of goodwill Regarding the action for passing off and depreciation of goodwill, the FCA concluded that Red Label has failed to show that the trial judge made any palpable and overriding error in his finding by rejecting these claims. In particular, Red Label has not submitted any evidence to establish that its trademarks were visible once a person enters the 411 Travel website. Given the fact that there was no “use” of Red Label’s trademarks since the metatags were not visible, the consumer still has the freedom to choose the link of the website he wants to access, and therefore there is no possible likelihood of confusion. Concerning copyright infringement Finally, the FCA confirmed the Federal Court decision regarding copyright infringement. The Court mentioned that since it was a finding of facts, Red Label has not established that the trial judge made any palpable and overriding error by concluding that Red Label’s metatags were not protected under the Copyright Act. It was held that metatags can acquire copyright protection but only if there is evidence of sufficient degree of skill and judgment in their creation, which was not the case in this particular instance. This case is yet another example of the challenges and uncharted territory in issues of intellectual property in today’s online age.  Red Label Vacations Inc. (redtag.ca) v. 411 Travel Buys Limited (411travelbuys.ca), 2015 FCA 29, confirming 2015 FC 19.  Please refer to our newsletter dated August 24, 2015 for further comments on the Federal Court decision, https://www.lavery.ca/en/publications/our-publications/3122-federal-court-of-canada-examines-metatags-under-copyright-and-trademark-law.html

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  • Trade-marks in Quebec and the Charter of the French Language: the end of a debate?

    According to information presently available, it appears that the Quebec government will forgo implementing legislative amendments that would have forced companies conducting business in Quebec to add a French descriptor to signs displaying their non-French trade-marks. Instead, after some reflection and consultation, the government has apparently opted for regulations which will oblige companies to use French language on their facades. We will have to wait for draft regulations to know the full scope of these new obligations. Goudreau Gage Dubuc, one of the leading intellectual property firms in Canada, joins Lavery Lawyers. The two firms have integrated their operations in order to offer their clients a complete range of legal services. The integration consolidates Lavery’s multidisciplinary approach. As the largest independent law firm in Quebec, Lavery is continuing to grow by adding the expertise brought by lawyers, patent agents and trademark agents specializing in intellectual property law, who belong to one of the most respected teams in the country. To learn more, visit www.YourIPLawyers.ca. --> This decision will hopefully put an end to the debate on the necessity of adding a French descriptor to non-French trade-marks. We are closely monitoring developments in this matter and will keep you informed once the draft regulations are published. For any questions regarding the application of the Charter of the French Language in Quebec, please do not hesitate to contact members of our team.

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  • Nice Classification: A first step in Canada’s upcoming trademark reform

    It is now possible to adopt the Nice classification for trademark applications in Canada. This new measure, which is currently voluntary but will become mandatory once the new provisions of the Trade-Marks Act come into force, allows a trademark owner to classify goods and services among the 45 classes of the Nice Agreement. This is the first step towards a number of changes to harmonize the Canadian system with various international treaties. Goudreau Gage Dubuc, one of the leading intellectual property firms in Canada, joins Lavery Lawyers. The two firms have integrated their operations in order to offer their clients a complete range of legal services. The integration consolidates Lavery’s multidisciplinary approach. As the largest independent law firm in Quebec, Lavery is continuing to grow by adding the expertise brought by lawyers, patent agents and trademark agents specializing in intellectual property law, who belong to one of the most respected teams in the country. To learn more, visit www.YourIPLawyers.ca. --> For now, the government filing fee is still $250, regardless of the number of classes covered by the application. It remains to be seen whether the fees will be increased or not. Most of the member countries of the Nice Agreement charge a fee per class of goods and services. Which system will Canada adopt and what will be the cost? These and other details will be found in the new regulations which are expected in fall 2016, according to the latest news from CIPO. Stay tuned!

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  • Federal Court of Canada examines metatags under copyright and trademark law

    In the decision Red Label Vacations Inc. (redtag.ca) v. 411 Travel Buys Limited (411 travelbuys.ca) 1, the Federal Court examined whether metatags attract copyright protection and whether use of a competitor’s trademark or trade name in metatags constitutes a violation of trademark rights in Canada. Metatags are words or phrases written in a website’s source code that search engines use to rank websites and which are not displayed on the actual webpages. Although the issue of intellectual property protection in the context of metatags is the subject of heated debate all over the world, this decision marks one of the first times that the Federal Court has provided clarification on how metatags fit within the Canadian copyright and trademark schemes. Facts Red Label Vacations Inc. (the plaintiff), a business offering online travel information via its website redtag.ca, is the owner of three registered trademarks: “redtag.ca”, “redtag.ca vacations” and “Shop. Compare. Payless!! Guaranteed”. The plaintiff began an action before the Federal Court for copyright infringement, trademark infringement, passing off and depreciation of goodwill against its competitor, 411 Travel Buys Limited (the defendant), an online travel agency. Specifically, several of the defendant’s webpages contained metatags that were identical or similar to the plaintiff’s metatags, including the words “red tag vacations” and “shop, compare & payless”. Since the allegedly infringing content was only found in the defendant’s metadata, it was not visible to consumers visiting the defendant’s website. The Court dismissed the plaintiff’s action. Goudreau Gage Dubuc, one of the leading intellectual property firms in Canada, joins Lavery Lawyers. The two firms have integrated their operations in order to offer their clients a complete range of legal services. The integration consolidates Lavery’s multidisciplinary approach. As the largest independent law firm in Quebec, Lavery is continuing to grow by adding the expertise brought by lawyers, patent agents and trademark agents specializing in intellectual property law, who belong to one of the most respected teams in the country. To learn more, visit www.YourIPLawyers.ca. --> Decision Concerning the alleged copyright infringement, the Court held that although the defendant copied the plaintiff’s metatags, there was no infringement since the plaintiff’s metatags did not acquire copyright protection. The Court’s rationale was based on evidence that the plaintiff’s metatags came from a list of Google key words which were combined into small generic phrases descriptive of the travel industry. As such, the threshold of originality laid out by the Supreme Court of Canada 2, i.e. requiring sufficient skill and judgment, was not met. Further, the Court concluded that in the hypothetical situation that copyright could exist in the plaintiff’s metatags, no substantial copying had occurred since only 48 out of approximately 180,000 pages of the plaintiff’s website were copied by the defendant. Finally, Justice Manson observed that the defendant inadvertently reproduced the redtag.ca metatags and that it would have nonetheless been considered innocent infringement. With regard to the alleged trademark violation, the Court acknowledged that several of the defendant’s metatags contained the dominant terms of the plaintiff’s registered trademarks and trade name, but that they were not visible to customers visiting the defendant’s webpages. The Court further indicated that the defendant had not “used” the plaintiff’s trade name or trademarks on their website. With respect to the allegations of trademark infringement and depreciation of goodwill, the Court reiterated that there had been no “use” of the plaintiff’s trademarks within the meaning of the Trademarks Act, making the claims inapplicable since “use” is a prerequisite for such claims. In assessing whether the plaintiff could succeed in a passing off claim under section 7(b) of the Trademarks Act, the Court reiterated the 3 elements that must be proven: (i) the existence of goodwill, (ii) the likelihood of deception of the public due to a misrepresentation, and (iii) actual or potential damage. The Court found that the plaintiff’s trade name Red Tag and trademarks “redtag.ca” and “Shop. Compare. Payless!! Guaranteed.” had the necessary goodwill to satisfy the first prong of the test. On the question of misrepresentation, the defendant’s use of the words “red tag” in their metadata led to redirected traffic from the plaintiff’s website to that of the defendant, both of which offer travel services to Canadians. Justice Manson’s inquiry turned on whether the defendant’s use of the dominant words of the plaintiff’s trademarks and trade name in their metatags was likely to cause deception. The Court remarked that the use of metatags in search engines provides consumers with a list of distinct links to choose from and that it does not direct them to a specific website. Although the consumers’ choice might be impacted by where a link ranks on a page of search results, the consumers always have the choice to pick the link of the particular competitor they had initially searched for. In this respect, the Court stated that: “…Accordingly, use of a competitor’s trademark or trade name in metatags does not, by itself, constitute a basis for a likelihood of confusion, because the consumer is still free to choose and purchase the goods or services from the website he or she initially searched for.” For these reasons, the Court concluded that there was no likelihood of deception and rejected the plaintiff’s claim of passing off. Our thoughts on the Federal Court decision    (i) Copyright protection in metatags Although Justice Manson did not dismiss the possibility of “original” metatags, we find it unlikely that most metatags have the potential to enjoy copyright protection in Canada. Metatags, mainly composed of descriptive key words that businesses use to attract consumers to their website, are largely guided by their function to affect search engine behavior. In this respect, they have been labelled as nothing more “than the operation of an algorithm” 3. As such, it is doubtful that a metatag can be embedded with sufficient skill and judgment. It will be interesting to see whether a future decision will provide details on what constitutes a sufficiently “original” metatag to acquire copyright protection in Canada. (ii) Use of a competitor’s trademark and trade name in metatags: a case of unfair competition? No passing off was established on the basis that metatags in a search engine simply influence website rankings while the consumers are free to choose the link representing the initial source they desired. The claims for trademark infringement and depreciation of goodwill were equally rejected as there was no “use” within the meaning of the Trademarks Act by the defendant of the plaintiff’s trade name or trademarks. While we agree with the Federal Court’s statement that there can be no trademark violation without “use” of a trademark, we wonder whether, with the proper evidence of consumers’ perceptions and reactions, this practice could constitute a form of unfair competition. Conclusion The plaintiff filed for an appeal of the Federal Court’s decision. As such, the Court of Appeal may further develop the question of intellectual property rights in metatags. We suggest you tag along…   Red Label Vacations Inc. (redtag.ca) v. 411 Travel Buys Limited (411travelbuys.ca), 2015 FC 19 (CanLII).  CCH Canadian Ltd v. Law Society of Upper Canada, 2004 SCC 13.  Insurance Corp of British Columbia v. Stainton Ventures Ltd, 2012 BCSC 608.

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  • The Charter of the French Language reviewed by the Court of Québec

    The Court of Québec has recently examined the application of the Charter of the French Language (the “Charter”) in the case of Boulangerie Maxie’s 1. This decision provides clarification as to what constitutes a “markedly predominant” use of the French language in advertising and public signs. The Court also confirmed that a trade-mark in a language other than French benefits from an exception whether registered or not. In addition, the Court ruled on the de minimis defence which may, in certain cases, be applicable when the alleged violations are minimal. The “markedly predominant” use of French Some defendants argued that the use of the French version before the English version (on a same sign), was sufficient to conclude that French was used in a “markedly predominant” manner. The Court rejected this argument and found that such a use does not meet the criteria of marked predominance. In short, the visual impact of the French version must be more important, and in this respect, the Court recalls the 2-for-1 rule provided for in the regulation which constitutes one of the ways to attain this objective:    the space allotted to the text in French must be at least twice as large as the space allotted to the text in another language; the characters used in the French version must be at least twice as large as those used in the other language; Goudreau Gage Dubuc, one of the leading intellectual property firms in Canada, joins Lavery Lawyers. The two firms have integrated their operations in order to offer their clients a complete range of legal services. The integration consolidates Lavery’s multidisciplinary approach. As the largest independent law firm in Quebec, Lavery is continuing to grow by adding the expertise brought by lawyers, patent agents and trademark agents specializing in intellectual property law, who belong to one of the most respected teams in the country. To learn more, visit www.YourIPLawyers.ca. --> The trade-marks exception Some defendants argued that they did not have to translate expressions such as “Everything inside packed with pride” and “Italian fancy leather goods” used in their advertising because these expressions fall under the “trade-marks” exception. The regulations indeed provide that “recognized” trade-marks within the meaning of the Trade-marks Act do not need to be translated into French (unless a French version has been registered). The Court found that the trade-marks exception applies not only to registered trade-marks, but also to unregistered trade-marks, provided that the expression qualifies as a “trade-mark”. In this respect, the Court was of the opinion that the “Italian fancy leather goods” was purely descriptive and did not constitute a trade-mark. This expression must therefore appear in French only or in French and in another language, provided that the French version is markedly predominant. The Court found however that “Everything inside packed with pride” qualified as a trade-mark and did not need to be translated into the French language on public signs and in advertising. This conclusion does not constitute new law. In fact, the courts have already in the past decided that an unregistered trade-mark constitutes a “recognized” trade-mark with the meaning of the Act. The Office de la Langue Française has however not amended its practice to conform to these decisions. It will therefore be interesting to see whether the Office de la Langue Française will follow the Court’s conclusions.   The de minimis defence To avoid liability, the defendants raised several defences. Apart from the arguments challenging the constitutionality of the Charter, which were rejected, the defendants pleaded that the alleged offences were minimal and did not justify legal action. This defence was rejected. According to the Court, the following facts do not qualify as minor offences justifying the application of the de minimisdefence: posting a bilingual version of same size when the Charter provides that the French version must be markedly predominant providing product packaging in English only internet website in English language, without a French translation The Court stresses however that the following facts may possibly justify a de minimis defence: a sign on which a couple of millimeters are missing to decide that the French version is markedly predominant a catalogue of hundreds of pages with equivalent French and English versions, except for a missing word or phrase bilingual packaging or instruction manuals where a word or two in French are missing   In conclusion, the Charter and its regulations establish different rules concerning the use of a language other than French (see the table below). Note that several exceptions are applicable depending for example on the nature of the products and the activities, the origin or the destination of the products. Should you have any questions, please contact a member of our firm. Quebec (Attorney General) v. 156158 Canada Inc. (Boulangerie Maxie’s), 2015 QCCQ 354

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  • Canada strengthens the protection of copyright and trademark rights with the enactment of new border enforcement measures

    Since January 1st 2015, the sections of the Act to amend the Copyright Act and the Trade-marks Act and to make consequential amendments to other Acts (“the Act”) with respect to the new border enforcement measures have come into force in Canada. The purpose of the Act is to help Canadian copyright or trademark owners in curtailing the exportation and importation of counterfeit goods that violate their intellectual property rights.  For this purpose, the Act creates new measures, specifically enabling customs officers to detain goods that they suspect infringe copyright or trademark rights. The Act also establishes a mechanism of sharing of information (for example the name and address of the owner of the goods, the name of the importer, the name of the exporter, etc.) and sharing of samples between customs officers and copyright and trademark owners who have filed a Request For Assistance to the Canadian Border Services Agency (CBSA) Intellectual Property Rights Program (“Request for Assistance”) which can be found on Canada Border Services Agency’s website at the following address: http://www.cbsa-asfc.gc.ca/security-securite/ipr-dpi/app-dem-eng.html. With the sharing of information and samples, right owners can more easily pursue a remedy in court against those persons who have violated their rights. Goudreau Gage Dubuc, one of the leading intellectual property firms in Canada, joins Lavery Lawyers. The two firms have integrated their operations in order to offer their clients a complete range of legal services. The integration consolidates Lavery’s multidisciplinary approach. As the largest independent law firm in Quebec, Lavery is continuing to grow by adding the expertise brought by lawyers, patent agents and trademark agents specializing in intellectual property law, who belong to one of the most respected teams in the country. To learn more, visit www.YourIPLawyers.ca. --> It is important to note that the Request for Assistance Form only covers registered trademarks, while both registered and non-registered copyrights are included. The Request for Assistance must include the legal name of the right holder, the right holder’s address, the contact information of the right holder’s representative for service in Canada (if applicable), the trademark or copyright (if the latter is registered) registration number, the Harmonized System Code maintained by the World Customs Organization, the name and description of authentic goods, a list of known authorized importers permitted to bring these goods into Canada (if applicable) and of known distributors of illegitimate or suspect goods. The Request For Assistance is valid for a 2-year period and can be renewed on demand. It is essential that copyright and trademark owners be aware that the government can require (1) that the copyright or trademark owner furnish security as a condition of accepting a Request for Assistance or for extending a request’s period of validity, and (2) that if they receive a sample they are liable for storage and handling charges for detained goods and, if applicable, for charges for destroying them. If the right holder decides not to obtain a remedy in court with respect to the information or samples received, then the right holder will not be liable for any charges. In order to keep goods from being released, the right holder who filed a Request for Assistance at the CBSA must file a civil suit in the 10 days following the notice of detention received from the CBSA, and therefore must be responsible in contacting their lawyers in Canada promptly in order to obtain a remedy when appropriate. Should you have any questions, please contact a member of our firm.

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  • Future changes to Canada’s Trade-Marks Act

    Significant modifications to the Canadian trade-mark system are expected in the near future. According to the Canadian Intellectual Property Office (“CIPO”), the amendments should come into force at the end of 2015 or early 2016. Said changes arise from the negotiation of a free trade agreement between Canada and Europe (Comprehensive Economic and Trade Agreement) during which Canada agreed to adopt three international treaties (Madrid Protocol, Nice Agreement and Singapore Treaty). As a result, the registration process will be simplified and the Canadian system will, to a certain extent, be harmonized with the European system and many other foreign countries. Goudreau Gage Dubuc, one of the leading intellectual property firms in Canada, joins Lavery Lawyers. The two firms have integrated their operations in order to offer their clients a complete range of legal services. The integration consolidates Lavery’s multidisciplinary approach. As the largest independent law firm in Quebec, Lavery is continuing to grow by adding the expertise brought by lawyers, patent agents and trademark agents specializing in intellectual property law, who belong to one of the most respected teams in the country. To learn more, visit www.YourIPLawyers.ca. --> The most significant changes are: abolition of the filing basis: the only filing requirement will be an intent to use the mark in Canada; abolition of the declaration of use:  no declaration of use will have to be filed to obtain a registration; Nice classification: goods and services will have to be classified according to the Nice classification. It remains to be seen whether CIPO will require only one fee per application (as the current situation) or require a fee per class or group of classes. Another outstanding issue is whether CIPO will remain as demanding in terms of details for the description of goods and services; term: registration will be valid for 10 years instead of 15 years; divisional application: under the new law, it will be possible to divide the application into divisional applications; international application: Canada will be part of the Madrid system, thus allowing Canadians to extend their rights in the member states via an international application and allowing foreigners to file directly in Canada. Despite the abolition of the filing basis and the requirement to file a declaration of use, it will still be possible to file an opposition or challenge third parties’ rights on the basis of prior use in Canada. Indeed, Canada will remain a country where rights arise from use. Before implementing these provisions which have been sanctioned in Bill C-31 last June, new trade-mark regulations must be adopted. In this respect, CIPO is now conducting pre-consultations concerning amendments to the current regulations until November 30th, 2014. CIPO will also have to update its IT systems before the coming into force of the new provisions. In light of these changes, it is expected that the number of filings will increase in Canada since (1) mere intention to use the mark will be sufficient to obtain a registration and (2) the international filing system will allow foreigners to file directly in Canada. As a consequence, it is more than ever recommended to be proactive and to file applications to protect trade-mark rights in order to avoid opposition proceedings and litigation.

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  • The Oasis case: When juice turns to vinegar – The impact of social media on justice

    Two Lassonde companies (hereinafter Lassonde), holders of the OASIS trade-mark used mainly to identify fruit juices, instituted legal proceedings against Oasis d’Olivia Inc., requesting that the Quebec Superior Court order it to stop using the OLIVIA’S OASIS trade-mark for soap, and to pay exemplary and punitive damages. Lassonde also opposed the registration of the OLIVIA’s OASIS trade-mark before the Canadian Intellectual Property Office. Lassonde lost before the Superior Court, which found that there was no likelihood of confusion between the two trade-marks and condemned Lassonde’s abuse of procedure, ordering it to reimburse Oasis d’Olivia’s legal fees and to pay $25,000 as punitive damages. Lassonde appealed the question of legal fees and punitive damages to the Quebec Court of Appeal, where the decision of the Superior Court was quashed because there was no evidence of abuse of procedure. After analyzing Lassonde’s behavior in this case, the absence of explicit intimidation, and in view of the fact that the exercise of two concurrent remedies is common practice in trade-mark matters, the Court of Appeal was not convinced that there was an abuse of procedure. The Court added that the legal question at the heart of the debate must not have been obvious considering that the trial judge wrote a 50-paragraph judgment after 5 days of trial and a long deliberation. Following the Court of Appeal’s decision, the press, closely followed by social media, seized on the matter and expressed such dissatisfaction that Lassonde decided to retreat and to reimburse Oasis d’Olivia Inc.’s legal fees. The following reflections stem from these events: 1. A trade-mark owner must exercise judgment to identify the situations where he should take action and those where he should refrain from acting. When an owner analyzes this question, he must take into account his chances of success, the importance of the problem and the future impact on his rights, etc., and he must also explore the possible impact of such an action on his reputation. This consideration is not new but is increasingly important now that social media can spread information around the world instantly. 2. The Court of Appeal stressed that legal action was justified as a means to strengthen Lassonde’s identification to its trade-mark. We add that a trade-mark owner who does not react when his rights are violated can see his rights undermined and even nullified in certain circumstances. 3. Article 54.1 of the Québec Code of Civil Procedure states that an action may be deemed improper if it is clearly unfounded. Given that the trade-marks in question have significant differences as far as the phonetic, visual and semantic aspects are concerned, that the term OASIS has a meaning in ordinary language, that no one can own this term, that the protagonists sold their products for different purposes and to different clients, that their products were not found side by side in the same establishments and that there was no overlapping of distribution niches, we question the legal basis for the action. 4. It may be difficult to show an abuse of procedure. One cannot unduly interfere with access to our legal system. Goudreau Gage Dubuc, one of the leading intellectual property firms in Canada, joins Lavery Lawyers. The two firms have integrated their operations in order to offer their clients a complete range of legal services. The integration consolidates Lavery’s multidisciplinary approach. As the largest independent law firm in Quebec, Lavery is continuing to grow by adding the expertise brought by lawyers, patent agents and trademark agents specializing in intellectual property law, who belong to one of the most respected teams in the country. To learn more, visit www.YourIPLawyers.ca. --> 5. The duration of the trial is not indicative of abuse but depends on the efforts deployed by both parties. The long decision could be explained by the fact that the analysis of the likelihood of confusion requires the examination of several criteria and considerations, which has no bearing on whether or not the conclusion could be easily predicted. 6. Social media can react to situations in an unfair manner although there is no question that their impact is powerful. The opinions expressed on social media do not necessarily take into account the rules of law and evidence, and may even be contrary to law. Social media can lead to other types of abuse such as, for instance, when contributors are moved by their degree of sympathy for the parties involved more than by a consideration for their legal rights. 7. Properly used, social media may be an interesting tool for whoever wants to gather information to assert their rights, to identify those who have received similar demand letters and those who decide not to sue or not to defend themselves for lack of sufficient economic means, and thus, social media may assist in gathering broad evidence of abuse of procedure.

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