2019: AN INTELLECTUAL PROPERTY YEAR IN REVIEW

While it seems hard to believe, 2019 is coming to an end.  This year was full of changes to intellectual property law, and interesting decisions. Below, we have a summary of these events.

January 2019: Not everybody is loving it.  A European Union court expunged McDonald’s Corp “BIG MAC” trademark registration. The Court argued the McDonald’s had not genuinely used the trademark for the preceding five years. Some stated this decision can help prevent larger companies from trademark squatting.

February 2019:  Pop culture wants to be popular but not imitated. Alfonso Ribiero sued several video game publishers for their use of the Carleton Dance from The Fresh Prince of Bel-Air and tried to register the dance with the US Copyright Office. However, the US Copyright Office stated that the dance was a “simple choreographic routine” and thus not protected by copyright.

March 2019: Are you registered?  In Fourth Estate Public Benefit Corp. v. Wallstreet.com, LLC, et al., the US Supreme Court ruled that an US-based copyright holder can only sue for infringement upon registration. This decision shows how US copyright differs from Canadian copyright, where registration is not a requirement.

April 2019: On April 1, 2019, Canada joined WIPO’s Digital Access Services for industrial design applicants. This means industrial design applicants only have to provide the number and filing date of a priority document filed in a reciprocating jurisdiction. They do not have to file a certified copy of the priority document. This will make the application process potentially easier and faster.

May 2019:  An American federal judge ruled that Qualcomm’s patent-licensing policies violated antitrust laws. Judge Koh wrote that “Qualcomm’s licensing practices have strangled competition” in the wireless modem chip industry. This case is divergent from other antirust investigations and cases.  For example, in 2013, the Federal Trade Commission abruptly ended an investigation into Google.

June 2019: On June 17, 2019, Canada implemented the new Trademarks Act and acceded to the Madrid Agreement, the Singapore Treaty and the Nice Agreement. The Madrid Agreement permits one to register a trademark in contracting jurisdictions. This Act made significant changes to Canada’s trademark rules. Now, trademarks protect smells, sounds and textures not just words or designs. A trademark’s lifespan is only 10 years. Some business owners might appreciate the increased number of characteristics they can protect. In contrast, some might worry this new Act could lead to unscrupulous allegations of infringement. For example, no two people process scent in the exact same way. Therefore, it would be easy for an owner of a scent to unfairly allege a competitor’s scent is confusing.

July 2019:  The European Court of Justice found that the German news site “Funke Medien” might have infringed the German government’s copyright by publishing government documents discussing military deployments.  Funke Medien argued there was public interest in the documents. The Court stated that freedom of expression was important goal and can be an exception to copyright law. However, if that exception applied in the above- mentioned case was for another court to decide. This case shows how intellectual property protection sometimes clashes with other values.

August 2019:  Use it or lose it. Trademark owners must use their trademarks or they risk having them expunged. Use requires that Canadians receive a “tangible and meaningful benefit while in Canada”. However, the question is what exactly constitutes a “tangible and meaningful benefit while in Canada”. In Live! Holdings, LLC v. Oyen Wiggs Green & Mutala LLP, 2019 FC 1042, the Federal Court decided “use” did not occur when Canadians could book hotels rooms in the USA on a website that contained the company’s trademark. The court stated that the benefit, a booked hotel room, was only realized in the USA. Thus, the benefit was not realized in Canada. This case highlights that the Federal Court has a broad interpretation of “use” but it does not have an unlimited interpretation of “use”.

September 2019: During the 2019 Canadian federal election, the Liberal Party promised, if re-elected, to institute a federal orphan drug policy. Canada is currently the only industrialized jurisdiction without a federal orphan drug policy. Orphan drugs are drugs that treat rare diseases; such diseases being diseases that affect relatively small percentages of the population. Due to the relatively small number of affected individuals, many pharmaceutical companies feel such drugs would not be profitable. This is to the detriment of people with rare diseases. Therefore, many governments have instituted sui generis policies to encourage the production of such drugs. Some policies include tax credits and exclusivity periods. It will be interesting to see what a made-in-Canada orphan drug policy includes.

October 2019: On October 30, 2019, significant changes to Canada’s Patent Act and Patent Rules came into effect. These changes were to conform with several treaties including the Patent Law Treaty. The changes are both administrative, including shorter timelines for responding to final fee payments and examination requests, and substantive, like granting certain third-party rights during abandonment. Similar to the new Trademarks Act, these changes were another example of the Canadian government amending Canada’s intellectual property statutes to conform with international standards.

November 2019: In a Canadian first, the Federal Court ruled, in Bell TV Media Inc. v GoldTV.Biz 2019 FC 1432, that Internet Service Providers should block websites that sell pirated television shows. This decision generated a lot of commentary. Some argue this decision ensures people have a wide range of arsenal to combat piracy and copyright infringement. In contrast, others believe this decision is an overly heavy-handed measure.

December 2019:  Not everybody will let it go. Trust Your Journey, a Nevada-based cancer advocacy group, sued Disney for trademark infringement for using the term “Trust Your Journey” on Frozen branded merchandise. It will be interesting to see what the result of this dispute. Will it be settled outside of court? Will it go to court?

There you have it! These were just some of the important 2019 intellectual property milestones. It will be interesting to see what the new decade will bring!

Author: Margot Mary Davis

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