Lexpert US Guides

40 | LEXPERT • June 2019 | www.lexpert.ca/usguide couver and Toronto. It garnered many more followers, boasting a circulation of 11,000 per week in Vancouver and 13,000 per week in Toronto by 2010. at year – some 42 years aer it began distribution in Canada – Hamdard sought registration of its trademark AJIT. Navsun opposed it, arguing that Hamdard's mark was not distinctive because Navsun was us- ing the same name. Although the parties acknowledged that Punjabi readers in Canada likely as- sociated AJIT with the Indian publication, the Opposition Board held that Navsun's much greater readership negated the dis- tinctiveness of Hamdard's mark. Hamdard appealed unsuccessfully to the Federal Court and then took the mat- ter to the FCA, where the Indian publish- er lost again. "Whether or not the appellant was the first to use the mark in Canada and whether or not the respondent's subsequent use was infringing are of no consequence where, as here, the parties have used the mark concur- rently for over a decade, and, in that time, the respondent has successfully acquired notoriety in the mark in Canada sufficient to negate the distinctiveness of the appel- lant's mark," wrote Justice Donald Ren- nie for the court. "As noted by this Court in Farside Clothing Ltd. v. Caricline Ventures Ltd. . . . infringing prior use may cause a mark to lose its distinctiveness, although the extent or degree to which distinctiveness is eroded by infringing use remains a question of fact to be considered in each case. e al- legation of passing off does not preclude a party from relying on the alleged infringing use to challenge distinctiveness." And a final word of warning : "It is in- cumbent upon a trader to protect the dis- tinctiveness of its mark, even in the face of infringing use," Rennie wrote. tant changes to Canada's Patent Act. One of the most important changes is the expansion of the prior user rights doc- trine found in section 56 of the statute. Previously, this section provided that anyone who "purchased, constructed, or acquired" the subject matter of a patent before the priority date had the right to "use and sell" the patented matter to others without liability to the patentee. By way of contrast, the amendments al- low anyone who, before the priority date and acting in good faith, did anything that would have amounted to infringement of the patent, to commit the same act af- ter the priority date without being liable for infringement. Doug Deeth of Deeth Williams Wall LLP in Ottawa believes that the new it- eration of prior use could have a significant impact in the e-commerce arena. "When you think about it, a lot of pat- ent claims nowadays are directed to ac- tivities which in the absence of a computer would be exactly the same activities that have been carried on in the past," he says. "e amendment would let the people who have been doing things in the old way off the hook for infringement." e amendments also allow the use of prosecution history in claim construction. is includes all written communications between an applicant and the Patent Office, and not only to written communications from the applicant to the Patent Office. "For the past 30 years, we've had to fig- ure out the intention of the inventor from the objective point of view of a skilled per- son," Deeth says. "Now, we can have direct evidence of what the applicant for the pat- ent meant." Finally, the amendments provide that any licensing commitment from a paten- tee regarding a standard-essential patent (a patent that claims an invention that must be used to comply with a technical stan- dard) is binding on any subsequent assign- ees of the patent. "We're just catching up to the rest of the world with this one," Deeth says. Turning to trademarks, a brand-new Trademarks Act will come into effect on June 17, 2019. e key changes will affect applications, changes, registrations and renewals. So far as applications are concerned: ap- plicants will no longer have to state a basis for their filing or the dates and details of use; the Nice Classification system and Madrid Protocol have been adopted; fil- ing fees have increased and are now based on the number of class registrations sought; and the definition of "trademarks" will now cover anything that functions as an indica- tor of source such as scent, taste and texture. On the renewals front, all renewals will have to be amended to conform with the Nice Classification System; the term of new renewals is not 10 years, as opposed to the previous 15 years; and fees have increased. Other changes mandate that the Ca- nadian Intellectual Property Office no longer requires documentary proof of as- signments and associated marks have been deleted from the register. ere are also numerous changes to examination, opposi- tion and technical requirements. Still, perhaps the most important thing that foreign trademark holders should know is that Canadian courts have consis- tently fixed on delays in enforcing rights as a reason to deny them. e high-water mark, perhaps, is in the Federal Court of Appeal's (FCA) January 2019 decision in Sadhu Singh Hamdard Trust v. Navsun Holdings Ltd. e case involved parties who both published Punjabi language newspapers called AJIT. e plaintiff Hamdard Trust's publica- tion was famous in India and had been dis- tributed in Canada since 1968. But its peak distribution in Canada was no more than 29 annual subscribers, achieved between 1990 and 1993. In 1993, the defendant Navsun began distributing a weekly publication in Van- IP & Media "When you think about it, a lot of patent claims nowadays are directed to activities which in the absence of a computer would be exactly the same activities that have been carried on in the past. The amendment would let the people who have been doing things in the old way off the hook for infringement." Doug Deeth of Deeth Williams Wall LLP in Ottawa

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