Archive for November, 2016

How long does it take to get a patent?

By Richard Stobbe

Patent advisors are often asked this question. In Canada, CIPO has published the first-ever IP Canada Report, which contains an interesting trove of IP statistics. Among the infographics and pie-charts is a series of bar graphs showing the time to issuance for Canada patents.

Figure 25 – Average time period in months for the three main stages of the patent process (Courtesy of CIPO)

ipcr_fig25_en

Over the past four years, the patent office in Canada has been able to shave months off the delivery time, but the average is still in the neighbourhood of 80 months, or roughly 6 1/2 years.  Certainly some patents will issue sooner, in the 3 – 4 year range, and some will take much longer.  There are strategies to influence (to some degree) the pace of patent prosecution.

And remember, this is the time to issuance from filing. The time to prepare and draft the application must also be factored in.

Ensure that you get advice from your patent agent and budget for this period of time, it’s a commitment.  More questions on patenting your inventions? Contact us.

 

Calgary – 07:00 MT

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“Place of origin” as a trademark in Canada

By Richard Stobbe

The Canadian trademarks office has released a Practice Notice in order to clarify current practice with respect to applying the descriptiveness analysis to geographical names.

In our earlier post on this topic (Trademark Series: Can a Geographical Name be a Trademark?), we noted that a geographical name can be registrable as a trademark in Canada. The issue is whether the term is “clearly descriptive or deceptively misdescriptive” in the English or French languages of the place of origin of the goods or services.

The Practice Notice tells us that a trademark will be considered a “geographic name” if the examiner’s research shows “that the trademark has no meaning other than as a geographic name.” It’s unclear what this research would consist of. (A search in Google Maps? An atlas?)

Even if the mark does have other meanings, other than as a place name, the mark will be still considered a geographical name if the trademark “has a primary or predominant meaning as a geographic name. The primary or predominant meaning is to be determined from the perspective of the ordinary Canadian consumer of the associated goods or services. If a trademark is determined to be a geographic name, the actual place of origin of the associated goods or services will be ascertained by way of confirmation provided by the applicant.” (Emphasis added)

In some case, the “actual origin” of products may be easy to determine – where, for example, apples are grown in British Columbia, then it stands to reason that “British Columbia” would be clearly descriptive of the place of origin and thus clearly descriptive of the goods. Apples are likely to be grown and harvested in one location. But how would one determine the “actual origin” of, say, a laptop which is designed in California, with parts from Taiwan and China, assembled in Thailand?

If the examiner decides that the geographic name is the same as the actual place of origin of the products, the trademark will be considered “clearly descriptive” and unregistrable. If the geographic name is NOT the same as the actual place of origin of the goods and services, the trademark will be considered “deceptively misdescriptive” since the ordinary consumer would be misled into the belief that the products originated from the location of that geographic name.

It’s worth noting that the place of origin of the products is not the same as the address of the applicant. The applicant’s head office is irrelevant for these purposes.

Need assistance navigating this area? Contact experienced trademark counsel.

 

Calgary – 07:00 MT

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Use of a Trademark on Software in Canada

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By Richard Stobbe

Xylem Water Solutions is the owner of the registered Canadian trademark AQUAVIEW in association with software for water treatment plants and pump stations.  Xylem received a Section 45 notice from a trademark lawyer, probably on behalf of an anonymous competitor of Xylem, or an anonymous party who wanted to claim the mark AQUAVIEW for themselves. This is a common tactic to challenge, and perhaps knock-out, a competitor’s mark.

A Section 45 notice under the Trade-marks Act requires the owner of a registered trademark to prove that the mark has been used in Canada during the three-year period immediately before the notice date. As readers of ipblog.ca will know, the term “use” has a special meaning in trademark law. In this case, Xylem was put to the task of showing “use” of the mark AQUAVIEW in association with software.

How does a software vendor show “use” of a trademark on software in Canada?

The Act tells us that “A trade-mark is deemed to be used in association with goods if, at the time of the transfer of the property in or possession of the goods, in the normal course of trade, it is marked on the goods themselves or on the packages in which they are distributed…” (Section 4)

The general rule is that a trademark should be displayed at the point of sale (See: our earlier post on Scott Paper v. Georgia Pacific). In that case, involving a toilet paper trademark, Georgia-Pacific’s mark had not developed any reputation since it was not visible until after the packaging was opened. As we noted in our earlier post, if a mark is not visible at the point of purchase, it can’t function as a trade-mark, regardless of how many times consumers saw the mark after they opened the packaging to use the product.

The decision in Ashenmil v Xylem Water Solutions AB, 2016 TMOB 155 (CanLII),  tackles this problem as it relates to software sales. In some ways, Xylem faced a similar problem to the one which faced Georgia-Pacific. The evidence showed that the AQUAVIEW mark was displayed on website screenshots, technical specifications, and screenshots from the software.

The decision frames the problem this way: “…even if the Mark did appear onscreen during operation of the software, it would have been seen by the user only after the purchaser had acquired the software.  … seeing a mark displayed, when the software is operating without proof of the mark having been used at the time of the transfer of possession of the ware, is not use of the mark” as required by the Act.

The decision ultimately accepted this evidence of use and upheld the registration of the AQUAVIEW mark. It’s worth noting the following take-aways from the decision:

  • The display of a mark within the actual software would be viewed by customers only after transfer of the software.  This kind of display might constitute use of the mark in cases where a customer renews its license, but is unlikely to suffice as evidence of use for new customers.
  • In this case, the software was “complicated” software for water treatment plants. The owner sold only four licenses in Canada within a three-year period.  In light of this, it was reasonable to infer that purchasers would take their time in making a decision and would have reviewed the technical documentation prior to purchase.  Thus, the display of the mark on technical documentation was accepted as “use” prior to the purchase. This would not be the case for, say, a 99¢ mobile app or off-the-shelf consumer software where technical documentation is unlikely to be reviewed prior to purchase.
  • Website screenshots and digital marketing brochures which clearly display the mark can bolster the evidence of use. Again, depending on the software, purchasers can be expected to review such materials prior to purchase.
  • Software companies are well advised to ensure that their marks are clearly displayed on materials that the purchaser sees prior to purchase, which will differ depending on the type of software. The display of a mark on software screenshots is not discouraged; but it should not be the only evidence of use. If software is downloadable, then the mark should be clearly displayed to the purchaser at the point of checkout.
  • The cases have shown some flexibility to determine each case on its facts, but don’t rely on the mercy of the court: software vendors should ensure that they have strong evidence of actual use of the mark prior to purchase. Clear evidence may even prevent a section 45 challenge in the first place.

To discuss protection for your software and trademarks,  contact us.

Calgary – 07:00 MST

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Dear CASL: When can I rely on “implied consent”?

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By Richard Stobbe

Canada’s Anti-Spam Legislation (CASL) is overly complex and notoriously difficult to interpret – heck, even lawyers start to see double when they read the official title of the law (An Act to promote the efficiency and adaptability of the Canadian economy by regulating certain activities that discourage reliance on electronic means of carrying out commercial activities, and to amend the Canadian Radio-television and Telecommunications Commission Act, the Competition Act, the Personal Information Protection and Electronic Documents Act and the Telecommunications Act).

The concept of implied consent (as opposed to express consent) is built into the law, and the trick is to interpret when, exactly, a company can rely on implied consent to send commercial electronic messages (CEMs). There are a number of different types of implied consent, including a pre-existing business or non-business relationship, and the so-called “conspicuous publication exemption”.

One recent administrative decision (Compliance and Enforcement Decision CRTC 2016-428 re: Blackstone Learning Corp.) focused on “conspicuous publication” under Section 10(9) of the Act. A company may rely on implied consent to send CEMs where there is:

  1. conspicuous publication of the email address in question,
  2. the email address is not accompanied by a statement that the person does not wish to receive unsolicited commercial electronic messages at the electronic address; and
  3. the message is relevant to the person’s business, role, functions, or duties in a business or official capacity.

In this case, Blackstone Learning sent about 380,000 emails to government employees during 9 separate ad campaigns over a 3 month period in 2014. The case against Blackstone by the CRTC did not dwell on the evidence – in fact, Blackstone admitted the essential facts. Rather, this case focused on the defense raised by Blackstone. The company pointed to the “conspicuous publication exemption” and argued that it could rely on implied consent for the CEMs since the email addresses of the government employees were all conspicuously published online.

However, the company provided very little support for this assertion, and it did not provide back-up related to the other two elements of the defense; namely, that the email addresses were not accompanied by a “no spam” statement, and that the CEMs were relevant to the role or business of the recipients. The CRTC’s decision provides some guidance on implied consent and “conspicuous publication”:

  • The CRTC observed that “The conspicuous publication exemption and the requirements thereof set out in paragraph 10(9)(b) of the Act set a higher standard than the simple public availability of electronic addresses.” In other words, finding an email address online is not enough.
  • First, the exemption only applies if the email recipient publishes the email address or authorizes someone else to publish it. Let’s take the example of a sales rep who might publish his or her email, and also authorize a reseller or distributor to publish the email address. However, the CRTC notes if a third party were to collect and sell a list of such addresses on its own then “this would not create implied consent on its own, because in that instance neither the account holder nor the message recipient would be publishing the address, or be causing it to be published.”
  • The decision does not provide a lot of context around the relevance factor, or how that should be interpreted. CRTC guidance provides some obvious examples – an email advertising how to be an administrative assistant is not relevant to a CEO.  In this case, Blackstone was advertising courses related to technical writing, grammar and stress management. Arguably, these topics might be relevant to a broad range of people within the government.
  • Note that the onus of proving consent, including all the elements of the “conspicuous publication exception”, rests with the person relying on it. The CRTC is not going to do you any favours here. Make sure you have accurate and complete records to show why this exemption is available.
  • Essentially, the email address must “be published in such a manner that it is reasonable to infer consent to receive the type of message sent, in the circumstances.” Those fact-sepecific circumstances, of course, will ultimately be decided by the CRTC.
  • Lastly, the company’s efforts at compliance may factor into the ultimate penalty. Initially, the CRTC assessed an administrative monetary penalty (AMP) of $640,000 against Blackstone. The decision noted that Blackstone’s correspondence with the Department of Industry showed the “potential for self-correction” even if Blackstone’s compliance efforts were “not particularly robust”. These compliance efforts, among other factors, convinced the commission to reduce the AMP to $50,000.

As always, when it comes to CEMs, an ounce of CASL prevention is worth a pound of AMPs. Get advice from professionals about CASL compliance.

See our CASL archive for more background.

Calgary 07:00 MST

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