Emily Xiang is an IPilogue Writer, a Senior Fellow with the IP Innovation Clinic, and a 3L JD Candidate at Osgoode Hall Law School.

What do a company in the business of mining and selling construction equipment, and an athletic-wear and sporting accessories brand, have in common? Apparently, the cat has been let out of the bag on this one. On January 10th, 2023, the Federal Court of Appeal released one of its first trademark of the year in .The Federal Court of Appeal held in favour of the construction machinery and equipment company over Puma’s use of the trademark PROCAT in association with footwear and headgear.

Puma first applied for the trademark PROCAT in 2012 for its sub-brand of youth sporting accessories. Caterpillar shortly opposed the application, asserting that, inter alia, the PROCAT mark was confusing with Caterpillar’s own CAT & Triangle Design [shown below]. Caterpillar’s CAT & Triangle Design was also registered in association with footwear and headgear. Specifically, the design was related to a line of work and sport footwear that the company had been operating in Canada since 1994. When the matter was brought before the , the hearing officer held that there was no reasonable likelihood of confusion between the marks. The officer explained that Caterpillar had failed to show that they possessed sufficient control over the character or quality of the goods sold in association with the CAT & Triangle Design through its licensees.

On , Caterpillar submitted new evidence in order to demonstrate requisite control and that it had accrued benefit from its licensees’ use of its marks. The court found the new evidence  to be material. Moving on to the likelihood of confusion analysis, the court agreed with the hearing officer that the two marks were indeed similar in appearance and sound due to the word “CAT.” But the court also found Puma’s prefix “pro” to be suggestive or laudatory of the company’s goods. Therefore, the prefix was not enough to distinguish it from Caterpillar’s CAT. Puma had also submitted 13 other trademarks to evidence that the “CAT” element had little distinctiveness in the marketplace and should therefore be subject to a smaller ambit of protection. When elements appear over and over again in trade, is generally acceptable in order to allow for fair competition. However, the court in this case found Puma’s evidence to be insufficient in demonstrating the state of the register. The Federal Court therefore overturned the decision of the hearing officer and found that there indeed would be a reasonable likelihood of confusion between the two CATs.��

Unfortunately for the sporting brand, the court of appeal did not have much to say by way of correction either. In appealing the decision to the , Puma argued that the FC judge had erred in her findings. In Puma’s view, the FC judge had failed to consider each of the marks as a whole, and contended that it would be impossible for a consumer that was not “” to be confused as to the source of the two companies’ respectively marked goods. The sporting brand also tried to rely on its other cat-nominative trademarks, such as its better-known “jumping cat” design, as evidence of brand recognition, though this was still insufficient to sway the courts.��

The Federal Court of Appeal was therefore unable to find any palpable or overriding error in the FC judge’s decision. For Puma, its with regards to its use of PROCAT in association with footwear and headgear beyond a trivial level proved detrimentally determinative. Ultimately, Puma’s evidence and arguments were not enough to go up against Caterpillar’s prior registration and surprisingly long-standing presence in the Canadian market.

The post ‘It’s Raining Cats and Caterpillars!: How a Lack of Evidence Killed the CAT’ appeared first on IPOsgoode.

Photo by Engin Akyurt ()

Prof. Pina D’Agostino is the Founder and Director of IP Osgoode, the IP Intensive Program, and the IP Innovation Clinic, the Founder and Editor-in-Chief of the IPilogue, the Deputy Editor of the Intellectual Property Journal, and an Associate Professor at Osgoode Hall Law School. This article features contributions from Ryan Wong (IP Osgoode & IP Innovation Clinic Alumnus), Sabrina Macklai (IPilogue Senior Editor), Tianchu Gao (IPilogue Writer), and Ashley Moniz (IPilogue Managing Editor).

2021 was an exciting year for the IPilogue. Our hard-working students and community members published more than twice as many articles than in 2020 and the most articles in a calendar year since 2011. This sharp increase helped us stay up to date with some of the biggest topics shaking up intellectual property: from , to ; and from growing investments in and , to IP registrars around the world grappling with whether to acknowledge  as an inventor or artist. This article summarizes the top developments reported on our blog and in patents, trademarks, and copyright law in 2021. For a review of Privacy legislation in Canada, check out .

Top 10 Most Read IPilogue Articles Published in 2021

1. by Sabrina Macklai & Emily Chow
2. by Prof. David Vaver
3. by Claire Wortsman
4. By Claire Wortsman
5. by Natalie Bravo
6. by Prof. Giuseppina D’Agostino
7. by Bonnie Hassanzadeh
8. By Meena Alnajar
9. by Prof. David Vaver
10. by Bonnie Hassanzadeh

Introducing the College of Patent Agents & Trademark Agents

On , the came into force. The Act established the (‘’), an independent public interest regulator of patent and trademark agents in Canada. The purpose of the College is “to enhance the public’s ability to secure the rights provided under the and the .” The College’s responsibilities include maintaining professional competencies and ethics, issuing licences, collecting fees, and administering certification exams. This development marks a key milestone for the profession and for Canada’s . Though still in its infancy, the College has been criticized for and its , which may impose an additional fee on lawyer agents. It remains to be seen how influential the College is on the profession as it is expected to be fully operational within the next two years.

Patents

Overbreadth as an Independent Ground of Invalidity

On July 28, 2021, the Federal Court of Appeal confirmed overbreadth as a standalone attack on patent validity: . In this case, the appellants argued that there is no statutory basis for overbreadth as a ground for invalidity. The Federal Court of Appeal disagreed and found that overbreadth can be supported by a combination of sections 27(3) and 27(4) of the Patent Act. Case law has often overlapped overbreadth with other grounds of invalidity such as obviousness, anticipation, and inutility.��

First Time Interpreting Patent Agent Privilege

Similar to solicitor-client privilege, patent agent privilege was introduced by section 16.1 of the Patent Act on June 24, 2016. The first case on patent agent privilege was decided this year: In this decision, the Federal Court provided some helpful commentary and analysis on the application and limitations of patent agent privilege.��

Patent Prosecution History Now Admissible as Evidence

In 2018, section 53.1 of the Patent Act was added to make patent prosecution history admissible as evidence in patent proceedings. This was a significant development as the Supreme Court of Canada had expressly rejected the idea and stated that admitting patent prosecution history “would undermine the public notice function of the claims, and increase uncertainty as well as fuelling the already overheated engines of patent litigation” (Free World Trust v Électro Santé Inc., 2000 SCC 66 at para. 66). Three subsequent Federal Court of Appeal decisions developed this provision further: ; ; and .��

Continued Debates over AI as an Inventor

Around the world, patent registrars grappled with patent applications that credit artificial intelligence software as the inventor. Dr. Stephen Thaler’s “DABUS” (Device for Autonomous Bootstrapping of Unified Sentience) applied for patents around the world for its interlocking food containers. DABUS was granted patents in Australia and South Africa, with . In line with the and the , the disagreed, stating that absent express intention from Congress, the term “individual” in their statutory definition of “inventor” . The Supreme Court of Canada last considered the definition of "inventor" in 2002, but has yet to consider whether it would include non-human entities.

Trademark Law

Parody in Trademarks is No Joke

In , the Federal Court reaffirmed that parody is not a defence against trademark violation. Unlike the 2020 decision ), where the Federal Court failed to find the marks confusing, Justice McHaffie held there was a likelihood of confusion and passing off. This was based partly on the similarity of the trademarks and the overlap of the goods (both offering baked goods). However, even if the nature of the parties’ trades differ, trademark owners may still find recourse against spoofed versions of their marks through claiming depreciation of goodwill under section 22 of the . Here, the Court found goodwill in Subway’s trademarks, which was damaged by the nature of Budway’s products, as contrary to Subway’s “healthy and active” lifestyle promotion. With damages amounting to $40,000, it is clear the courts are unamused by parody in trademarks.

The Road Less Travelled Cannot be Trademarked

Like most countries, Canada bars the registration of “clearly descriptive” trademarks to prevent applicants from monopolizing words that merely describe the goods or services at hand. For this reason, marks consisting of are typically unregistrable. In , the Federal Court clarified when such marks might be protected. Hidden Bench and Locust Lane are two wineries operating on the same little road, “Locust Lane”. Although the Federal Court agreed that Hidden Bench met the threshold for a valid common law trademark over “Locust Lane”, they ultimately held that the mark, as clearly describing the goods and services’ place of origin, lacked both inherent and acquired distinctiveness. Therefore, Hidden Bench could not establish the necessary goodwill for a passing off claim. Only descriptive marks that have acquired a “secondary meaning” through use may warrant protection.

CIPO Addresses the Application Backlog

While filing trademarks is important for brand protection, the examination stage can take . In May, the Canadian Intellectual Property Office (CIPO) new measures to address the application backlog. Trademark owners may now file requests to expedite their examination where the registration of their mark is necessary for special circumstances such as if a Canadian court action involving the mark is expected or underway or if the goods or services are aimed at preventing, diagnosing, treating, or curing COVID-19. If accepted, the examination will take place within two weeks. The examination is also automatically expedited by approximately 6-10 months when the goods and services in the application are listed in CIPO’s . Though it is too early to assess the effect of these changes on mitigating the “”, the backlog of CIPO’s unexamined trademark applications appears to have as of December 13, 2021.

Push to Register Non-French Trademarks for Use in Quebec

Among the controversies associated with Quebec’s proposed Bill 96, , the bill stipulates new requirements for trademark owners operating in Quebec. Currently, under Quebec’s French-language laws, both registered and unregistered (i.e., common law) trademarks recognized under the may appear on public signs, posters, and commercial advertising in Quebec, in languages exclusively other than French. If enacted, Bill 96 would permit only registered non-French trademarks to appear on public signage, provided there is no corresponding registered French version of the mark. The Coalition Avenir Quebec government tabled Bill 96 on May 13, 2021, and Quebec’s National Assembly last examined it on December 10. Some iteration of the bill will likely become law by the end of this year. But even if it fails to pass, businesses relying on common law trademarks would be wise to try to register them, given the many that registration provides.��

Copyright Law

In 2021, the Federal Court and Federal Court of Appeal heard 57 copyright infringement proceedings, approximately of all IP-related litigations at these levels.

Developments in Fair Dealing

The Copyright Act’s section 29 fair dealing provision, which allows for certain uses of copyright-protected materials, remained a central issue. affirmed that fair dealing for the purpose of news reporting (section 29.2 of the Act) must provide attribution, mentioning both the source and the name of the author. An indirect reference to the author accessible through “minimum research” is insufficient. As such, the Federal Court of Appeal rejected Trend Hunter’s argument that hyperlinking to the source article where Stross was credited was sufficient to meet the second requirement. The Court also declined to find fair dealing under s. 29 more broadly, considering that Trend Hunter’s dealing was commercial in nature, reproduced Stross’ work in its entirety, and that alternatives were available.

Fair dealing was once again at issue in , where the Federal Court held that the Conservative Party’s use of the CBC’s news footage of Liberal Party Leader and Prime Minister Justin Trudeau during their 2019 election campaign did not infringe CBC’s copyright. The court undertook a large and liberal interpretation of fair dealing, finding that the Conservative Party’s use of CBC footage was for the purpose of criticism under s. 29.1.

91��ɫ achieved a in the copyright tariff dispute with the Canadian Copyright Licensing Agency (“Access Copyright”) in In a unanimous decision, the Supreme Court ruled that the interim tariff approved by the Copyright Board is not mandatory. Users can choose whether to accept licences or pursue alternative methods to lawfully copy works. Notably, this marked Justice Rosalie Abella’s final decision before her retirement from the Supreme Court of Canada. Throughout her tenure, and her judgement here provided helpful obiter regarding fair dealing as integral to users’ rights.

Even Fake Facts are Not Copyrightable

involves the alleged copyright infringement of the famous true-crime story The Black Donnellys. The book had always been presented and accepted as “.” The Federal Court ruled that “an author who publishes what is said to be a nonfiction historical account cannot later claim the account is actually fictional to avoid the principle that there is no copyright in facts.” Given today’s popularity of the phrase “based on a true story”, this ruling is a that there is no copyright in facts, even if they are later found to be untrue.

Copyright in Evolving Content Transmission

In , the Federal Court found the defendant liable for copyright infringement in its provision of pre-loaded set-top boxes and internet protocol television (IPTV) services and awarded the plaintiff nearly $30 million in damages. These services made copyrighted works owned by the plaintiff available to the public without the plaintiff’s permission. This decision marks the first time The court dealt with a similar issue in ). As IPTV is growing increasingly popular across the globe, its poses a challenge in Canada.

Availability of Reverse Class Actions for Copyright Infringement Claims

The first of its kind in Canada, the Federal Court of Appeal in affirmed that reverse class actions may be pursued in connection with copyright infringement claims. Though the matter was sent back to the Federal Court for further consideration, this judgement may encourage and enable mass copyright enforcement in the future, especially in our digital age where copyright infringement is more commonplace.

Public Consultations Ahead of 2022’s Copyright Reform

As part of the (CUSMA), which came into force on July 1, 2020, Canada has until the end of 2022 to implement numerous changes to their domestic copyright laws; most notably, extending the general term of copyright protection from . In light of the upcoming legislative amendments, the Government of Canada hosted three public copyright consultations in 2021:

• ;
• ; and

With the consultations now closed, it will be interesting to see how Canadian copyright laws will change in 2022 to accord not only with international obligations but our ever evolving digital world and public attitudes surrounding copyright laws.

The post 2021 IP Year in Review appeared first on IPOsgoode.

The Supreme Court of Canada, in its recent “Masterpiece” decision,^[2] sent a strong message to the legal and social science communities with respect to survey evidence.

The Court ruled on a dispute between two parties operating in the retirement residence industry, one using the trade-mark “Masterpiece the Art of Living” (among others), and one using the trade-mark “Masterpiece Living.”  The Court determined that there was likely to be marketplace confusion created by use of these two trade-marks, and ordered the latter expunged from the trade-mark register. The decision clarified certain statutory details about the geographic extent of a trade-mark owner’s rights, and the relevant dates and circumstances for determining confusion.��  Many members of the bar have written excellent summaries of the legal content of the decision, which need not be repeated here.�� [IP Osgoode note: the decision was covered in the IPilogue in .]

The decision, written for the court by Mr. Justice Rothstein, incorporated a forcefully written opinion about the value of expert evidence, and a new standard of validity for the design of confusion surveys.�� Survey researchers may need to approach questionnaire design differently in the future, or be prepared to explain the necessity of a particular design in the context of particular facts.�� The practical implications of the decision with respect to survey evidence are explained below.

1. Is survey research needed at all?  Decide early.

The Supreme Court said that the standard for admissibility of expert evidence should be necessity, and not mere helpfulness.�� Necessity means “likely to be outside the experience and knowledge of a judge.”^[3] The Court suggested there are matters of consumer perception that judges may readily adduce without the participation of expert witnesses.�� “[Judges] should use their own common sense, excluding influences of their ‘own idiosyncratic knowledge or temperament’ to determine whether the casual consumer would be likely to be confused.”^[4]

There will surely be uncertainty in predicting whether a particular matter of evidence is one for which a judge can anticipate the perceptions of the casual consumer, based on common sense.�� Indeed, the evolution of surveys as expert evidence has arisen from earlier observations of courts that judges may not be ideally suited to put themselves in the shoes of the average consumer.��  Justice Macfarland in Sun Life has so often been quoted on this point:  “To attempt to make such a determination [of confusion] without regard to evidence of what others may think or have said would to my mind be nothing more than an exercise in pure judicial fantasy, and of not much assistance at all.”^[5] Some matters will present clearer occasions than others for deciding between expert evidence and deferring to judicial notice.�� (For example, extent of reputation, consumer perceptions of distinctiveness or secondary meaning, lapses into generic use, or damage to goodwill are issues--among possible others--for which some form of survey evidence may continue to be necessary.)

The Supreme Court found a role for officers of the court system to help avoid excessive costs and complications earlier on in the litigation process.�� “Courts must fulfil their gatekeeper role to ensure that unnecessary, irrelevant and potentially distracting expert and survey evidence is not allowed to extend and complicate court proceedings.”^[6] Trial judges should consider whether certain evidence need be introduced at all.�� Justice Rothstein went further to suggest that counsel might discuss at the early stage of case management whether their proposed evidence would be admissible at trial.

The efficiency benefits of the Court’s proposal in this regard are too tempting to ignore.�� The proposal is consistent with the spirit of the Federal Court rule of “hot-tubbing” among experts to iron out areas of prior agreement.�� Counsel may wish to retain one form of expert or another to advise at an early stage about the necessity of survey evidence.�� Other possibly equally relevant and less expensive forms of market reconnaissance are available and appropriate to put facts before a court.��  Mystery shopping, deep-search internet analysis, media content analysis, and reviews of professional literature are all highly cost-efficient alternatives to survey evidence that have proven their relevance in specific circumstances.�� Any of these market evidence options is also adaptable to mediation and arbitration processes that could end a dispute even before the case management stage.

2. A new standard for pertinent population in survey evidence

Confusion has been interpreted in case law as being a matter of first impression of one trade-mark by a consumer who holds an “imperfect recollection” of another trade-mark, the so-called senior mark of the two.�� The Supreme Court would appear to indicate that survey respondents must actually have an imperfect recollection of a senior mark, not merely be subjected to the senior mark for purposes of simulating imperfect recollection. The Court appears to say that surveys are not to test consumers who, conditionally, could have an imperfect recollection in the future, but only those who have one on the day that the survey is conducted.�� This new guideline, if interpreted at face value, would have two significant consequences.�� One is an increase in potential cost of confusion surveys, because a survey researcher would have to look longer and harder for survey respondents with an imperfect recollection.�� The second is the disadvantage to smaller companies with localised use of registered marks:  if their marks are not yet widely-known, the prospect of finding people with an imperfect recollection is geographically restricted, and possibly prohibitively expensive.��  It is hard to imagine that the Supreme Court intended such disadvantage to small business.

3. Some questionnaire designs more welcome than others

The third implication of the Supreme Court comments about confusion surveys is a potentially wider digression from American practice.�� One of the established survey formats, first brought to the attention of the legal community by an American psychologist, is the so-called “same company/different company” format.�� According to that questionnaire format, respondents are first exposed to the senior mark, which is then removed from view (to simulate imperfect recollection); respondents are next exposed to the junior mark and asked whether the two marks they have seen “are put out by the same company or by different companies or can you not say?”  Justice Rothstein’s remarks appear to discourage that format, unless accompanied by confirmation that respondents had an imperfect recollection before being reminded of the trade-mark a few moments earlier.��  What makes this requirement curious is that a plaintiff survey that simulates “near-perfect” rather than imperfect recollection—by displaying a mark a few moments before the  survey question is put to the participant—would produce even more conservative evidence in respect of the plaintiff’s case.�� A finding of confusion in the face of “near-perfect recollection” would be even stronger evidence of the potential for confusion in the marketplace.�� Also, there are situations where likelihood of confusion may have to be tested between trade-marks which have not yet been used, such as in a dispute between two co-pending “intent-to-use” applications. In such a case, both marks would need to be put to survey respondents. In short, litigants in future disputes, who continue to support the objective evidentiary value of the “same company/different company” format, should be prepared to explain the relevance of that format to the facts or theory of their case.

In summary, members of the social science community who spend at least part of their time serving the Canadian justice system have received new guidelines from the Supreme Court with possible far-reaching implications.�� While the Supreme Court’s common sense approach and sound guidance to rein in costs of expert evidence make a distinct contribution to the exercise of justice, it may be that the Court did not intend to create all of the new dilemmas identified above.�� At the same time, it acknowledged the continuing potential of surveys “to provide empirical evidence which demonstrates consumer reactions in the marketplace — exactly the question that the trial judge is addressing in a confusion case.�� This evidence is not something which would be generally known to a trial judge, and thus unlike some other expert evidence, it would not run afoul of the second Mohan requirement that the evidence be necessary.”^[7] The standard is necessity.�� The challenge is recognizing it.

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