Patenting in Pandemic Mitigation Technologies

, Data Scientist at CIPO’s Corporate Strategies and Services Branch, shared CIPO’s response to the pandemic, including its findings of their study on COVID’s impact on IP trends in Canada. The Canadian government’s funded the (‘NRC’) to accelerate research and development in Rapid Detection and Diagnosis, Therapeutics and Vaccine Development, and Digital Health. CIPO helped the NRC to understand the patent landscape on related technologies.

The study found 11,000 global patents in these areas between 1999 to 2018, including 178 patents from Canadian institutions. In the global dataset, 56% of patents fell under Therapeutics and Vaccine Development, 33% under Rapid Detection and Diagnosis, and 11% under Digital Health. Patent activity consistently increased just after the onset of major outbreaks. For example, filings in Canada spiked after SARS and MERS.

50% of patent applications in pandemic related technologies originated in the US and China. While Canada’s 8% growth between 2009 and 2018 aligns with the global average, filings from China grew the fastest at 26%. Statistical analysis indicates a move towards concentration in patent filings from a few countries. Further, Canada was found to have one the of highest specializations in pandemic mitigation technologies compared to other countries of interest. Within Canada, British Columbia, Quebec, and Ontario have the most institutions involved in patenting pandemic mitigation technologies among the provinces. The study also indicated that Canada has a large talent pool innovating in these technologies.

Impact of COVID-19: An IP Office Perspective

Next, , Head of IP Analytics and Data Insights at (‘UKIPO’) described the pandemic’s effect on UKIPO and generally on IP.

The UK was hit badly by COVID-19, with nearly 1400 daily deaths during the second wave (January 2021). The economy also took the brunt of 3 national lockdowns. However, UKIPO leveraged its recent IP modernization activities to quickly transition to remote working with changes in workflow, such as moving from fax to electronic issuance of official correspondence. Confronting the pandemic, UKIPO declared ‘interrupted days’ from March 24 to July 29, 2020. They extended document filing or opposition deadlines falling between these days and temporarily changed renewal fees to offer flexibility to businesses affected by pandemic. Workplaces adapted such measures as virtual recruitment and staff mental health and wellbeing initiatives.

Evaluating COVID-19’s impact on UKIPO’s core services, design and patent application filing increased slightly during the pandemic, while trademark filings increased significantly. Similarly, patent and design grants followed normal trends, but trademark registrations dipped before rising sharply in August 2020. Examiner productivity increased as well. The UK ranked 2^nd among the world’s fastest growing trademark registers (31% growth in 2019-20). Comparatively, trademark filings in Canada declined. The reason for unprecedented growth in global trademark trends during the pandemic is unclear, with some indication of increased investment in new brands. This will be curious to investigate, especially because market shocks like a pandemic tend to decrease new filings. UKIPO is deeply invested in researching factors that drive IP demand and filings.

In summary, UKIPO responded promptly to the pandemic with formal, staffing and customer-oriented changes which helped increase productivity.

ExploreIP: Leveraging Public Sector IP for Commercialization

The final presenters were , Director of IP, and , Senior Policy Analyst – Project Manager at ExploreIP, both from . They discussed the project, Canada’s intellectual property marketplace.

ExploreIP is a database of public sector patents with search capabilities for businesses to identify licensable inventions and connect directly with patent holders. It was launched in August 2019 in collaboration with IP Australia and currently lists over 4000 patent families sourced from 51 Canadian public sector organizations. ExploreIP was developed with an aim to assist Canadian businesses, especially SMEs, in finding technologies within public sector patents that align with their business goals and help them grow. In response to the pandemic, ISED added a new COVID-19 category in April 2020 listing pandemic-related technologies.

The platform allows businesses to reach patent owners through a dedicated page for each patent, which includes keyword search, notifications about newly added technologies, and licensing status details. The database is updated through organizational accounts wherein a public sector institution can modify their patent portfolio with new entries. This is supplemented by an automated process where ExploreIP retrieves new patents from other public databases. ExploreIP will enter its next phase of development in April 2021: optimizing the platform, enhancing the search function, and adding other types of IP and market intelligences.

ExploreIP is a much-needed initiative to help businesses search licensable patents and inventions by Canadian public institutions, access licensing and collaboration opportunities, and connect directly with IP holders. Interested business are encouraged to access the platform .

In conclusion, the panel discussions brought forward insightful points on creating robust innovation pipelines and making them shock-proof in the future. While Canada’s low pandemic-related patent filing trends suggest a need for a concerted effort to increase conversion of its scientific specialization to IP, best practices employed by UKIPO and ExploreIP against COVID-19 offer ideas which we can share in and follow.

Gurbir Sidhu is an IPilogue Contributing Editor and LLM candidate at Osgoode Professional Development.

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The Background
In late 2017, an by the Australian Consumer and Competition Commission (ACCC) found a where large digital platforms have “substantial market power” in online advertising. The report indicated that digital platforms use outsourced news to gain “consumer attention and consumer data in order to sell advertising opportunities.” In 2020, on the Australian Government’s behest, the ACCC the draft Code for public consultation.

The Code
proposed changes to Australia’s Competition and Consumer Act 2010 provisions which affect digital platforms. The Code requires digital platforms to enter commercial agreements with news companies before sharing their news items online and resolve any impasse through arbitration. Section 52S of the Code requires digital platforms to notify news companies in advance about changes to their news referral algorithm. Non-compliance would invite penalties up to $10 million.

Both sides
The Australian Government wants to balance the traditional news media’s “” with digital platforms and loss of advertising revenue. In 2019, . The Australian Government believes that digital platforms have built their advertising market power by using outsourced news items on their websites.

In response, while Facebook to block its news viewing and sharing service, Google ran a against the draft Code and issued an about “supporting Australian journalism”. Their surround the risk that sharing algorithm changes with the news publishers could allow some entities “to appear higher in rankings… disadvantaging all other creators.” They also complained about possible disproportionate revenue sharing demands from news organizations and claim that the Code is at odds with the principle of “free and open web”, risking freedom of information.

Cutting through the Clutter
As digital platforms speed up the digitization of news content and increase its accessibility, users are increasingly using services like Facebook Newsfeed to access news articles from traditional media companies. While some platforms, like YouTube, offer revenue sharing arrangements with video content creators, articles from news publishers’ websites have no such system. Online platforms use these articles to collect viewership data for targeted advertising. Critics have raised concerns about Facebook and Google monopolizing digital advertising to preferentially promote and advertise their own products and services.

Nevertheless, the Code’s ability to resolve the advertising revenue gap and monopoly of digital platforms remains unclear. ��Advertisers prefer online promotions, especially on big social media platforms, because of their high viewership. The argument that Google and Facebook’s large userbase and consequent online advertisement income is only from sharing news items from other media organizations seems untenable. Both companies attract viewership using various internet-related services, such as social networking, private messaging, personal content sharing, web searches, and cloud storage, which make them desirable for advertising.

The Code is currently silent about calculating the quantum of financial payment to news companies during negotiations. Would they receive a percentage of online advertising revenue or a fixed rate for each click on their articles? Without clear standards for calculating revenue sharing, digital platforms can justify unfair pay structures. If a stalemate goes to arbitration, only then would an arbitrator, under , apply specific criteria: namely, the ways in which digital platforms benefit from making content from news companies available, the reasonable costs which news companies and digital platforms incur, and preventing an undue burden on digital platforms.

Current Status
The Australian Parliament tabled the in December 2020 and, after both Houses considered the Bill, Parliament passed it on February 25, 2021. Facebook, in protest, its news sharing services. Facebook later restored its news pages upon reaching an with the Australian Government that included giving digital platforms two months to negotiate a deal with news companies before triggering mandatory arbitration.

Ripples in other countries, including Canada
Digital platforms are anxious about other countries introducing similar regulations. Facebook already ��pays licensing fees to news outlets in the and recently agreed to do the same in the . The report remarks that “the digital duopolies’ [read Facebook and Google] combined share of the online advertising market reached 80%.” Steven Guilbeault, , recently opined that Canada should introduce similar regulations. Facebook responded sharply, with its Canada Public Policy Head, , saying “…we’re unable to accommodate” such payments.

Looking Forward
Undoubtedly, digital platforms imminently need to maintain fair competition, advertisement verification, unbiased news feed algorithms, journalistic support and independence, and equal online advertising opportunities. While digital platforms should not monopolize internet freedom and access to information, or avoid paying news creators their fair share, they need clear revenue-sharing and anti-competition standards. No government can correct the disquietude on Facebook and Google’s rising monopoly or strong market control by forcing commercial, revenue-sharing deals with news outlets. Counterintuitively, increased regulation, such as this Code, would create entry barriers for nascent digital news-sharing platforms who might lack the fiscal bandwidth to enter commercial arrangements with large news publishers. Governments should also focus on promoting competition by supporting agile, smaller digital service providers and social media companies.

Gurbir Sidhu is an IPilogue Contributing Editor and LLM candidate at Osgoode Professional Development.

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COPYRIGHT LAW

CUSMA Implementation

On July 1, 2020, the (CUSMA) officially came into force, replacing the North American Free Trade Agreement (NAFTA). Signed in 2018, the desired effect of CUSMA is to preserve existing trade relations between the three North American countries, and to introduce modernized provisions that address 21st-century trade issues. In particular, the builds upon the legal framework of standards in North America for the protection and enforcement of IP rights.��

Regarding copyright and related rights, Canada is increasing the duration of its term for general copyright protection from 50 to 70 years following the life of the author. Canada will have a two-and-a-half-year transition period to realize this new measure. Additionally, the term of protection for performances and sound recordings will also increase from 70 to 75 years plus life. CUSMA will also increase protection for Rights Management Information (RMI), also known as digital watermarks. While Canada already imposes criminal remedies for altering or removing Technological Protection Measures (TPMs, or digital locks), the Agreement creates new criminal remedies for circumventing RMI. Organizations will have to be mindful when implementing these new provisions to ensure that their practices align with CUSMA’s new obligations.

Canadian Copyright Case Law

91��ɫ v The Canadian Copyright Licensing Agency, 2020 FCA 77

On April 22, 2020, the regarding a dispute between 91��ɫ (“91��ɫ”) and The Canadian Copyright Licensing Agency (“Access Copyright”), holding that the tariffs set against 91��ɫ by the Copyright Board are not mandatory, but dismissed 91��ɫ’s counterclaim regarding the fair dealing guidelines. Access Copyright had sued 91��ɫ for non-payment of tariffs, arguing that they are mandatory and enforceable against anyone who infringes upon a copyright owner’s exclusive rights. Following this decision, both parties filed for leave to appeal the FCA decision to the Supreme Court of Canada.

Tariffs
The FCA held that the tariffs set by the Copyright Board are not mandatory. Because 91��ɫ opted out of the tariffs in 2010, they are not enforceable against 91��ɫ. On this issue, the FCA stated, “Acts of infringement do not turn infringers into licensees so as to make them liable for the payment of royalties. Infringers are subject to an action for infringement and liability for damages but only at the instance of the copyright owner, its assignee or exclusive licensee.”

Fair Dealing
91��ɫ argued that it was not accountable for any tariffs associated with the reproduction of materials because they met their “” and therefore constituted fair dealing pursuant to section 29 of . On this issue, the FCA found that the Federal Court made no palpable error in its analysis, concluding that even though copying followed the guidelines, this did not necessarily make it a fair dealing.

Continuing into 2021
On October 15, 2020, the Supreme Court of Canada granted leave to appeal. This eagerly anticipated decision will affect many of Canada’s educational institutions who opted out of paying tariffs and have also followed the Fair Dealing Guidelines discussed in this decision. Further, a Supreme Court decision in 91��ɫ’s favour will surely cause businesses who rely on similar tariffs to rethink their business model.

Wiseau Studio, LLC et al. v. Harper et al., 2020 ONSC 2504

On April 23, 2020, Justice Paul Schabas’ released his decision in the case of . Filmmaker Tommy Wiseau brought a claim against the defendants, alleging that their documentary, Room Full of Spoons, about Wiseau’s film, The Room, breached his copyright. In his reasons, Justice Schabas provides artists in Canada with an authoritative statement defining documentaries an allowable purpose under the Copyright Act’s fair dealing provisions, “to the extent that a documentary uses copyrighted material for the purposes of criticism, review or news reporting.”

The decision affirms fair dealing as a user’s right, as opposed to a defense to the copyright infringement alleged by the plaintiff, solidifying the balancing of rights and freedoms as a core purpose of the Canadian Copyright Act. In addressing the Copyright Act’s fair dealing provisions, the Court offers useful guidance to documentary filmmakers wishing to stay on-side with section 29 through an analysis of the factors outlined in . A more in-depth discussion can be found . As well, Justice Schabas’ reasons address the Copyright Act’s moral rights provisions, fundamentally finding that criticism or negative tones alone will not trigger a breach of an author’s right to the integrity of a work.

Entertainment Software Association v. Society of Composers, Authors and Music Publishers of Canada 2020 FCA 100 & CMRRA-SODRAC Inc. v. Apple Canada Inc., 2020 FCA 101

On June 5, 2020, the Federal Court of Appeal released two decisions (2020 FCA 100 and 2020 FCA 101) which ruled on the applicability of the “making available right” (“MAR”) under s. s.2.4(1.1) of the Copyright Act. The FCA found that songwriters are not entitled to royalties when music is first posted online, but only after it has been downloaded. This decision overturns a 2017 ruling from the Copyright Board, which found that composers and songwriters are entitled to two royalties: first when it is made available under a streaming platform such as Apple Music or Spotify, and second when the song is downloaded or streamed.

By way of background, The Society of Composers, Authors and Music Publishers of Canada (“SOCAN”) administers the right to “communicate” musical works on behalf of copyright owners. It filed with the Copyright Board proposed tariffs for certain years for the communication to the public by telecommunication of works in its repertoire through online music services including Apple Music and Spotify. These tariffs are available when a musical work is “communicated.”

After SOCAN had filed its proposed tariffs, the Copyright Act was amended to include the MAR Provision, which reads as follows:

For the purposes of this Act, communication of a work or other subject-matter to the public by telecommunication includes making it available to the public by telecommunication in a way that allows a member of the public to have access to it from a place and at a time individually chosen by that member of the public.

This raised the question of whether the mere making available of a work on a server for the purpose of later streaming or download by the public was a “communication” for which a tariff was payable. In 2017, the Copyright Board concluded on the basis of expert witnesses that the double royalty scheme is available.

Stratas J, writing for the FCA, overturned this conclusion and stated that the Copyright Board "skewed its analysis in favour of one particular result" and relied on "leaps of reasoning" that are incompatible with the precedent set out in the Supreme Court of Canada’s (SCC) 2012 Entertainment Software Association v. Society of Composers, Authors and Music Publishers of Canada decision. In that decision, the SCC concluded that transmission over the Internet of a musical work that results in a download of that work is not a communication.

PATENT LAW��

The Impact of COVID-19 Legislation on the Patent Act and Patentee Rights

(“An Act respecting certain measures in response to COVID-19”) received Royal Assent on March 25, 2020.�� Included in this bill was the addition of section 19.4 to the which significantly changed the rights of patent owners this year. For instance, while section 19.4 allowed the to authorize the government’s use of previously patented inventions to respond to a public health emergency, the Commissioner’s new powers permitted authorization to be granted to other entities as well. In addition, there was no requirement for applicants (be they the government or otherwise) to inform the patentee in advance of applying for authorization to use its patent. This meant that patentees received no notice if an applicant applied to use its intellectual property. Instead, patentees only received notice if the Commissioner granted authorization to the applicant following their submission. Moreover, section 19.4 precluded patentees to an express right of appeal of the Commissioner’s authorization. Instead, patentees were left to rely on section 19.4(8) of the Act and had to apply to the Federal Court to prevent the government (or any applicant) from “making, constructing, using or selling the patented invention in a manner that [was] inconsistent with the authorization.”

While patentees seemingly received little benefit from the Patent Act's amendments mentioned above, the legislative changes offered some positive developments for patent owners. For example, pursuant to s.19.4(5), holders of the patent are compensated for government use, “taking into account the economic value of ‘the authorization and the extent to which they make, construct, use and sell the patented invention.’” Additionally, as of September 30, 2020, the Commissioner can no longer award the government with any authorizations, which effectively serves as an imposed limit on the Commissioner’s powers. While COVID-19 may arguably be captured by other provisions of the Patent Act (cf. s. 19 or s. 21), s. 19.4 clarifies the boundaries of government uses of patents for public health emergencies.��

CIPO Issues New Guidance Document After Federal Court Rejects Problem-Solution Approach to Claim Construction

Following the 2020 Federal Court decision in , CIPO released a new to clarify patentable subject matter under the Patent Act. The court, and CIPO, endorsed the purposive construction approach to constructing claims set out in 2000 by the SCC in and . The new guidelines cover the framework to be followed by patent examiners while identifying certain elements of patent claims as essential. CIPO’s earlier pointed at undertaking claim analysis, which involved identifying the “proposed problem to the disclosed solution.” The Federal Court in Choueifaty clarified this problem-solution test as incorrect for claim construction.

The Federal Court held that a correct approach looks at the entirety of the specification and presumes an element as essential unless demonstrated to the contrary. Purposive construction attempts to give effect to the intentions of the applicant in determining the scope of the claimed monopoly.

This is particularly important for computer-implemented inventions. CIPO, in the , clarified that an algorithm that improves the functioning of the computer would constitute a single invention and is patentable subject-matter. However, the mere use of a computer to execute an algorithm remains nonpatentable subject-matter under subsection 27(8) of the . This update has brought much needed clarity to the subject matter eligibility issues in computer-related patents.

TRADEMARK LAW

Claims to Official Marks not a Complete Defence to an Infringement Claim��

In February 2020, the Federal Court of Appeal upheld the Federal Court’s decision in , finding that public authorities cannot rely on relating to official marks as a complete defence against an infringement claim. At its most basic level, official marks allow public authorities to , even those that may not otherwise be registered as regular trademarks. Quality Program Services Inc. (QPS) brought a Federal Court claim against the Ministry of Energy (MOE) for infringing their “EMPOWER ME” trademark related to energy awareness, conservation, and efficiency services. The MOE had launched a website with the mark “emPOWERme” to educate Ontario residents about the province’s electricity system. In response to QPS’s claim, the MOE sought protection and public recognition of its mark as an official mark pursuant to which states that “no person shall adopt in connection with a business, as a trademark or otherwise, any mark consisting of, or so nearly resembling as to be likely to be mistaken for… any badge, crest, emblem or mark…adopted and used by any public authority, in Canada as an official mark for goods or services.”

However, the Federal Court was not persuaded that s. 9 provided the MOE complete immunity from an infringement claim. Instead, it was recognized that the infringement rights of a trademark holder, such as QPS under , could not be ignored simply because a public authority has been given public notice of its adoption and use of an official mark, especially when that mark follows a registered trademark which could cause confusion between the two marks, as was the case here. The Federal Court of Appeal further that “a public authority that chooses to use a mark that is confusing to a registered trademark does so at its peril.” As a result of this case, we get more clarity and limitations to the confusing and all-encompassing world of official marks. While it is clear that official marks following an existing trademark do not automatically strike down an infringement claim, the official mark and the preceding trademark must be similar in some way to set off a trademark confusion analysis.

Lack of Use is Insufficient for Opposing a Trademark Application

In , the Federal Court affirmed the Registrar’s decision to reject Pentastar Transport Ltd’s opposition to Fiat Chrysler Automobiles (FCA) US’s trademark application for Pentastar. Pentastar Transport Ltd owns a registered mark Pentastar for its oil and gas services, whereas FCA US applied to register Pentastar for its vehicle engines. Pentastar’s ground of opposition is that FCA US did not possess a genuine intention to use Pentastar for its engines, which contravened s. 30(e) of the old Trade-Marks Act. As summarized��, “opposition proceedings involve a two stage inquiry. First, the opponent bears an evidential burden to establish that the facts alleged to support the issue exist. If established, then the applicant bears a legal burden to show that its application does not contravene the provisions of the Act as alleged.” The Court upheld the Registrar’s factual finding that Pentastar did not adduce sufficient evidence as the factual ground of its opposition. The Court also agreed with the Registrar that “use” and “intended to use” were not synonymous. In this case, this ruling entails that even though FCA US had not started using Pentastar as a trademark on its engines, it did not follow that FCA US had no intention to use it in the future. In fact, there was circumstantial evidence (as summarized��) indicating that FCA US indeed harbored the intention to use Pentastar as a mark for its engines.

United States Supreme Court Developments

In April 2020, the United States Supreme Court decided the case . The Court determined that even an innocent trademark infringer could lose its profits and that wilful infringement is not a pre-condition to a profits award. The Court came to this determination by interpreting which does not mention the condition of wilful infringement. Fossil was liable for $6.7 million in profits to Romag, for using counterfeit Romag fasteners in its manufacturing of leather goods.

In June 2020, the Court in held that a term styled “generic.com” is a generic name for a class of goods or services only if the term has that meaning to consumers. Booking.com sought to register a mark with the USPTO but was denied because “Booking.com” was not a generic name to consumers. Therefore, the term was not held to be generic. The USPTO analyzed the terms “Booking” and “.com” separately. This decision suggests that domain names may need to be marketed to consumers as such to be trademarked.

Trademark Law and Sports in 2020

With all its troubles, 2020 has also been an eventful year for trademark lawyers in sports. In February, a Maryland-based nonprofit Game Plan����against Lebron James and his commercial associates, including Nike, ESPN, and Take-Two Interactive. Game Plan claims that Lebron and his associates had encroached upon its trademark rights by unauthorized use of the registered slogan “I am more than an athlete” to make profits. In April 2020, Michael Jordan����in China that had dragged on for eight years. China’s highest court ruled in favor of Jordan against a Chinese company which had been marketing its sports products under the brand name Qiaodan - a Chinese transliteration of Jordan - since the 1980s.

In September, soccer superstar Leo Messi’s legal team����Europe’s highest court that Messi should be granted the exclusive right to the brand name Messi. Other similar names, such as “Massi,” should be disallowed for commercial purposes to avoid confusing the consumers. Lastly, although the Washington Football Team (formerly, Washington Redskins) changed its name in 2020, it now runs into��. As it turns out, many alternative team names have already been registered by a trademark squatter Martin McCaulay. Washington fans may need to wish for the new year that their team will receive a new name that neither infracts trademark law nor carries racist connotations.

Fashion Trends Followed by Brand Owners throughout the Pandemic��

As it is said, every crisis brings new opportunities. While some members of the general public may have doctor-recommended masks in the early months of the pandemic, they have become a trend for upcoming years. As a result of this trend, big luxury brands tapped into this unchartered territory just after the���� in July. Luxury fashion companies are now monetizing their brand value through this����i.e., face masks and shields, which have become the new reality and necessity of everyday life. Fashion brands like����have already filed applications for their trademarks in classes 9 and 10 with the USPTO and other countries for “Protective” and “Respiratory Masks.” In September,����for its uniquely styled��Toile Monogram print for its��Face Shield, filed for��“protective face shields; protective masks; protective chin shields; [and] protective gloves” (class 9), and “face masks for medical use; Surgical masks; protective face shields for medical use; protective chin shields for medical use; [and] gloves for medical use” (class 10).����

On the other hand, , Nike, and����masks also lead the charts of most searched and purchased masks.��Small and high street brands are attempting to claim proprietary rights in these trademark classes because of the long-term monetary potential. The new fashion ornament brings in value, and the brand owners wish to benefit from damages in infringement and counterfeits cases. Counterfeits are also escalating on e-commerce portals, such as��. A Chinese company has filed a trademark infringement suit for its brand����in the Illinois state. Furthermore, on December 14, 2020 the����announced an initiative to accept expediated examination requests for trademark applications for COVID-19 related goods and services, which include sanitary masks and other things. In view of this, we can predict an����from such luxury and burgeoning fashion brands.����

Bricks and Mortar Presence No Longer Necessary to Establish Use of a Trademark

In the past, the Federal Court of Canada has been unclear as to the fate of travel-related services that do not have a physical presence in Canada, but seek to maintain their Canadian trademark registration through regular use. However, following the Federal Court of Appeal’s decision in , that fate has been clarified in favour of travel-related services. Since 2014, Miller Thompson has tried to expunge Hilton’s WALDORF ASTORIA trademark given that it did not offer physical WALDORF ASTORIA hotel-related services in Canada. As such, Miller Thomson commenced proceedings under s.45 of the Trademarks Act, which would require Hilton to show use of its WALDORF ASTORIA trademark during the three years prior to the proceedings, known as the Relevant Period.

But, on September 9, 2020, the Court of Appeal upheld the Federal Court’s decision that Hilton had demonstrated use of their WALDORF ASTORIA trademark during the Relevant Period. Among other evidence presented by Hilton, during the Relevant Period, Canadians could see the WALDORF ASTORIA trademark when visiting their website and could book reservations in several ways, including directly on the site. As well, Canadians generated $50 million in revenue for Hilton as a result of their stays at WALDORF ASTORIA hotels outside of Canada. Thus, the Court of Appeal summed up the as follows: “so long as consumers, purchasers, or members of the public in Canada receive a material benefit from the activity at issue, it is a service.” This means that online reservations and payment services for later stays outside of Canada are included under the meaning of “hotel services.” Furthermore, a brick and mortar hotel is no longer absolutely necessary to establish use. In fact, in the Court of Appeal’s conclusion, it stated that “the requirements for ‘use’ under section 45 of the Act must adapt to accord with 21st century commercial practices.” For other trademark owners facing the same issue as Hilton, the Federal Court of Appeal provided guidance on how to make a , including website metrics showing that Canadians access their services online and subsequently purchase services as a consequence of their mark being displayed.

Trademark Modernization Act of 2020 Passed

On December 21, 2020, Congress passed the . This bill was enacted to amend the 1946 Trademark Act and authorized third parties "." The bill also introduced a����that would allow any party to petition for the expungement of a registered trademark that is not commercially active. The goal of these amendments was to reduce the number of “” that were on the register despite not being in use, allowing a more productive, competitive commercial trademark market. These amendments are also speculated to affect the longevity of trademark registrations as trademarks become increasingly vulnerable to cancellation. The Trademark Modernization Act of 2020 will certainly continue to generate more discussion and result in changing practices in Canada.

Giuseppina (Pina) D’Agostino is��the Founder & Director of IP Osgoode, the IP Intensive Program, and the IP Innovation Clinic, the Editor-in-Chief for the IPilogue and the Intellectual Property Journal, and an Associate Professor at Osgoode Hall Law School.

With contributions from IPilogue Editors:

Copyright:��Meghan Carlin, Emily Xiang, Joaquin Arias, Sarah Raja,��Saumia Ganeshamoorthy

Patents:��Dan Choi, Gurbir Sidhu,��Khristoff Browning, Jin Xu,��Madelaine Lynch

Trademarks:��Adele Zhang, Aishwerya Kansal,��Jingcai Ying, Eloise Somera, Lauren Chan

Bonnie Hassanzadeh, Nikita Munjal, Sebastian Beck-Watt, and Alessia Monastero

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