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Highlights
TRADE MARKS
The Doctrine of Initial Interest Confusion
Sheldon Burshtein
In the United States, the doctrine of initial interest confusion has been given new life in the context of Internet trade mark disputes. In Canada, confusion is assessed using the criteria set out in the Trade-marks Act. At some point, Canada may see a variation from the traditional test or, more likely as a possibility, the inclusion of initial interest confusion as an additional surrounding circumstance. Sheldon Burshtein explains the doctrine, juxtaposes the arguments for and against the doctrine, summarizes United States and United Kingdom case law which relate to the doctrine, and considers the possible application of the doctrine to Canada.
PATENTS
The Cost of Infringement: a New Approach
Carol Hitchman
Recently, the Federal Court of Canada considered the amount to award to a plaintiff in a patent infringement case. The plaintiff was awarded an accounting of the defendant's profits. The Court did not award all the profits to the plaintiff but only those that could be causally linked to the infringement as opposed to a non-infringing alternative. Carol Hitchman examines this new approach which will have significant impact on patentees, and emphasizes that the law has developed in an unusual context and we will have to wait and see how it will be applied in cases involving larger corporate parties.
LITIGATION
Deemed Undertakings in Canada: a Default Rule With Big
Implications for Cross-border or Parallel International IP
Litigation
Athar K. Malik
Last December, the Ontario Court of Appeal released its unanimous decision in Kitchenham v. Axa Insurance Canada. While this was a tort case, the Court's treatment of the "deemed undertaking" rule serves as an important reminder of the restrictions on using Canadian discovery evidence in cross-border or parallel international intellectual property litigation. Athar Malik analyzes the Ontario Court of Appeal's approach to deemed undertakings and its relevance to intellectual property litigators.
TRADE MARKS
No Fraud on the (Canadian) Trade-marks Office
France Lessard
The Federal Court of Canada recently refused to apply under Canadian law the U.S. doctrine of fraud on the Trade-marks Office. In the recent decision of Parfums de Coeur Ltd. v. Christopher Asta, a registration obtained on the basis of a declaration of use that contained false information was not expunged. France Lessard explains why the Federal Court hesitated in accepting the U.S. principle of fraud on the Trade-marks Office.
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Board
Ronald E. Dimock
Editor-in-Chief
Dimock Stratton LLP
David A. Aylen
Gowling Lafleur Henderson LLP
Sheldon Burshtein
Blake, Cassels & Graydon LLP
Brian W. Gray
Ogilvy Renault LLP
Carol Hitchman
Hitchman & Sprigings
Charles Kent
Ridout & Maybee LLP
Robert J. Lesperance
Lesperance Mendes Mancuso
Sangeetha Punniyamoorthy
Dimock Stratton LLP
Arthur B. Renaud
Bennett Jones LLP
Hugues G. Richard
Léger Robic Richard LLP
Cynthia Rowden
Bereskin & Parr
Andrea Rush
Heenan Blaikie LLP |