Region: North America

Opponents reminded of importance of brushing up on opposition grounds

In Procter & Gamble Inc v Colgate-Palmolive Canada Inc the Federal Court has dismissed an appeal against a decision of the Trademark Opposition Board in which the latter had rejected Procter & Gamble Inc's opposition to the registration of a striped toothpaste design. The board had dismissed all six grounds of opposition based on P&G’s failure to meet its onus of evidentiary burden and improper pleading.

21 April 2010

Federal Circuit issues en banc decision in Ariad v Eli Lilly

The Federal Circuit has upheld a previous panel decision of the court in Ariad Pharmaceuticals, Inc v Eli Lilly and Co. The court's decision held that the patent claims asserted against Eli Lilly for its drugs Evista and Xigris were invalid for lack of written description.

14 April 2010

Trademarks and the Charter of the French Language

The Charter of the French Language is designed to promote the use of the French language throughout Quebec. A company doing business in Quebec and engaging in specified activities must ensure that the French language is used or, if used with another language, that the French portion is at least equal to the other language portion.

07 April 2010

Application for judicial review dismissed as abuse of process

In Maple Leaf Foods Inc v Consorzio Del Prosciutto Di Parma the Federal Court of Canada dismissed Maple Leaf Foods Inc's application for judicial review of a notice for the adoption and use of the trademark PARMA (and ducal crown design) as an official mark in Canada. The court concluded that the application was an abuse of process.

03 March 2010

Motion for summary judgment denied on issue of fraud intent

In DaimlerChrysler Corp v American Motors Corp the Trademark Trial and Appeal Board followed the recent decision of the US Court of Appeals for the Federal Circuit in In re Bose Corp and denied DaimlerChrysler's motion for summary judgment on the question of whether American Motors Corp had attained registration of its trademark by way of fraud on the USPTO.

24 February 2010

Trademark rights trump title of goods, says court

The Ontario Superior Court of Justice has confirmed that trademark rights trump title of goods in Canada. This was the message delivered to an applicant which sought a declaratory order stating that the respondent’s trademark rights would not be infringed by the applicant’s importation into Canada of goods bearing the COTTON GINNY marks.

10 February 2010

The role of the expert witness in calculating damages

The Federal Circuit Court of Appeals has set aside a US$358 million damages award in Lucent v Gateway, finding that the evidence was insufficient to support the jury’s verdict. The case provides some useful guidance on the role of expert witnesses in working out damages.

13 January 2010

Tacking standard "exceedingly strict", says Ninth Circuit

In One Industries LLC v Jim O'Neal Distributing Inc the US Court of Appeals for the Ninth Circuit has held that the standard for tacking marks to claim priority based on the date of first use is "exceedingly strict" and very rarely met. The court refused to tack two iterations of the same basic mark - an "O" with an apostrophe - because the shape of the "O" had changed.

09 December 2009

Canada signs three new Patent Prosecution Highway pilot programme agreements

The launch of Patent Prosecution Highway pilot programmes with Japan, Denmark and Korea aims to accelerate examination of patent applications in one or more of those countries. Translation into English or French will be an added requirement of the programmes.

18 November 2009

The growing global impact of the US patent exhaustion doctrine

Patent exhaustion has important implications for patent licensing transactions. Since the Quanta v LG decision, patent holders should consider contractual options as restrictions.

04 November 2009