Canadian Lawyer InHouse

Feb/Mar 2010

Legal news and trends for Canadian in-house counsel and c-suite executives

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By Stephen M. Beney and Brigitte Chan Hot IP law Homer Simpson, candour, and French W hat do Homer Simpson, a duty of candour, and French language laws have in common? If you answered they are all hot topics in Canadian intellectual property law, you'd be correct. Doh! Who cares if Homer Simpson would be confused? Atomic Energy of Canada Ltd. v. Areva NP Canada Ltd. is a decision of the Federal Court of Canada highlighting the challenges faced by trademark own- ers in industries where multi-million- dollar products are typically purchased by highly sophisticated buyers or through detailed procurement processes. In this case, the court summar- ily dismissed an action for trademark infringement brought by a manufacturer of nuclear reactors and parts against a direct competitor who was using a strik- ingly similar trademark. In considering the likelihood purchasers of the relevant wares would be confused by the two marks — the ultimate issue in the dispute — the court considered factors such as the nature and cost of the relevant wares, the procurement process through which they are purchased, the qualifications of purchasers of these wares, and the fre- quency at which the wares are sold. The court concluded it was "beyond the realm of possibility" that purchas- ers of nuclear reactors and related parts could be confused by the resemblance of the plaintiff 's and defendant's trade- marks. The court said it is "difficult to imagine more sophisticated consumers than exist in the nuclear power business" and, in a line sure to be cited again, the court said "[i]n this industry, the fact that Homer Simpson may be confused is insufficient to find confusion." The case suggests companies whose core customers are highly sophisticated might facilitate enforcement of their trademark rights by promoting their brand to a wider audience. Good faith and the Canadian Patent Office In the U.S., patent applicants owe a "duty of candour" to the Patent Office, which requires everyone involved with a patent application to disclose all publications they know of which may adversely affect the patentability of their invention. A patent can be invalidated if it can be shown that the applicant withheld mate- rial information from the Patent Office with intent to deceive. In Canada a parallel obligation is not well-established, and only recently under current legislation, has a general duty of good faith been recognized for dealings with the Patent Office. The 2009 deci- sion, Lundbeck Canada Inc. v. Ratiopharm Inc., is the most recent in a line of cases developing this area. In this controversial decision, the Federal Court of Canada accepted grounds for attacking validity on the basis that submissions made by the applicant during examination were not made in good faith. Lundbeck's pat- ent was held invalid because it misstated the teachings of the prior art (all infor- mation that has been made available to the public in any form before a given date that might be relevant to a patent's claims of originality) in arguing to overcome an obviousness rejection. The Lundbeck case was decided on the content of the applicant's submissions, with no finding of its intent. The deci- sion therefore suggests the good faith requirement in Canada may be a higher standard than the corresponding duty in the U.S., where intent to deceive, in addition to materiality, must be proved for a finding of inequitable conduct. The decision is not being appealed. Quebec's French language requirements and recognized trademarks The Charter of the French Language and its regulations provide French must be used as the language of commerce and business in the province of Quebec. As a general rule, all inscriptions on public signage, product packaging, and commercial documents must be in French. An English translation, or other non-French text, can also appear but it must not be given greater prominence than the French text, and on public signs the French text must be "markedly pre- dominant" over any non-French text. One statutory exception is the right to use a recognized trademark without French inscriptions, so long as no French version of the mark has been registered. The Quebec Superior Court interpreted "recognized trademark" to include both registered and unregistered trademarks. Notwithstanding this, in September 2008, the Office québécois de la langue française issued a revised commentary on the charter indicating it will consider only registered trademarks to be "recog- nized" when assessing a complaint under the charter. The office is taking the posi- tion if a non-French trademark is used as a business name on public signage, such as a storefront sign, it must be accompa- nied by a French generic term describing the business. It remains to be seen if these initiatives will lead to court challenges. IH Stephen M. Beney is a partner in the software & high technology and trade- marks practice groups of Bereskin & Parr LLP in Mississauga, Ont. Brigitte Chan is a partner in the trademark practice group of Bereskin & Parr in Montreal. INHOUSE FEBRUARY 2010 • 11

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