Canadian IP Law And Practice In 2016: Reviewing The Highlights

As the calendar turns the page from 2016 to 2017, we take the opportunity to review Canadian IP law and practice highlights from the past year.

Patent and trademark agent privilege recognized

Amendments to Canada's Patent Act and Trademarks Act which came into force in June, have provided for the recognition of patent agent and trademark agent privilege. In recognition of the multi-jurisdictional realities of patent and trademark procurement, these privileges also extend to communications between an individual who is authorized to act as a patent agent or trademark agent in a country other than Canada, provided certain pre-conditions are met.

These changes represent welcome developments for Canadian patent and trademark practice and provide clarity for patent and trademark owners in Canada.

More detail on Patent and Trademark Agent Privilege can be found in our June 22, 2016 IP Update.

CETA signed, enabling legislation introduced in Canada's Parliament

On October 30, 2016, Canada and the European Union officially signed the Comprehensive Economic and Trade Agreement (CETA). The very next day, proposed legislation intended to implement CETA was introduced before Canada's House of Commons.

Bill C-30 makes amendments to a broad range of Canadian laws, including intellectual property legislation. Of particular note, under Bill C-30, holders of pharmaceutical patents will be entitled to term extensions of up to two years to account for regulatory delays. Implementation of CETA will also bring other changes to Canada's IP laws including a potential end to "dual litigation" in relation to pharmaceutical patents and restriction of certain European geographical indications.

More details regarding CETA and its implications for IP protection in Canada can found in earlier IP Updates, including our October 31, 2016 and December 9, 2016 IP Updates.

Geographically descriptive trademarks law and Office practice clarified

Canada's Federal Court of Appeal revisited the law relating to trademarks alleged to be clearly descriptive or deceptively misdescriptive of origin in its February 23, 2016 decision in MC Imports Inc v AFOD Ltd, 2016 FCA 60. We first highlighted this development in an IP Update in March.

Later in the year, on November 9, 2016, the Trademarks Office released a Practice Notice setting out how the Trademarks Office will apply section 12(1)(b) of the Trademarks Act in view of that decision. In future, the Office will consider a trademark...