Smart & Biggar

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1100-150 York Street
Toronto, ON M5H 3S5, Canada
Phone: 416.593.5514
Fax: 416.591.1690
Areas Of Practice
  • Agriculture
  • Art, Entertainment, & Sports Law
  • Communications & Media Law
  • Intellectual Property
  • Litigation
  • Science, Computers, & Tech
Locations
Other Countries
  • Canada
Number of Attorneys
51-99 Attorneys

False alarm: the risks of groundless online takedown complaints

Online takedowns are an essential and effective tool for intellectual property rightsholders. Such tools are a common response to infringement on online marketplaces. A recent Canadian decision highlights the risks associated…more

Amazon, Canada, Copyright Litigation, Corporate Counsel, Digital Media

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Canadian Patent Law 2021: A round-up of interesting developments and court decisions

2021 saw changes in Canadian patent legislation, and a variety of court decisions addressing rarely interpreted provisions of the Patent Act, early consideration of recently enacted provisions, and new takes on central tenets of…more

Canada, Canadian Intellectual Property Office (CIPO), Corporate Counsel, Intellectual Property Protection, Inventive Concept Test

See all updates »

Health Canada and the Competition Bureau commit to information sharing to combat false, misleading or deceptive health claims

On March 7, 2024, Health Canada published a Memorandum of Understanding (MOU) with the Competition Bureau (together, Participants) to advance their mutual interests and develop a framework of cooperation to assist in…more

Deceptively Misdescriptive, False Statements, Healthcare, Information Sharing, Memorandum of Understanding

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Federal Court of Appeal upholds invalidity of Lilly’s CIALIS patent extending to "physiologically acceptable salt"

The Federal Court of Appeal (FCA) dismissed an appeal by Lilly from a decision of the Federal Court (see our previous article) which had granted a motion for summary trial brought by Teva, Pharmascience, Laboratoire Riva, Apotex…more

Appeals, Claim Construction, Patent Invalidity, Patents, Supreme Court of Canada

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Trademark owners, beware: protecting your brand in the era of trademark scams

An important component of brand ownership is exercising vigilance against fraudulent practices, such as counterfeiting and trademark pirating. Trademark owners must now also be alert to fraudulent communications from seemingly…more

Brand, Email, Fraud, Trademark Infringement, Trademark Litigation

See all updates »

AI-assisted inventions: USPTO’s most recent guidance for determining inventorship

AI technologies bring several new business opportunities, but they also bring a host of new legal questions, including in intellectual property law. A very important question at the intersection of AI and IP is: how do we define…more

Artificial Intelligence, Authorship, Biden Administration, Canada, Executive Orders

See all updates »

[Ongoing Program] Trademark & copyright enforcement on the internet: Online marketplaces, social media and the web - July 13th, 12:00 pm - 1:00 pm ET

This spring, join our Smart & Biggar trademark experts and gain new insights at our popular Canadian Trademarks webinar series. Each webinar provides practical tips and strategies for global brand protection in Canada, with a…more

Best Practices, Brand, Canada, Copyright, Copyright Enforcement

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Confirmed: delays in first examination of Canadian trademark applications to be reduced substantially

During a recent meeting, the Canadian Intellectual Property Office (CIPO) revealed plans for a significant reduction in the first examination of Canadian trademark applications not using the pre-approved list of goods and…more

Canada, Canadian Intellectual Property Office (CIPO), Trademark Application, Trademark Ownership, Trademarks

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Trademark owners, beware: protecting your brand in the era of trademark scams

An important component of brand ownership is exercising vigilance against fraudulent practices, such as counterfeiting and trademark pirating. Trademark owners must now also be alert to fraudulent communications from seemingly…more

Brand, Email, Fraud, Trademark Infringement, Trademark Litigation

See all updates »

Federal Court of Canada launches specialized Intellectual Property Chambers pilot project

With the creation of specialized Chambers in the Federal Court, parties can be confident that judges assigned to their intellectual property matters in Canada will have intellectual property expertise…more

Canada, Copyright, Corporate Counsel, Intellectual Property Protection, Patents

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Court permits addition of inventor to a patent that is subject of ongoing litigation

In Regeneron Pharmaceuticals, Inc v Canada (AG), 2023 FC 768, the Federal Court granted Regeneron’s application to add an inventor to its issued patent, which was the subject of pending litigation. The Court was satisfied, based…more

Canadian Patent Office, Patent Litigation, Patents, Pharmaceutical Patents

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Canadian IP Litigation 2023: Year in Review

The year 2023 witnessed several developments in Canadian IP litigation. From summary judgment finding its limits to the denial of a permanent injunction for the first time in almost three decades, several cases decided in 2023…more

Appeals, Canada, Copyright, Injunctions, Intellectual Property Litigation

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BYOOVIZ is confusing with BEOVU: Federal Court finds violation of Novartis’ trademark rights

In a decision dated January 24, 2024, Justice Pallotta allowed Novartis’ application, finding that Biogen and Samsung’s use of the trademark BYOOVIZ in association with an ophthalmologic drug violates Novartis’ rights in its…more

Appeals, Canada, Intellectual Property Litigation, Intellectual Property Protection, Life Sciences

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Do you actually own the IP generated by your Canadian employees?

Employees are the source of some of their employer’s most valuable intangible assets, that is, intellectual property assets. For this reason, it is usually in a business’s best interest to ensure their ownership of intellectual…more

Canada, Copyright, Employer-Owned Intellectual Property, Employment Contract, Independent Contractors

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Steps to consider before sending a cease-and-desist letter

The intellectual property (IP) of your business has value. IP can take several forms, including patent and trademark registrations, or intellectual property rights arising from common law, such as trade secrets, confidential…more

Canada, Cease and Desist Orders, Intellectual Property Litigation, Intellectual Property Protection, IP License

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Celebrating World IP Day 2024

For World IP Day 2024, we asked three of our practitioners three questions, all related to the World Intellectual Property Organization’s 2024 theme of IP and the SDGs: Building our common future with innovation and creativity. …more

Artificial Intelligence, Canada, Climate Change, Health Technology, Innovation

See all updates »

Why you should designate Canada – and a Canadian agent – in your next Madrid application

A little over a year has passed since Canada overhauled its trademark legislation and acceded to the Madrid Protocol, making it easier than ever to protect trademark rights in Canada. In this IP Update, we explore some of the…more

Canada, Canadian Intellectual Property Office (CIPO), CETA, Corporate Branding, Designated Agent

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Strategies for in-house counsel to mitigate risk related to intellectual property

In today’s competitive innovation economy, companies across industries face a wide range of potential legal issues and risks related to intellectual property (IP). Whether it is infringement of a valuable patented technology,…more

Copyright, Corporate Counsel, Infringement, Intellectual Property Protection, Life Sciences

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Angelcare and Playtex seal another win against patent infringer Munchkin

On August 17, 2023, the Federal Court issued its decision in Angelcare Canada Inc. et al. v Munchkin Inc. et al. (2023 FC 1111) regarding the Plaintiffs’ entitlement to certain remedies for patent infringement. This decision…more

Canada, Injunctive Relief, Patent Infringement, Patent Litigation, Patents

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IP protection for your product’s design and function is a smart investment

This article provides helpful advice for companies wanting to protect their IP rights and increase their profits. Smart & Biggar IP experts detail the importance of investing in industrial design or design patents to ensure your…more

Canada, Design Patent, Industrial Design, Intellectual Property Protection, Patents

See all updates »

Federal Court dismisses patent infringement Action for delay

In Sikes et al. v Encana Corporation et al. (Court File No. T-1345-13), the Federal Court recently issued an Order dismissing the Action for delay following a status review under section 382.1 of the Federal Courts Rules, where…more

Canada, Delay Claims, Delays, Dismissals, Patent Infringement

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Three key differences between U.S. and Canadian patent law that can affect patent filing strategies in Canada

Though there are many similarities between U.S. and Canadian patent law, the following significant differences can affect the key decision of whether to file in Canada. 1. Grace period time limit - Sections 28.2 and 28.3…more

Canada, Double Patent, Intellectual Property Protection, On-Sale Bar, Patent Applicants

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Upcoming amendments to the Regulation respecting the language of commerce and business

On June 26, 2024, the Regulation to amend mainly the Regulation respecting the language of commerce and business (the Regulation) was published in the Gazette officielle du Québec. The Regulation introduces significant changes…more

Advertising, Canada, French Language Requirements, Marketing, Software

See all updates »

Official marks in Canada: a unique system with notable flaws

Formally known as prohibited marks, official marks are a distinctive feature of Canadian trademark law, providing government entities with an exclusive and powerful tool to protect their marks, symbols and emblems. Private…more

Canada, Government Entities, Intellectual Property Protection, Trademark Act, Trademarks

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No parley for pirates: Federal Court (Canada) grants innovative remedy to combat sports piracy

In Rogers Media Inc et al v John Doe 1 et al, 2024 FC 1082, the Federal Court (Canada) (the Court) issued the first site-blocking judgment allowing the applicants to simultaneously protect live content in multiple sports leagues…more

Anti-Piracy, Canada, Innovation, Internet Service Providers (ISPs), NBA

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Federal Court of Appeal upholds the validity of Canada’s first anti-piracy site-blocking Order

On May 26, 2021, the Federal Court of Appeal issued its decision in Teksavvy Solutions Inc v Bell Media Inc et al, 2021 FCA 100, upholding the Federal Court’s order in Bell Media Inc. et al v Goldtv.biz et al., 2019 FC 1432 (the…more

Canada, Copyright, Copyright Infringement, Intellectual Property Protection, Internet Service Providers (ISPs)

See all updates »

[Webinar] Cross-border IP strategies for IP owners and litigators - September 18th, 2:00 pm PDT

Explore skinny labelling & obviousness in Canada and Australia - If you are an intellectual property (IP) owner, a litigator or an in-house legal professional managing IP litigation in multiple jurisdictions, don’t miss this…more

Australia, Canada, Cross-Border, FDA Approval, Hatch-Waxman

See all updates »

[Webinar] Cross-border IP strategies for IP owners and litigators - September 18th, 2:00 pm PDT

Explore skinny labelling & obviousness in Canada and Australia - If you are an intellectual property (IP) owner, a litigator or an in-house legal professional managing IP litigation in multiple jurisdictions, don’t miss this…more

Australia, Canada, Cross-Border, FDA Approval, Hatch-Waxman

See all updates »

Developing a sound global trademark filing strategy

Registering a trademark across multiple jurisdictions can be a complex process. Brand owners must strike a balance between maximizing protection across their jurisdictions of interest and managing both risks and costs to develop…more

Brand, Filing Requirements, Foreign Jurisdictions, Goods or Services, Multinationals

See all updates »

U.S. FDA authorizes Florida plan to import drugs in bulk from Canada

A proposed program by the state of Florida to import certain prescription drugs from Canada has received the approval of the United States Food and Drug Administration (FDA): FDA news release on January 5, 2024…more

Canada, Florida, Food and Drug Administration (FDA), Healthcare, Healthcare Reform

See all updates »

Developing a sound global trademark filing strategy

Registering a trademark across multiple jurisdictions can be a complex process. Brand owners must strike a balance between maximizing protection across their jurisdictions of interest and managing both risks and costs to develop…more

Brand, Filing Requirements, Foreign Jurisdictions, Goods or Services, Multinationals

See all updates »

Cleaning up the Act: Canada's new greenwashing laws

Last year, we discussed the ever-increasing interest in green branding and how marketing claims related to the environment are receiving increased scrutiny by Canadian regulatory authorities. It should therefore come as no…more

Canada, Competition Act, Deceptive Intent, Greenwashing, Marketing

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[Webinar] Canada: The New Frontier For U.S. IP Owners - December 4th, 12:00pm ET

Canada is increasingly becoming a hot bed for IP litigation involving U.S. IP owners, and provides a highly favourable forum from a procedural, substantive law and litigation costs perspective. American companies have seen…more

Canada, Intellectual Property Protection, IP Litigation, Patents, Trademarks

See all updates »

Cleaning up the Act: Canada's new greenwashing laws

Last year, we discussed the ever-increasing interest in green branding and how marketing claims related to the environment are receiving increased scrutiny by Canadian regulatory authorities. It should therefore come as no…more

Canada, Competition Act, Deceptive Intent, Greenwashing, Marketing

See all updates »

Canadian Trademark Law 2023: A Year in Review

2023 was an active year in Canadian trademark law. Canadian Courts addressed a wide range of issues, from licensing to comparative advertising to co-branding.   Notable changes also emerged from the Canadian Trademarks Office…more

Advertising, Bad Faith, Brand, Canada, Canadian Intellectual Property Office (CIPO)

See all updates »

Canada adopts three-step framework for assessing patentable subject matter in Benjamin Moore

Recently the Federal Court released a decision establishing a new three-step legal framework for assessing patentable subject matter, particularly as it relates to the patentability of computer-implemented inventions, in…more

Canada, Canadian Intellectual Property Office (CIPO), Intellectual Property Protection, Patent Applications, Patent-Eligible Subject Matter

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Top 10 patent and regulatory things you need to know when bringing a biopharma product to Canada

Canada is an attractive market for pharmaceutical manufacturers. While universal healthcare does not currently extend to drugs in an outpatient setting, most Canadian consumers have some form of drug coverage through government…more

Biopharmaceutical, Biotechnology, Canada, Generic Drugs, Life Sciences

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PMPRB releases CompassRx Annual Public Drug Plan Expenditure Report (2021/22)

On December 12, 2023, the Patent Medicine Prices Review Board (PMPRB), released the 9th edition of its annual report, CompassRx, which covers the 2021-2022 fiscal year. The report seeks to provide insights about the cost…more

Canada, Patented Medicine Prices Review Board (PMPRB), Patented Medicines, Pharmaceutical Industry, Pharmaceutical Patents

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You’ve got mail: new (sort of) automated analysis of goods and services for Nice Classification for upcoming trademark registration renewals in Canada

Last week, the Canadian Trademarks Office began issuing “pre-assessment letters” for certain trademark registrations which have never been classified under the Nice Classification system. The Nice Classification system was…more

Canada, Filing Deadlines, Renewal Options, Trademark Registration, Trademarks

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Interlocutory injunctions: powerful tools for trademark owners in Canada

A recent Canadian decision illustrates how powerful interlocutory injunctions can be for trademark owners involved in trademark infringement litigation in Canada. On January 2, 2024, in Amer Sports Canada Inc v Adidas Canada…more

British Columbia Supreme Court, Canada, Fashion Industry, Intellectual Property Protection, Interlocutory Injunctions

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No parley for pirates: Federal Court (Canada) grants innovative remedy to combat sports piracy

In Rogers Media Inc et al v John Doe 1 et al, 2024 FC 1082, the Federal Court (Canada) (the Court) issued the first site-blocking judgment allowing the applicants to simultaneously protect live content in multiple sports leagues…more

Anti-Piracy, Canada, Innovation, Internet Service Providers (ISPs), NBA

See all updates »

Health Canada’s proposed regulatory amendments to address health product shortages

On June 25, 2024, Health Canada published a notice of intent and Building resilience: Health Canada’s plan to address health product shortages, 2024 to 2028, relating to Health Canada’s plan over the next 4 years to address…more

Canada, Life Sciences, Medical Devices, Proposed Regulation, Reporting Requirements

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Canada’s new Patent Rules: twelve notable changes and tips

On December 1, 2018, the Canadian government released its proposed new Patent Rules in the Canada Gazette, Part I. This is one of the last steps necessary for implementing significant changes to Canada’s patent law, which are…more

Amended Complaints, Canada, New Rules, Patent Applications, Patent Fees

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[Webinar] Cross-border IP strategies for IP owners and litigators - September 18th, 2:00 pm PDT

Explore skinny labelling & obviousness in Canada and Australia - If you are an intellectual property (IP) owner, a litigator or an in-house legal professional managing IP litigation in multiple jurisdictions, don’t miss this…more

Australia, Canada, Cross-Border, FDA Approval, Hatch-Waxman

See all updates »

Celebrating World IP Day 2024

For World IP Day 2024, we asked three of our practitioners three questions, all related to the World Intellectual Property Organization’s 2024 theme of IP and the SDGs: Building our common future with innovation and creativity. …more

Artificial Intelligence, Canada, Climate Change, Health Technology, Innovation

See all updates »

Don’t take the bait: avoiding trademark phishing scams

The College of Patent Agents & Trademark Agents (CPATA) recently issued an alert regarding a surge in fraudulent emails targeting trademark owners. As is typical of these “phishing” scams, the emails often pressure recipients to…more

Canada, Canadian Intellectual Property Office (CIPO), Cyber Crimes, Email, Intellectual Property Protection

See all updates »

AI-assisted inventions: USPTO’s most recent guidance for determining inventorship

AI technologies bring several new business opportunities, but they also bring a host of new legal questions, including in intellectual property law. A very important question at the intersection of AI and IP is: how do we define…more

Artificial Intelligence, Authorship, Biden Administration, Canada, Executive Orders

See all updates »

Protecting trade secrets and confidential business information in Canada

Businesses can prevent third parties from misusing their valuable and commercially sensitive business information and trade secrets through contracts and the common law in Canada…more

Breach of Confidence, Canada, Confidential Information, Confidentiality Agreements, Disclosure Requirements

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Canadian Patent Law 2023: A Year in Review

In our annual review of developments in Canadian patent law, we considered over 60 patent decisions reported last year. This article highlights statutory changes and a selection of interesting points addressed in the reported…more

Canada, Intellectual Property Protection, Obviousness, Patent Infringement, Patent Invalidity

See all updates »

Protecting trade secrets and confidential business information in Canada

Businesses can prevent third parties from misusing their valuable and commercially sensitive business information and trade secrets through contracts and the common law in Canada…more

Breach of Confidence, Canada, Confidential Information, Confidentiality Agreements, Disclosure Requirements

See all updates »

Failed second bite at the cherry (pie): Federal Court invalidates foreign-language marks filed in bad faith

The Federal Court recently had occasion to revisit the issue of confusion between foreign-language trademarks involving the use of Chinese characters in Canada…more

Canada, Foreign Language, Intellectual Property Protection, Trademark Litigation, Trademarks

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CIPO shines spotlight on patenting in climate change mitigation technologies

With the Paris climate agreement having recently come into effect, climate change mitigation technologies have been the focus of widespread discussion and debate. The Canadian Intellectual Property Office (CIPO) has added to the…more

Canada, Canadian Intellectual Property Office (CIPO), Climate Change, Expedited Approval Process, Fast Track Process

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2024 mid-year highlights in Canadian life sciences IP and regulatory law

In the first half of 2024, Rx IP Update reported on a number of developments in Canadian life sciences IP and regulatory law. The Rx IP Update team at Smart & Biggar has collected the top stories from January to June and…more

Canada, Food and Drug Administration (FDA), Health Canada, Life Sciences, Patents

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Artificial intelligence (AI) advocacy in the Federal Court

In April 2023, a curious law professor and lawyer submitted his “Introductory Civil Procedure” exam to ChatGPT, an AI chatbot, to see how it would score. The results were surprising: ChatGPT outperformed over 70% of his…more

Artificial Intelligence, Canada, Enforcement Actions, Intellectual Property Litigation, Intellectual Property Protection

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In-house counsel primer: Managing IP and compliance risks in artificial intelligence and a digital world

In today’s competitive innovation economy, digital technologies and artificial intelligence (AI) tools are increasingly used in business transformation and growth. In-house counsel at companies across industries need to be…more

Artificial Intelligence, Compliance, Data Privacy, Digital Services, Information Technology

See all updates »

Upcoming amendments to the Regulation respecting the language of commerce and business

On June 26, 2024, the Regulation to amend mainly the Regulation respecting the language of commerce and business (the Regulation) was published in the Gazette officielle du Québec. The Regulation introduces significant changes…more

Advertising, Canada, French Language Requirements, Marketing, Software

See all updates »

Proposed regulations for Canada’s new Patent Term Adjustment (PTA) system: few patents will qualify for PTA

As explained in our previous article, Canada will soon be implementing a patent term adjustment (PTA) system to account for unreasonable delays by the Patent Office in issuing a patent. The necessary amendments to the Patent…more

Canada, Patent Term Adjustment, Patents, Proposed Regulation, United States-Mexico-Canada Agreement (USMCA)

See all updates »

Canadian Trademark Law 2023: A Year in Review

2023 was an active year in Canadian trademark law. Canadian Courts addressed a wide range of issues, from licensing to comparative advertising to co-branding.   Notable changes also emerged from the Canadian Trademarks Office…more

Advertising, Bad Faith, Brand, Canada, Canadian Intellectual Property Office (CIPO)

See all updates »

Launch of pCPA temporary access process

On April 5, 2024, the pan-Canadian Pharmaceutical Alliance (pCPA) announced that it was ready to accept drugs through the pCPA Temporary Access Process (pTAP) (see our previous article regarding the consultation)…more

CADTH, Canada, Health Canada, Life Sciences, Pharmaceutical Industry

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IP protection for your product’s design and function is a smart investment

This article provides helpful advice for companies wanting to protect their IP rights and increase their profits. Smart & Biggar IP experts detail the importance of investing in industrial design or design patents to ensure your…more

Canada, Design Patent, Industrial Design, Intellectual Property Protection, Patents

See all updates »

Supreme Court of Canada rules on Crown copyright

On Thursday September 26, 2019, the Supreme Court of Canada issued its highly anticipated decision in Keatley Surveying Ltd v Teranet Inc (2019 SCC 43), finding that the Province of Ontario holds copyright in plans of survey…more

Canada, Class Action, Copyright, Government Copyrights, Indicia of Control

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Strong trademark jumps the language barrier; foreign-language mark refused in Canada

Unlike in the United States, brand names in foreign languages are not automatically protected in Canada. No “doctrine of foreign equivalents” exists to expand a brand owner’s monopoly across linguistic lines. This leaves even…more

Brand, Intellectual Property Protection, Trademark Application, Trademark Infringement, Trademark Litigation

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New guidelines for influencer marketing #FullDisclosure

Brand and influencer collaborations are a key component in marketing products and services, as highlighted in our article on Like & Follow! What to know when #advertising with #influencers. Ad Standards recently updated its…more

Advertising, Compliance, FTC Endorsement Guidelines, Influencers, Marketing

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Foreign Prosecution History Evidence Permitted under Section 53.1 of the Patent Act

The Federal Court has now released the first decision in which the scope of Section 53.1 of the Canadian Patent Act—the so-called “file wrapper estoppel” provision—has been considered. We recently published an IP Update…more

Admissible Evidence, Canada, Claim Construction, File Wrapper Estoppel, Foreign Patent Applications

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[Webinar] Cross-border IP strategies for IP owners and litigators - September 18th, 2:00 pm PDT

Explore skinny labelling & obviousness in Canada and Australia - If you are an intellectual property (IP) owner, a litigator or an in-house legal professional managing IP litigation in multiple jurisdictions, don’t miss this…more

Australia, Canada, Cross-Border, FDA Approval, Hatch-Waxman

See all updates »

Minister of Health proposes legislation for first phase of national universal pharmacare

On February 29, 2024, the Minister of Health announced the introduction of Bill C-64, An Act respecting pharmacare (Pharmacare Act), which “proposes the foundational principles for first phase of national universal pharmacare in…more

Compliance, Healthcare, Life Sciences, Minister of Health, Pharmaceutical Industry

See all updates »

Canadian Patent Law 2021: A round-up of interesting developments and court decisions

2021 saw changes in Canadian patent legislation, and a variety of court decisions addressing rarely interpreted provisions of the Patent Act, early consideration of recently enacted provisions, and new takes on central tenets of…more

Canada, Canadian Intellectual Property Office (CIPO), Corporate Counsel, Intellectual Property Protection, Inventive Concept Test

See all updates »

Quebec’s “IP Box”: A tax incentive for the commercialization of IP

Innovation from research & development (R&D) can be protected by intellectual property (IP) rights of various kinds, including patents, copyright and plant breeder’s rights. To encourage companies to invest locally in R&D that…more

Canada, Intellectual Property Protection, Patents, Research and Development, Software

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