Federal Court opines on precedential value of prior PM(NOC) proceedings and scope of experimental use exception to public disclosure

Ryan Sheahan and Jessica Rutledge - 

The Federal Court’s decision in the consolidated proceedings of Bayer Inc. v Cobalt Pharmaceuticals Company  offers useful guidance as to the precedential value of proceedings under the Patented Medicines (Notice of Compliance) Regulations (PM(NOC)) in the context of subsequent infringement actions involving the same patent.  It also provides helpful direction in respect of the scope of the Canadian experimental use exception to anticipatory public disclosure.  

Background:  Patent at Issue

Both the PM(NOC) proceedings and the Federal Court infringement action concerned Bayer’s Canadian Patent No. 2,383,426 (the ‘426 Patent).  The ‘426 Patent relates to a pharmaceutical combination of ethinylestradiol and drospirenone for their use as a contraceptive.  Ethinylestradiol functions as an estrogen, and drospirenone as a progestogen, and both were known to inhibit ovulation when used in combination.  The ‘426 Patent contemplated a novel formulation using rapidly-dissolving drospirenone particles, which delivered unexpectedly consistent bioavailability.  This was unexpected because drospirenone was known to be inactive at an acidic pH of 1 when tested in a laboratory setting, and the normal pH range of the stomach is 1.0 to 3.0.  However, traditional coatings that would protect the drospirenone from the stomach environment released the drospirenone at variable rates, resulting in irregular effectiveness in different people.  Bayer tested a rapidly-dissolving particulate version of drospirenone in clinical trials with women, and discovered it was effective as a contraceptive in the ethinylestradiol combination, and did not degrade or require any coating.  Bayer patented this formulation of the contraceptive in the ‘426 Patent, with an effective Canadian filing date of August 31, 2000, and currently markets two products known as “Yaz” and “Yasmin”, which incorporate the patented invention, with different doses of ethinylestradiol .

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Is the sign outside your Quebec business an English-only trademark? Time to add some French

Gayle Noble, Catherine Jenner and Tania Djerrahian - 

Previously-announced amendments to the regulations  under the  Charter of the French Language (the Charter) regarding exterior signs and posters have been adopted (Amended Regulations)  and are coming into force on November 24, 2016 (in the same form as discussed in our previous article). The Amended Regulations are intended to ensure the presence of French on or near exterior commercial signs and posters that display trademarks exclusively in a language other than French. The Office québécois de la langue française (the OQLF), the body that administers the Charter, has provided guidance on the implementation of the requirements of the new regulations through two new publications: Affichage des marques de commerce and Le français, langue du travail, du commerce et des affaires au Québec.

The Amended Regulations permit businesses to maintain the integrity of their non-French-only trademarks while requiring a "sufficient presence of French" on the sign/poster or nearby.  The main requirements of the Amended Regulations, as discussed in more detail our previous article, are as follows:

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CRTC slashes anti-spam fine in first review decision

David Elder -

In the first case considered by the appointed members of the CRTC under Canada’s Anti-Spam Law (CASL), the Commission has significantly reduced the size of the penalty previously issued by staff, potentially raising questions about the appropriateness of previous AMPs issued under the law.

A Notice of Violation was originally issued by CRTC staff to Blackstone Learning Corporation in January of 2015, requiring that company to pay an Administrative Monetary Penalty (AMP) of $640,000.  However, following a review by the CRTC, the amount payable has been reduced to $50,000.

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CRTC gets frosted at Kellogg's over email violations

David Elder

In the fifth, and most recent, enforcement decision relating to compliance with Canada’s Anti-Spam Legislation, the CRTC has announced that Kellogg Canada has voluntarily entered into an undertaking respecting alleged non-compliance, which includes payment of $60,000 in penalties.

The undertaking resulted from an alleged failure to obtain consent from recipients prior to sending commercial electronic messages.  The alleged violations apparently occurred over an 11-week period in late 2014.

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Privacy Shield formally adopted by the European Commission

Michael Decicco and Rona Ghanbari

On July 12, 2016, the European Commission (Commission) formally adopted the EU-US Privacy Shield (Privacy Shield) by issuing its adequacy decision, providing a new structure for cross-border data transfers from the European Union (EU) to the United States.

Background

The Privacy Shield was developed after the Commission’s previous adequacy decision regarding the Safe Harbour framework was declared invalid by the Court of Justice of the EU. Following extensive negotiations, which considered concerns and recommended changes from the Article 29 Working Party, the Commission and the United States reached an agreement on the terms of the Privacy Shield.

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CRTC partners with global agencies to enforce spam and telemarketing rules

David Elder - 

The Canadian Radio-television and Telecommunications Commission (CRTC) has announced that it has signed a memorandum of understanding with 10 domestic and global enforcement agencies to aid in the enforcement of spam and telemarketing laws.  However, while the announcement is certainly a step in the right direction, many of the countries that produce the most spam were not at the table.

The agreement is intended to promote cooperation between the various enforcement agencies, and includes commitments by each signatory to share information and intelligence regarding unsolicited communications, where permitted by the laws of its jurisdiction.  

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Changes in distribution models may affect trademark rights

Justine Whitehead and Hilary Furness - 

In Canada, and most countries around the world, trademarks which are not being used in association with the goods and services with which the marks were registered are vulnerable to expungement for non-use.  In Canada, challenges can be brought under section 45 of Trade-marks Act, which provides for summary expungement of a trademark if, upon request of the Registrar of Trade-marks, a trademark owner is unable to provide evidence of use of the trademark in Canada during the previous three years, in the normal course of trade and in association with the goods and/or services set out in the registration.  This expungement can only be avoided if the owner proves special circumstances that justify temporary non-use of the trademark.

Technological changes are revolutionizing the methods by which certain goods and services are sold to consumers. At one time, products such as books, music recordings and computer games could only be sold to consumers as tangible items.  Now, of course, these items are routinely made available through various electronic means, and in some cases, the business model has moved from distribution of goods to the offering of on-line services.  But what happens to trademark registrations when evolving technology has changed the manner or medium by which the identified goods and services are offered for sale to consumers?  

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Signs with registered English only trademarks in Québec? Not a problem if you have sufficient and visible French somewhere close by

Gayle Noble, Catherine Jenner and Tania Djerrahian -

On Wednesday May 4, 2016, the Québec Minister of Culture and Communications and Minister Responsible for the Protection and Promotion of the French Language, Hélène David, introduced draft amendments (the Proposed Amendments) to certain regulations under the Charter of the French Language (the Charter) to ensure the presence of French where commercial signs and posters display trademarks exclusively in a language other than French. This article provides some background relating to the Proposed Amendments as well as a summary of some of the key provisions.

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You can Google it: Supreme Court of Canada grants leave to appeal global injunction

Alex Sarabura - 

The Supreme Court of Canada has granted leave to hear an important case respecting the ability of Canadian courts to enjoin the behaviour of organizations with respect to their operations outside of Canada.

On February 18, 2016, the Supreme Court of Canada granted Google Inc. leave to appeal the judgment of the British Columbia Court of Appeal in Equustek Solutions Inc. v. Google Inc., in which the BCCA upheld an interlocutory injunction prohibiting Google from including specific websites in its search results worldwide.

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Cyber-attacks: why any business may be at risk and five possible ways to address the risks

Vanessa Coiteux - 

In this article, Stikeman Elliott’s Vanessa Coiteux reminds us that the risk of cyber-attack is by no means confined to businesses in certain industries. She identifies five cybersecurity risk factors that apply to most or all businesses and discusses how to address them. These observations will be of particular interest to corporate directors who, as the article notes, increasingly have to take the risk of cyber-attacks into account – including in situations where the acquisition or sale of a business is being contemplated.

  • “This is not a big public company!”
  • “This is not a financial institution or a retail company!”
  • “There must be more valuable information to hack out there!”
  • “Putting cybersecurity measures in place is costly!” 
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New EU-US Safe Harbour Agreement

Michael Decicco and Eryn Fanjoy

On February 2, 2016, the European Commission announced that it reached a deal to replace the EU-US Safe Harbour framework that was declared invalid last year by the Court of Justice of the European Union (CJEU).  Referred to as the “EU-US Privacy Shield”, the new framework should provide businesses with guidance for the safe transfer of personal information of citizens of the European Union (EU) to the United States. 

Background

The CJEU declared the old Safe Harbour framework invalid on October 6, 2015.  Under the EU Data Protection Directive, the personal information of EU citizens can only be transferred from the EU to countries with adequate data protection standards. The old Safe Harbour agreement, negotiated between the European Commission and the United States Department of Commerce, was one of a number of mechanisms available to EU businesses to ensure there was an adequate level of protection when transferring personal data of EU citizens to the United States. One of the CJEU’s primary concerns with the old framework was the massive and indiscriminate surveillance of personal information of EU citizens in the United States, which was viewed as incompatible with the “fundamental rights” of EU citizens. 

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Ontario Superior Court creates new privacy tort in revenge porn case

Justine Johnston -

On January 21, 2016, the Ontario Superior Court released its decision in Doe 464533 v D, 2016 ONSC 541, recognizing for the first time the new privacy tort of public disclosure of private facts. The Court’s decision explicitly expands the common law protection of privacy and demonstrates how courts can recognize and provide relief to victims of cyberbullying.

The public disclosure of private facts tort arose from an egregious case of revenge porn cyberbullying. The defendant posted a sexually explicit video of the plaintiff under the user submission section of a pornographic website. When the plaintiff became aware that the video had been posted online, the defendant admitted to uploading it and removed it from the website. Although the video was “removed”, the Court acknowledged that there is no way to know how many times it was viewed or downloaded or if and how many times it may have been copied onto other media storage devices or recirculated. 

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CRTC executes another raid in malware investigation

David Elder - 

The Canadian Radio-television and Telecommunications Commission (CRTC) has announced the execution of another warrant under Canada’s Anti-Spam Legislation (CASL), this time at two locations in the Niagara region of Ontario.

This is only the second such warrant executed by the CRTC under the anti-spam law.  As in a recent previous announcement respecting the execution of a similar warrant, the warrant was issued as part of an ongoing investigation, and the party that was the subject of the warrant was not identified.

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CRTC battles forces of dorkness, takes action against notorious botnet

David Elder - 

In the second such announcement in less than a week, the Canadian Radio-television and Telecommunications Commission (CRTC) has publicly announced an advanced investigative action -- this time against an unnamed organization suspected of involvement in the distribution the notorious and widely distributed Win32/Dorkbot malware.

The CRTC announced that, with the assistance of the Royal Canadian Mounted Police (RCMP), it had served its first-ever warrant under Canada's Anti-Spam Legislation (CASL) to “take down” a command-and-control server located in Toronto, Ontario as part of what the Commission has characterized as a coordinated international effort.

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Fourteen not-so-simple rules for implementing a BYOD program

Kelly O'Ferrall -    

In case you missed it over the summer, the Office of the Privacy Commissioner of Canada, together with the Alberta and British Columbia Privacy Commissioners, teamed up to create guidelines (the Guidelines) to address what employers should consider when implementing policies that allow employees to use their own mobile devices for both work and personal purposes (i.e., a Bring Your Own Device or BYOD policy).

Employers often cite cost savings and convenience as reasons for instituting BYOD policies. Further, as employees are quite often already using their own devices for business purposes (or their work devices for personal purposes), implementing a formal BYOD policy allows employers to clarify the rules and expectations with respect to such use.  Notwithstanding the apparent benefits of having a BYOD arrangement, the Guidelines convey an underlying message that such arrangements should be approached with caution in light of the requirements contained in applicable privacy legislation. Specifically, the obligation to maintain the security of personal information.

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