The Third Wave -- The Supreme Court of Canada Takes on Trade-Marks

by Bruce W. Stratton

Canada's top court will decide three trade-mark appeals this year. After a dry spell of years in which there had been a dearth of Supreme Court of Canada decisions in intellectual property law, the past five years has seen the Court handle a first wave of IP cases in patents, a second wave of copyright appeals and now in 2005 a final wave of trade-mark cases.

It was six years ago the Supreme Court of Canada passed up the opportunity to pronounce on the patentability of life forms in the Pioneer Hi-Bred case (Pioneer Hi-Bred Ltd. v. Canada (Commissioner of Patents), [1989] 1 S.C.R. 1623). Times have changed. The past half-decade has brought a new willingness at the Supreme Court to both hear IP cases and to make law on fundamental IP concepts. In 2000, the Court set out new standards on the important IP law issue of patent claim construction and non-literal patent infringement (Whirlpool Corp. v. Camco Inc., [2000] 2 S.C.R. 1067; Free World Trust c. Électro Santé Inc., [2000] 2 S.C.R. 1024). Included as part of the Court's review of claim construction were issues of file wrapper estoppel and the date of interpretation of a patent. Since then, the Court has controversially, and with considerable internal debate, twice considered the patentability of life forms (Harvard College v. Canada (Commissioner of Patents), [2002] 4 S.C.R. 45; Monsanto Canada Inc. v. Schmeiser, [2004] 1 S.C.R. 902). In addition, the issues of inventorship and sound prediction were subject to the Court's review in the AZT patent infringement appeal.

The second recent wave of IP cases to go before the Supreme Court dealt with copyright. The Théberge case (Théberge v. Galerie d'Art du Petit Champlain Inc., [2002] 2 S.C.R. 336) saw a lively debate between the economic and the moral rights camps in the Court; the economic approach to copyright prevailing. Théberge was followed by CCH Canadian (CCH Canadian Ltd. v. Law Society of Upper Canada, [2004] 1 S.C.R. 339). In this case the Court gave life to the concept of users rights in Canadian copyright law. The result is that there is now an active balancing of the rights of copyright owners with the user rights set out in the Copyright Act (R.S. 1985, c. C-42). The SOCAN (Society of Composers, Authors and Music Publishers of Canda v. Canadian Association of Internet Providers, [2004] 2 S.C.R. 427) case gave the Court a chance to consider the impact of the Internet on the copyright system.

The year 2005 has seen cases dealing with toys, dolls and Champagne bring trade-mark issues to the Court: Lego, Mattel and Veuve Clicquot are all on the Court's docket in this calendar year. In Lego (heard in March) the Court is faced with questions of functionality in unregistered trade-marks. In Mattel and Veuve Cliquot the ambit of famous marks will be decided (the hearings are scheduled together in October).

After years in which the Supreme Court appeared to be content to let the Federal Court make law in the IP area, the Supreme Court is now clearly interested in putting its mark on the law in patents, copyright and now trade-marks. The fact that the Supreme Court is prepared to take on tough legal questions in this area reflects the increasing importance of IP in the economic and social life of Canadians. By rounding out the Court's consideration of IP rights with this year's trade-mark cases, the Court keeps IP law in Canada current and ensures a constructive debate will continue over the limits and scope of IP law in this country.

Bruce W. Stratton practices intellectual property law with Dimock Stratton LLP in Toronto.
This article was originally published in WestlaweCarswell’s IPSource(TM), September 1, 2005.

[ BACK TO TOP ]