Supreme Court Clarifies Test for Trademark Confusion
June 06, 2011
Trademarks perform a key function in the marketplace. Trademarks serve as a shortcut for consumers: “trade-marks assure consumers that they are buying from the source from whom they think they are buying and receiving the quality which they associate with that particular trade-mark.” Not surprisingly, the issue of consumer confusion between sources of goods and services is often at the centre of a trademark dispute.
Continued Challenges with Respect to the Scope of the Duty to Consult and Accommodate First Nations
May 27, 2011
The British Columbia Court of Appeal has released its decision in West Moberly First Nations v. British Columbia (Chief Inspector of Mines), 2011 BCCA 247. The West Moberly appeal provided an opportunity for the Court to clarify the scope of the duty to consult and accommodate First Nations in light of the Supreme Court of Canada's recent decision in Rio Tinto Alcan Inc. v. Carrier Sekani Tribal Council, 2010 SCC 43, and in particular, whether the duty to consult includes a consideration of the cumulative effects of "past wrongs" and the impact of future developments. In dismissing the appeal, the Court rendered three separate decisions, creating potential uncertainty around the role cumulative effects plays in the duty to consult.
Prime Minister Harper's International Business Agenda: How Does it Impact You?
May 24, 2011
With its new majority government, Mr. Harper's team will be inclined to move forward vigorously with its significant trade negotiations agenda. These negotiations will offer an important opportunity for Canadian businesses to press the government to address foreign barriers to trade that are hindering their business opportunities. They may also pose some challenges for Canadian businesses in the form of increased foreign competition in the Canadian marketplace. Now is the time for those who may be affected by these negotiations to determine their interests and to engage the government with a view to influencing these initiatives in their interests.
Bennett Jones Spring 2011 Economic Outlook
May 17, 2011
Since last fall a number of risks to the world economic conjuncture have emerged or gained in intensity but, at the same time, there have been growing signs that the recovery in advanced countries has finally reached escape velocity and that persistently rapid growth has virtually eliminated spare capacity in large emerging market economies (EMEs).
New Mineral Project Disclosure Standards Coming into Effect June 30, 2011
May 11, 2011
Almost a year after issuing a draft for comment, on April 8, 2011, the Canadian Securities Administrators (CSA) published a new and improved National Instrument 43-101 – Standards of Disclosure for Mineral Projects, which is scheduled to come into effect on June 30, 2011. The changes to NI 43-101 reflect the results of consultations with mining industry market participants and is designed to make compliance less costly for mining companies without compromising investor protection.
Saskatchewan Modernizes its Oil and Gas Conservation Act
May 11, 2011
On May 10, 2011, Saskatchewan passed changes to its Oil and
Gas Conservation Act, the act governing the regulation of resource
development operations in the province. The aim of the amendments is to provide
resource companies investing in Saskatchewan's energy and resource industries
with the best support services and business and regulatory systems available.
The amended legislation also introduces vicarious liability and liability for
directors, officers and agents of a corporation in certain circumstances. The
amendments additionally require, on a retroactive basis, that all vendors of a
well or facility apply for a transfer of a licence within 14 days after the
signing of a purchase and sale agreement, or within 14 days of the relevant
section coming into force if an agreement has already been signed. Companies
that fail to do so face the potential for Saskatchewan's Minister of Energy and
Resources to shut down a well or facility. Resource companies need to be mindful
of these new provisions.
Skating Around the Issue of Prior Public Disclosure
May 11, 2011
In Bauer Hockey Corp. v. Easton Sports Canada Inc. 2011 FCA 83, the Canadian Federal Court of Appeals considered an appeal from Easton that it had infringed Bauer's patent pertaining to a skate boot and induced a third-party manufacturer to do the same. It was also Easton's position that the trial judge had erred in finding the patent was not invalid on the basis of anticipation and obviousness. Bauer cross appealed from a portion of the trial judgment that some of Easton's skate models did not breach its patent.
Ontario Court Decision Affirms Need for Express Technology Use Policy
May 02, 2011
In Ontario, unlike Alberta, British Columbia and Québec, there is no specific privacy statute that governs the collection, use and disclosure of personal information belonging to employees of provincially regulated businesses. Recently, the Ontario Court of Appeal in R. v. Cole considered whether personal information stored on a laptop owned by the employer was protected by a common law doctrine of privacy. The decision makes it clear that provincially regulated employers in Ontario who articulate and implement clear policies and procedures which address the use of the employer's electronic communications systems and equipment are able to control and monitor how their equipment and systems are used.
Auditing the Audit
April 28, 2011
Most jurisdictions in Canada require the unanimous consent of all shareholders, including non-voting shareholders, in order for a non-distributing corporation to dispense with an audit. The requirement is absolute and mandatory – there are no other exemptions or qualifications. The public policy rationale behind the rule is laudable; however, the implementation in practice can be austere. It is time to revisit the universal audit requirement as it applies to non-distributing corporations. Originally published in the March 2010 issue of Canadian Lawyer.
Ontario Court Reaffirms Extensive Franchisee Protection in Class Actions
April 28, 2011
Trillium Motor World Ltd.. v. General Motors Canada Ltd. and Cassels Brock and Blackwell LLP is the latest in a string of recent franchisee favourable decisions in class action claims made under the Arthur Wishart Act (Franchise Disclosure). On March 1, 2011, Justice Strathy certified a class action on behalf of General Motors dealers whose dealerships were closed as a condition of government bailouts to GM following the global economic downturn in 2008. Justice Strathy's decision provides a good summary and synthesis of a series of recent decisions of the Ontario Court of Appeal in which the Act has been interpreted broadly with the interests of franchisees taking precedence over those of franchisors. This decision, as well as the recent case law that Justice Strathy summarizes and affirms, establishes Ontario as one of the most franchisee-friendly jurisdictions in the common law world for franchise class actions. It also provides an example of how corporate restructuring can lead to class action claims under the Act and how franchise law should be considered in the context of a pre-insolvency business restructuring of a franchise system.
USPTO Patent Prioritized Examination
April 27, 2011
In 2010, the United States Patent and Trademark Office (USPTO) proposed the implementation of certain procedures designed to give patent applicants more control over the timing of the examination of original plant and utility patent applications.
Supreme Court Weighs in on Interplay Between Class Actions and Arbitration Clauses in Consumer Contracts
April 25, 2011
Arbitration clauses have been used in Canada, with mixed
results, as a mechanism by which potential defendants have attempted to lessen
their exposure to class actions. Arbitration clauses are frequently contained in
consumer contracts and, in particular, in service contracts. These clauses
typically require consumers to participate in mediation or arbitration and,
often, to waive all rights to participate in class action
proceedings.
Group Defamation Clarified
April 18, 2011
The Supreme Court of Canada recently dismissed a class action brought on behalf of 1,100 Montreal taxi drivers for group defamation. At issue in the claim were the “scornful and racist” remarks of a Quebec talk radio show host about Arabic and Creole speaking taxi drivers.
Illinois Brick Comes to Canada
April 18, 2011
On April 15, 2011, the British Columbia Court of Appeal released companion reasons for judgment in Pro-Sys Consultants Ltd. v. Microsoft Corporation, 2011 BCCA 186 and Sun-Rype Products Ltd. v. Archer Daniels Midland Company, 2011 BCCA 187. The decisions are of great significance because the Court refused to certify the claims of the indirect purchaser classes on the basis that indirect purchasers do not have a cause of action. These are the first decisions of a Canadian appellate court to decide this issue and, while the plaintiffs are likely to seek leave to appeal to the Supreme Court of Canada, they represent the most significant judicial development in Canadian antitrust class actions in recent memory.
Alberta Releases its Draft Lower Athabasca Regional Plan
April 07, 2011
On April 5, 2011, the Alberta Government released its draft Lower Athabasca Regional Plan (“LARP”), which sets out the Government's plan for managing economic growth and environmental sustainability in northeastern Alberta, an area that contains most of the province's oil sands resources.
Google Books Settlement Rejection
April 05, 2011
The recent Google litigation has further helped to define the rights of copyright holders and further define the conduct that may be permissible in the digital age.
Round II to the Provinces: Quebec Court of Appeal Rejects Canadian Securities Act as Unconstitutional
April 05, 2011
On March 31, 2011, the Quebec Court of Appeal released a 4-1 decision finding that the proposed Canadian Securities Act (CSA) is unconstitutional. The majority decision echoes the recent decision of the Alberta Court of Appeal, which also found the CSA to be beyond federal jurisdiction. However, Justice Dalphond of the Quebec Court of Appeal dissented, finding that the CSA is constitutional. Neither of these decisions is the final word on the matter: the Supreme Court of Canada is scheduled to hear arguments on the CSA on April 13th and 14th, 2011, and will ultimately determine its constitutionality. It remains to be seen whether it will adopt the position of the Alberta Court of Appeal and the majority of the Quebec Court of Appeal in finding the CSA unconstitutional, or whether it will agree with the views of Justice Dalphond and conclude that the CSA is within federal authority.
This article was reprinted in the Canadian Corporation Counsel Association's Ultimate Corporate Counsel Guide (April 2011) and CCH Canadian Limited's Canadian Securities Law News (May 2011).
Ontario Court Approves Litigation Funding Agreement Prior to Certification in Proposed Class Action
April 01, 2011
On March 21, 2011, Justice Strathy of the Ontario Superior Court of Justice released interim reasons in Dugal v. Manulife Financial Corporation conditionally approving a litigation funding agreement entered into between the plaintiffs and a foreign third party corporation. This is the second time that such an agreement has been considered in Ontario and the first time that one has been approved.
United States Senate Passes Patent Reform Bill
April 01, 2011
On March 8, 2011, the United States Senate voted to pass historic patent reform legislation. The America Invents Act, originally titled the Patent Reform Act, was passed by the United States Senate by an overwhelming 95–5 vote. If enacted, the Act would be the first comprehensive reform to the United States Patent system in nearly 60 years.
Copyright Reform Again Delayed
March 30, 2011
On Friday, March 25, 2011, the Conservative government lost a non-confidence motion bringing the current session of Parliament to an end and setting the stage for a Spring election, called for May 2. The government's fall signals the demise of a number of bills, including Canada's copyright reform bill, Bill C-32. Notwithstanding the extensive consultations on Bill C-32, and passing first reading, long-awaited amendments to Canada's copyright legislation are again delayed indefinitely. This will be the third time that efforts at copyright reform have failed in the past five years.
Round I to the Provinces: Alberta Court of Appeal Rejects Canadian Securities Act as Unconstitutional
March 29, 2011
Earlier this month, the Alberta Court of Appeal rejected the federal government's proposed national securities legislation as unconstitutional. The Quebec Court of Appeal's decision on the same issue is expected shortly. Though the Alberta decision is strongly worded, the final decision rests with the Supreme Court of Canada, which will hear arguments on April 13 and 14, 2011. It remains to be seen whether the Alberta decision foreshadows the Supreme Court's reasons, or becomes the voice of dissent on this issue.
Class Actions and Regulatory Proceedings: The Court Giveth and the Court Taketh Away
March 22, 2011
In January 2010, potential corporate defendants to class actions breathed a (small) sigh of relief as Justice Perell in Fischer v. IG Investment Management Ltd. refused to certify a class action on the basis that a settlement with the Ontario Securities Commission (OSC) had already provided aggrieved investors with a payment of $205.6 million. The decision meant that by participating in a regulatory settlement in which restitution was made to individuals, a corporation could potentially avoid a class action. In the plaintiff-friendly world of class actions, Justice Perell's decision was a welcome change. However, this comfort was short lived. On January 31, 2011, the Ontario Divisional Court overturned Justice Perell's decision and certified the class action.
Leave and Certification for Secondary Market Securities Class Action: Defendants are Still on Thin Ice
March 22, 2011
Justice Tausendfreund of the Ontario Superior Court recently
released Dobbie et al. v. Arctic Glacier Income Fund et al., the second
decision considering whether to grant leave under the new Part XXIII.1 of the
Securities Act (Ontario). Part XXIII.1 creates a statutory right of
action against reporting issuers, their officers and directors, and related
parties for misrepresentations made in secondary market disclosures. Before such
a claim can be brought, the plaintiffs must obtain leave of the court. In
Dobbie et al. v. Arctic Glacier Income Fund et al., leave was granted to
the plaintiffs and a national class of Arctic investors was certified for both
the statutory causes of action and common law
claims.
When the Corporate Veil Should not be Pierced
March 15, 2011
The “separate entities” principle established over 100 years ago by the House of Lords in Salomon has widely been recognised as one of the fundamental principles of English law. This principle holds that a company is a distinct legal person, different altogether from its shareholders, and which must be treated like any other independent person with its own rights and liabilities. The corporate veil, it was held, may only be pierced in very rare and exceptional circumstances, namely, if the company was formed for an unlawful purpose or a fraud was committed. Regrettably, in the past couple of decades, a “just and equitable” test has insidiously crept into the jurisprudence and been occasionally (but wrongly) applied in determining when to pierce the veil. The result has been the injection of uncertainty into the law and a weakening of the principle, which for over a century has deftly served as a cornerstone of corporate law. Originally published in the November/December 2009 issue of Canadian Lawyer.
Bennett Jones