Groves v Canasonics Inc., 2015 ABQB
314 The Court of Queen's Bench of Alberta was asked to decide
the ownership of patent rights as between an employer and an
employee. The employment agreement between the plaintiff and his defendant
employer had a condition providing all rights to intellectual
property were assigned to the employer. As an invention was
patented, they were assigned to the employer in each case for
"one dollar and other good and valuable consideration".
The plaintiff was terminated and sought ownership over the
patents. The Court had difficulty accepting the plaintiff's testimony
and so decided the case without that testimony. It was argued that
the plaintiff's salary was never fully paid, and so there was
no other good and valuable consideration and hence, the assignments
are of no force and effect. The Court noted that the assignments
stated that he acknowledged receipt of the consideration, and so
future unpaid salary could not be interpreted to be the
consideration. The Court also did not find that the contract was
rescinded and thus the ownership would return to the plaintiff.
Rather, the contract is still in place and the plaintiff may have a
claim for damages for unpaid wages, but that was not necessary to
determine. The Court held the employer retained the assigned rights to the
IP. Servicemaster Company v. 385229 Ontario Ltd.
(Masterclean Service Company), 2015 FCA 114 Servicemaster further appeals their previously dismissed
judicial review of the TMOB, who refused to register their
applications for SERVICEMASTER CLEAN and SERVICEMASTER CLEAN AND
DESIGN (2014 FC 440, previously summarized here). The TMOB found that the applications
created a likelihood of confusion as of the date of its first use,
October 1997. As filed, the application included building repair
management and disaster restoration services among the wares and
services. The respondent has used the mark MASTERCLEAN since at least
1971, and has used the mark in association with restoration,
renovation and cleaning services since at least 1980. The TMOB had excluded the appellant's evidence showing no
confusion because it came after 1997. This was upheld by the trial
judge. The Court of Appeal affirmed the decision. While evidence
post-dating the relevant date might be relevant to the issue of
confusion, it was held that it was not unreasonable for the trial
judge to exclude it. Two Non-Parties to a Trademark and Copyright Decision
are Bound by The Final Injunction The Ontario Superior Court had previously issued an injunction
to prevent the sale of candy snacks known as "Classic
Sesame" because they were found to be passing off and
infringing the copyright of "Sesame Snaps". Two
non-parties to the previous litigation now move to have that
judgment set aside or varied so that they are excluded from the
injunction. They were unsuccessful. The Moving Parties argued the Court could not have found
confusion in the absence of expert evidence, but the Court
disagreed. The Court held that the Judge properly put themselves in
the position of the average person going to the market, and agreed
that the products were confusingly similar to each other. As for the copyright claim, the Court found that the plaintiff,
a Polish Corporation, is a member of a treaty country and therefore
has standing to bring the claim. It was held that the box design was difficult to distinguish
between the two brands, and so the first author held exclusive
rights. Lastly, it was argued that the injunction should not have been
issued as there was no evidence of damages. The Court found that
although equitable relief fills in where damages are an inadequate
remedy, the damages were obvious to everyone, at least nominal
damages. The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
Patent Decisions
Patent Ownership Was Found to be Assigned Pursuant to An
Employment Contract
Trademark Decisions
Appellate Court Finds it Reasonable to Exclude Evidence of
Non-Confusion From After the Date of First Use
Agros Trading Confectionery SP.Z.O.O. v K-Max
Corp., 2015 ONSC 3166