In previous articles we discussed the top trademark and copyright cases of 2017. This article is directed at the trends arising from those cases.
Trends Relating to Trademarks
Two of the trends are specific to trademarks. First, it will continue to be very difficult to protect product shape. While some protection can be obtained by obtaining industrial design registrations when available, it is very difficult to protect product shape. Click here to read our comments. Recent comments illustrating this approach can be found here concerning the shape of a London cab and here concerning the shape of playground equipment.
Second, survey evidence may be more frequently used in trademark litigation by combining claims for infringement and passing off. The potential differences arise since a claim for passing considers the public reaction to the impugned activity while infringement is decided from the viewpoint of a mythical or average purchaser. Click here to read our comments about this issue.
Trends Relating to Both Trademarks and Copyright
It may be easier to take action against gripe sites if proceeding in the courts is justified. Trademark infringement occurs when a defendant has used a trademark or a confusingly similar trademark without the consent of the trademark owner in association with goods or services. The courts in the past have been reluctant to find that operating a gripe site was providing a service to the public. However a more recent decision found that the website operator of a gripe site was offering information and guidance to disgruntled consumers which constituted a service. Click here to read our comments. The same Judge concluded the defendant's actions did not constitute fair dealing for the purposes of parody and found that the defendant had infringed copyright.
It will be marginally easier to obtain an interlocutory injunction in the Federal Court. A plaintiff seeking an interlocutory injunction must present evidence of the irreparable harm that is clear and not speculative. Such harm cannot be inferred but must be shown that it would be suffered. However where there is no possibility of quantifying the potential harm, this loss can be irreparable.
The Supreme Court of Canada has confirmed the availability of orders to block infringement against internet search engines or internet service providers. The decision clarifies that intellectual property rights holders can enforce their rights against infringers using the Internet. While the facts in the Equuestek case are relatively extreme the principles applied by the Court are not.
The Federal Court has indicated it is prepared to be responsive to dealing with counterfeiting cases. The Federal Court of Appeal has said that the Internet must not become a collection of safe houses from which pirates with impunity can pilfer the products of other's dedication, creativity and industry. Click here to read our comments. The Federal Court was not reluctant to grant relief for TPM circumvention and said it would not hesitate to award the maximum amount of statutory damages in cases involving serial business infringements. Click here to read our comments.
Finally, free speech rights may be considered in an appropriate case. Because of the importance of freedom of expression any attempts to restrict it must be subjected to careful scrutiny. In context of an application for an interlocutory injunction the potential for harm to freedom of expression must be considered when the balance of convenience is considered. Click here to read our comments.
Comment
2017 was a significant year for litigation concerning trademarks and copyright. It remains to be seen whether 2018 will be as active.
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.
