June 20081 Louis Vuitton awarded

record-setting damages against counterfeiters

3 Canada’s proposed amendments to the Copyright Act – Bill C-61

5 CIRA restricts the availability of information regarding certain types of domain name registrants

6 Special relationship precluded anticipatory public disclosure

7 Cape Breton distiller loses right to use GLEN for whisky

9 Canadian Industrial Design Office eliminates certain document recordal fees

Patent Cooperation Treaty (PCT) fees for the Canadian Receiving Office

Smart & Biggar/Fetherstonhaughrecognized as Canadian trade-mark firm of the year by Managing Intellectual Property magazine

10 Firm achieves top-level rankings in three major surveys

Notes

IP PERSPECTIVESINTELLECTUAL PROPERTY AND TECHNOLOGY LAW NEWSLETTER

The first group of defendants, against whomthe collective $980,000 award of damages wasmade, was operating three stores under thename Wynnie Lee Fashions and one storeunder the name Francisca's Fashion Club. InAugust 2004, the plaintiffs executed an AntonPiller Order against two of the Wynnie LeeFashions locations, seizing hundreds ofcounterfeit Louis Vuitton products. Despitethat seizure and a subsequent judgmentobtained in the Federal Court, the defendantscontinued to sell counterfeit Louis Vuittonmerchandise. The defendant Wynnie Lee, whowas the principal player in the Wynnie LeeFashions stores and the importer of the goodsbeing sold, entered into a settlementagreement with the plaintiffs in March 2006after being served with a cease and desistletter, but subsequently continued to breachboth that agreement and the Federal Courtjudgment. Between January 2006 and January2008, numerous purchases and observations ofcounterfeit Louis Vuitton merchandise weremade at the various locations, including severalafter the plaintiffs had commenced theiraction in the British Columbia Supreme Court

Louis Vuitton awarded record-settingdamages against counterfeiters

Louis Vuitton, represented by Michael Manson,Karen MacDonald and Jonas Gifford of ourVancouver office, has been granted what isbelieved to be the highest award of damages inCanada against purveyors of counterfeit goods.Following several recent Federal Courtdecisions that cracked down on counterfeiters,on June 19, 2008, the British Columbia SupremeCourt expressed its disapproval ofcounterfeiting activities in Louis VuittonMalletier S.A. v. 486353 B.C. Ltd., 2008 BCSC799. In a summary trial decision, Madam JusticeBoyd ordered a first group of defendants topay a total amount of $980,000, includingcompensatory, punitive and exemplarydamages, to the plaintiffs, Louis VuittonMalletier S.A. and Louis Vuitton Canada, Inc.The Court also awarded costs in an additionalamount to be assessed and adjourned itsdeliberation of damages against a remainingdefendant until later this year.

The defendants included two corporations andfour individuals who were operating stores inthe greater Vancouver area through which theywere selling counterfeit Louis Vuittonmerchandise.

Canadian courts are stepping up to the challenge and are increasinglyprotecting rights holders from recidivist offenders.

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the defendants' “previous and ongoing actionsare clearly knowing, planned and deliberate”,the Court also granted an award of $200,000 inpunitive and exemplary damages againstWynnie Lee and $100,000 in punitive andexemplary damages against the other threedefendants acting in concert with Wynnie Lee.The Court also granted special costs againstthis group of defendants, citing the deliberateand inexcusable repeat infringement of theplaintiffs’ rights and the failure of thedefendants to cooperate to any significantdegree in the litigation.

While the Court declined to levy a fine forcontempt of the previous Federal Courtjudgment, it was noted that the punitive andexemplary damages awards granted included anelement of rebuke for the defendants’ breachof that judgment.

The Court also found liability of the remainingdefendant, Jacqueline Lee, who imported anddistributed counterfeit Louis Vuittonmerchandise through two retail outletsoperating under the trade name ColoroCollection. However, the Court deferred theissue of quantum of damages against this self-represented defendant, who had appeared onthe first morning of the summary trial andunsuccessfully sought an adjournment for thepurpose of retaining counsel. Thedetermination of damages against this lastdefendant has been adjourned until later thisyear.

As with the previous Louis Vuitton decision,this judgment will hopefully send anotherstrong message to counterfeiters in Canadaand provide an additional precedent for IPrights holders to seek enhanced damagesagainst recidivist offenders. These decisionsalso illustrate an important consideration for IPrights holders: damage awards in these types ofscenarios can be maximized by gatheringevidence of repeated sales of counterfeitproducts over a period of time, and/or otherreliable evidence of inventory turnover.

Karen F. MacDonald, Vancouver

for breach of contract, trade-markinfringement, passing off and copyrightinfringement.

In addressing the issue of damages for trade-mark infringement, the Court considered thedecision and reasoning of the Federal Court inLouis Vuitton Malletier S.A. v. Pi-Chu Lin, 2007 FC 1179, although the evidence before theCourt in the present action permitted theCourt to grant a significantly greater award ofdamages. In the Pi-Chu Lin case, the FederalCourt had granted the traditional nominaldamages award of $7,250 ($6,000 adjusted forinflation) on a per instance of infringementbasis in a default judgment. In the presentaction, the defendants had defended theaction and had been examined for discovery,yielding evidence that their turnover ofinventory occurred approximately three timesper year, enabling the Court to apply the$7,250 damages award on a per turnover ofinventory basis. Moreover, as the traditionalaward of $7,250 was designed to reflect theactivities at a single retail location for a singleplaintiff, the Court also made this perinventory turnover award at each retaillocation and for each of the two plaintiffs.

The Court also made an additional award ofdamages against the principal player andimporter of the counterfeit goods, WynnieLee, using $29,000 ($24,000 adjusted forinflation) as a starting point for nominaldamages against her as an importer/distributor,and again applying that amount on a perinventory turnover and per plaintiff basis, butdeducting Wynnie Lee's liability at the retaillevel to avoid double jeopardy on thecalculation of trade-mark infringementdamages.

In addition, the Court awarded full statutorydamages of $20,000 per work for the instancesof copyright infringement by the variousdefendants, citing the defendants’ misconductboth before and during the proceeding.

Further, following the test set out by theSupreme Court of Canada in Whiten v. PilotInsurance Co., 2002 SCC 18, and finding that

I P P E R S P E C T I V E S 3

The Government of Canada has tabledproposed legislation designed to updateCanada’s Copyright Act to address the Internetand digital technology and to ratify WIPOInternet treaties to which Canada is a signatory.Bill C-61, An Act to Amend the Copyright Act,was tabled June 12, 2008 and attempts tobalance the interests of Canadian consumerswho use digital technology to view andreproduce content with those of rights holderswho create content.

Overview. Bill C-61 expands rights associatedwith photographs, performers’ rights and rightsin sound recordings. It also includes provisionsdealing with Internet service provider (ISP)liability both in respect of ISPs facilitatingcommunication over the Internet and thoseproviding tools for locating information on theInternet. It also deals with liability fortampering with digital rights managementinformation and technological means used toprotect copyright and other rights protectedunder the Act. The Bill also provides thatmaking copies of printed matter or soundrecordings onto another medium,circumventing protective measures for the solepurpose of rendering software compatible, ormaking copies of works communicated bytelecommunication for time-shifting purposes,do not infringe. There are also specificlimitations associated with each of the newrights and with the use by educationalinstitutions of materials in which copyright andthe other rights covered by the Act subsist.

Expanded rights. The Bill expands performers’rights by adding a number of specific rightsrelating to performances. So long as aperformance is not fixed, the owner of therights therein has the sole right to fix theperformance (i.e., record it), to communicatethe performance to the public bytelecommunication, and to perform it in publicif it is communicated to the public by any formof telecommunication other than radio waves.If the performance is recorded, the ownermaintains the sole right to authorizereproduction. Similarly, the owner of rights in aperformance is provided with the sole right toauthorize rental of a recording thereof, totelecommunicate it in such a way that allowsaccess at a time and place chosen by thepublic (file sharing), or to sell or otherwisetransfer ownership of a recording that can beput into circulation as a tangible object if thesound recording of the performance has neverpreviously been transferred with the

authorization of the performer (makingavailable).

The Bill also provides that royalties collectedby collective societies in Canada, and thecollective royalty regime in general, will applyto sound recordings once published but do notapply to file sharing.

In addition to the rights discussed above, Bill C-61 explicitly provides performers with moralrights in their performances.

Anti-circumvention and rights managementinformation. Bill C-61 provides that it is aninfringement to circumvent technologicalmeasures used to control access to a work,performance or sound recording, or to offerservices or devices whose primary purpose iscircumventing such technological measures.Similarly, Bill C-61 states that it is aninfringement to remove rights managementinformation if it is done with knowledge thatthe removal will conceal infringement orreduce royalties payable to a collective society.A criminal provision is specifically added to theCopyright Act to deal with circumventionactivities, but not removal of rightsmanagement information.

Exceptions to infringement. In balancing therights of intellectual property owners againstthe interests of Canadian consumers, certainexceptions to infringement and limitations onliability are included in Bill C-61. Many of theexceptions reflect the reality of what has beenoccurring in Canadian society for decades. Forexample, one of the exceptions provides that it

Canada’s proposed amendments to theCopyright Act – Bill C-61

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is not an infringement to copy certain types ofworks from one medium onto another (e.g., from videocassette to digital memory) ifcertain stringent conditions are satisfied. Inparticular, the original work being copied mustnot have infringed, the original work must havebeen legally obtained and must not have beenborrowed or rented, and it is not permitted toovercome technological protective measures inmaking the copy. Only one copy may be madeper medium, the copy must be used only forprivate purposes and all copies must bedestroyed if the original copy of the work istransferred.

Bill C-61 also specifically provides an exceptionto infringement in respect of time-shifting, thecommon practice whereby people recordworks communicated by broadcasters forenjoyment at a later time. Interestingly, thetime-shifting exception specifically does notapply to Internet broadcasts unless they aresimultaneously broadcast via radio ortelevision.

Exceptions regarding the various rights ofeducational institutions are specified andclarified.

The anti-circumvention provisions are alsosubject to certain exceptions, including thefollowing: the government may circumventwithout liability in certain circumstances;anyone may circumvent to render a programcompatible with another computer program;circumvention may be used if legitimate fordecryption or security research; andcircumvention is allowable to the extentrequired to prevent collection of personalinformation or to overcome a disability, so longas it is used solely for those purposes.

Finally, Bill C-61 prescribes a limitation on thestatutory damages available under theCopyright Act when asserted against anindividual who infringes solely for personalpurposes. The provisions limit statutorydamages to a maximum of $500.00 for allinfringement by an individual solely usinginfringing copies for personal purposes.

ISPs. Bill C-61 codifies prior jurisprudence inCanada to the effect that an ISP does notinfringe copyright solely by providing meansfor telecommunication or reproduction ofworks or other subject matter through theInternet or other networks. Similarly, cachingworks or other subject matter for the purposesof efficiency of telecommunication does notinfringe. However, ISPs who provide digitalmemory in which another person stores a workor other subject matter will infringe copyrightif doing so while being aware of a courtdecision to the effect that the person storingthe work infringes copyright.

Bill C-61 also allows a rights holder to send anotice of claimed infringement to an ISP,including those facilitating communication overthe Internet and those providing “informationlocation tools” (search engines, etc.), andrequires that the ISP shall, on being paid a feelawfully charged, forward the noticeelectronically to the alleged infringer and retainrecords allowing identification thereof. Liabilityof ISPs is limited to statutory damages in anamount between $5,000.00 and $10,000.00 ifthey fail to perform their prescribedobligations. Remedies against providers ofinformation location tools are limited toinjunctive relief.

Discussion. Bill C-61 has raised considerabledebate in Canada regarding its efficacy, fromthe perspectives of both rights holders andconsumers. For instance, providing a notice-and-notice (as opposed to notice-and-takedown) system for ISPs, and the need toobtain a decision of a court before the ISP canbe required to remove offending content, areexemplary of difficulties still facing rightsholders in addressing the digital/Internetmarket in Canada. Difficulty proving legitimacyof personal copies is an example of an issueraised by consumer groups. Nevertheless, theimplementation of the WIPO Internet treatiesand generally taking steps to deal with thereality of the Internet and digital piracy arelong overdue in Canada. The introduction ofthis Bill by the Canadian government must beapplauded as a significant step in theserespects.

Brian P. Isaac and Junyi Chen, Toronto

I P P E R S P E C T I V E S 5

The Canadian Internet Registration Authority(CIRA), the organization responsible formanaging Canada’s dot-ca (.ca) domain names,has recently implemented significant changesto its online WHOIS directory service used bymembers of the public to search forinformation regarding registered .ca domainnames. As of June 10, 2008, the WHOIS serviceno longer provides personal information (i.e., registrant name, address, telephonenumber, fax number and email address) of .cadomain name registrants who are individuals.

This change to the WHOIS service ispresumably to protect the privacy of individualregistrants. The new restrictions do not applyto domain name registrants who are notindividuals (e.g., corporations), for whompersonal information will continue to remainpublicly available.

To address the concerns of intellectualproperty owners and law enforcementagencies that the new restrictions will hinderefforts to stop illegal activity by individualregistrants (e.g., cybersquatting, trade-markinfringement or identity theft through phishingwebsites), CIRA has provided two separatemechanisms for contacting individualregistrants in certain limited circumstances.

The first mechanism is a blind message deliverysystem whereby any member of the publicmay, through the use of web-based electronicforms at the CIRA web site, submit anelectronic message that will be sent to theregistrant’s email address without revealing theregistrant’s address to the sender. A disadvantage of this mechanism is that itcannot be known whether the message wasever received, read or acted upon.

The second mechanism involves thesubmission of a request to CIRA for disclosureof registrant information by a requestor whoreasonably believes in good faith that theregistrant’s domain name and/or its content: (a) infringes the requestor’s Canadian registeredtrade-mark, registered copyright or issuedpatent; (b) infringes the requestor’s Canadianregistered (federal or provincial) corporate,business or trade name; or (c) is making use ofthe requestor’s personal information without

their knowledge or consent to commit a crime(such as fraud, theft or forgery), or to procuremoney, credit, loans, goods or services withoutauthorization. If CIRA considers one of thesetypes of good-faith disputes to exist, individualregistrant information will be released to therequestor. It is too early to know the standardsthat CIRA will apply when making thisdetermination.

It is noteworthy that the content of a websiteassociated with a registered .ca domain name,and not just the domain name itself, may formthe basis of a good-faith request for thepersonal information of an individual domainname holder. Accordingly, it should be possibleto obtain individual registrant information for a.ca domain name where an associated websiteinfringes a Canadian trade-mark, copyright orpatent.

Peter A. Elyjiw, Toronto

CIRA restricts the availability of informationregarding certain types of domain nameregistrantsIt will now be more difficult to determine the identity of .ca domainname registrants who are individuals.

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A recent Federal Court decision serves as areminder that not every enabling disclosure ofan invention prior to the critical date of apatent application will act as an anticipatorystatutory bar to patentability. Even in theabsence of a formal confidentiality agreement,a special relationship between the disclosingand receiving parties may prevent thedisclosure from constituting a prior artpublication or public disclosure.

In Johnson & Johnson Inc. v. Boston ScientificLtd., 2008 FC 552, the plaintiffs sued forinfringement of two Canadian patents relatingto balloon-expandable stents for the treatmentof coronary heart disease. The relevant claimsof patent no. 1,281,505 (the ‘505 patent) definedan expandable stent formed from a thin-walled

tubular member having a plurality oflongitudinal slots and a substantially uniformthickness. The stent was expandable, from afirst diameter that permits intraluminal deliveryor insertion, to a second, deformed diameterto expand and support the lumen, by applyinga radially outward force from the interior ofthe tubular member. The second diameter wasvariable and dependent upon the amount ofradially outward force applied. Forming such astent by cutting longitudinal slots in a solidtubular member provided numerousadvantages over previous coiled-spring andwire mesh stents, including improved controland adjustability of the final expandeddiameter of the stent.

The defendants attacked the validity of the‘505 patent on various grounds, including anallegation that a paper by the inventor, referredto as the 1983 Monograph, anticipated theclaims at issue. The inventor, Dr. Palmaz, hadgiven the 1983 Monograph to a technician,Werner Schulz, prior to the critical date of the‘505 patent application, to seek Mr. Schulz’sadvice as to how to manufacture a stent asshown and described in the Monograph. Thedefendants succeeded in showing that the 1983Monograph disclosed all of the elements ofthe asserted claims of the ‘505 patent.However, the defendants failed to establishthat the 1983 Monograph constituted a printed“publication” to qualify as citable prior artunder the applicable version of the Patent Act.

In this regard, the Court first discussed priorjurisprudence holding that a document isconsidered to have been published if it hasbecome generally available, without restriction,to at least one member of the public. To becategorized as a member of the “public”, theperson or persons receiving the documentmust have no special relationship to the authorof the publication. The Court noted that thecase law did not fully flesh out the meaning ofsuch a special relationship, although arelationship that “smacks of a joint venture”may be one example. The information musthave been received with no inhibiting fetter.The party attacking the validity of the patenthas the onus of proving publication.

Applying these principles to the facts, theCourt noted that the defendants had failed to

Special relationship precluded anticipatorypublic disclosureA written disclosure of the invention by the inventor to a third party, forthe purpose of obtaining manufacturing advice, was held not toconstitute prior art due to the special relationship between the parties.

I P P E R S P E C T I V E S 7

provide evidence showing that the 1983Monograph had been utilized by Mr. Schulz insuch a way as to leave the impression that ithad been disclosed to him without confidence.The inventor Dr. Palmaz had testified that hehad a general recollection that there was astatement of confidentiality in his verbaldiscussions with any individual recipients of theMonograph, and the defendants had failed toprovide contradictory evidence. The Courtemphasized that Dr. Palmaz had approachedMr. Schulz to obtain his advice as to how tomanufacture the stent and that there was noevidence that Mr. Schulz had viewed himself asfree to take Dr. Palmaz’s ideas as his own or touse Dr. Palmaz’s invention. The Court thereforeheld that the defendants had failed to establishthat the 1983 Monograph constituted a“publication” within the meaning of theapplicable version of the Patent Act,apparently on the ground that Mr. Schulz wasnot a member of the “public”.

Thus, the main factors that influenced theCourt’s decision were the inventor’s general,non-specific recollection of a verbal statementof confidentiality, the purpose for which thedisclosure was made, and the recipient’ssubsequent treatment of the disclosedinformation.

The Johnson & Johnson judgment was decidedunder the provisions of the version of Canada'sPatent Act that was in force immediately priorto October 1, 1989, due to the filing and issuedates of the ‘505 patent. However, theprinciples expressed by the Court relating tothe meaning of the public apply equally to thenovelty provisions in section 28.2 (1)(a) and (b)of the Patent Act in force today. Thesesections focus on whether the subject matterof the claim under attack was disclosed in sucha manner that it became “available to thepublic” before the critical date.

Accordingly, in assessing the effect of any priordisclosure in Canada, the surroundingcircumstances of the disclosure should becarefully considered. Even in the absence of aformal confidentiality agreement, numerousfactors may weigh in favour of a finding of aspecial relationship between the parties, whichwould preclude the disclosure from havingbeen made to the public. Particularly in thecase of proposed new applications, whosecommercial value often remains to beascertained, advice from expert Canadianpatent counsel should be sought beforejumping to any conclusions regardingpatentability.

Stephen J. Ferance, Vancouver

In a recent decision, the Federal Courtattempted to answer the question: when isScotch whisky not Scotch whisky? The answer,it would seem, is when it is not distilled inScotland.

The case involved a November 2000application by Glenora Distillers InternationalLtd., a distiller on Cape Breton Island, NovaScotia, to register the trade-mark GLENBRETON for use in association with its singlemalt whisky. The Scotch Whisky Associationopposed the application, contending that theword GLEN had become recognized asdesignating whisky from Scotland – that is,Scotch whisky – and therefore the use ofGLEN BRETON was likely to mislead.

In support of its opposition, the Scotch WhiskyAssociation filed the following evidence: (1) sales volumes of Scotch whisky in Canada;(2) third party uses of the word GLEN inassociation with Scotch whisky by way of pricelists from liquor stores; and (3) third party

Cape Breton distiller loses right to use GLEN forwhisky

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registrations for trade-marks for use inassociation with whisky having the word GLENas a prefix. The Scotch Whisky Association alsorelied on definitions showing the Scottishorigin of the word GLEN. In reply, Glenora filedevidence that the trade-mark GLEN BRETONwas chosen because of the association withCape Breton Island, and the glen streamMacLellan’s Brook, which was the water sourcefor its whisky.

In rejecting the opposition, the Registrarconcluded that based upon the evidencebefore him, Canadian users and purchasers ofwhisky had not been educated to associate theword GLEN solely with Scotch whisky.

The Scotch Whisky Association appealed theRegistrar's decision to the Federal Court. OnApril 3, 2008, the Court handed down adecision allowing the appeal and directing theRegistrar to refuse Glenora’s application toregister the trade-mark GLEN BRETON (Scotch Whisky Association v. GlenoraDistillers International Ltd., 2008 FC 425).

For the appeal, the Scotch Whisky Associationfiled additional evidence consisting of morecomplete sales records broken down by brand,as well as more product listings from liquorstores in different provinces and various barlists and other indicia that might lead toconfusion in the marketplace. The Court wasof the view that if the record before it hadbeen before the Registrar, he would haveallowed the opposition of the Scotch WhiskyAssociation and refused Glenora’s application.

More specifically, the Court found as a factthat before the year 2000, the year whenGlenora filed its application, there was nowhisky sold in Canada that had the word GLENas part of its name that was not a Scotchwhisky. Scottish Glens had in fact been sold inCanada since at least 1888. In the year 2000,there were about 22 Glen whiskies sold inCanada, all of them being Scotch whiskies. Therecord also showed that in the year 2000, some896,607 cases of Scotch whisky were importedinto Canada, which translates to more than 10 million 75 cl bottles. The Court found thathad the Registrar had this data before him, hewould not have come to the conclusion thatnot many individuals in Canada were familiarwith marks for Scotch whisky having the wordGLEN as a prefix, or that the Canadianconsumer had not been educated to associatethe word GLEN with Scotch whisky.

Glenora argued that the use of the word GLENwas not exclusively associated with Scotchwhisky in Canada. Glenora relied upon maltwhisky produced in the 1980s in British

Columbia under the name Glenogopogo.However, there was no evidence that thisproduct was ever sold in Canada. It also reliedon an American distillery called Glenmore thatsold Glenmore Kentucky bourbon whisky inthe United States and Kentucky Tavernbourbon in Canada, and a series ofadvertisements in Life magazine for thedistillery’s bourbon. However, the last recordedsales of Kentucky Tavern bourbon were in 1985.Moreover, the ads in evidence were from the1939 to 1950 timeframe.

The Court gave no weight to the Glenmorewhisky argument. The Court pointed out thatthe test for confusion is the first impression inthe mind of a casual consumer somewhat in ahurry and noted that this casual consumer “isnot imprinted with advertisements from oldAmerican magazine issues, published beforemost Canadians were born”.

Moreover, the Scotch Whisky Associationsubmitted considerable evidence of actualconfusion between GLEN BRETON whisky andthe various GLEN Scotch whiskies documentedin price lists and drink lists from liquor stores,restaurants and bars, many of which includedGlen Breton in the category of single maltScotch whiskies. The Court found that if thetrade (i.e., liquor stores, restaurants and bars)was confused, so was the ultimate consumer.

The Court emphasized that it found in favourof the Scotch Whisky Association not becauseof the origin of the word GLEN, which theScotch Association had argued is Scottish inorigin, but because of its long use in Canada bydistillers of Scotch whisky. As the Court stated,“it is the association in the mind of theconsumer, and not the origin of the word,which is relevant”. While the Court appreciatedthat Cape Bretoners are “rightly proud of theirheritage and are entitled to evoke it ... it is toolate to use the word ‘glen’”.

Geneviève M. Prévost, Toronto

I P P E R S P E C T I V E S 9

documents, such as changes of name andsecurity agreements, are no longer subject to afee. The intent of the change is to encouragethe updating of owner information so thesearchable Canadian Industrial Design Databasecontains current information.

Christine N. Genge, Ottawa

Canadian Industrial Design Office eliminatescertain document recordal feesThe Canadian Industrial Design Office hasannounced a change in its policy concerningthe recordal of documents against industrialdesign applications and registrations. Previously,the Industrial Design Office had charged arecordal fee for any document recorded.Effective May 12, 2008, the recordal fee onlyapplies to assignments and licences. Other

have been issued more frequently. Feeschedules have now been published withsuccessive effective dates of May 15, 2008, July 1, 2008 and September 15, 2008.

Christine N. Genge, Ottawa

Patent Cooperation Treaty (PCT) fees for theCanadian Receiving Office A number of the fees associated with a PCTapplication, such as the International Filing Fee,are set in Swiss francs. The Canadian ReceivingOffice periodically publishes a schedule of PCTfees that takes into account the exchange rateto Canadian dollars. Recently, revised schedules

interviews with in-house IP and businessleaders conducted in late 2007 and early 2008in connection with its World IP Survey in theUnited States and Canada.

Smart & Biggar/Fetherstonhaugh recognized asCanadian trade-mark firm of the year byManaging Intellectual Property magazineSmart & Biggar/Fetherstonhaugh has beennamed Trade-mark Prosecution Firm of theYear and Trade-mark Contentious Firm of theYear for 2008 by U.K. publication ManagingIntellectual Property magazine (MIP). Smart &Biggar/Fetherstonhaugh is the first Canadianlaw firm to be awarded this honour in two ofMIP’s five categories recognizing excellence inthe field of Canadian intellectual property law.

The awards were presented at MIP’s inauguralNorth America Awards ceremony, held on April3, 2008 in Washington D.C. MIP has for severalyears recognized Smart & Biggar/Fetherstonhaugh as a highly ranked IP firm inpatents, trade-marks and copyrights.

MIP was founded in 1990 and is now firmlyestablished as the leading internationalmagazine for IP owners. The magazine ispublished 10 times annually and is distributedglobally to more than 8,000 readers. Thepublication covers developments affectingintellectual property from both a legal andbusiness perspective.

The results of the magazine's inaugural NorthAmerica Awards were based on extensive

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Jasminder S. Brar has joined our Vancouveroffice as an associate. Mr. Brar holds a B.Sc. incomputer engineering and an LL.B. from theUniversity of Manitoba.

Seminars and Presentations

Peter A. Elyjiw spoke on the topic of Patentsfor Engineers at the Gleason College ofEngineering of the Rochester Institute ofTechnology on April 14, 2008.

Alistair G. Simpson gave a presentation on thetopic of Business Method Patents –Implications for Canadian IT Deals at the 8thAnnual IT Law Spring Training Program, held inToronto on May 1 and 2, 2008.

Nancy P. Pei spoke on the topic of Selectingthe Right Expert at the Canadian BarAssociation’s program on Advocacy Before the

NotesAnnouncements

Jacqueline Chernys has joined our Ottawaoffice as an associate. Ms. Chernys holds a B.Sc.in biology and an Hons. Dipl. in plant sciencesfrom the University of Ottawa, a Ph.D. ingenetics from Michigan State University and anLL.B. from the University of Alberta.

Andrew Mandlsohn has joined our Torontooffice as an associate. Mr. Mandlsohn holds aB.Sc. in pharmacy from the MassachusettsCollege of Pharmacy and a J.D. from SuffolkUniversity Law School.

Jeffrey D. Morton has joined our Vancouveroffice as an associate. Mr. Morton holds a B.Sc.in biology from the University of Victoria, aPh.D. in immunology from WashingtonUniversity in St. Louis, and an LL.B. from theUniversity of British Columbia.

Leading individuals in Intellectual PropertyLitigation:Gunars A. GaikisSteven B. GarlandA. David Morrow

Firm Repeats Top Ranking PLC WhichLawyer? Handbook. The PLC Which Lawyer?2008-2009 IP in Business TransactionsHandbook has been released, outlining theresults of PLC's most recent survey of law firmsworldwide. Smart & Biggar/Fetherstonhaughhas once again ranked as a leading firm inCanada in the areas of patent litigation andnon-patent litigation. Additionally, a number ofour practitioners were singled out for individualrecognition within both areas:

Individuals listed in Non-patent Litigation:John BochnovicMark K. EvansBrian P. Isaac

Individuals listed in Patent Litigation:Gunars A. GaikisA. David MorrowFrançois GuayJohn BochnovicJohn R. Morrissey

Firm achieves top-level rankings in three major surveysFirm recognized in Managing IntellectualProperty’s "top tier" of Canadian patent andtrade-mark firms. The results of ManagingIntellectual Property’s annual World IP Surveyof international patent and trade-mark firmshave been released, and Smart & Biggar/Fetherstonhaugh has been recognized as a Tier One firm in all four categories relating tointellectual property: trade mark prosecution;trade mark/copyright contentious; patentprosecution; and patent contentious.

Firm repeats top tier ranking in ChambersGlobal Guide. The Chambers Global Guide, aresearch-based survey published by Chambers& Partners, has released its most recent surveyof Canadian law firms. Smart & Biggar/Fetherstonhaugh has once again ranked as atop tier firm in the area of intellectualproperty. Additionally, a number of ourpartners were singled out for individualrecognition as leading practitioners in the areasof intellectual property and intellectualproperty litigation:

Leading individuals in Intellectual Property:John BochnovicMark K. EvansMichael D. MansonJoy D. Morrow

I P P E R S P E C T I V E S 11

Federal Court in Intellectual Property Matters –Expert Witnesses, held in Ottawa on May 8,2008. François Guay also participated in thisevent by acting as the Cross-Examining Counselin a Demonstration of Examination of ExpertWitness.

Steven B. Garland presented on the topic ofIntellectual Property Advisor-Client PrivilegedCommunications: Canada and OtherJurisdictions at the WIPO/AIPPI Conference onClient Privilege in Intellectual PropertyProfessional Advice, held in Geneva,Switzerland on May 22 and 23, 2008.

Brian P. Isaac spoke on the topic of AnIntroduction to Intellectual Property and IPCrime at the Canadian Anti-CounterfeitingNetwork’s 2008 Canadian Reality Tourmeetings, held in Regina on May 7, 2008 andToronto on June 3, 2008. Mr. Isaac spoke on thesame topic at Henry Braun Public School inRegina, SK on May 7, 2008 and at St. Jean deBrebeuf High School in Vaughan on June 3, 2008.

John W. Knox presented on the topic ofDeclarations of Entitlement in Canada at TheInternational Federation of IntellectualProperty Attorneys ABC meeting, held inCharleston, South Carolina on June 6, 2008.

Ronald D. Faggetter was a presenter at TheIntellectual Property Institute of Canada’sAdvanced Patent Claim Drafting Session for ITPractitioners, held in Ottawa on June 10, 2008.Mr. Faggetter also facilitated an AdvancedPatent Claim Drafting session at the sameevent.

Michael D. Manson spoke on the topic ofManaging IP Crime Prosecutions at the 2008International Law Enforcement IP CrimeConference, held in Halifax, NS on June 24-26, 2008.

Philip D. Lapin will be presenting a paper andspeaking on the topic of OppositionProceedings: Overview, Context and Strategyas well as leading a workshop entitled Tips andStrategies in Opposition Proceedings at theUnderstanding Trade-marks Course at McGillUniversity in Montreal, to be held on August 7, 2008.

Mark K. Evans will be speaking on the topic ofCopyright Remedies at the IntellectualProperty Institute of Canada and McGillUniversity Business of Copyright course, to beheld in Montreal on August 13, 2008.

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www.smart-biggar.caThe preceding is intended as a timely update on Canadian intellectual property law. In order to request a copy of anydecision, paper or legislative document, or for more detailed information or suggestions, kindly contact an author ofthe relevant article, or the Editors, Stephen Ferance and Elliott Simcoe. The contents of our newsletter are informational onlyand do not constitute legal or professional advice. To obtain such advice, please communicate with our offices directly. To beput on the IP Perspectives mailing list, or to amend address information, please call (416) 593-5514 (ext. 318).

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John R. Morrissey†‡ John Bochnovic� Joy D. Morrow François Guay* Gunars A. Gaikis Michael D. Manson† Keltie R. Sim Ronald D. FaggetterGlen B. Tremblay Mark K. Evans J. Christopher Robinson† Alistair G. Simpson Solomon M.W. Gold Brian P. Isaac Steven B. Garland J. Sheldon Hamilton David E. Schwartz‡† Sanjay D. Goorachurn� Brian G. Kingwell† Yoon Kang Philip Lapin Matthew Zischka Christian Bolduc* Elliott S. Simcoe Timothy P. Lo+ Theodore W. Sum+ Marc Gagnon* L. Catherine EckenswillerNancy P. Pei Kohji Suzuki Christine N. Genge Kevin K. Graham Marc-André Huot* Geneviève M. Prévost Mark G. Biernacki Stephen J. Ferance+ Ekaterina K. Tsimberis* Jeremy E. Want R. Allan Brett Peter A. Elyjiw Colin B. Ingram Karen F. MacDonald+ Daphne C. Lainson Sally A. Hemming May Ming Wu Andris D. Macins+ Kelly L. Miranda James Jun Pan David A. Gileff+ T. Nessim Abu-Zahra Y. Lynn Ing Heather E. RobertsonDaniel M. Anthony Junyi Chen Jacqueline Chernys Sachiko ChijiwaÉmilie Dubreuil* Andrew Mandlsohn Joseph J. Fraresso Jean-Charles Grégoire Cheryl M. Ng Timothy O. Stevenson Kathy Rzeszutek+ Jonas H. Gifford+Daniel S. Faya Ivan C. Fong Kwan T. Loh Tomek Nishijima*

David J. Suchon Jasminder S. Brar Jeffrey D. Morton

James D. Kokonis, Q.C. Nicholas H. Fyfe, Q.C. A. David Morrow

Barristers & Solicitors, Patent & Trade-mark Agents

Of Counsel

Patent & Trade-mark AgentsA. Dennis Armstrong R. John Haley Sohrab Sabet Tokuo Hirama Stephan P. Georgiev John W. Knox Neil S. Clark Thuy H. Nguyen Brigide Mattar Emma Start A. Oliver Stone Sanro ZlobecOwen W. Cramer David M. Walters Christian Bérubé Martin TremblayElizabeth A. Hayes Paul den Boef Mark S. Starzomski

Tilaye Terrefe George Elvira Andréanne Auger Jeffrey F. SlaterJean-Yves Pikulik

Technical Consultants

Unless otherwise indicated, the lawyers listed are members of the Law Society of Upper Canada only.† of the British Columbia Bar also � of the Quebec Bar also ‡ of the Alberta Bar also+ of the British Columbia Bar only * of the Quebec Bar only