Disparaging & Racist vs. Political Correctness – You Choose. And the Washington Redskins thought the Battle on the Football Field was Tough!

The National Football League team, the Washington Redskins lost a fight of Super Bowl proportions today before the U.S. Patent and Trademark Office.  The team’s host of registered trademarks dating back to the 60’s were cancelled on the ground that they were disparaging on the date they were registered and as such, should never have been registered.

The ruling does not prevent the team from using the trademarks but means the team loses the benefits of a registered trademark including the ability to sue for trademark infringement. Not surprisingly, the team’s lawyers have already indicated that the decision will be appealed.

In Canada, the Washington Redskins trademark has been registered since 1980. Under the Canadian Trade-marks Act, a trademark which is “scandalous, obscene or immoral” at the date of registration may be held invalid.  So the obvious question remains, would a disparaging trademark in the US be considered “scandalous, obscene or Immoral” in Canada? If challenged in Canada, would we be less, equally or more offended than our neighbours to the south?

Unlike in the US, if a mark in Canada is held “scandalous, obscene or immoral” it cannot be used in the country. The Trade-marks Act specifically indicates that such offensive marks cannot be ‘adopted’ which would thus prevent their use. This raises an interesting question if the U.S. Patent and Trademark Office decision is overturned on appeal but the same fight is engaged in Canada with the Canadian court’s ruling against the team. Would the NFL not televise games or sell merchandise in Canada? Perhaps those opposed to the Washington Redskins should think about using Canada to advance their fight.     

In all, the appeal(s) in the US will likely dictate the fate of the Washington Redskin trademarks in Canada. However, there is a lesson in this not just for sports franchisees but for all trademark owners – choose your trademark’s carefully because your decisions might come back to haunt you years later.

By Scott Miller 

FEDERAL COURT OF APPEAL CONFIRMS THAT NO PUNITIVE DAMAGES ARE AVAILABLE UNDER SUBSECTION 8 OF PM(NOC) REGULATIONS

The Federal Court of Appeal decision with respect to the appeal of Justice de Montigny affirmation of an order of Prothonotary Aronovitch dated August 20, 2013 which had struck those portions of the appellant’s Statement of Claim seeking punitive and exemplary damages pursuant to an action under Section 8 of the Patented Medicines (Notice of Compliance) Regulations was released today. 

The FCA, adopting the reasons expressed by Justice de Montigny at paragraphs 28 to 37 of his order, agreed with him that a claim for punitive and exemplary damages cannot be sustained under Subsection 8 the PM(NOC) Regulations. 

The FCA further noted that “punitive damages are not limited to certain categories of claims… [and] that punitive damages have been found to be available in all types of cases, notably in patent infringement case” (See paragraph 8 of the decision). However, “punitive and exemplary damages cannot be available where the statutory regime underlying the claim explicitly or implicitly precludes them. This is the case under the NOC Regulations, which set out a comprehensive scheme with respect to compensation resulting from the operation of the statutory stay it provides for.” (See paragraph 9 of the decision). 

In particular, the FCA noted in paragraph 10 that the FCA has previously held that Subsection 8 “allows compensation for losses actually incurred by a second person by reason of the operation of the statutory stay contemplated by the NOC Regulations, but it does not allow for other types of relief, such as disgorgement of profits or punitive damages”. 

At appeal, the appellant raised paragraph 8(5) of the Regulations as a new justification for seeking punitive damages. As noted in the FCA decision at paragraph 11, “[t]hat paragraph provides that in “assessing the amount of compensation the court shall take into account all matters that it considers relevant to the assessment of the amount, including any conduct of the first or second person which contributed to the disposition of the application under subsection 6(1)” (emphasis added).”  The FCA noted that “paragraph 8(5) cannot sustain a claim for punitive damages since, by their very nature, punitive damages are not “compensation”.” 

A copy of the decision can be found at http://decisions.fca-caf.gc.ca/fca-caf/decisions/en/item/71815/index.do

By Claire Palmer

Bilingual Legislations and Statutory Interpretations

In Canada, federal statutes are bilingual, in French and in English, and both are equally authoritative. The important issue of reviewing both versions of statutes was highlighted in the recent Federal Court decision Sandoz Canada Inc v. Canada (Attorney General), 2014 FC 501 (“Sandoz”). A succinct MBM blog post on this case is available at: http://www.canadaipblog.com/2014/05/pmprbs-interpretation-of-patentee.html.

In his analysis and interpretation of “patentee”, the Honourable Mr. Justice O’Reilly noted that the French version of section 79(1) of the Patent Act, R.S.C., 1985, c. P-4, is narrower compared to the English version. By accepting the narrower interpretation, Sandoz is consistent with the “shared meaning” principle of bilingual statutory interpretation. This principle stipulates that in cases of discrepancies between the English and French versions of a statute, the meaning common to both versions must be accepted unless evidence of legislative intent indicates otherwise.

The leading case on bilingual legislations and statuary interpretation is R. v. Daoust, 2004 SCC 6 (“Daoust”). At paragraphs 27 to 30 of Daoust, the Supreme Court of Canada set the following steps for interpreting bilingual statutes:

• First, one needs to determine if there is “discordance” between the two versions of the statute. If discordance exists and it is “irreconcilable”, the court must rely on other statutory principles such as purposive and contextual interpretation;

• If the two versions are not irreconcilable, the court must determine whether there is an ambiguity, as in whether the wordings are “reasonably capable of more than one meaning”;
• When neither version are ambiguous, or they both are, the common meaning is normally the narrower version;
• When one version is ambiguous and the other is not, the version with the unambiguous wording is the common meaning of the two versions;
• When one version’s meaning may be broader than the other version, the version with the narrower meaning in this case would be the common meaning and thus adopted by the court; and
• The second step after the common meaning is ascertained, the court must move to assess the common meaning’s concordance with the ordinary rules of statutory interpretation.

Daoust is available at: http://scc-csc.lexum.com/scc-csc/scc-csc/en/item/2117/index.do.

The “shared meaning” principle guided Justice O’Reilly in Sandoz to interpret the English and French versions of section 79(1) of the Patent Act. He concluded that the English version’s meaning is broader than the French version and accordingly, the narrower French version was adopted.

Since Canada’s Constitution Act allocates intellectual property to the Federal Government’s portfolio and all federal statutes are bilingual, it is therefore prudent and very important to pay attention to both versions of the relevant statutes when dealing with IP matters in Canada.

By David Chen & Amir Mirtaheri