Tamsin Thomas is a JD Candidate at Osgoode Hall Law School and is taking the Patent Law class.

At the beginning of March 2010, Greenpeace Germany and others unsuccessfully challenged a patent on a method of increasing milk supply in cattle. Cattle can be made to produce larger amounts of milk when they are genetically modified to express a particular gene sequence (European Patent EP 1330552 granted in January 2007).(1) Greenpeace Germany and others argued that the patent should be revoked on the basis that the invention causes excessive suffering of the genetically altered animals without any substantial benefit to man and beast. Accordingly it would be in contradiction to the European Patent Convention requirement that where the commercial exploitation of the invention would be contrary to public order or morality, the invention is not patentable.

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Posted in Patents
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Tamsin Thomas is a JD candidate at Osgoode Hall Law School and is taking the Intellectual Property Theory course.

In his article, “Some Realism about Indigenism”, Professor Michael Davis argues that TRIPs “is the biggest disaster faced by the Third World since the end of the territorial-based colonial era.” In the context of protecting traditional knowledge, he argues that TRIPs and Western IP regimes will not benefit the “owners” of this information because the concerns do not match what IP systems can do and they shouldn’t even try. He argues that TRIPs should be repealed although he does at least admit that is unlikely to occur. Davis makes convincing arguments that IP protections are incompatible with the goals of protecting traditional knowledge, but is it an answer to simply repeal TRIPs?

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Posted in Cross Border Issues, IP, Technology
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In its Strategic Plan published in 2006, Ontario’s Ministry of Research and Innovation called for the generation of an “innovation culture” in Ontario with one goal of increasing the commercialization of research taking place at universities. I could not help but think of my own experience as a grad student in a cell biology research laboratory. The extent to which universities should be commercializing their research is an interesting issue on its own but I instead wish to point out the circumstances in which budding scientific researchers are being trained and emphasize that any commercialization of research needs to consider the view points of the grad students who are generating a large proportion of the research. It is essential that grad students are educated regarding their IP rights.

From the moment I became a graduate student, the emphasis was on generating data in order to publish a paper, submitting an abstract to a scientific meeting (which was hopefully somewhere exotic!) or adding data to my faculty supervisor’s research grant application. We were given orientation regarding the student union, the local pub and our health plan as examples but nothing regarding our IP rights. I remember being mildly surprised when we had a manuscript accepted and had to sign all our rights away. Not knowing any better at the time, I didn’t question it. Even if I had questioned this assignment of rights, there would be little I could have done. After all, in order to gain a reputation in science and get a good post-doctoral position and eventually a faculty position, the publication record is the main assessment factor. Furthermore, in order for faculty supervisors to obtain research funding from agencies such CIHR and NSERC, a strong publication record is vital.

Aside from building a reputation and getting research dollars, there is little commercial value in most publications that come out of a scientific research lab. To increase the commercialization of research coming out of universities, there would have to be a change in the emphasis. While publications are important, it will preclude the granting of a patent of anything of commercial value contained within a particular publication. Thus it is important that graduate students (as well as their faculty advisors) are educated regarding the different areas of IP, especially patents. For example, most of my colleagues at the time did not even contemplate a patent and appeared to be of the view that a patent was somehow out of reach. While this education might decrease “missed opportunities to patent”, there is the increased potential for exploitation of grad students. A MSc takes about two years to complete while a PhD in sciences takes about 4-5 years. Thus it is possible to have multiple students working on a project that leads to a patent. Conflicts can arise when determining who to include on the patent application. It is understandably difficult for a student to hear that she might have no commercial interest in a patent involving work to which she contributed 60 hours a week over a few years, and for which she received little pay. Grad students need to be aware of their IP rights to avoid these sorts of issues.

Several years ago when I entered into graduate studies, I didn’t even know what IP was and the words certainly wouldn’t have even caught my interest. In the unlikely event that I had done law school first and then my degrees in science, I would have had a completely different outlook. Would this knowledge have changed how I developed my research project? I was lucky enough to be in a lab where I had significant input regarding the development of my research and while I may not have been successful, I might have approached my project slightly differently with a goal of obtaining a patent for my work as well. On the other hand, I might well have decided that innovation was better served by making my IP freely available to all researchers. Regardless, surely the individuals generating IP need to have at least a basic understanding of their rights. I think it is essential for students to possess the knowledge to perhaps prevent “missed opportunities” to commercialize their work, possibly prevent themselves from being exploited by their supervisors and the university and even to simply assess the costs and benefits of commercialization of their IP in the first place. One way to do this is to include some IP classes during the first few weeks of every graduate program. Considering the interesting IP questions I have received upon visiting my former department, this would be a welcome idea. Grad students play a vital part in developing an “innovation culture” and need to be considered and educated in any scheme designed to increase the commercialization of their research.

Posted in Commercialization, Tech Transfer
Comment: 1

In late 2007, Virgin Enterprises successfully opposed the registration of “VIRGIN CANDLES” in Israel. The applicant sought to register the TM in association with candles. The Israel Patent and Trademark Office accepted that because Virgin is a famous TM and had a large range of products and widespread international distribution, a likelihood of confusion did exist [1]. Would such a claim succeed in Canada?

One of the leading Supreme Court of Canada cases regarding famous marks is the Mattel case [2]. The makers of Barbie dolls and accessories opposed the TM application for registration of “BARBIE’s and design” by the owners of a “bar-and-grill” type restaurant named Barbie’s. If in the opposition proceedings the applicant could prove that there was no likelihood of confusion between the applicant’s mark and the opposing party’s mark, the applicant was entitled to registration. The Mattel case, therefore, involved an analysis of s. 6 of the Trade-marks Act and the potential impact the status as a famous mark has on the determination of likelihood of confusion.

S. 6(5) lists out the relevant factors for determining whether TMs are confusing and instructs the court or registrar to consider “all the surrounding circumstances” including a list of five factors (a) through (e). The court concluded that in considering confusion the totality of circumstances dictates the weight to attach to each consideration. Fame of the mark is but one consideration which could have more or less weight depending on the other circumstances. After considering the factors in s. 6(5), the court turned to an analysis of the other surrounding circumstances including the fame of the mark as well as the absence of any actual confusion and concluded that the TM Registrar had not been unreasonable in the weighing of considerations and dismissed Mattel’s appeal.

Given the undeniable widespread fame of the Barbie mark, no matter what people might say about the impossible body dimensions and empty-headed blonde image, it is surprising that this fame was not enough for the court to grant extra protection. After all, as a casual consumer somewhat in a hurry, I might hear Barbie’s restaurant and think it was a Barbie doll-themed restaurant, especially in a culture where licensing of brands for use on everything from clothes to toys to restaurants is commonplace.

It was accepted in the Barbie case, that one of the purposes of 1953 amendments to TM legislation was to give, and indeed did give, greater protection to famous marks. Certainly there does seem to be something unfair about the fame of a mark being able to transcend other factors in the confusion analysis, but if fame is but one factor, in what manner do famous marks receive the broader ambit of protection? One important fact was that the Barbie TM was only famous in the limited field of dolls and accessories. In Mattel, the court specifically mentioned Virgin Enterprises as being an example of a famous TM which has been used in connection with an almost limitless diversity of wares and services but because such an example was not before the court, no pronouncement was made. A quick search of the CIPO TM database reveals Virgin has registered TMs for such diverse wares and services including soft-drinks, mobile phones and telecommunication services, transportation of goods and passengers by air, road, rail and sea and the arrangement of such travel, wines and entertainment services. If fame in a limited field is not sufficient, then surely fame in such a broad variety of wares and services would surely provide justification to attribute a lot of weight to the fame of this mark just as the Israel Office did.

While I might agree Virgin should be granted extra protection from a legal perspective, it is important to ask whether such a result would be a good thing from a policy perspective. The owners of famous marks have invested very large amounts of time and money into developing the reputation and goodwill in their brands and should be entitled to greater protection. One of the underlying principles of TM law, however, is to protect TM owners from unfair competition. It seems unlikely that the businessman who names his candle business Virgin candles because the candles are made from olive oil could be said to be unfair competition to Virgin Enterprises. It seems more unfair to preclude small-scale business owners from using a TM which has a similar name to a famous mark, especially where the TM lends itself to their particular products and services.

[1] See http://blog.ipfactor.co.il/2007/11/10/david-loses-virgin-to-goliath/ for brief comment.

[2] Mattel, Inc. v. 3894207 Canada Inc., [2006] 1 SCR 772.

Posted in Trademarks
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