Marketing and Sales Law 2

Comparative advertising is advertising that involves use of competitor's trademark

• If statements about competitor's mark are untrue, can lead to claim under Trade-marks Act as also Competition act
• Can result in anti-dilution claim, but 'use' requirement must be met

• Damages
• Account of profits
• Injunction (einstwillige verfügung)
• Delivering up (etwas formelles übergeben)

A registered mark can be expunged if:

• It is no longer in use (Section 45)
• It is no longer distinctive (unverwechselbar)
• The mark was exclusively used by another party prior to registration and that party seeks to expunge the registered mark within 5 years form the date of registration

• Owner of registered mark can assign the mark
• Owner of registered mark can license the mark
  • Is a key feature in franchising
• Use of mark by franchisee is deemed (gilt als) to be use by franchisor

Certification mark

• Owner registers the mark and licenses it to parties whose goods or services meet defined standards

Distinguishing guise (Ausgezeichnete Erscheinung)

• Goes to the shape of goods or their packaging (CocaCola bottles, Toblerone bars)
• Registration can't be granted for purely functional features

• Registration of domain name doesn't provide trade-marks rights
• Abusive domain name registration can result in passing off or other trademarks claims
• Abuses of domain name registrations can also result in complaints under Uniform Dispute Resolution Policy
  • Complainant must show:
    • Has trade-marks rights in the domain name
    • The registered owner of the domain doesn't have a legitimate interest in the domain name (Critical commentary, and use of person's name are legitimate)
    • The domain name was registered in bad faith

• Governed by Copyright Act
• Protects the expression of an idea, but not the idea itself
• Owner of copyright has the exlusive right to:
  • Produce or reproduce the work (in any material form)
  • Perform or deliver the work in public
  • Publish an unpublished work
• Proteciton arises autobatically (no registration required, but must be connected to Canada or to a state that is a member of an applicable treaty)
• Protection extended to literary, dramatic, musical and artistic work
  • Work must be original and fixed
• Copyright exists for the life of the author plus 50 years. After that it becomes part of the public domain
•  

• Creator is the copyright owner
  • Separate copyrights can exist in the same work
  • Copyright can be joint 
  • Employment exception
• Licensing
  • In exchange for payments of royalties or other fees
  • Can be exclusive or non-exclusive
• Assignment (Übertragung)
  • Can be made for payment or by gift
  • Can be of part of copyright
  • Can be to a collective rights society

• Go to the authors rights
  • To protect the integrity over the work
  • To prevent distortion or mutilation of the work
  • Moral rights cannot be sold nor licensed (only waived (verzichtet)

When anyone does anything that only the owner has the right to do

• Includes authorizing someone to do any such thing
• Includes copying a substantial part of the work
• Can occur without the conscious intent to infringe

Fair dealing provisions in the Act allow for use of copyrighted works for the purpose of:

• Research, private study, eductation
• Parody
• Review or criticism
• News reporting

Whether the dealing is 'fair' depends upon:

• The purpose of the dealing
• The character of the dealing
• The amaount and alternatives of the dealing
• The nature of the work
• The effect ot the dealing on the work

• Content in generated for non-commercial purposes
• Where copying is for private use
• Where copyrighted music is played at an educational or charitable event.

Remedies include:

• Damages (Statutory (gesetzlich festgelegte) damages of up to 5000 for non-commercial infringement
• Account of profits
• Injunction
• Delivering up

Criminal sanctions 

• Fines up to 1 million
• Prison term up to 5 years

• Governed by Patent Act
• Registration required
• Grants (gewährung) a monoploy over the construciting, making, using and selling of the invention for up to 20 years from the date of filing
• Invention is patentable if it is a new and useful art, process, maching, etc. or a new and useful improvement of an existing invention

The subject matter of the patent must be an art, process, machine or composition of matter. Business methods can be patented.

The invention must be new.

• Te invention can't have been disclosed (bekanntgegeben) to the public anywhere in the world before the filing (einreichung) date.
  • In Canada, the inventor can still file for a patent within one year of the inventor's first disclosure
  • First to file rule

The invention must be useful

• Should be reproducible and should make a process easier, cheaper or faster

The invention must involve ingenuity (Einfallsreichtum)

• The invention must represent an advancement of the relevant art

• Governed by Industrial Design Act
• Registration is required (Within one year of first publication)
• Grants (zuspruch) exclusive right to use the design for 5 years
• Defined as features of shape, pattern and are judged solely (ausschliesslich) by the eye
  • Doesn't grant protection over purely utilitarian features
  • Some degree of originality is required
  • Must be used

• Subject matter that could be patented and even that which could not, could be protected as confidential information
• A suit for breach of confidence can arise if:
  • Information was communicated in confidence
  • and the Information was misused by the recipient
• Trad eSecrets are sub-category of confidential information
  • Often go to formulas, recipes...

Used where one party wishes to disclose confidential information, but wants to hold the receiving party responsible to maintain confidentiality

• Terms often include:
  • What information the confidentiality oligations applies to 
  • What disclosures are allowed
  • Stating that confidentiality obligations don't apply to information already in the public domain, or that the receiving party already kenw, or that the receiving party from a third party that isn't subject to an NDA
  • Allowance for disclosing party to make disclosures to other parties