Patent Decisions

Patent Ownership Was Found to be Assigned Pursuant to An Employment Contract
Groves v Canasonics Inc., 2015 ABQB 314

The Court of Queen’s Bench of Alberta was asked to decide the ownership of patent rights as between an employer and an employee.

The employment agreement between the plaintiff and his defendant employer had a condition providing all rights to intellectual property were assigned to the employer. As an invention was patented, they were assigned to the employer in each case for “one dollar and other good and valuable consideration”. The plaintiff was terminated and sought ownership over the patents.

The Court had difficulty accepting the plaintiff’s testimony and so decided the case without that testimony. It was argued that the plaintiff’s salary was never fully paid, and so there was no other good and valuable consideration and hence, the assignments are of no force and effect. The Court noted that the assignments stated that he acknowledged receipt of the consideration, and so future unpaid salary could not be interpreted to be the consideration. The Court also did not find that the contract was rescinded and thus the ownership would return to the plaintiff. Rather, the contract is still in place and the plaintiff may have a claim for damages for unpaid wages, but that was not necessary to determine.

The Court held the employer retained the assigned rights to the IP.

Trademark Decisions

Appellate Court Finds it Reasonable to Exclude Evidence of Non-Confusion From After the Date of First Use
ServiceMaster Company v. 385229 Ontario Ltd. (Masterclean Service Company), 2015 FCA 114

ServiceMaster further appeals their previously dismissed judicial review of the TMOB, who refused to register their applications for SERVICEMASTER CLEAN and SERVICEMASTER CLEAN AND DESIGN (2014 FC 440, previously summarized here). The TMOB found that the applications created a likelihood of confusion as of the date of its first use, October 1997. As filed, the application included building repair management and disaster restoration services among the wares and services.

The respondent has used the mark MASTERCLEAN since at least 1971, and has used the mark in association with restoration, renovation and cleaning services since at least 1980.

The TMOB had excluded the appellant’s evidence showing no confusion because it came after 1997. This was upheld by the trial judge.

The Court of Appeal affirmed the decision. While evidence post-dating the relevant date might be relevant to the issue of confusion, it was held that it was not unreasonable for the trial judge to exclude it.

Two Non-Parties to a Trademark and Copyright Decision are Bound by The Final Injunction
Agros Trading Confectionery SP.Z.O.O. v K-Max Corp., 2015 ONSC 3166

The Ontario Superior Court had previously issued an injunction to prevent the sale of candy snacks known as “Classic Sesame” because they were found to be passing off and infringing the copyright of “Sesame Snaps”. Two non-parties to the previous litigation now move to have that judgment set aside or varied so that they are excluded from the injunction. They were unsuccessful.

The Moving Parties argued the Court could not have found confusion in the absence of expert evidence, but the Court disagreed. The Court held that the Judge properly put themselves in the position of the average person going to the market, and agreed that the products were confusingly similar to each other.

As for the copyright claim, the Court found that the plaintiff, a Polish Corporation, is a member of a treaty country and therefore has standing to bring the claim.

It was held that the box design was difficult to distinguish between the two brands, and so the first author held exclusive rights.

Lastly, it was argued that the injunction should not have been issued as there was no evidence of damages. The Court found that although equitable relief fills in where damages are an inadequate remedy, the damages were obvious to everyone, at least nominal damages.


Chantal Saunders

Beverley Moore

Adrian J. Howard


Intellectual Property
Intellectual Property Litigation