Recent Decisions April 2006
I. FEDERAL COURT DECISIONS
(a) Patents
1. AstraZeneca et al. v. Apotex and Canada (Minister of Health) January 18, 2006 FCTD (Layden-Stevenson J.) Prohibition Order/Issue Estoppel/Rule 301(e)/Rule 75/ Claim Construction/Non-Infringement/ Employee Expert Witness/Patented Medicines (Notice of Compliance) Regulations
Application by Astra for an order prohibiting the Minister from issuing an NOC to Apotex with respect to 10mg and 20mg magnesium omeprazole tablets until after the expiry of the '037 patent. Astra argued issue estoppel based on a prior proceeding between the parties concerning the same tablets but involving a different patent. Apotex argued non-infringement and invalidity based on anticipation, double patenting and insufficiency of the '037 patent specification.
Held: Application dismissed. Astra did not plead issue estoppel and is precluded from relying on this doctrine by r. 301(e). Astra should have amended its pleadings under r. 75. Further, the prior proceeding involved a different patent for a different invention such that there was no previous determination of the '037 patent. Additionally, Apotex does not infringe the '037 patent. Although an ordinary and grammatical construction of claim 1 does not preclude the interpretation urged by Astra, the very purpose of the new manufacturing process that the '037 patent purports to cover supports Apotex's construction. The inclusion of the word "and" in the claim suggested that the claim elements were meant to be different substances. It was curious that Astra chose to rely solely on an employee's expert testimony with respect to the issue of non-infringement given the admonition of the Court of Appeal in AB Hassle v Canada (2002), 22 CPR (4th) 1(FCA).
2. Abbott Laboratories et al. v. The Minister of Health and Ratiopharm, January 24, 2006 FCTD (Campbell J.) Prohibition Order/Obviousness/Motion to Strike/Listing on Patent Register/Patented Medicines (Notice of Compliance) Regulations
Application by Abbott for an order prohibiting the Minister from issuing an NOC to Ratiopharm for clarithromycin on the basis of infringement of the '614 patent. Motion to strike the application by Ratiopharm, on the basis that the '614 patent is not eligible for inclusion on the patent register. Relying on paragraph 58 of the SCC's decision in Biolyse, Ratiopharm argued that an SNDS is not a "submission" that results in a patent registration eligible for inclusion on the patent list. The '614 patent is directed to an abridged formulation of the antibacterial composition clarithromycin. Ratiopharm alleged that its formulation for clarithromycin does not infringe Abbott's abridged formulation. Ratiopharm alleged invalidity on the basis of obviousness and argued that Abbott was attempting to evergreen its expired patent for the older "non-abridged" formulation of clarithromycin marketed under the name BIAXIN.
Held: Motion to strike dismissed. Application granted. The '614 patent is eligible for inclusion on the patent register. The statement in Biolyse taken in context is understood as meaning that "an SNDS cannot [in certain circumstances] be considered an appropriate opportunity to file a patent list". Abbott's construction of claim 1 of the '614 patent is correct; the whole of the disclosure must be considered for contextual and purposive construction of claim 1. The term "abridged composition" is clearly defined in the disclosure; a person skilled in the art would clearly understand that the terms "abridged antibacterial composition" and "consisting essentially of" in claim 1 denote a composition from which at least one of the ingredients from the non-abridged composition has been omitted, and which must contain all of the ingredients listed in claim 1. The '614 patent is valid and non-obvious because the invention is not merely the removal of excipients, but it is the placement of the excipients in their specific locations, followed by the removal of at least one of them. Testing of the non-abridged formulation would not be routine as argued by Ratiopharm, rather it would be intensively investigative.
3. Abbott Laboratories et al. v. Minister of Health and Pharmascience, February 2, 2006 FCTD (Harrington J.) Intermediate Product Claim/Allegation of Non-infringement/ Patented Medicines (Notice of Compliance) Regulations
Application by Abbott for an order prohibiting the Minister from issuing an NOC to Pharmascience until the expiry of the '274 patent. Pharmascience's drug is clarithromycin in a Form II crystal form. The patent covers the Form 0 crystal form, an intermediate in the preparation of Pharmascience's Form II crystallized clarithromycin. The issue before the Court is not whether Pharmascience infringed the '274 patent but rather whether Pharmascience's clarithromycin infringes any claim for the medicine.
Held: Application dismissed. There is a clear distinction between a drug infringing a patent, and the drug's maker infringing the patent. It may be that Pharmascience is infringing the patent but that is not the question. Pharmascience's use of Form 0 does not infringe any claim for Form 0 as a medicine itself, or any claim for its use as a medicine. This is because Pharmascience's clarithromycin contains no Form 0. The fact that Form 0 was used in the preparation of Pharmascience's Form II does not bar the Minister from issuing a NOC. Form 0 is created and disappears in intermediate steps in the manufacturing process. The mere fact that Form 0 has medical attributes is irrelevant.
4. Apotex v. AB Hassle et al. and Canada (Minister of Health), February 10, 2006 FCA (Décary, Evans, Sharlow JJ.A.) Abuse of Process/Allegation of Non-infringement and Invalidity/Gillette Defence/ Patented Medicines (Notice of Compliance) Regulations
Appeal from a decision prohibiting the Minister of Health from issuing an NOC to Apotex for their omeprazole magnesium tablets until after the expiry of the '693 patent. The judge had granted the prohibition order because (1) the non-infringement allegation made by Apotex was identical to a non-infringement allegation that it had raised in a 2003 proceeding that resulted in a prohibition order, and (2) the allegations of invalidity made by Apotex were not made in the 2003 proceeding, but they were not considered in this case because of the doctrine of issue estoppel, or alternatively the doctrine of abuse of process. The principal issue is whether Apotex's attempt to raise the invalidity allegation for the first time in this case should be barred on the basis of the doctrines of issue estoppel, res judicata or abuse of process.
Held: Appeal dismissed. The only non-infringement allegation properly raised in this case was the same point as that raised in the 2003 proceeding. The issue of the allegation of invalidity is best resolved on the basis of abuse of process alone. If a second person submits a second or subsequent NOA relating to the same proposed product and the same patent, the first person may commence prohibition proceedings and argue that the second or subsequent NOA is an abuse of process. Even if it is found to be an abuse of process, the Federal Court nevertheless has discretion to determine the application on its merits. Apotex could have raised its invalidity allegations in the previous proceedings and the Court will not interfere with the exercise of a judge's discretion unless there is an error of law or principle, or a failure to exercise the discretion judicially. Apotex may still bring an action under s. 60 of the Patent Act to impeach the '693 patent.
5. Aventis Pharma v. Apotex and Canada (Minister of Health) and Schering, February 13, 2006 FCA (Richard J.) Appeal of Prohibition Order/Burden of Proof/Sufficiency of NOA/Detailed Statement/Sound Prediction/ Date for Assessing Sound Prediction/Patented Medicines (Notice of Compliance) Regulations
Appeal from the dismissal of an application for a prohibition order. Aventis had sought an order prohibiting the Minister from issuing an NOC to Apotex in respect of the drug ramipril until after the expiry of the '206 patent. The application judge had found that the allegation of invalidity based on a lack of sound prediction was justified. Aventis challenged the burden of proof applicable and argued that an attack on the validity of a patent is a collateral challenge to the Commissioner's decision to issue the patent requiring a heightened standard of review. They maintained that this principle is applicable to NOC proceedings. They also alleged that Apotex's NOA was insufficient with respect to sound prediction.
Held: Appeal dismissed. The burden of proof in NOC proceedings rests on the applicant and is assessed on a balance of probabilities. The more onerous standard of proof applicable when the validity of the patent is determined in an infringement action is not applicable to an NOC proceeding. Apotex's NOA and accompanying detailed statement were properly determined by the application judge to be sufficient. Since soundness of prediction is a question of fact, the applicable standard of review is palpable and overriding error. The application judge did not make a palpable and overriding error when she found that the invention did not satisfy the test for sound prediction at the relevant date for assessing sound prediction, which is the Canadian filing date.
6. Pfizer Canada v. Minister of Health and AG (Canada), February 16, 2006 FCTD (Campbell J.) Ministerial Review/Eligibility of Patent on Patent Register/Patented Medicines (Notice of Compliance) Regulations
Appeal from a decision of the Minister of Health who rejected Pfizer's attempt to list the '726 patent on the Patent Register. Pfizer holds an NOC for the drug NORVASC, the active component of which is amlodipine besylate. Pfizer also possesses an NOC for the drug CADUET, the active components of which are amlodipine besylate and atorvastatin. The '726 patent claims combination therapy compositions consisting of the active ingredients amlodipine besylate and atorvastatin. Pfizer attempted to list this patent with respect to each of NORVASC and CADUET pursuant to s.4(1) of the Regulations. Pfizer argued that a patent claiming a composition that contains two active ingredients can be listed on the Patent Register against a product that contains just one of those ingredients. Pfizer based their argument on a particular interpretation of the Federal Court of Appeal's decision in Eli Lilly Canada Inc. v. Canada (Minister of Health) 2003 23 C.P.R. (4th) 289.
Held: Appeal dismissed. The decision in Eli Lilly is limited to the situation in which a medicine in a drug is in a formulation with an excipient or excipients, and not present with another active ingredient as Pfizer asserted.
7. Fournier Pharma et al. v. The Minister of Health and Cipher Pharmaceuticals, February 16, 2006 FCTD (Milczynski P.) Issue Estoppel/Divisional Patent Proceeding/Allegation of Non-infringement/ Patented Medicines (Notice of Compliance) Regulations
Motion by Cipher to have Fournier's application dismissed on the ground that it was redundant, scandalous, frivolous or vexatious, or was otherwise an abuse of process. In the main proceeding, Fournier applied for an order prohibiting the Minister of Health from issuing an NOC to Cipher for its fenofibrate capsules until after the expiry of the '576 patent. The '576 patent is a divisional of the '475 patent and the patents are virtually identical. In its NOA, Cipher alleged non-infringement. On this motion, Cipher argued that the doctrines of res judicata and issue estoppel applied and there was no basis for the Court to exercise its discretion to permit the proceeding to continue to a hearing on its merits. Cipher argued that the Court's decision in respect of the '475 patent was equally applicable to the '576 patent. In the '475 patent proceeding, the Court held that Fournier failed to establish that the Cipher capsules included any of the essential elements and dismissed Fournier's application. The Federal Court of Appeal upheld the Court's decision in the '475 patent proceeding. In the current proceeding, both Fournier and Cipher agreed that the essential elements in the '576 patent were the same as those in the '475 patent, with the only point of disagreement being whether or not the Cipher capsules included those elements.
Held: Motion granted and application dismissed. The preconditions for issue estoppel had all been met: there has been a disposition of the legal issues relating to the essential elements of the '475 patent which are the same in the '576 patent; that disposition of the legal issues is final; and the parties to the '475 patent proceeding are the same as the parties to this proceeding in respect of the '576 patent. The Court refused to exercise its discretion to allow the matter to be heard in spite of estoppel being established, since no injustice would result for Fournier.
8. Pfizer Canada v. Minister of Health and Ratiopharm, February 17, 2006 FCTD (von Finckenstein J.) Notice of Allegation/ Validity of Selection Patent/Patented Medicines (Notice of Compliance) Regulations
Application by Pfizer for an order prohibiting the Minister from issuing an NOC to Ratiopharm for the drug amlodipine besylate, sold under the brand name NORVASC until the expiry of the '393 patent. The claim at issue in the '393 patent was a claim for a besylate salt of amlodipine. However, a prior art reference had disclosed over 80 different salts of amlodipine, the besylate salt being one of them. Ratiopharm alleged that the selection of amlodipine besylate, and nine other salts in the '393 patent, did not meet the criteria of a valid selection patent.
Held: Application dismissed. A selection patent must be based on some substantial advantage to be secured by the use of the selected members. There was no rationale for the factors that Pfizer chose, which were solubility, stability, non-hygroscopicity and processability. The four factors used to select the nine salts of the '393 patent had a totally unexplained minimum threshold. The '393 patent only verified the extent of the characteristic and compared it to the other nine salts.
9. Biovail et al. v. Rhoxalpharma and Canada (Minister of Health), March 1, 2006 FCA (Richard, Evans, Sharlow JJ.A.) Prohibition Order/Mootness of Appeal/Patented Medicines (Notice of Compliance) Regulations
Appeal from an order of the Federal Court dismissing the application of Biovail for an order prohibiting the Minister from issuing an NOC to Rhoxal for diltiazem hydrochloride tablets until the expiry of the '224 patent. On October 21, 2005, the Minister issued the NOC to Rhoxal. Biovail filed its appeal on November 18, 2005. Biovail argues that because Rhoxal cannot yet use its rights under the NOC due to manufacturing facilities, this appeal is not moot. Alternatively, Biovail argues that the appeal should be heard even if it is moot.
Held: Appeal dismissed on the grounds of mootness. A long and unquestioned line of authority from this Court establishes that an appeal from an order dismissing an application for a prohibition order under the NOC Regulations becomes moot when the NOC is issued. Even if there is some constraint on the ability of Rhoxal to take full advantage of its NOC, this appeal would still be moot. The Regulations provide a forum for a limited adjudication of certain issues relating to patents. The situation Biovail describes cannot be distinguished from any of the situations presented in previous cases where it has been held to be moot.
(b) Trade Marks
1. Provigo Distribution v. Max Mara Fashion Group, November 17, 2005 FCTD (de Montigny J.) Opposition Appeal/Confusion/ Nature of Wares, Services and Businesses
Appeal from opposition decision that found that the applicant's mark MAXI & CIE (for operation of retail department stores etc.) is confusing with the opponent's mark MAX & CO. (for clothing, accessories and linens).
Held: Appeal allowed. The Court recognized that there is an overlap between the applicant's services and the opponent's wares but found it significant that the opponent offers “high end women's fashion for wealthy customers, whereas the applicant's stores target families looking for low prices and consumers more interested by good deals than by exclusive products.” The layout and appearance of each party's stores illustrate the differences between the products sold; the applicant's stores feature a large grocery area, provide no fitting rooms and are located only in Quebec, whereas the opponent's clothing stores are found throughout the world. The two marks are inherently weak and so small differences are sufficient to distinguish them. It appears that the opponent's mark was not in use and this is a factor that should be taken into account, whether or not the applicant can demonstrate use of its proposed mark.
2. Remo Imports v. Jaguar Cars et al., January 16, 2006 FCTD (Shore J.) Famous Trade Marks/Expungement/Invalidity/Damages/ Expert Evidence/Survey Evidence/Confusion/ Connection between Wares/Section 22/Kinds of Depreciation
The plaintiff owns a registration for JAGUAR for tote bags, luggage, hand bags and school bags. The defendant subsequently obtained a registration for JAGUAR for, inter alia, driving licence cases, wallet cases, business card holders…, document cases and pocket wallets (the “Objected Wares”). The plaintiff seeks to expunge these wares from the defendant's registration and is suing the defendant for infringement and passing off in respect of the defendant's use of JAGUAR for the Objected Wares. The defendant counterclaims for expungement of the plaintiff's registration on the basis that it is and was invalid because at the time of the plaintiff's adoption, the mark was confusing with the defendant's mark JAGUAR registered for cars, not distinctive and likely to depreciate the value of the defendant's goodwill. The plaintiff sells its wares to low-end and sometimes medium-range retail stores. The defendant sells its accessories either through JAGUAR automobile dealerships or directly to its buyers. The defendant used its JAGUAR mark in Canada in association with a number of personal accessories, including luggage, wallets and key chains, since at least as early as 1950 and in 1981/82 discussed extending their JAGUAR brand into a full line of personal accessories in Canada. The plaintiff began selling its JAGUAR wares in Canada in 1980. The defendant filed expert evidence and survey evidence.
Held: Plaintiff's registration expunged because it is invalid under each of the pleaded grounds. Defendant's registration maintained because the plaintiff's infringing and depreciating use cannot be used to invalidate it. The plaintiff has infringed the defendant's registrations and passed off its wares. Injunction granted with an order for destruction or delivery up of infringing matter. No damages awarded since neither party, at its executive level, was aware of the other prior to the outset of legal proceedings and no monetary damages have been proven.
The parties agreed that JAGUAR is a known luxury automobile brand. The evidence established that the JAGUAR cars brand had become famous in Canada in 1980, 1991 and at present. The defendant has a long history of connection with personal accessories; suitcases were made available as early as the 1930's and circulated to Canadian dealers from at least the 1950's. Other accessories sold by the defendant include wallets, key fobs, lighters, pens, clothing and jewellery. Beginning in the 1980's, the defendant began promoting the sale of accessories. The defendant's witness showed that it was a natural brand extension from cars to luggage in 1980; other car companies commonly sold luggage well before 1980.
The plaintiff's principle claimed that he was not aware of JAGUAR cars until 1990. The plaintiff began using JAGUAR for tote bags and baggage in 1981. In 1999, it launched a massive ad campaign.
There will almost never be a likelihood of confusion if the parties' wares are entirely dissimilar. There must be a connection or link. The Court listed 5 categories of factors relevant to determining whether the connection between the parties' wares is close enough for a finding of confusion: 1) parties' wares performed similar/related functions or were used in conjunction with each other's wares; 2) third parties active in the senior user's industry had previously extended the use of their well known marks to wares of the same type as those of the junior user, in Canada or abroad; 3) senior user has dealt in wares similar to those of the junior user (such dealings may have been promotional or in channels not customary for the junior user or may postdate the junior user's use); 4) attributes and characteristics of the senior user's brand render it suitable for an extension to the category of wares that comprises the junior user's wares; 5) survey evidence indicates that the public would tend to perceive a connection between the junior user's wares and the senior user.
The Court identified the kinds of possible depreciation and damage under the following headings: taking a valuable asset; utilizing goodwill of significant value to the senior user, an asset the senior user could potentially license or sell; lost exclusivity (dilution); tarnishment; and possibility of deception.
The Court agreed with the plaintiff's expert that the methodology that the defendant's experts used to arrive at their conclusions was flawed.
A telephone survey conducted to ascertain awareness of the name JAGUAR prior to 1980 is inherently unreliable as the interviewer cannot visually confirm the respondent's age. This flaw meant that there was no assurance that the proper universe was surveyed. Discussion was also had of problems in the surveys relating to “prompts”, “jogging questions”, “closed-ended questions” the failure to use control conditions and the failure to be demographically representative. The Court did not accept the BAV data and regression analysis introduced by one of the defendant's experts. Although the Court did not accord the defendant's surveys any significance, the defendant's non-expert witnesses did provide significant evidence with respect to the fame of JAGUAR cars in Canada as of the relevant time periods.
An appeal has been filed.
3. 1147015 Ontario v. Réno-Dépôt, January 27, 2006 FCTD (O'Keefe J.) Section 45 Appeal/Failure to Receive Registrar's Correspondence/Extension of Appeal Deadline
Appeal by a registrant whose registration was expunged pursuant to s. 45. The registrant had not received either the s. 45 notice or the notice of the decision and could only suggest that this might have been due to failure in rural mail delivery. The requesting party took no interest in the appeal.
Held: The evidence filed on appeal is sufficient to maintain the registration. The Court extended the time for filing the appeal until the date that the appeal was filed.
4. Flanders Filters v. Trade Mark Reflections, February 7, 2006 FCTD (Dawson J.) Section 45 Appeal/Section 50
Appeal from a s. 45 decision that ordered the appellant's registration to be expunged.
Held: Appeal allowed. Although the evidence before the Registrar did not show that the owner controlled the use of its mark by its wholly owned subsidiary as required by s. 50, the new evidence filed on appeal was sufficient.
5. Sadhu Singh Hamdard Trust v. Reg. TMs et al., February 9, 2006 FCTD (von Finckenstein J.) Section 56/Standing/Extension of Time to Oppose/Practice Notice/Section 57
Application by Sadhu to extend the time to appeal the Registrar's decision to register a mark. Sadhu wished to oppose the application that issued to registration. It filed a request for an extension of time to oppose but that request was not dealt with, for undisclosed reasons. Instead, the Registrar issued the registration. Sadhu filed a statement of opposition, but after the expiry of the unextended deadline and the issuance of the registration. Sadhu brought a motion for judicial review but discontinued that application upon being informed of its inappropriateness. It then filed the present application.
Held: Application dismissed. The Registrar does not have to grant an extension and Sadhu did not meet the statutory deadline for filing an opposition. There is no decision of the Registrar affecting Sadhu to review. Sadhu relied upon the practice of granting an extension of time but the practice notice has no force of law (in any event, the request for an extension failed to specify the date of advertisement). Sadhu has no choice but to proceed by way of expungement proceedings under s. 57. Costs in favour of the respondent.
6. Remo Imports v. Jaguar Cars et al., February 13, 2006 FCTD (Blais J.) Stay of Judgment
Remo moves for an order for a stay of the judgment rendered against it on January 16, 2006 (see above), in particular the expungement of its registration, the injunction, and the destruction of infringing matter, pending the disposition of its appeal.
Held: Application partially granted. Remo may continue to use JAGUAR pending the disposition of its appeal provided that it keep a full accounting of its sales, deposit 20% of the gross sales value of its JAGUAR products in trust as for payment of potential damages, and deposit $100,000 in trust as security for costs of the appeal.
Remo's allegation that Shore J. erred in relation to various documentary evidence led by Jaguar Cars meets the low threshold for establishing a serious issue. Blais J. was satisfied that being required to cease use of JAGUAR pending the appeal would cause significant damage to Remo to the point of causing irreparable harm (JAGUAR products represent 80% of Remo's business). Regarding the balance of convenience, Blais J. noted that any profits made by Remo “from its infringing activities exceeded exponentially any loss caused to the defendants.”
(c) Copyright
1. Euro Excellence v. Kraft, December 19, 2005 FCA (Desjardins, Noël, Pelletier JJ.A.) Parallel Importation/Grey Market Goods/Section 27(2) Copyright Act/Secondary Infringement/Determination of Profits
Euro appeals from an order prohibiting it from selling authentic TOBLERONE chocolate bars in Canada in association with two copyrighted designs. The Court of Appeal considered two questions: by acting as it did, did Euro violate s. 27(2)?; if so, should a determination of the profits be made, as the Trial Judge did?
Held: Appeal allowed in part.
Euro did violate s. 27(2). The wares that it imported may have been produced by parties licensed by the copyright owner to apply the copyrighted designs in a territory other than Canada. However, s. 27(4) provides that there is infringement if wares are imported in to Canada for sale that would infringe copyright if they had been made in Canada. Kraft has the exclusive license to use the copyright in Canada and therefore these foreign licensees' wares would be infringing. In order for there to be secondary infringement, there must be primary infringement. Nevertheless, primary infringement of copyright need not be proven in the case of s. 27(2)(e) because the final paragraph of the definition of “infringing” in s. 2 recognizes that infringement exists in a s. 27(2)(e) case.
Matter referred back to the Trial Judge so that he can redetermine the profits derived from the infringement, given the parties' submissions that his previous order was arbitrary and did not take all of the factors into account.
2. Mapeze v. Destination Ontario et al., January 13, 2006 FCTD (Hansen J.) Summary Judgment/Genuine Issue for Trial
Motion by plaintiff for summary judgment in an action for copyright infringement with respect to web software. The plaintiff submits that there is no issue for trial since there is evidence of copying. The defendant argues that the inclusion of the plaintiff's files is incidental and unintentional and that such files are not used by the defendant but are merely present in its server.
Held: Motion dismissed. This is not a case suitable for summary judgment. The question of what was contained in the defendant's CD remains unanswered; this is an essential factual determination that should be brought before a trial judge. In addition, certain aspects of the license between the parties are unclear. Finally, disagreements between expert methodologies and expert opinions require the matter to proceed to trial.
3. Columbia Pictures et al. v. Serge Gaudreault, January 25, 2006 FCA (Décary, Létourneau, Pelletier JJ.A.) Summary Judgment/ Copyright Infringement/ Unauthorized Decoding of Encrypted Signals
Appeal from the dismissal of a motion by Columbia for summary judgment in an action for copyright infringement. The respondent was convicted of offences under the Radiocommunication Act involving the unauthorized decoding of the encrypted signals by which the appellants' products are delivered to the consumer.
Held: Appeal dismissed. The appellants complain that the respondent authorized others to interfere with the appellants' authorized arrangement to reproduce and communicate their copyrighted works to the public by telecommunication. However, the appellants do not identify how such interference involves the exercise of rights reserved exclusively to the holders of copyright. There is nothing in s. 3(1) of the Copyright Act which would make the unauthorized decoding of encrypted signals an act of infringement. The right protected by s. 3(1) is the right to broadcast, not the right to receive a broadcast signal and the fact that unauthorized decoding is prohibited by s. 9(1)(c) does not make it infringement.
(d) Practice
1. Canadian Private Copying Collective (CPCC) v. Fuzion Technology et al., November 17, 2005 FCTD (Hughes J.) Motion for Converting an Application to an Action to Adduce New Evidence/Section 34(4) Copyright Act/Federal Court Rule 107
Motion by CPCC for an order pursuant to r. 107, stipulating that the present application proceed as an action. The motion further requests an order bifurcating the action, if it is granted, and, in the event the Court refuses the relief requested, an order pursuant to r. 312, permitting CPCC to file additional affidavits in support of its application and extending CPCC's delay to serve and file its Application Record. The proceedings are directed to the recovery of sums allegedly due from the respondents under a tariff certified by the Copyright Board in respect of blank audio recording media under Part VIII of the Copyright Act.
Held: Motion dismissed. It is not sufficiently compelling that CPCC now wishes to adduce new evidence, to justify a conversion of the applicant's own choice. Section 34(4) of the Copyright Act gives an option to a person wishing to commence proceedings relating to infringement of copyright and recovery of tariff monies by way of action or application. However, once the choice is made, there is no specific rule directed to the conversion of an application to an action. Section 18.4(2) of the Federal Court Act is not applicable to proceedings commenced under s. 34(4) of the Copyright Act; Federal Court r. 107 is not applicable. Even if there was inherent jurisdiction, there is no compelling reason for conversion where the party now seeking conversion made the choice initially.
2. Merck et al. v. Apotex, November 18, 2005 FCTD (von Finckenstein J.) Motion to Allow Expert Access to Confidential Information and to Extend Time to File Affidavit
Motion to allow another expert to have access to confidential information and be granted an extension of time to file his affidavit. Motion brought in light of a then upcoming motion by Merck to strike one of Apotex's expert affidavits and to have the law firms that act for Apotex disqualified. The main action is for an alleged patent infringement.
Held: Motion conditionally allowed. The expert should have access to the confidential information and extra time to prepare and file his affidavit. However, the use of the expert's evidence must be conditional upon the disqualification of the current expert. The Federal Court of Appeal in Apotex Inc. v. AstraZeneca Canada Inc., 2004 FCA 226 set out the relevant law for varying a protective order. The trial management judge has to determine "whether the facts establish some change in circumstances or compelling reason to vary." A successful motion to disqualify an expert would certainly amount to a change in circumstances or a compelling reason to vary the confidentiality order.
3. Rhodia UK et al. v. Jarvis Imports (2000) et al., November 30, 2005 FCTD (Tremblay-Lamer J.) Trade Marks/Affidavit of Documents/Examination for Discovery
This decision is with respect to three motions arising from an alleged infringement of a registered trade mark, passing off and depreciation of goodwill. The action has been bifurcated. The first trial is to deal with the issue of liability. The motions are: (1) defendants' motion for a better affidavit of documents from the plaintiffs; (2) defendants' appeal from the order of Prothonotary that examinations for discovery of both defendants be held within sixty days of the date of the order; (3) plaintiffs' appeal from the Prothonotary's decision to refuse to order one of the defendants to file a further and better affidavit of documents and that the examination of discovery of the plaintiffs be held within 60 days of the completion of the examination for discovery of the defendants.
Held: Re (1): The party seeking further production must offer persuasive evidence that documents are available, but have not been produced. The documents must be such that they might reasonably be supposed to contain information which may directly or indirectly enable the party requiring production to advance its own case or to damage the case of its adversary, or which might fairly lead it to a train of inquiry that could have either of these consequences. In view of the Order of bifurcation only documents relating to the issue of liability need to be produced. Documents relating to sales generally, as well as business, marketing and advertising plans, documents indicating expenses and efforts involved are not relevant as they relate to quantum of damages. However, documents relating to the volume of sales are relevant in that they relate to how well known the mark is. Documents relating to advertisement or marketing of the trade mark as well as publications containing references to the mark are relevant because they relate to the use of the mark. The plaintiffs need not produce documents held by its licensees because the defendants have not discharged their burden to show that the plaintiffs have the requisite possession, power or control to produce these documents.
Re (2): The Prothonotary was wrong to make the order in light of the defendants' outstanding motion for a further and better affidavit of documents. This discretionary order of the Prothonotary may be reviewed given that the issue of the production of documents raises a question of vital importance. Fairness dictates that each side should have full documentary discovery as well as proper preparation time before examination.
Re (3): The Prothonotary erred in not ordering the defendants to produce several relevant documents, such as an asset purchase agreement, that were before him in another motion. The defendant must provide these documents within 21 days. The examination for discovery of the plaintiffs will be held within 60 days of the completion of the examination for discovery of the defendants.
4. Harley-Davidson Motor and H-D Michigan v. Montex International, December 21, 2005 FCTD (Pinard J.) Appeal from Prothonotary's Discretionary Decision/Federal Court Rule 364/Inadequate Motion Record
Appeal by the defendants from a Prothonotary's discretionary decision dismissing their motion for an extension of time to serve and file a Statement of Defence.
Held: Motion dismissed. The question raised is vital to the final issue in the case, so the Court must conduct a de novo review of the merits of the decision and exercise its own discretion. However, according to their Motion Record in Appeal, the defendants did not file any of the underlying materials, the Order of the Prothonotary, or any affidavits, with the result that the motion record is not in compliance with r. 364 and must be struck out.
5. Abbott Laboratories et al. v. The Minister of Health et al., January 25, 2006 FCTD (Milczynski P.) Federal Court Rule 312/Substitution of an Expert/Expert Witness
In an NOC proceeding in respect of Abbott's drug clarithromycin, Pharmascience moved to substitute Dr. Rhodes for Dr. Schwartz as an expert and have him adopt Dr. Schwartz's previously sworn affidavit as his own. Abbott had received an earlier NOA from another party that was virtually identical to Pharmascience's and had retained Dr. Rhodes in that proceeding. Abbott had also retained Dr. Rhodes in a proceeding involving the corresponding U.S. patent, by virtue of which Dr. Rhodes was privy to discussions regarding Abbott's legal strategy.
Held: Motion dismissed with leave to Pharmascience to seek further leave under r. 312 to file an affidavit adopting that of Dr. Schwartz. In such a case, leave may be granted where the evidence will serve the interest of justice, assist the Court, and not cause prejudice to the other side. The Court must consider the overall fairness of the request made by the moving party and whatever objections are raised by a responding party. There is a danger that a party may contact all available witnesses to make them unavailable to opposing parties. However, there is no evidence Abbott had taken such action. Moreover, Pharmascience admits that there are other qualified experts available. Dr. Rhodes did receive privileged information and had agreed in writing to keep this information confidential. There is a risk that it may be disclosed. The risk of prejudice to Abbott greatly outweighs that to Pharmascience.
6. New Era Cap et al. v. Capish? Hip Hop et al., February 14, 2006 FCA (Sharlow, Rothstein, Malone JJ.A.) Contempt of Anton Piller Order
Appeal by New Era Cap from an order dismissing its motion for a declaration that the respondents were in contempt of an Anton Piller order. The show cause order required Capish to answer allegations that they had failed or refused to comply with an Anton Piller order dealing with unauthorized or counterfeit New Era merchandise. The Trial Judge reasoned that Capish could not be found in contempt in the absence of proof beyond a reasonable doubt that at the relevant time there was "unauthorized or counterfeit New Era merchandise" in the store, and that Capish knew that there was such merchandise in the store.
Held: Appeal dismissed. In the context of contempt proceedings that are based on an alleged failure or refusal to comply with a court order, the words of the order must be read strictly. The trial judge's findings are compelled by the definition of "unauthorized or infringing New Era merchandise" and it is sufficiently clear that he was not satisfied beyond a reasonable doubt that the stated tests had been met. The Anton Piller order has not lost its efficacy. Rather, the definitions in the order have made enforcement difficult. Furthermore, there were more appropriate steps under the order that were available to New Era.
7. Telewizja Polsat et al. v. Radiopol et al., February 14, 2006 FCTD (Lemieux J.) Show-Cause Contempt Order/Federal Court Rule 467
Charges of contempt arising out of an interim injunction, which enjoined Radiopol from decoding the plaintiffs' encrypted programming without authorization and from infringing the plaintiffs' copyright and trade marks. Radiopol operate a website which targets the Polish speaking television market outside of Poland. Through this site, the defendants sell monthly memberships that allow individuals to download television programs and movies. Virtually all of the programming provided on the Radiopol website is reproduced from the Polsat 2 signal, without the authorization of Telewizja Polsat.
Held: The offending and infringing website should be taken down because the evidence shows that the dominant and sole reasons for its existence is to appropriate the plaintiffs' property. There is no element of regret or apology. Not only did the defendants fail to respond to requests to cease and desist, they also enhanced their operations after the interim injunction. The penalties the plaintiffs seek are clearly warranted. This case has several elements resembling those in Tele-Direct (Publications) Inc. v. Canadian Business Online Inc., [1998] F.C.J. No. 1833. Both of the defendants failed to appear before the court to explain why and what happened and, in both cases, there is a lack of evidence of the financial situation surrounding the corporate defendants. Thus, as a similar penalty, a fine is imposed on the corporate defendant of $25,000. Mr. Bulchoc, as Radiopol's directing mind, has intentionally breached the interim injunction and has shown no remorse and has continued his contemptuous ways. He is ordered to pay a fine of $10,000 and is sentenced to six months in jail. However, the execution of the sentence will be suspended under conditions.
8. Biosig Instruments v. Sears Canada et al., February 16, 2006 FCTD (Heneghan J.) Appeal of an Order Striking the Re-Amended Statement of Claim
Appeal by Biosig Instruments from an order granting the motion of Sears Canada to strike the re-amended statement of claim. Biosig commenced an action for infringement of its patent that addresses the use of electronic circuitry in a heart rate monitor.
Held: Appeal dismissed. The applicable standard of review, where the effect of the prothonotary's order is to dismiss the action, is the de novo standard. According to Merck & Co. et al. v. Nu-Pharm Inc. (1999), 4 C.P.R. (4th) 522, a party seeking relief in respect of the patent infringement must lead sufficient facts to support the claim. This means that a plaintiff must give details about the activities that allegedly contribute to infringement. The words "four balanced EMG electrodes" do not describe all the elements of the claim at issue and are not sufficient to constitute the facts to support a claim of infringement. The re-amended statement of claim contains immaterial or irrelevant pleadings insofar as it lacks sufficiently clear allegations of fact to support the claim. This deficiency is enough to support striking the pleading pursuant to r. 221(1)(a), (b) and (c). It is not necessary to find, at this stage, whether there has been an abuse of the processes of the Court.
9. Apotex v. Pfizer Canada, Pfizer Corporation and Her Majesty the Queen, February 28, 2006 FCTD (De Montigny J.) Discovery/Compelling Answers Refused or Taken under Advisement/Control of "first person" making Parent "first person"/Corporate Structure
Motion by Pfizer Canada and Pfizer Corporation to set aside the Order of Milczynski P. wherein she granted, in part, Apotex's motion to compel certain answers refused or taken under advisement at the examinations for discovery of the defendant's representatives. In the underlying litigation, Apotex is seeking damages from not only Pfizer Canada, but also from Pfizer Corporation, which is the owner of the patent at issue in the underlying prohibition litigation. The basis for Apotex's claim against Pfizer Corporation is that it exercises complete control over the first person, Pfizer Canada, such as to make Pfizer Corporation a "first person" as well. Pfizer argues that the Prothonotary erred in law by failing to follow the principle that relevance must be determined by the pleadings.
Held: Prior to the motion being heard, Pfizer Canada and Pfizer Corporation answered a substantial portion of the questions sought by Apotex that related to the relationship between them. The answers compelled by Milczynski P.'s Order fall into two categories: a) source and supply of Pfizer Canada's Fluconazole; and b) the structure of the Pfizer group and who makes the decisions regarding marketing, selling and pricing of Fluconazole. These questions clearly aim to elucidate the role that an entity of the Pfizer group other than Pfizer Corporation played in these respects. This is not relevant to the claims made by the plaintiff, and the questions seem to be a fishing expedition whereby the plaintiff attempts to add other potential defendants.
10. Eli Lilly v. Apotex and Novopharm, March 3, 2006 FCTD (Aronovitch P.) Discovery/Compelling Production/Inventor's Notebooks/Relevance to Inventorship and Assignment/Relevance to Objective Test of Invalidity
Motion by Apotex (and supported by Novopharm), in an infringement action involving the drug nizatidine, to compel the production of laboratory notebooks of the assignors and named inventors of patents at issue. The defendants request that the notebooks be produced pursuant to r. 237(4) in order to facilitate examination of the inventors.
Held: The means of documentary production for the purposes of discovery is the affidavit of documents. The question in this case is not whether Lilly has an obligation to produce, but whether Lilly ought to have listed the notebooks in its affidavit of documents as being relevant to the issues raised by the parties. Relevance is the applicable standard for ordering the production of documents, and what is relevant in a particular action is determined by reference to the pleadings. Relevance for the purposes of discovery is a broader notion than relevance for the purposes of trial (Faulding); it is enough that a question not be "egregiously" or patently irrelevant. The documents that the parties are thereby entitled to is a matter of law, and not discretion (Reading & Cates Construction Co. et al. v. Baker Energy Resources Corp. et al. (1988), 24 C.P.R. (3d)).
Among the issues raised by the parties were the identity of the inventors and the assignment of the patents. The inventors' notebooks are relevant to those issues, and must be produced for the purposes of discovery. Although this conclusion is decisive, the Court went on to consider whether the notebooks are relevant to pleas of invalidity based on overbreadth, inutility and sound prediction.
II. OPPOSITION BOARD DECISIONS
1. Optic Nerve Art & Design v. Optic Nerve Design, October 5, 2005 (Carrière) Confusion/Section 16
Use-based application for OPTIC NERVE DESIGN & Design for research and development in the fields of multi-media, interactive content delivery, interface design and application design… consulting in the fields of computer hardware, software, global and local area communication networks, consulting in the field of education. Opposition based, inter alia, on s. 16 due to confusion with the opponent's mark OPTIC NERVE previously used for graphic design, namely computer art services.
Held: Application refused on the basis of there being a likelihood of confusion. In order to succeed under s. 16, an opponent need not establish a reputation in the trade, simply prior use. The applicant did not file any evidence of its use.
2. United States Shoe v. City Optical Holdings, December 1, 2005 (Herzig) Confusion/Onus
Proposed-use application for THE INVINCIBLES for eyewear. Opposition based, inter alia, on s. 12(1)(d) due to confusion with INVISIBLES registered for ophthalmic lenses.
Held: Application refused. Some of the s. 6(5) factors strongly favoured the opponent while others strongly supported the applicant. The Hearing Officer therefore found that the likelihood of confusion was evenly balanced; he accordingly relied on the onus to find in favour of the opponent.
3. Robert Bruce Storey and Bereskin & Parr v. Richards Buell Sutton, December 8, 2005 (Herzig) Confusion/Distinctiveness/ Section 9(1)(k)/Section 12(1)(a)
Use-based application for RBS for legal services. The applicant is a law firm. Opposition based, inter alia, on s. 12(1)(a), s. 9(1)(k), s. 16 and distinctiveness because Mr. Storey and other lawyers with the initials RBS display these initials at the bottom of letters, etc.
Held: Opposition rejected. Section 12(1)(a) does not apply because RBS is neither a name nor a surname. Section 9(1)(k) failed because the manner of use of RBS by the applicant is very different from the use by the opponents, namely the applicant boldly displays RBS to promote its services whereas the applicant displays RBS in an unobtrusive and nondescript way (i.e. to indicate the lawyer who has reviewed the letter). Regarding s. 16, the use of RBS by Mr. Storey has not been trade mark use. The distinctiveness ground also failed because, having regard to the manner of use of RBS by the applicant, the use of the initials RBS by Mr. Storey and others is not sufficient to negate the distinctiveness of the applicant's mark.
4. Canadian Imperial Bank of Commerce v. ATM Resource, December 13, 2005 (Bradbury) Confusion
Use-based application for CA$H CONVENIENCE & Design for automated banking machine services. Opposition based, inter alia, on s. 12(1)(d) due to confusion with CONVENIENCE CARD registered by the opponent for banking services.
Held: Opposition rejected primarily because the differences between the two marks are sufficient to make confusion unlikely. The opponent admitted that the word “convenience” is commonly used in the banking industry in a descriptive sense and the Board Member stated that the word “convenience” would be a difficult one for any party to monopolize.
5. International Clothiers v. David R'Bibo and Patrick Forte, December 14, 2005 (Carrière) Section 38(7.2)/Section 30(b)/ Distributor
Use-based application for DËKKER WOMEN & Design for various clothing. Opposition based, inter alia, on s. 30(b) because any use of the mark does not enure to the benefit of the applicant because the applicant is the distributor of the wares.
Held: Application refused. The opponent evidenced that the applicant is the distributor of a foreign company and there was no evidence from the applicant to rebut this so the s. 30(b) ground succeeded. The opponent raised s. 38(7.2) at the oral hearing but, because this procedural issue was not raised in a timely manner, the Hearing Officer refused to consider it.
6. Apotex and Novopharm v. Smithkline Beecham, December 16, 2005 (Folz) Distinctiveness
Proposed-use application for Tablets and Sun Design for pharmaceutical preparations and printed materials, educational services in the field of healthcare… The mark consists of 4 adjacent squares, the first three show the picture of a pill and the fourth shows a sun design. The mark is two-dimensional with colour claimed as a feature, namely the first tablet is yellow, the second is pink and the third is light blue. Opposition based, inter alia, on non-distinctiveness because yellow pills, pink pills and light blue pills are common in Canada.
Held: Opposition rejected. The opponent's evidence of third party yellow, pink and light blue pills does not satisfy its evidential burden because the applicant is not applying to register the look/colour of a three-dimensional tablet. The applied-for mark must be considered as a whole and there is no evidence that others have adopted marks that are similar in appearance to the applicant's mark as a whole.
7. Canadian Tire v. CTC Bank of Canada, December 29, 2005 (Bradbury) Use as a Trade Mark versus Use as a Trade Name/Challenging Intent to Use/Use of Multiple Trade Marks
Application for CTC BANK OF CANADA based upon use for banking services and proposed use for insurance services. Opposition based, inter alia, on s. 30(b) because CTC BANK OF CANADA has been used as a trade name, not as a trade mark, s. 30(e) because the applicant does not intend to use the mark in association with insurance services, and non-distinctiveness because the use of an additional trade mark will make the public think that two sources offer the services.
Held: Opposition rejected. The applicant's evidence was not clearly inconsistent with its claim that it had used CTC BANK OF CANADA as a trade mark - some of the evidence showed trade mark use. The opponent argued that the Bank Act prohibits the applicant from performing all types of insurance services. The Board Member held that this was not covered by the s. 30(e) ground. In any event, in the absence of evidence to the contrary, it is only fair to assume that the applicant's intentions were honourable and that it intends to use its mark only with those types of insurance services that it is entitled by law to perform. The use of Chinese characters adjacent to the trade mark, which translate to CHINA TRUST COMMERCIAL BANK (CANADA), does not harm the mark's distinctiveness.
8. Waterford Wedgwood v. Forma-Kutzscher, January 9, 2006 (Carrière) Confusion/Section 12(1)(a)/Material Date
Use-based application for LISA MORI for glassware. Opposition based, inter alia, on s. 12(1)(d) due to confusion with the mark LISMORE registered by the opponent for glassware and s. 12(1)(a) because LISA MORI is primarily merely the name of an individual who is living.
Held: Application refused on both grounds. There is a likelihood of confusion between the 2 marks. With respect to s. 12(1)(a), the Board applied the filing date of the application as the material date. One of the opponent's affiants had located an individual by the name of Lisa Mori employed in Canada. The Board rejected the applicant's argument that the opponent must produce evidence to show that the average Canadian would consider LISA MORI as the name of an individual as opposed to a trade mark. Based on the fact that Lisa is a well-known first name and the evidence of a good number of Canadian telephone listings for individuals with the surname Mori, the Board Member concluded that the average Canadian would first associate LISA MORI to the name of an individual rather than to a trade mark. (An appeal has been filed.)
9. Lotte Confectionery v. Tong Yong Confectionary, January 23, 2006 (Herzig) Clearly Descriptive/Foreign Decisions
Application for CHOCOPIE & Design for various confectionery items based on both use and proposed use. Opposition based, inter alia, on s. 12(1)(b).
Held: Opposition rejected. The opponent introduced evidence that “choco” is an abbreviation for “chocolate” as well as evidence of various foreign trade mark offices refusing applications for CHOCOPIE marks on the basis of descriptiveness. CHOCOPIE & Design is not clearly descriptive of the applied for wares, particularly because the list of wares does not include “pies”. The decisions abroad do not assist the opponent because the law in those jurisdictions has not been evidenced.
10. Indigo Books & Music v. Williams Coffee Pub, January 26, 2006 (Folz) Confusion/Differences in Nature of Trade/ Negative Inference
Use-based application for GREAT COFFEE IS JUST THE BEGINNING for coffee, cups, coffee makers, clothing, pens, pins and operation of a business dealing in food and restaurant services. GREAT and COFFEE disclaimed. Opposition based, inter alia, on s. 12(1)(d) due to confusion with the mark GREAT BOOKS ARE JUST THE BEGINNING registered by the opponent for books, greeting cards, novelties, stationery, computer software, brushes, cassettes, glasses, bags, etc. and operation of a retail book, periodical, and stationary store … operation of a restaurant and café, etc.
Held: Opposition rejected. The marks are to be compared as they are used in business. The applicant uses its mark in association with a restaurant that sells much more than coffee. The opponent has coffee shops operated within its book stores; these coffee shops use the trade mark STARBUCKS, are run independently form the book stores and do not use GREAT BOOKS ARE JUST THE BEGINNING on any of their products. The Board Member drew a negative inference with respect to the likelihood of confusion from the lack of evidence of confusion despite several years' co-extensive use.
11. C.A.T. Logistics and Canadian American Transportation C.A.T. v. Caterpillar, January 30, 2006 (Carrière) Distinctiveness/Opponent being Junior User
Use-based application for C.A.T. LOGISTICS for warehousing services, product distribution operations management services, logistics consulting services, etc. LOGISTICS disclaimed. Opposition based, inter alia, on non-distinctiveness due to the opponent's use of its trade name C.A.T. Logistics Inc.
Held: Application refused. The opponent established use of its trade name prior to the filing of the opposition. There is a likelihood of confusion between the mark and the name since they are almost identical and there is an overlap between their respective services and trades. Even though the applicant is the senior user of the mark, the opponent's uncontroverted yearly sales figures of over $3 million establishes that the opponent had acquired enough of a reputation to negate the ability of the mark to distinguish the applicant's services.
12. Créations Méandres v. Cirque du Miroir, January 30, 2006 (Carrière) Confusion
Proposed-use application for CIRQUE DU MIROIR & Design for clothing etc. and the operation of a business dealing in the presentation of entertainment shows namely ice skating shows. Opposition based, inter alia, on s. 12(1)(d) due to confusion with the mark CIRQUE DU SOLEIL registered by the opponent for clothing etc. and the operation of a business dealing in the presentation of entertaining shows.
Held: Opposition rejected. The marks are inherently weak. The opponent has not provided any evidence of use of its mark in association with its wares but the evidence establishes that CIRQUE DU SOLEIL is known in Canada in association with services. CIRQUE DU MIROIR & Design, when viewed as a whole, does not resemble the opponent's mark. The evidence shows that the words “cirque” and “circus” are common components of trade marks. To find that there is a likelihood of confusion would be tantamount to giving the opponent a monopoly on the word “cirque”, a word that could be descriptive of the services at issue.
IV. SECTION 45 DECISIONS
1. Ridout & Maybee v. Walgreen, December 1, 2005 (Folz) Section 4(3)/Export/ Deviation from Registered Mark
WALGREEN registered for various pharmaceuticals, cosmetics and detergents.
Held: Registration expunged. The registrant claimed that it was using the mark pursuant to s. 4(3) by having agents manufacture and package the wares in Canada and then export them to the U.S. for sale in retail drug stores. However, the Hearing Officer was not satisfied that the wares were exported as part of a commercial transaction, as it appeared to her that the wares were shipped to the registrant's pharmacies in the U.S., not to third parties. The registrant also relied on the filling of prescriptions in the U.S. for Canadian residents, sometimes pursuant to prescriptions written by Canadian doctors. This does not qualify as s. 4(3) use for two reasons: 1) when a physician writes a prescription, the trade mark of the pharmacy that ultimately dispenses the drug does not appear on the prescription; 2) just because a prescription is written in Canada and filled in the U.S. does not mean that pharmaceuticals have been exported from Canada. Although the wares display WALGREENS followed by a slogan in smaller letters, this would qualify as use of the registered mark.
2. LIDL Stiftung v. Joseph Rutigliano & Sons, December 2, 2005 (Bradbury) Use on Invoices/Sufficiency of Evidence
BARESI registered for cheeses, canned or processed olives, canned vegetables, edible oils, pasta and vinegar.
Held: Registration maintained. The appearance of the trade mark on invoices sufficed to maintain the registration because it appeared that the invoices accompanied the wares (the “bill to” entity being the same as the “ship to” entity). Given the wording in the statement of wares, the registrant need only show use with either canned or processed olives; evidence of sales of bottled olives maintains the olive wares because it is self-evident that bottled olives would have been processed in some way. Although an abbreviated version of the registrant's name appeared on the invoices, the Hearing Officer concluded that this was the same entity as the registrant because the invoices listed the address that appears on the registration. The registrant's full name appeared on the packaging and it matters not that the address on the packaging is not that listed in the registration.
3. Blake, Cassels & Graydon v. Empire Tobacco, December 2, 2005 (Bradbury) Sufficiency of Evidence
PADRONE registered for various tobacco products, related accessories, smoking apparel and candy cigarettes.
Held: Registration expunged because the registrant's evidence amounted to nothing more than a bare assertion of use.
4. Riches, McKenzie & Herbert v. Travel Network, December 13, 2005 (Bradbury) Use in Canada/Use of Mark as Registered
VACATION CENTRAL registered for luggage, travel-related clothing, travel-related accessories, retail travel agency services, mail order catalogue services and retail travel store services.
Held: Registration restricted to retail travel agency services. The registrant's affiant only alleged use in association with retail travel agency services and retail travel store services. It matters not that the evidence shows a design version of the mark; the registered mark stands out sufficiently from surrounding features/words to be recognized. Although the invoice lists the registrant's U.S. office, it was issued to individuals in Canada and this case is distinguishable from Don the Beachcomber because the recipient of the services did not need to travel to the U.S. to enjoy the services. The absence of any indication that GST was being charged for the services is not an issue to be addressed in s. 45 proceedings. The affiant did not show use in association with retail travel store services.
5. New Line Productions v. Rocky Wagner, December 21, 2005 (Bradbury) Sufficiency of Evidence/Special Circumstances
MOJO & BRO registered for various clothing.
Held: Registration expunged. The registrant stated that he was unable to operate a business from his home because his landlord would not consent but this is not a special circumstance that justifies non-use since there are other means by which he could sell the wares. Four sales through eBay prior to the material date cannot support the registration.
6. Effigi v. Outlaws Gym and Active Wear, December 22, 2005 (Savard) Sufficiency of Evidence/Onus on Registrant
OUTLAWS registered for plastic water bottles, cups, jewellery, etc., hockey and lacrosse equipment, supplies, and clothing, operating lacrosse teams and operating hockey teams.
Held: Registration restricted to those wares for which use was evidenced. Although the registrant evidenced use in respect of “sweatshirts”, the Hearing Officer was not prepared to allow that evidence to serve to maintain “jerseys” in the registration because the registrant did not satisfy its onus to prove that “sweatshirts” could be considered to be “jerseys”.
7. EKG Agricultural Solutions v. S
