Recent Decisions April 2007
I. FEDERAL COURT DECISIONS
(a) Patents
1. Sanofi-Aventis et al. v. Novopharm and The Minister of Health, December 21, 2006 FCTD (Hughes J.) Motion to Dismiss/Application for Prohibition/Section 6(5)/Patented Medicines (Notice of Compliance) Regulations
Motion by Novopharm to dismiss an application for an order prohibiting the Minister from issuing an NOC to Novopharm until after the expiration of the '089 and '948 patents in respect of ramipril, used for the treatment for high blood pressure (old use). The '089 patent is directed to a new use of ramipril for the treatment of cardiac hypertrophy and hyperplasia. The '948 patent is also directed to a new use of ramipril for the prevention and therapy of proteinuria. Sanofi has not yet received approval for the new uses. Novopharm argued that the decision of the Supreme Court in AstraZeneca Canada v. Canada, 2006 SCC 49, renders the '089 and '948 patents irrelevant to Novopharm's ANDS and thus the proceedings brought by Sanofi are irrelevant. In this regard, Novopharm argued that a patent that does not pertain to a product that has been marketed by the innovator, need not be engaged by the generic. Sanofi argued that AstraZeneca must be confined to a situation where the drug in its patented physical form has never been marketed. Here, the drug is in its physical form and has been marketed; it was purchased and used by Novopharm for bioequivalent studies. Novopharm also argued that Sanofi's evidence of infringement is inadequate to demonstrate that its allegation of non-infringement is not justified. Novopharm argued that the evidence does not show that there is "something more" which induces or procures others to infringe. Sanofi argued that off-label use will occur and further argued that Novopharm's unredacted product monograph may contain evidence of "something more" that may lead some patients to the new uses claimed. Sanofi also argued that a motion for dismissal should not be entertained as Novopharm has already engaged the court process, filed its evidence, commenced cross-examinations and set a date for trial.
Held: Motion dismissed. Due to complications in interpreting the AstraZeneca decision as between Novopharm and the Minister, a motion to dismiss should not be used as a vehicle to resolve important controversial points of law. Given that this motion could have been initiated at the outset of this case just after Sanofi filed its affidavit evidence, it is inappropriate to dismiss the proceedings at this time; these proceedings were started over a year ago and a trial date has been set for six months. The sufficiency of Sanofi's evidence on the infringement issue should be left to the hearing at trial.
2. Apotex v. Sanofi-Synthelabo et al. and The Minister of Health, December 22, 2006 FCA (Noël, Richard and Evans JJ.A.) Appeal/Prohibition Order/Anticipation/ Obviousness/Double Patenting/Selection Patent/Patented Medicines (Notice of Compliance) Regulations
Appeal from a decision prohibiting the Minister from issuing an NOC to Apotex for the use of clopidogrel bisulfate tablets, until after the expiry of the '777 patent ("Patent"). Clopidogrel bisulfate is used to inhibit platelet aggregation. Apotex alleged that the Patent is anticipated by the '875 patent and, in the alternative, alleged that the Patent is invalid on the basis of obviousness or double patenting. The '875 patent claims a large class of compounds useful in inhibiting platelet aggregation, which may exist as racemates or isomers. The '875 patent does not teach how to separate the racemates into their isomers, and does not mention that there are any pharmaceutical or toxicological differences between the isomers of the disclosed racemates with respect to activity or tolerability. Apotex argued that the Applications Judge erred in applying the tests for anticipation and obviousness. Apotex further argued that the Judge erred in confusing the inventor of the compound with the ordinary person skilled in the art. Apotex also argued that since methods of separating racemates are well known, the claimed invention and its advantages would have been obvious to the skilled person.
Held: Appeal dismissed. It was open to the Applications Judge to conclude that the '875 patent did not specifically lead to the claimed invention. The '875 patent and the Patent lend themselves to the analysis predicated for selection patents. The '875 patent discloses a class of compounds and the Patent identifies the dextro-rotatory isomer of a particular racemate disclosed in the '875 patent which has never been separated and which, once separated, produces an isomer found to have special properties. The processes disclosed only resulted in a racemate and although Example 1 in the '875 Patent refers to the separation of isomers if desired, there are no references to techniques for separating the isomers. The evidence shows that it is impossible to predict which method of separating the enantiomers will work. Apotex failed to show that the prior art would lead the person skilled in the art in every case and without possibility of error to the claimed invention. The Applications Judge did not commit a reviewable error in concluding that a skilled person in the art would not, in light of the prior art, have been led directly and without difficulty to the dextro-rotatory isomer of the racemate, its bisulfate salt and their pharmaceutical compositions. The Patent is not invalid on the basis of double patenting as both patents claim different and distinct compounds.
3. Sanofi-Aventis Canada v. The Minister of Health, AG Canada and Apotex, December 29, 2006 FCTD (von Finckenstein J.) Motion/Stay/Judicial Review/ Patented Medicines (Notice of Compliance) Regulations/Tripartite Test/Irreparable harm
Motion by Sanofi for a stay in conjunction with an application for judicial review of the Minister's decision to grant an NOC to Apotex for ramipril, marketed under the name ALTACE for the treatment of cardiovascular problems such as hypertension (old use). Sanofi obtained an NOC in respect of ALTACE for the new indication HOPE (Heart Outcome Prevention Evaluation). Two Sanofi patents (the '549 and '387 patents) issued in 2005 and were added to the Register. It its NOA, Apotex addressed the '549 and '387 patents alleging irrelevancy, improper listing, invalidity, non-infringement and double patenting in respect of the '549 patent. Sanofi commenced an application to prohibit the Minister from issuing an NOC to Apotex. In the middle of the proceedings, the SCC rendered its decision in AstraZeneca Canada v. Canada, 2006 SCC 49. On the basis of this decision, Apotex asked the Minister to grant its request for an NOC arguing that since its ANDS was submitted before the NOC issued to Sanofi, Apotex was not required to address the '387 and '549 patents. The Minister agreed with Apotex but concluded that an NOC could not be granted as matters were presently before the Court. Sanofi did not agree with the Minister's interpretation of AstraZeneca and commenced an application for judicial review. Shortly after, the Minister issued an NOC to Apotex. Sanofi then brought a second judicial review application to have the decision set aside. Apotex argued that the NOC prohibition proceedings are moot upon issuance of the NOC to a second person.
Held: Motion for stay granted. As a party to the litigation, the Minister could not unilaterally take steps rendering the litigation superfluous. The issuance of the NOC in light of the subsisting application and the co-pending judicial review application show an utter disrespect by the Minister for the Court and the proceedings in front of it. The NOC prohibition proceedings are not moot. The cases relied on by Apotex are in respect of situations where the NOC proceedings have spent their course, which is not the case here. Once prohibition proceedings have commenced, it is up to the Court, not the Minister to decide if proceedings have become redundant by reason of any judicial decisions. This lack of respect for the Court and the non-observance of the legislative stay provided for in the Regulations should not be rewarded by letting the persons displaying a lack of respect enjoy the fruits of the unauthorized act. The Court undertook an analysis of the stay request on the basis of the tri-partite test for interlocutory injunctions in the event that the foregoing conclusion is not upheld on appeal. von Finckenstein J. noted that the Applicant does not meet that test as there is no clear evidence of irreparable harm. Sanofi has the duty to demonstrate that it will suffer market share losses and other harms that are irreparable because they cannot be compensated by monetary damages.
4. Apotex v. Sanofi-Aventis Canada and The Minister of Health, January 8, 2007 FCA (Sharlow J.A.) Appeal/ Stay /Interlocutory Order / Minister's Discretion/ Patent Register/ Paragraph 5(1)(b)/ Patented Medicines (Notice of Compliance) Regulations
Appeal by Apotex seeking an order staying an interlocutory order of the Federal Court that stayed the operation of an NOC issued to Apotex by the Minister. Sanofi makes the drug ALTACE for which the medicinal ingredient is ramipril. Sanofi has a number of patents listed on the Register, including two patents ('387 and '549) that issued after Sanofi received an NOC for ALTACE. Apotex filed an ANDS alleging that its Apo-ramipril product was bioequivalent to ALTACE before Sanofi filed its NDS to add the '387 and '549 patents to the Register. Apotex served Sanofi with an NOA and Sanofi commenced proceedings for an order prohibiting the Minister from issuing an NOC to Apotex. Subsequently, the SCC issued its decision in AstraZeneca Canada v. Canada, 2006 SCC 49, which narrowly interpreted s. 5(1) of the Regulations such that a generic manufacturer may only need to address those patents listed on the Register relevant to the "copied" Canadian reference product. The Minister took the view that this decision made the prohibition proceedings unnecessary and issued an NOC to Apotex. Sanofi filed an application for judicial review of the Minister's decision, and was granted an interlocutory order staying the operation of the NOC here under appeal.
Held: Appeal allowed. Motion granted subject to the condition that the prohibition proceedings are stayed pending the disposition of the judicial review application, and that the statutory stay is extended accordingly. Apotex raised a serious issue, showed that it will suffer irreparable harm due to competition from another generic company who has been licensed to produce ramipril from Sanofi. The balance of convenience favours granting the stay in order to restore the status quo. The Judge placed Apotex at a competitive disadvantage for the duration of the stay. The Judge granted the stay because the issuance of an NOC was deemed to be disrespectful of the process of the Federal Court as prohibition proceedings were pending when the NOC issued. The Minister is often required to act on his own analysis of the law and cannot be expected to continuously seek the approval of the Court. If an event occurs that undermines the foundation of a particular prohibition proceeding the Minister can, and probably must, take note and act accordingly. The Minister's decision cannot therefore be fairly characterized as disrespectful of the Court.
5. Abbott et al. v. The Minister of Health and Apotex, January 11, 2007 FCTD (Heneghan J.) Application for Prohibition/Intermediate/Anticipation/Claims for the Medicine/Patent Register/Patented Medicines (Notice of Compliance) Regulations
Application by Abbott for an order prohibiting the Minister from issuing an NOC to Apotex for its formulation of clarithromycin, the active ingredient in BIAXIN, until after the expiry of Abbott's '732, '606 and '361 patents ("Patents"). The Patents cover certain clarithromycin compounds, processes and methods of manufacture, and the use of the claimed compounds as antibiotics. Clarithromycin occurs in multiple crystalline forms and the Patents claim Forms 0, I and II and the use of Form 0 to make Form II. Apotex's intended version of Clarithromycin uses Form 0 to produce Form II. Apotex alleged in their NOA that: a) its proposed tablets would contain only Form II that was prepared using methods of manufacture that were disclosed in the prior art; b) the relevant Patents were invalid; and c) the relevant Patents were not eligible for listing on the Register.
Held: Application dismissed. No order of prohibition will issue with respect to the '732 patent as Abbott's assertions that Apotex was estopped from arguing non-infringement due to issue estoppel were not raised in its notice of application. The '606 patent was invalid; the Court referred to the Ratiopharm decision, affirmed by the FCA, wherein the '606 patent was found to be anticipated by the prior art. The relevant claims of the '361 patent do not meet the eligibility requirements for inclusion on the Register. The Court interpreted the relevant claims to be directed towards the use of Form 0 to make Form II of clarithromycin. The jurisprudence is clear that an intermediate is not a "claim for the medicine itself" nor a "claim for the use of the medicine" as defined in the Regulations.
6. Pfizer et al. v. Apotex and The Minister of Health, January 12, 2007 FCTD (O'Reilly J.) Application for Prohibition/Invalidity/Inutility/Sound Prediction/Insufficiency/Patented Medicines (Notice of Compliance) Regulations
Application by Pfizer for an order prohibiting the Minister from issuing an NOC to Apotex for tablets containing sildenafil, the active ingredient in VIAGRA and REVATIO, until after the expiry of the '748 Patent ("Patent"). Claims 6 and 17 of the Patent were at issue. Apotex alleged that Pfizer had not demonstrated or soundly predicted the utility of the claims in issue to treat the numerous medical conditions named in the Patent. Apotex also alleged insufficiency of disclosure. Pfizer argued that Claim 6 is a claim to the compound sildenafil, and does not mention any specific use. Its utility is established so long as there was some useful purpose for it. The Patent states that the compounds are potent and selective inhibitors of cGMP PDE, and use as a research tool in laboratory experiments is one use for the compounds that is mentioned in the patent. Pfizer argued that Claim 17 is a claim to the compound sildenafil for use in only four of the medical conditions mentioned in the Patent (angina, hypertension, heart failure and atherosclerosis) and no others, and it was soundly predictable that sildenafil would have such utility. Pfizer also argued that it satisfied its obligation to disclose the characteristics and means by which the compounds were tested for their capacity to inhibit cGMP PDEs.
Held: Application dismissed. Pfizer did not discharge its burden of proving that Apotex's allegations of invalidity were unjustified. Claim 6 defines an invention if sildenafil was demonstrated or soundly predicted to be a potent and selective cGMP PDE inhibitor. Claim 17 defines an invention if sildenafil was demonstrated or soundly predicted to be useful in the four cardiovascular medical conditions mentioned in it. Pfizer did not prove that the inventors knew sildenafil was a potent and selective cGMP PDE inhibitor before the relevant time, nor did Pfizer prove that there was a factual basis to support a sound prediction that sildenafil had this property. After-the-fact confirmation of utility of a purported invention is not enough to uphold a patent. The Patent fails to provide skilled readers with enough information to be able to understand what the properties of the compounds were or how to use them. The Patent did not report numerical values for potency or selectivity for inhibition of cGMP PDEs. Further, the patent stated that modifications of specific assays were used to test the compounds, however these modifications were not disclosed.
7. G.D. Searle and Pfizer Canada v. Novopharm and The Minister of Health, January 24, 2007 FCTD (Hughes J.) Application for Prohibition/ Abandonment/ Section 73 Patent Act/ Obviousness/ Lack of Utility/ Insufficiency/ Patented Medicines (Notice of Compliance) Regulations
Application to prohibit the Minister from issuing an NOC to Novopharm for celecoxib until expiry of the '576 patent ("Patent"). Celecoxib is a COX II selective inhibitor used for the treatment of inflammation without causing gastric problems. Claims 4 and 8 of the Patent were at issue. Novopharm argued that the application that issued to the Patent should have been deemed abandoned pursuant to s. 73 of the Act, alleging that Searle did not reply in good faith in dealings with the Patent Office. In the alternative, Novopharm argued that claims 4 and/or 8 of the Patent were invalid on the basis of obviousness, lack of utility and insufficiency. Pfizer argued that the compounds identified by Novopharm would not have been readily identified by a skilled person as logical or readily apparent starting materials, nor would substitutions have been easily made that would have led "directly and without difficulty" to celecoxib.
Held: Application dismissed. “It is not harsh or unreasonable, if after the patent issues, and disclosure is found to lack good faith, that the Court deems the application and thus the patent, to have been abandoned.” Searle had found one prior art compound ("SC-58125") was COX II selective, and Searle had disclosed this publicly after the priority dates but before the Canadian filing date. Without fuller disclosure of this fact, good faith was not shown in originally submitting the patent application or subsequently in response to the examiner. Since a Searle scientist who was not a named inventor disclosed the information, Searle could not rely on the grace period for prior disclosures pursuant to s. 28.3 of the Act, even though Searle was the applicant. Searle also could not rely on a claim date earlier than the Canadian filing date because the priority applications did not describe or disclose the same invention claimed in Claims 4 or 8 of the Patent. Celecoxib would have been obvious as of the Canadian filing date given Searle's disclosure that SC-58125 is COX II selective. A person skilled in the art would have identified SC-58125 as a lead compound and would in the ordinary course have made substitutions to the structure of the compound and be sufficiently confident as to the result. The allegations of lack of utility and insufficient disclosure are not justified. Searle had determined and articulated sufficient utility by the Canadian filing date. The Patent provides sufficient disclosure such that a person skilled in the art would readily establish what comprises a therapeutically effective amount of celecoxib.
8. Pfizer Canada and Warner-Lambert v. The Minister of Health and Ranbaxy Laboratories, January 25, 2007 (von Finckenstein J.) Application for Prohibition/Sufficiency Specification/Section 27(3) Patent Act/Patented Medicines (Notice of Compliance) Regulations
Application for an order prohibiting the Minister from issuing an NOC to Ranbaxy for atorvastatin calcium, marketed under the name Lipitor, until expiry of the '768 and '546 patents. Ranbaxy alleged that the '768 patent is not infringed because it is directed solely to the racemic mixtures of the compounds claimed. Ranbaxy alleged that the '546 patent is invalid on the basis of obviousness, anticipation, insufficiency and double patenting. Pfizer alleged that Ranbaxy's experts were not sufficiently informed or familiar with the art of the '768 patent and that one of the experts lacked objectivity. Ranbaxy alleged that: a) the biological activity data of the '546 patent is not representative of the data collected; b) the data as a whole showed tremendous variability, caused at least by solubility problems, and that one cannot draw scientifically valid conclusions; and c) Pfizer conducted more reliable in vivo experiments which were not included in the '546 patent. Pfizer contends that the data in the '546 patent shows a purported 10-fold increase in activity of the atorvastatin calcium over the atorvastatin calcium racemate and that any increase over 2-fold is surprising. Pfizer also argued that while data may vary, every piece of data shows that the increase in activity is over 2-fold, and thus is not what a skilled person skilled would expect and as such there is no need for further precision.
Held: Application granted in respect of the '768 patent, but dismissed in respect of the '546 patent. Ranbaxy's compound, which is one of the enantiomers in claim 1, infringes the '768 patent. The '768 patent was not limited to racemates because: 1) it states that it contemplates the trans-form, which includes both enantiomers; 2) it states that the examples are merely illustrative and did not limit the scope of the invention; 3) use of the stereodescriptor (±) demonstrates that the inventor knew when to limit the claims to racemates; 4) an article on statins reported that the activity resided principally in the R and not the S isomer; 5) a person skilled in the art would know how to resolve the racemic mixture into its individual enantiomers; 6) a skilled person knew that compactin and mevinolin, two naturally occurring statins, were potent inhibitors of HMG-CoA reductase and were single 4(R) trans-isomer enantiomers; and 7) a skilled person looking at a formula will see a racemate and the individual enantiomers. The '546 patent did not correctly and fully describe the invention and its operation or use as contemplated by the inventor. First, the information in the '546 patent relates to sodium salts, not calcium salts. Second, the alleged ten-fold difference in activity is based on an averaging of data for the racemic sodium salt collected across five different experiments. Third, the data cannot be relied upon because of solubility problems. Fourth, the inherent activity of the calcium salt of atorvastatin over the racemate calcium salt of atorvastatin is only slightly more than 2-fold. The suggestion of a 10-fold increase in activity cannot be backed up by the data provided.
9. Procter & Gamble Pharmaceuticals Canada v. The Minister of Health and AG Canada, February 1, 2007 (Decary, Evans and Malone JJ.A.) Judicial Review/Patent Register/Patented Medicines (Notice of Compliance) Regulations
Appeal by Procter & Gamble from a decision dismissing an application for judicial review to set aside the refusal of the Minister to list a patent on the Register.
Held: Appeal dismissed. Having considered the claims of the patent, the Judge correctly concluded that the invention was a delivery system for the medicine and not the medicine itself. The Court noted that the present case must be decided on its own facts. It is not useful to engage in minute comparisons of different patents considered in cases decided at different stages in the development of the law.
10. Sanofi-Aventis Canada v. The Minister of Health, AG Canada and Apotex, February 5, 2007 FCTD (Harrington J.) Intervener Status/Patent Register/ Patented Medicines (Notice of Compliance) Regulations
Motion by Novopharm seeking intervener status regarding judicial review of a decision of the Minister with respect to proceedings under the Regulations regarding two Canadian patents ("Patents") listed on the Register for ALTACE, which contains the active ingredient ramipril and is produced by Sanofi. Novopharm sought intervener status on the basis that its business is affected by a similar decision pertaining to the same Patents. Apotex had filed an ANDS seeking an NOC for its Apo-ramipril product before Sanofi filed its submission which led to the addition of the Patents to the Register. Following the SCC decision in AstraZeneca Canada v. Canada, 2006 SCC 49, the Minister issued an NOC to Apotex for Apo-ramipril. The Minister interpreted the AstraZeneca decision as entitling the issuance of an NOC to Apotex without subjecting it to the statutory 24-month stay. Sanofi sought an order staying the operation of the NOC issued by the Minister which was overturned on appeal; however the Court ordered that Sanofi's leave to appeal be expedited. Novopharm also seeks an NOC from the Minister with respect to its generic version of ramipril. Similar to Apotex, Novopharm had been relieved of having to address the Patents listed on the Register.
Held: Motion denied. Although Novopharm has an interest in the Minister's interpretation of the Regulations, that interest in not sufficient to justify giving it intervener status. The Minister and Apotex are perfectly able to defend their respective positions; the case can be decided without Novopharm's help. The Court already expressed its desire that the hearing be expedited. The addition of an intervener would possibly complicate the matter and delay the hearing. The Court referred to factors for determining whether intervener status should be granted pursuant to r. 109 of the Federal Court Rules.
11. Pfizer et al. v. The Minister of Health and Cobalt Pharmaceuticals, February 14, 2007 FCTD (Hughes J.) Adding a Party/Timing/Sections 6(1) and 6(4)/Patented Medicines (Notice of Compliance) Regulations/Federal Court Rules 103, 104 and 303
Application by Pfizer Canada and Pfizer Inc. to add Pfizer Limited as a party to the proceedings. One of the patents at issue was issued and granted to Pfizer Limited, and Pfizer Limited remains as owner (patentee) of the patent although it is not named as a party in the present proceedings with Cobalt or in similar proceedings with Pharmascience. The evidence of one of the solicitors for the Applicants is that her instructions were at all times that Pfizer Limited should have been named an Applicant and that this omission was a matter of inadvertence and oversight. Cobalt opposed and brought a motion to strike the proceedings in respect of the patent at issue on the basis that Pfizer Limited was not listed as one of the Applicants when the proceedings were initiated. Cobalt argued that under the Regulations the patentee must be named as a party from the outset in the notice of application or at the very least be added within the 45 day period stipulated for commencing an application provided for in s. 6(1) of the Regulations. Cobalt further argued that the Regulations require strict compliance failing which an application is a nullity and the patentee and those claiming under it are left to remedies in an ordinary infringement action.
Held: Motion granted. Pfizer Limited shall be added as a party. It is not fatal to an application that the owner of a patent who is not a "first person" was not a party initially, provided that the owner is joined as a party at an appropriate subsequent time. Section 6(1) is a mandatory provision and a "first party" must commence an application directed to the Minister within 45 days of receiving a NOA. Once that application is commenced, procedure is governed by the Federal Court Rules unless there is a conflict with the Regulations in which case the Regulations prevail. Section 6(4) of the Regulations requires that a patentee "shall be made party to the application". The separate provision in s. 6(4) indicates that while becoming a party is mandatory for a patentee, the timing is not dictated by s. 6(1) but rather is to be governed by the practice and procedure of the Court. In this case, the governing rules are: r. 303 requiring joinder of certain parties; and r. 103-104, which provide that a claim shall not be defeated by reason of misjoinder or nonjoinder of a party and that the Court may order joinder subject to appropriate directions.
12. Abbott et al. v. The Minister of Health and Pharmascience, February 16, 2007 FCA (Létourneau, Sexton, and Evans JJ.A.) Appeal/ Prohibition Order/ Intermediate/ Paragraph 5(1)(b)/ Patented Medicines (Notice of Compliance) Regulations
Appeal by Abbott of a decision dismissing an application for an order of prohibition restraining the Minister from issuing an NOC to Pharmascience for its product containing Form II of clarithromycin, the active ingredient in BIAXIN. Abbott's '274 patent ("Patent"), claims Form 0 of clarithromycin, which exists in different crystalline forms. The Applications Judge held that Pharmascience's NOA was justified because in its finished state, its product would contain only clarithromycin in Form II. Form 0 was only produced at an intermediate stage in the manufacturing process, which did not bring it within s. 5(1)(b) of the Regulations. Subsequently, the FCA released a decision in Abbott Laboratories v. Canada, 2006 FCA 782 regarding a similar "copycat" drug produced by Ratiopharm that involved the same patent ("Ratiopharm"). Ratiopharm held that the making of Form 0 clarithromycin in the intermediate stages of the process was within the scope of s. 5(1)(b)(iv), despite the fact that only Form II of clarithromycin was present in Ratiopharm's finished product. Pharmascience argued that the present case was distinguishable from Ratiopharm because the claims of the Patent were directed to a Form 0 crystalline antibiotic and that Pharmascience's product would not infringe the Patent as Form 0 was only an intermediate in its product and was not used or intended for use as an antibiotic.
Held: Appeal allowed. Prohibition order granted. The Applications Judge did not err in finding that the Patent was a claim for the medicine itself for the purposes of s. 5(1)(b)(iv) of the Regulations. The Applications Judge did not make a palpable and overriding error when he concluded that a person skilled in the art would understand "antibiotic" in the claims of the Patent as claims for a substance having antibacterial activity, independent of its intended use. Form 0 could be ingested, and be effective as an antibiotic. On the basis of unfairness to both Abbott and the Court, the Court did not consider arguments raised by the Respondent that the recent SCC decision in AstraZeneca v. Canada, 2006 SCC 49 implicitly reversed the Ratiopharm decision, because this issue was not raised either in the NOA, before the Applications Judge or in Pharmascience's memorandum of fact and law, and no notice was given to Abbott of the intention to advance this argument at hearing.
13. Pfizer et al. v. The Minister of Health and Pharmascience, February 19, 2007 FCTD (Hughes J.) Strike Proceedings/Section 6(5)(a)/Eligibility for Inclusion on Patent Register/Section 4(1)/Patented Medicines (Notice of Compliance) Regulations
Motion by Pharmascience pursuant to newly amended s. 6(5)(a) of the Regulations to strike out proceedings in whole or in part as they related to the '493 patent ("Patent"), and in particular claim 22, which was directed to the R(+) enantiomer of amlodipine. Pfizer was granted an NOC for NORVASC naming amlopidine besylate as the medicinal ingredient. The two issues for consideration were: a) the standard to be applied to a motion under s. 6(5)(a); and 2) whether claim 22 of the Patent was properly listed on the Register against amlopidine besylate (the racemate). Pfizer characterizes the racemate as being composed of two medicines, the R(+) enantiomers and the S(-) enantiomers. Based on the reasoning of Eli Lilly Canada v. Canada, [2003] 3 FC 140, Pfizer argued that where an NOC relates to two medicines, a patent relating to one of those medicines can be listed on the Register pursuant to s. 4(1) of the Regulations.
Held: Motion allowed. Where the law can be applied to admissions and relevant evidence that is quite reasonably found to be undisputed or 'plain and obvious' then the Court has a duty to make a determination. However, if the Court finds itself determining the matter on disputed relevant evidence or having to weigh the merits of competing expert opinions, the matter should be left to the hearing at trial. The Patent should not be listed on the Register. The NOC for NORVASC speaks only of a single medical ingredient and does not speak of something made of two components. It is clear that the medicine of the NOC was the racemate amlodipine and not the R(+) enantiomer of claim 22 of the Patent. It is wrong to consider amlodipine besylate as comprising two medicines. A racemate is not simply a mixture of two enantiomers. To achieve those enantiomers the racemate must be chemically broken apart, with the resulting pieces reconstituted as enantiomers. It is wrong to conclude that the Federal Court has said that where the NOC covers a combination, a patent directed to one of its components may be listed. Even if amlodipine besylate were to be considered to be two medicines it would not satisfy the Eli Lilly circumstances since in Eli Lilly there was only one medicine which was rendered less toxic, not by another medicine, but by a compound having no medical effect on its own.
14. Servier Canada et al. v. Apotex and The Minister of Health, February 21, 2007 FCTD (Noël J.) Judicial Review/Amend Application/Federal Court Rule 75 and 302/Single Order/Section 5/Patented Medicines (Notice of Compliance) Regulations
Motion by the Applicants to amend their notice of application for judicial review under r. 75 of the Federal Court Rules. The patent at issue claims perindopril erbumine ("Patent"). The Applicants sought to amend their application dated Nov. 2006 to include a review of the Minister's decision respecting the issuance of an NOC to Apotex in Feb. 2007 for 8 mg tablets of Apo-perindopril. Servier had obtained NOCs for perindopril erbumine in 2 and 4 mg tablets in 1994, and 8 mg tablets in 2002. Apotex subsequently filed an ANDS to obtain an NOC for Apo-perindopril in 2, 4 and 8 mg tablets. In Dec. 2005, the Minister informed Apotex that s. 5 of the Regulations was only triggered in respect of the 2 and 4 mg tablets, and did not apply to the 8 mg tablets. In Nov. 2006, the Applicants filed an application for judicial review of the Minister's Dec. 2005 decision. At issue was whether the Minister's issuance of an NOC to Apotex for 8 mg tablets was separate and distinct from the Minister's Dec. 2005 finding that the Regulations do not apply to the 8 mg tablets. Apotex argued the Applicants' motion does not comply with r. 302, which provides that an application for judicial review shall be limited to a single order from which relief is sought. The Applicants argued that only the Dec. 2005 decision of the Minister was at issue, since the issuance of the NOC to Apotex was a direct consequence of the finding that the Regulations were not engaged for Apo-perindopril 8 mg tablets. Apotex argued that the decisions were distinct, since the first was made under the Regulations, and the second under the Food & Drug Regulations.
Held: Motion dismissed. Applicants have not complied with r. 302. The issuance of an NOC to Apotex is a distinct and separate decision from the Minister's finding that the Regulations do not apply to the 8 mg tablets. The two decisions were not part of a "continuing course of conduct", since they were made at different times, related to different factual situations, were made under distinct statutory regimes, and led the Applicants to pursue different forms of relief. To conform with r. 302, the Applicants were required to seek leave of the Court to proceed with a review of two decisions in one application, which they did not.
15. Pfizer Canada and Warner-Lambert v. The Minister of Health and Ranbaxy Laboratories, February 22, 2007 FCTD (Phelan J.) Amended Notice of Application/Reinstitute Proceedings/Extension of 24 Month Stay/Section 7(1)(e)/Patented Medicines (Notice of Compliance) Regulations/Federal Court Rule 77
Appeal from a decision of the Prothonotary granting leave to Pfizer to serve and file a further Fresh As Amended Notice of Application (NOA) and extending the 24 month stay pursuant to s. 7(1)(e) of the Regulations. The issues were: 1) whether a part of an NOC proceeding which had been discontinued can be reinstituted; and 2) whether the Prothonotary had properly exercised jurisdiction to extend time. Ranbaxy made allegations in respect of 6 patents listed by Pfizer for its atorvastatin calcium tablets, and specifically alleged non-infringement and invalidity of the '018 and '455 patents. Pfizer filed a notice of application attacking the allegations in respect of these 2 patents. In the course of communications between both parties, Ranbaxy gave certain assurances to Pfizer regarding its product and, as a result, Pfizer amended its application and discontinued its contentions in respect of the '018 and '455 patents. When it was later discovered that the assurances given to Pfizer were incorrect, Pfizer then sought to amend its application to bring the two patents back into the proceedings. The Prothonotary allowed Pfizer's amendment and extended the 24-month stay. Ranbaxy's main argument on appeal is that once a proceeding in respect of a patent has been discontinued, the 24-month stay in respect of that patent expires and that the Regulations are a complete code that creates an absolute bar to reviving the proceeding in respect of that patent. Ranbaxy further argues that regardless of the reason for discontinuance, even fraud, deception or misrepresentation, the bar is absolute and the only remedies may be in an infringement action.
Held: Appeal dismissed. The Prothonotary correctly concluded that the Court had jurisdiction to permit Pfizer to amend its application and reinstitute proceedings. Section 7(5) of the Regulations grants the Court discretion to extend the 24-month stay when a party has failed to reasonably cooperate in expediting the application. It is not necessary to find malice or fraud. One is not cooperating when one is making inaccurate statements to induce another party to act against its interests. The Regulations are not a complete code; r. 77 of the Federal Court Rules may be invoked in appropriate circumstances, such as the present case, to allow Pfizer to be put back in the same position that it would have been in initially but for the inaccurate assurances of Ranbaxy. The Regulations do not prohibit an amendment to an application; they only prohibit the operation of a stay where the application is withdrawn, discontinued or dismissed, which is not the case here. The cause of the amendment was Ranbaxy's misrepresentation and Ranbaxy ought not to be allowed to benefit from its actions. There is no substantial prejudice caused by allowing Pfizer to re-amend its application.
16. Ratiopharm v. Abbott Laboratories and The Minister of Health, February 23, 2007 FCA (Noël, Nadon and Malone JJ.A.) Appeal/ Prohibition Order /Claim Construction Obviousness/ Validity/ Patented Medicines (Notice of Compliance) Regulations
Appeal of a decision granting Abbott's application for an order prohibiting the Minister from issuing an NOC to Ratiopharm until after the expiration of the '614 patent ("Patent"), in respect of clarithromycin, the active medicinal agreement in BIAXIN. The Patent's alleged invention is the abridgement of the clarithromycin composition by removing components from the non-abridged composition. Ratiopharm argued that Campbell J. misconstrued claim 1 of the Patent and submitted that the phrase "consisting essentially of" could be interpreted to include the specified ingredients as well as other ingredients that do not materially affect the characteristics of the product. Ratiopharm alleged that Campbell J. erred in law in refusing to consider its alternative construction. Ratiopharm further argued that Campbell J. erred in failing to hold the Patent invalid on the ground of obviousness. Ratiopharm also argued that the Trial Judge improperly placed the onus on Ratiopharm to prove on a balance of probabilities that the Patent was invalid.
Held: Appeal dismissed. The purposive construction given by Campbell J. to the Patent, and particularly to the meaning of the phrase "consisting essentially of" in claim 1, did not constitute a reviewable error. Campbell J. correctly rejected the alternative construction of claim 1 argued by Ratiopharm, as it was not supported by the allegations provided in its NOA. The Trial Judge did not err in holding that claim 1 would be read by persons skilled in the art as meaning that the abridged composition must include all the listed ingredients, with at least one ingredient from the non-abridged composition being excluded. Campbell J.'s construction was properly inferred from the evidence. With respect to obviousness, Campbell J.'s finding that the testing required to arrive at the invention of the Patent would not be "routine", but "intensely investigative", was fair and was not affected by any apparent misapprehension respecting bioequivalence between the abridged and non-abridged compositions for clarithromycin. Campbell J.'s conclusions were properly founded in the evidence before him. The case was not decided on the basis of the onus being improperly attributed to Ratiopharm, but rather on a balance of probabilities based on extensive evidence filed by all parties.
17. Sanofi-Aventis Canada v. The Minister of Health, AG Canada and Novopharm, February 23, 2007 FCTD (Phelan J.) Motion/Strike Application/Judicial Review//Patented Medicines (Notice of Compliance) Regulations
Motion by Novopharm to dismiss Sanofi's application for judicial review of a letter from the Minister. Novopharm's main argument was that the Minister's letter, which advises Novopharm that it does not need to address Sanofi's '387 and '549 patents, is not a decision and thus judicial review is not warranted.
Held: Motion dismissed. If this letter is not a decision, the determination of that question is more properly to be made by the hearing Judge. If this is not a decision, one wonders why Novopharm in a separate proceeding has sought judicial review of the same letter.
(b) Trade Marks
1. United States Postal Services v. Canada Post, January 9, 2007 FCA (Nadon, Sexton, Sharlow JJ.A.) Public Authority/Section 9(1)(n)(iii)/Government Control
Held: The government control required of a public authority under s. 9(1)(n)(iii) must be that of a Canadian government. This does not offend the Paris Convention or TRIPs.
2. Fairmont Hotels v. Director Corporations Canada and Fairmont Resort, January 29, 2007 FCTD (O’Reilly J.) Stay/Interlocutory Decision/Judicial Review
Fairmont Resort (FR) brought an application under s. 12 of the Canadian Business Corporations Act requesting the Director to order Fairmont Hotels (FH) to change their corporate names because of risk of confusion. FH asked the Director to stay FRP’s application pending the outcome of trade mark disputes between FH and FRP. The Director refused and FH is seeking judicial review of that decision.
Held: Application for judicial review dismissed because the Director’s decision is an interlocutory one. FH’s submission that the Director will not take into account the relevant issue of its trade mark registration is speculative.
3. Lending Tree, LLC v. Lending Tree Corp. et al., February 12, 2007 FCA (Létourneau, Sexton, Evans JJ.A.) Jurisdiction of Opposition Board/Amendment of Applicant’s Name
Appeal from decision that held that the Opposition Board has jurisdiction to consider the issue of whether there had been a valid amendment of an applicant’s name. The application was filed in the name of a corporation that had not yet been incorporated. After an opposition was commenced, the applicant realized the error and applied to amend the application by replacing the corporate name with an individual’s name. The Registrar allowed the amendment and gave the opponent an opportunity to amend its statement of opposition.
Held: Appeal dismissed. The Board has jurisdiction since it must necessarily determine whether the application was validly amended in order to assess the ground of opposition that pleads that the applicant could not have used the mark on the date alleged in the application.
4. EMALL.ca c/o/b/a CheapTickets.ca v. Cheap Tickets and Travel, March 2, 2007 FCTD (Strayer J.) Section 57 Expungement/Descriptiveness
Application for expungement of respondent’s registrations for CHEAP TICKETS and CHEAP TICKETS AND TRAVEL & Design under s. 57 on the basis that the marks when registered were clearly descriptive of the respondent’s travel agency and ticket agency services.
Held: Registrations expunged. “The impression these trade-marks give is that the respondent provides access to travel services at normally advantageous rates. I do not think it particularly relevant that the respondent provides other services such as responding to inquiries about tourism or the booking of hotel accommodation or car rentals, which may or may not involve anything that could be called a ‘Ticket’.” There was evidence that the respondent itself had used the expression “Cheap Tickets” descriptively.
5. Guido Berlucchi & C. v. Brouilette Kosie Prince, March 3, 2007 FCTD (Gauthier J.) Section 45 Appeal/Standard of Review/Deviation from Registered Mark/Single Sale/Normal Course of Trade
Appeal from Registrar’s decision that expunged the appellant’s registration for CUVÉE IMPERIAL BERLUCCHI & Design under s. 45 on the basis that it was unclear from the evidence what the trade mark in use looked like. Additional evidence filed on appeal showed the label that was in use. The respondent argued that the mark used is not the registered mark, and also that the use was not in the normal course of trade since there was only one sale.
Held: Registration to be maintained for sparkling wines (the only wares covered by the evidence). The Court concluded that the issues related to the appearance of the trade mark and its use should be decided de novo, but that the issue related to whether the mark was used in the ordinary course of trade should be reviewed on a standard of reasonableness simpliciter since there was no new evidence on that point. The differences between the mark as used and as registered are not significant enough to mislead an unaware consumer. The dominant features of the registered mark are present in the mark used. The change in the size of the script is almost imperceptible, as are the changes at the bottom of the label. Although there are differences in the name of the registered owner and the reference to the method used (both of which appear in the mark), these are not major distinguishing elements of the registered mark. The Registrar’s decision that a single sale of 300 bottles was a sale in the normal course of trade was a reasonable conclusion.
6. BMW v. Nissan, March 7, 2007 FCTD (MacKay D.J.) Infringement/Depreciation of Goodwill/Passing Off under Section 7(b)/Survey Evidence
Action by BMW pursuant to s. 20, 22 and 7(b) of the Trade-marks Act to enjoin Nissan from using M in association with automobiles in any form other than M35 or M45. BMW sells the most exclusive line of its automobiles in association with marks that combine the letter M with a number or word. It has registered M3, M5, M & Design and M SERIES. Nissan has registered M35 and M45 for automobiles and it uses these marks in association with the cars that it markets under the trade mark INFINITI. Nissan does not use the letter M by itself on its cars, but it does display M simpliciter in print ads. It also uses M6 as the name of an upgrade package available with respect to its INFINITI car. Nissan’s cars are luxury models but not as high-end as BMW’s M SERIES cars.
Held: The passing off action under s. 7(b) is successful; Nissan is liable for damages with respect thereto, is enjoined from directing public attention to its wares and business in any way by the use of the marks M or M6, and must deliver up or destroy all materials bearing these marks. However, Nissan has not infringed any of BMW’s registered marks. The s. 22 claim also failed because Nissan has not used any of BMW’s registered marks.
The letter M is commonly used in combination with other letters or numbers within the auto industry. M by itself has only appeared in Canada in limited promotions by BMW. A survey conducted of 121 Canadians who would buy a car costing more than $65,000 showed that one third associated the M & Design mark with automobiles made by BMW. BMW’s use of the registered mark, M & Design, cannot in law be considered as use of the unregistered mark, M. By itself, M is a weak mark. “[I]t is in the nature of the trade, in the market for luxury high performance vehicles, that a purchaser decides to buy only after significant study of the manufacturer’s products generally and of the wares that particularly interest him or her…. That quality of the trade, in my view, has some significance for considering the perspective from which the likelihood of a mistaken inference from the defendant’s use of the letter M is to be measured. It is not the same as the perspective of hurried purchaser with an imperfect recollection of the plaintiffs’ registered marks.”
7. BMW v. Nissan, March 15, 2007 FCA (Sexton J.A.) Stay/Irreparable Harm
Request by BMW for reconsideration of an order granted the day before by which, at Nissan’s request, an interim stay was granted of the March 7 judgment until disposition of the main motion for a stay is heard, which the parties agree can take place within the week. Nissan filed evidence concerning the irreparable harm that it will suffer if a stay is not granted, namely that it would have no brochures to hand out at impending auto shows (because the current ones display the M or M6 mark and new brochures cannot be produced in time) and it would have to disable its websites pending their revision and deliver up or destroy invoices, service manuals, etc.
Held: Interim stay maintained. Nissan would suffer irreparable harm if a stay is not granted whereas BMW admits that it will not suffer irreparable harm if a stay is granted. Nissan has established that there is a serious question to be tried in that it is arguable that MacKay D.J.’s decision to allow the passing off claim is inconsistent with his dismissal of the claims regarding infringement and depreciation of goodwill. It is also arguable that the finding that BMW had established goodwill in the letter M alone is inconsistent with the finding that other auto manufacturers use M to designate models.
(c) Copyright
1. Microsoft v. 9038-3746 Quebec et al., January 16, 2007 FCTD (Harrington J.) Counterfeit CDs/Infringement/Computer Software/Permanent Injunction/Damages
The defendants bought Microsoft CD-ROMs from foreign suppliers, which they resold to computer system builders and retail outlets. Microsoft put the defendants on notice in 1997 that such stand-alone products were only licensed by it to original equipment manufacturers (OEMs) on the condition that they are incorporated into computers prior to distribution, and that the copies that the defendants were dealing in were most likely counterfeit. In 1998, the defendants’ lawyer forwarded two items to Microsoft for analysis and was informed that they were counterfeit. Seizures of wares in the defendants’ possession were made by the RCMP in 1999 and by the MUC Police in 2000. Microsoft commenced this action for copyright and trade mark infringement in 2000.
Held: Permanent injunction granted enjoining the defendants from dealing in counterfeit marks and counterfeit CDs containing unauthorized copies of Microsoft’s copyrighted computer programs. The maximum statutory damages available under the Copyright Act were awarded, plus punitive damages.
Expert evidence determined that the CDs seized by the RCMP were counterfeit. This expert was unable to consider the CDs seized by the MUC Police since they disappeared after being returned to the defendants; the Court therefore qualified an employee of Microsoft, who had seen the wares before they were returned to the defendants, as an expert witness and accepted her opinion that some of the CDs were counterfeit. The Court found that the defendants destroyed or sold the returned CDs in clear violation of an order of the Court. The Court held that the defendants had breached s. 27(3) of the Copyright Act, which prohibits importing counterfeit copyrighted works into Canada for resale and does not require the importer to know that the importation infringed copyright. The defendants’ distribution of the wares prejudicially affected Microsoft, as per s. 27(2)(b), because the sale of the counterfeit items at low prices prejudicially affected Microsoft’s relationship with its chain of legitimate suppliers. In the event that the counterfeit wares were not imported, the Court held that the defendants knew or should have known that the CDs infringed copyright and so breached s. 42 of the Act. Mr. Cerrelli, the directing mind behind the corporate defendants, is also personally liable pursuant to the test in Mentmore v. National Merchandise; the Civil Code of Quebec does not apply in the present circumstances. The defendants are also liable under the Trade-marks Act, pursuant to s. 7, 19, 20 and 22.
2. QAD v. Stratford Holdings and Crane Plumbing, January 18, 2007 FCTD (O’Reilly J.) Summary Judgment/Section 41 Copyright Act
Motion for summary judgment by QAD. QAD licensed a third party to use its copyrighted software, with the condition that QAD would be notified if the third party sold its operations and the purchaser would pay a transfer fee and enter into a new license with QAD. The third party sold its operations to Stratford, who later sold them to Crane. Both Stratford and Crane used the software without paying transfer fees and without entering into licenses. Both defendants concede that they have infringed the copyright but dispute their liability in damages.
Held: Motion dismissed. There are genuine issues for trial, including whether the three-year limitation period in s. 41 applies and the applicability of the terms of the original license to the sale of the operations from Stratford to Crane.
(d) Practice
1. Osmose Pentox v. Société Laurentide, January 16, 2007 FCA (Pelletier, Décary, Noël JJ.A) Anton Piller Order/Confidentiality
Appeal by Osmose from a decision to dismiss a motion for a confidentiality order and an additional remedy. Osmose had previously brought a motion for an Anton Piller order and for an additional remedy. Both were denied, even though the Court did not directly address the motion for the additional remedy. Osmose brought a motion to keep the Anton Piller motion record confidential, arguing that it would unfairly disclose evidence. The Motions Judge dismissed the confidentiality motion and also held that the additional remedy had already been implicitly dismissed along with the Anton Piller motion.
Held: Appeal dismissed with respect to the confidentiality order and upheld with respect to the additional remedy. Pelletier J.A. explained that the confidentiality associated with an Anton Piller order relates to the execution of the order and not the grounds upon which the order is obtained. The motion to seek an Anton Piller order is ex parte since notice to the other party would provide an opportunity to destroy the evidence which the order seeks to protect. If an Anton Piller order is executed then the other party is entitled to see the motion record in order to contest its issuance. Once the order is sought, the motion record is part of the public record. Therefore if Osmose's motion were successful, Laurentide would be entitled to see the record. Therefore there is no justification for keeping the motion record confidential and the appeal is dismissed.
The appeal is upheld with respect to the additional remedy. It appears that certain unknown representations were made to separate the issues and, due to confusion surrounding the issue, Osmose is entitled to re-submit its motion for the additional remedy.
2. Canadian Generic Pharmaceutical Association v. The Governor in Council, The Minister of Health and the A. G., February 9, 2007 FCTD (Harrington J.) Standing/Intervenor/Data Protection Regulations
Two motions were heard. First, the Governor in Council brought a motion to strike the Canadian Generic Pharmaceutical Association’s (“the Association”) application for an order to invalidate the 2006 Data Protection Regulations (“the Regulations”) as being ultra vires, on the ground that the Association has no standing. The Governor in Council argues that the Association is not “directly affected” by the Regulations as required by the Federal Court Act s.18(1); it is not a drug manufacturer in itself and only represents generic drug manufacturers, and so the Regulations do not directly apply to the Association. In the second motion, Canada’s Research-Based Pharmaceutical Companies seek leave to intervene to support the validity of the Regulations.
Held: Motion to strike dismissed, without prejudice. The Association raises a serious issue, as the Regulations would impose a multi-year ban preventing its members from filing an abbreviated new drug submission with the Minister and from obtaining a Notice of Compliance. It is not plain and obvious that it lacks public interest standing in its own right, or as informally representing a class of litigants, or that public interest mitigates against it. Accordingly, it is more appropriate to decide whether the Association has public interest standing when the application for judicial review of the Regulations is heard on its merits.
Second motion for intervenor status granted to Canada’s Research-Based Pharmaceutical Companies with the same status as a party, including the right to cross-examine. Harrington J. explained that including the innovator companies in the proceeding would help complete the picture.
3. Apotex v. The Governor in Council, The Minister of Health and the A. G., March 5, 2007 FCTD (Shore J.) Standing/Party Status/Intervenor/Data Protection Regulations
Two motions were heard. First, the Governor in Council brought a motion to strike Apotex’s (a generic drug manufacturer) application to invalidate the Data Protection Regulations (“the Regulations”) as being ultra vires, on the ground that Apotex has no standing. Second, Eli Lilly Canada sought to be added as a party, or, in the alternative, an intervenor.
Held: Motion to strike granted and Apotex’s Notice of Application struck out. Although, the Regulations impose particular limitations on certain manufacturers that seek a Notice of Compliance, at this time Apotex has no genuine interest in any issue raised and is not “directly affected” by the Regulations as required by the Federal Court Act s.18(1). In order to be “directly affected”, the matter at issue must adversely affect the party’s legal rights or prejudicially affect it directly. Apotex did not mention in the Notice of Application that the Minister has refused any Notice of Compliance sought by Apotex, pursuant to the Regulations. Moreover, Apotex does not refer to any action of any kind taken by the Minister pursuant to the Regulations. The possibility that Apotex may at some time in the future be affected by the Regulations does not give rise to standing at present. Moreover, Apotex does not have public interest standing, as there are other reasonable and effective ways to bring the issue before the Court.
II. OTHER COURT DECISIONS
1. 2703203 Manitoba v. Parks, November 21, 2006 NSCA (Cromwell, Saunders and Oland JJ.A.) Proportionality re Punitive Damages
Appeal by Parks from a decision awarding damages of $239,000 to the numbered company in an action based on passing off, copyright infringement and interference with contractual relationships.
Held: Punitive damages were reduced to $40,000. The award of $100,000 was too high in proportion to the degree of vulnerability of the numbered company, whose principal was a savvy entrepreneur.
2. Donor Gateway v. Passero, January 26, 2007 OSCJ (Echlin J.) Copyright in Database/Interlocutory Injunction/Serious Question to be Tried
Application for an interlocutory injunction to restrain the defendant from selling access to a database of names of individual charitable donors and the recipients of such donations (the “Personal Giving Directory”). The parties were partners for a few years. The defendant registered the "Personal Giving Directory" pursuant to the Copyright Act after the partnership ended. The plaintiff says that the idea for such a directory first arose when the parties were working together and claims that the defendant has breached her fiduciary duty to it.
Held: Application dismissed because there is no serious issue to be tried. There was no evidence that the plaintiff pursued the idea of a directory of personal giving in anything approximating a diligent fashion; the database was not in development and no data had been collected at the time that the partnership broke up. A mere idea is not sufficient to constitute a maturing corporate opportunity. There was no allegation that the defendant had taken confidential information.
3. Melchior v. Cable (Trustee of), January 29, 2007 BCSC (Masuhara J.) Patent Ownership/Constructive Trust
Claim by a common-law spouse of a bankrupt for part ownership of a patent that was registered solely in the name of her bankrupt spouse.
Held: The common-law spouse is not entitled to claim a constructive or resulting trust over the patent registered in the name of her bankrupt spouse. Although the spouses were in business together, no common intention was shown, the claimant spouse was aware that the registration only listed her spouse, and the bankrupt spouse was not unjustly enriched since the claimant spouse was paid an adequate salary for her work with the company.
III. OPPOSITION BOARD DECISIONS
1. Ava Enterprises v. Boss Control, October 4, 2006 (Martin) Confusion
Proposed-use application for BOSS CONTROL for electronic security devices, namely security power interrupt power switches, consumer electronic products (including computers, digital cameras, telephone systems, portable televisions); motorized vehicles; consumer, commercial and industrial appliances (including stoves, sewing machines, vacuum cleaners, food processors); medical equipment (including fetal monitors), X-ray machines; electronic exercise machines; cash registers, vending machines; consumer and commercial telecommunication devices; construction equipment; farm equipment. Opposition based, inter alia, on s. 12(1)(d) due to confusion with the mark BOSS AUDIO SYSTEMS registered for automobile audio components. The applicant did not file any evidence.
Held: Application refused only with respect to those wares for which there was a potential overlap in the channels of trade (which included electronic security devices, consumer electronic products; motorized vehicles; consumer, commercial and industrial appliances, and commercial telecommunication devices).
2. Emerson Electric v. E. Mishan & Sons, October 11, 2006 (Herzig) Confusion
Use based application for EMSON for shelving, kitchenware, personal care and exercise products, housewares and appliances, ratchet sets and vehicle wipers. Opposition based, inter alia, on s. 12(1)(d) due to confusion with EMERSON registered for electric motors, electric fans .. and various electrically-operated tools.
Held: Application refused only with respect to ratchet sets. Confusion not likely with respect to the remainder because of the differences between the wares, the low inherent distinctiveness of the opponent’s mark, the absence of a high degree of resemblance between the marks and the incomplete nature of the opponent’s evidence in respect of the distinctiveness acquired by its mark (the opponent did not make clear whether its related companies and subsidiaries were licensed users of its mark).
3. American College of Chest Physicians v. Medical Education Network, October 23, 2006 (Tremblay) Section 30(b)/Honest Mistake re Date of First Use
Use based application for PHYSICIAN PERSPECTIVE for printed matter namely reports related to health care. Opposition based, inter alia, on s. 30(b) because the mark has not been used since the date claimed and s. 16(1)(b) due to confusion with the mark A PHYSICIAN’S PERSPECTIVE, which is the subject of the opponent’s prior pending application for audio and video recordings and publications pertaining to the practice of medicine.
Held: Application refused. The s. 30(b) ground succeeded because the applicant admitted that it claimed the wrong date of first use; it matters not that this was due to an “honest mistake”. The s. 16 ground also succeeded.
4. Royal Bank v. CI Mutual Funds, October 24, 2006 (Carrière) Confusion
Proposed-use application for SIGNATURE for management and distribution of segregated funds and mutual funds. Opposition based, inter alia, on s. 12(1)(d) due to confusion with SIGNATURE registered by the opponent for banking services.
Held: Application refused. The applicant’s affiant admitted that banks do offer mutual funds. The fact that the opponent is not using SIGNATURE for mutual funds is not decisive. The nature of the services and the channels of trade favour the opponent and this outweighs the fact that there is no evidence of confusion despite four years of co-existence.
5. International Flora Technologies v. Sembiosys Genetics, October 24 2006 (Carrière) Confusion
Proposed-use application for FLORASPHERE for oil bodies extracted from a living organism for use as an ingredient in cosmetics, pharmaceutical and food products. Opposition based, inter alia, on s. 12(1)(d) due to confusion with FLORABEADS registered for wax esters in micro spherical form useful in the manufacture of cosmetics. The applicant did not file any evidence and did not make any argument in favour of its application.
Held: Application refused only with respect to oil bodies extracted from a living organism for use as an ingredient in cosmetics and pharmaceutical products. There was no evidence that the opponent’s products are used in the food industry or would travel through food industry channels.
6. Continental Bazar v. Festival International de Jazz de Montréal, October 26, 2006 (Tremblay) Pleading Descriptiveness
Use-based application for FESTIVAL INTERNATIONAL DE JAZZ DE MONTRÉAL for t-shirts, umbrellas, cups, watches, playing cards, posters, chairs, phone cards, pre-recorded music CDs, etc., and operation of an entertainment business.. Opposition based, inter alia, on s. 12(1)(b).
Held: Opposition rejected. The following pleading was dismissed because it is merely a restatement of s. 12(1)(b) and does not disclose any fact in support of the opponent’s allegations: The trade mark is not registrable, having regard to the provisions of s. 12(1)(b), in that such trade mark is clearly descriptive of the character or quality of the wares and services in association with which it has allegedly been used and/or of their place of origin.
7. Nit Pickers v. The Lice Squad, October 27, 2006 (Bradbury) Identity of Opponent/Partnership Name/Confusion
Use-based application for NITPICKERS for head lice identification and removal services and education services in that field. Opposition based, inter alia, on s. 16 due to previous use of NITPICKERS by the opponent. As a preliminary matter, the applicant argued that Nit Pickers was not an entity that could pursue an opposition as it is merely the name under which two individuals carry on business in partnership.
Held: Application refused. Confusion is likely given that the marks are identical and used in respect of similar if not identical services. While it would have been preferable for the opponent to amend those parts of the statement of opposition which refer simply to Nitpickers, it was clear from the document as a whole that the entity opposing is a legal entity, namely “Jody Davis and Lynn Laking, carrying on business as a partnership under the name Nitpickers”.
8. St. Joseph Media v. Nygard, October 30, 2006 (Bradbury) Section 30(b)/Confusion
Use-based application for WHERE FASHION MEETS TECHNOLOGY for periodical publications, magazines. Opposition based, inter alia, on s. 30(b), namely that the applicant has not used the mark since the date claimed, and s. 12(1)(d) due to confusion with WHERE registered for magazines.
Held: Application refused pursuant to the s. 30(b) ground. The appl
