Recent Decisions August 2000
I. FEDERAL COURT DECISIONS
(a) Patents
1. Pharmascience v. Commissioner of Patents and G.D. Searle, April 5, 2000, FCA (Noël J.A., Sharlow J.A., Malone J.A.) Appeal/Judicial Review/Delay
Appeal from an order refusing an application for judicial review of two decisions of the Commissioner.
Held: Appeal dismissed. The Court agreed with the Trial Judge that the appellants delay in bringing its application was not satisfactorily explained.
2. Bayer v. MNHW and Apotex, April 7, 2000, FCA (Létourneau J.A., Rothstein J.A., Sharlow J.A.) Appeal/Divisional Applications/Burden of Proof
Appeal dismissed. The element of inventive ingenuity is essential for patents based on a divisional application. The burden of proof was on the applicant and although it could rely on the statutory presumption of a patents validity, the respondents evidence was sufficient to rebut the presumption.
3. Ron Hopkinson, Edward R. Ring and Thomas Virany v. Commissioner of Patents, April 13, 2000, FCA (Stone J.A., Rothstein J.A., Sharlow J.A.) Appeal/Delegation of Authority
Appeal from a judgment that turned on the issue of whether patent examiners require a delegation of authority from the Patent Commissioner.
Held: Appeal dismissed (although some minor amendments made to the wording of the trial judgement). Examiners do not require a delegation of authority in order to allow patent applications; it is the Commissioner, not the examiner, who grants a patent.
(b) Trade Marks
1. Novopharm v. Astra Aktiebolag and Reg. TM, April 14, 2000, FCTD (Rouleau J.) Opposition Appeal/Section 30(h) Trade-marks Act/Trade Mark Specimens/Distinctiveness
Appeal from a decision that rejected the opposition to an application for the trade mark CAPSULE DESIGN BROWN-PINK.
Held: Appeal allowed. The trade mark application is confusing as a result of the inconsistency between the description and the disclaimer; it is unclear if the mark is the shape along with the colours or simply the colours alone. The Registrar erred when he found that s. 30 is satisfied where a specimen has been filed and the written description refers to the filed specimen; a specimen does not replace, nor can it cure a deficiency in, a written description. The mark is not distinctive. There were a number of well-known two-toned capsules in the marketplace and the respondent did not adduce any evidence that clearly establishes that a significant number of consumers associate the appearance of its product with a single source. Impressive sales figures alone do not prove distinctiveness.
2. Viacom Ha! et al. v. Jane Doe et al., April 14, 2000, FCTD (Tremblay-Lamer J.) Anton Piller Orders/Charter of Rights
Motions to review and set aside an Anton Piller order.
Held: Anton Piller order upheld; motion to set aside dismissed. The order was properly issued and executed. The Charter of Rights cannot be invoked to set aside an Anton Piller order.
3. Cadumaus v. Ford Motor, May 15, 2000, FCTD (Campbell J.) Section 45 Appeal
Appeal from a decision that expunged a trade mark registration for failure to respond to a s. 45 notice.
Held: Appeal allowed. The trade mark owner never received the notice due to a change of address. Evidence filed on appeal supported the maintenance of the registration.
4. Celliers du Monde v. Godet Frères, May 30, 2000, FCTD (Tremblay-Lamer J.) Section 45 Appeal
Appeal from a decision that expunged a trade mark registration for failure to respond to a s. 45 notice.
Held: Appeal allowed. Evidence filed on appeal supported the maintenance of the registration.
5. Toronto.com v. Ritchie Sinclair and Garth Cole, June 1, 2000, FCTD (Heneghan J.) Interlocutory Injunction/Irreparable Harm/Domain Names
Motion for an interlocutory injunction to restrain the use of TORONTO2.COM.
Held: Motion dismissed because there is no clear evidence that the applicant will suffer irreparable harm. The applicant has not proved that the respondents actions have or will result in the applicants TORONTO.COM website losing reputation or the ability to attract advertisers. Without proof of harm, it is impossible to conclude that the harm is irreparable solely on the basis that the respondents may be impecunious.
6. Weight Watchers International v. Vale Printing et al., June 2, 2000, FCTD (Heneghan J.) Interlocutory Injunction/Quia Timet/Domain Names
Motion for an interlocutory injunction to prevent the transfer of the wwcompanion.net website or domain name and the use of the domain name wwcompanion.net and the trade marks WEIGHT WATCHERS and WW.
Held: Motion allowed in part — injunction issued to prevent only the transfer of the rights in the website. The unauthorized use of the WEIGHT WATCHERS trade mark on the website means that there is a serious issue to be tried. The potential future transfer of the website to a third party, having the practical result of avoiding any order the Court might grant against the present respondents, constitutes irreparable harm (the website has already been transferred once during the course of this litigation but the new owners have been added as respondents). In assessing the balance of convenience, when other factors appear to be evenly balanced, it is prudent to preserve the status quo. As the current owners of the website have not used WEIGHT WATCHERS on the website, there is no serious issue to be tried with respect to the request to prevent the use of that trade mark. The evidence does not support the conclusion that WW is a trade mark of the applicant and therefore the transfer of the wwcompanion.net domain name cannot be prohibited.
7. COA v. Olymel and Reg. TMs, June 9, 2000, FCTD (Lemieux J.) Opposition Appeal/Section 9/Official Marks/Family of Marks
Appeal from decisions rejecting oppositions to trade mark applications for OLYMEL and OLYMEL & Design for meat and the operation of a business trading in meat. The appellant alleges that the Opposition Board applied the wrong test with respect to the ground of opposition based on s. 9.
Held: Appeal dismissed. The Board did err in applying a straight comparison test rather than the test of resemblance and imperfect recollection. However, the Boards approach re the appellants potential family of OLYM… marks being negated by the existence of more than 80 other third party OLYM.. marks was proper. A person familiar with the appellants official marks and having an imperfect recollection of them and having an imperfect recollection of the respondents marks applied to meat products or the respondents services would not infer that the respondents wares or services were associated with the appellant.
8. Wells Dairy v. UL Canada, June 14, 2000, FCTD (Heneghan J.) Section 45 Appeal/Trade Mark Licence/Section 50
Appeal from decision maintaining trade mark registrations for inter alia BOMB POP, JR. and BOMB POP for certain wares.
Held: Appeal dismissed. As no new evidence was filed, the standard of review is reasonableness simpliciter. There was sufficient evidence of control by the owner of the marks over the marks users for the Hearing Officer to conclude that there was a licence agreement — a written licence agreement is not required. Use of BOMB POP, JR amounts to use of BOMB POP where the "JR" is shown in much smaller script than the words BOMB POP.
9. Baylor University v. Hudsons Bay and Reg. TM, June 22, 2000, FCA (Noël J.A., Robertson J.A., McDonald J.A.) Opposition Appeal/Confusion
Appeal from Trial Divisions decision dismissing an appeal from an opposition decision that refused an application for BAYLOR for collegiate merchandise, namely clothing. The Registrar held that there was a likelihood of confusion with clothing sold by the respondent in association with a variety of marks incorporating the word BAY.
Held: Appeal allowed. The Trial Judge erred in treating an affidavit concerning instances of confusion as being conclusive, as opposed to as of limited weight. There were no other reported incidents and whatever confusion might have occurred appears to have dissipated many years ago. In addition, the Trial Judge failed to have regard to the relevant consumer, namely the consumers of collegiate merchandise, males between the ages of 10 and 40 who have an interest in sports. The respondents marks are not displayed in a prominent manner on its clothing but rather appear only on labels and tags. Despite the wide recognition of the respondents BAY marks, numerous third parties use BAY… marks without any apparent confusion. BAYLOR is no less distinctive than are any of those other third party marks. The fame associated with the respondent does not entitle it to automatically exclude third parties from using any word commencing with the letters "BAY". Although the relevant obscurity of the BAYLOR mark would be a significant factor when considering the average consumer, it pales in importance when considering the relevant consumer.
10. A & A Jewellers v. Messrs. Malcolm Johnston & Associates, June 22, 2000, FCTD (Muldoon J.) Section 45 Appeal
Appeal from s. 45 decision expunging the trade mark registration for COMFORT-FIT for jewellery.
Held: Appeal allowed based on new evidence filed. The evidence filed before the Registrar referred to a party as a "licensee" but the new evidence explained that such term had been used in a vernacular, rather than legal, sense and that such party was in fact merely a distributor.
11. Salton Appliances and Jascor Home Products v. Salton, June 22, 2000, FCTD (Lemieux J.) Interlocutory Injunction/Irreparable Harm/Delay
Motion for an interlocutory injunction to restrain the respondents use in Canada of the trade marks SALTON and MAXIM. The applicants own the marks in Canada; the respondent owns the marks in the U.S.
Held: Motion dismissed. There is no clear and compelling evidence of irreparable harm; there is no evidence of loss of any sales. The status quo should prevail in the absence of evidence that damages would not be an adequate remedy that the respondent would be financially able to pay. Furthermore, the applicants did not act diligently as these proceedings were commenced more than 2 years after they learned of the respondents intention to continue using the marks in Canada.
12. Canadian Council of Professional Engineers v. APA — The Engineered Wood Association, June 27, 2000, FCTD (OKeefe J.) Opposition Appeal/Distinctiveness/ Descriptiveness/Opposition Pleadings/Official Marks/Consisting Of/Section 9
Appeal from decision rejecting oppositions to the respondents applications for THE ENGINEERED WOOD ASSOCIATION and APA — THE ENGINEERED WOOD ASSOCIATION. ENGINEERED WOOD and WOOD ASSOCIATION disclaimed. The appellant filed new evidence on appeal.
Held: Appeal allowed with respect to the application for THE ENGINEERED WOOD ASSOCIATION because the mark is not distinctive. Appeal dismissed with respect to the application for APA — THE ENGINEERED WOOD ASSOCIATION. The Registrar erred in not considering the issue of distinctiveness as a ground separate and distinct from the ground of opposition based on descriptiveness. The mark THE ENGINEERED WOOD ASSOCIATION is not distinctive as it is a very generic expression that could be applied to any organization that provided similar wares and services. The appellants claim that THE ENGINEERED WOOD ASSOCIATION deceptively misdescribes the persons engaged in the production of the goods is without merit as the word "engineer" is used in the mark as a verb, not as a noun. The statement of opposition limited the s. 12(1)(b) ground to the issue of whether the mark was clearly descriptive or deceptively misdescriptive of the persons employed in the production of the wares and the Registrar said that he was therefore without jurisdiction to consider whether the mark may be clearly descriptive of an association which promotes the interests of the producers of this industry. The Court expressed the view that the Registrar should not unduly limit his inquiry and allow an unregistrable mark to be registered merely because narrow grounds pleaded were not successful. However, here the marks do not clearly describe the services offered, even if they do describe the association itself. The appellant also argued that the marks are unregistrable because they reproduce its official mark ENGINEER in its entirety. However, the words "consisting of" should be interpreted to mean "identical to". In order to offend s. 9(1)(n)(iii), the mark must be either identical to the official mark or so nearly resemble it as to be likely to be mistaken for it. Otherwise, official marks would be afforded an absurdly great ambit of protection.
13. Carter-Wallace v. Wampole Canada, June 29, 2000, FCTD (OKeefe J.) Section 45 Appeal/Pharmaceutical Preparations
Appeal from s. 45 decision maintaining the registration for WAMPOLE for pharmaceutical preparations.
Held: Appeal dismissed. The Court might have found that vitamins and herbal remedies are not pharmaceutical preparations but the Registrars decision on this point should be entitled to deference given the standard of reasonableness simpliciter. Whether or not the term "pharmaceutical preparations" is too vague or overbroad is not an issue before the Court.
(c) Copyright
1. Inhesion Industrial v. Anglo Canadian Mercantile, April 13, 2000, FCTD (OKeefe J.) Copyright Infringement/Summary Judgment/Proving Ownership/Industrial Design
Application for summary judgment in a copyright infringement action concerning a pattern used on dishes.
Held: Application dismissed. The applicant failed to prove its ownership of the copyright. Its affiant stated that the copyright had been assigned to the applicant and attached the assignment document as an exhibit. However, the affiant was not present at the execution of the assignment and did not disclose the grounds necessary for the Court to accept the fact based on his information and belief. The ownership issue is therefore a genuine issue for trial. The Court left the question of whether or not the pattern is properly the subject of copyright or industrial design for the trial judge.
2. Édutile v. Automobile Protection Association, April 19, 2000, FCA (Décary J.A., Létourneau J.A., Noël J.A.) Appeal/Copyright Infringement/Compilation/Substantial Part
Appeal from dismissal of a copyright infringement action concerning price guides for used automobiles. The trial judge held that the guides did not have the necessary creativity to be the subject of copyright and that, if they did, the respondents guides did not infringe. The trial decision issued prior to the judge being made aware of the decision in Télé-Direct (Publications) Inc. v. American Business Information, Inc., [1998] 2 F.C. 22 (C.A.).
Held: Appeal allowed. Copyright is not being claimed in the guides in their entirety but in the original feature of the guides, namely the comparison, selection and presentation of the three markets "Private Sale", "Trade-in" and "Retail". The setting out of the "private sale" market and the "retail" market side by side in columns was a "brilliant", "innovative" move, as evidenced by the respondents president, and it is this that is entitled to copyright. The appellant organized its information according to unpublished standards of selection for the first time in Canada; the work was thus independently created and "displays at least a minimal degree of skill, judgment and labour in its overall selection or arrangement". By borrowing the presentation of a column describing the private sale market beside a column describing the retail market, the respondent appropriated a substantial part of the appellants copyright.
3. AVS Technologies et al. v. Canadian Mechanical Reproduction Rights Agency et al., June 14, 2000, FCA (Linden J.A., Rothstein J.A., McDonald J.A.) Appeal/Section 79 Copyright Act/Audio Recording Medium/Ordinarily Used
Appeal from a decision of the Copyright Board that interpreted the definition of "audio recording medium" in s. 79 of the Copyright Act.
Held: Appeal dismissed. The proper standard of review on this issue is patent unreasonableness. It was not patently unreasonable for the Board to decide the meaning of "ordinarily used" by considering the use by the individual consumers of that product, rather than by looking at the products generally.
II. OTHER COURT DECISIONS
1. Polansky Electronic v. AGT, February 10, 2000, ACA (Russell J.A.) Security for Costs/Patent Infringement/Stay of Execution/Injunction/Irreparable Harm
Motion by AGT to stay an injunction issued by the trial decision. Cross-motion by Polansky to have the sum that it deposited as security for costs returned because it was successful at trial and was awarded costs of the action. AGT argues that since it is appealing the entire trial judgment, including costs, the money should be held until the appeal has been heard and determined.
Held: Stay of execution granted. AGT has shown that it has an arguable appeal; that it will suffer irreparable harm if the judgment is enforced; and that the balance of convenience favours a stay. Not all of the damages that may be suffered by AGT in the event the execution is not stayed can be quantified. In particular, the requirement to deliver up or destroy any "offending devices" that are currently on the market could damage AGTs business reputation if it is forced to recall goods that may ultimately be found not to be "offending".
The order for security of costs is prima facie evidence that when it was granted Polansky was in some respect financially insecure. Thus, in the absence of evidence from Polansky showing a change in those circumstances, if money deposited for security for costs is returned, it can be inferred that there is still some risk that if the appeal is allowed the money will not be there to answer the purpose for which its payment was ordered. Polansky is therefore not entitled to the return at this time.
2. 599960 Ontario (c.o.b. Taylor Leasing) v. Taylor Steel, February 14, 2000, OSCJ (Philp J.) Passing Off/Trade Name/Damages
Passing off action claiming damages arising from the defendant's unlawful use of the plaintiff's trade name, "Taylor Leasing. The plaintiff leased cars and the defendant sold cars from the same address. When the plaintiff chose to relocate, the defendant placed telephone ads under the name Taylor Leasing listing the address at which the plaintiff had previously been located.
Held: Damages awarded. By accepting and dealing with the plaintiff over the years under the trade name of "Taylor Leasing", the defendant is estopped from arguing that the name Taylor Leasing was owned by either both parties or by the defendant only. The defendant's conduct in using the plaintiff's trade name of "Taylor Leasing" in close proximity to the plaintiff's advertisement and using the same address that the plaintiff had used for some thirteen years was likely to mislead the plaintiff's customers present and future by confusing the identity of the real Taylor Leasing business.
3. Anne of Green Gables Licensing Authority and Heirs of L.M. Montgomery v. Avonlea Traditions, March 10, 2000, OSCJ (Wilson J.) Reversionary Copyright/Injunction/Public Authority/Frustration of Contract/Licensee Estoppel/Infringement by Three-dimensional Objects
Action concerning a license agreement with exclusive aspects between the heirs of Lucy Maud Montgomery and the defendant. The license permitted the defendant to merchandise wares bearing the names and likenesses of characters derived from the book Anne of Green Gables. The plaintiffs terminated the license agreement for non-payment of royalties and seek damages for unpaid royalties plus an injunction preventing the defendant from making or selling any merchandise bearing or related to the name Anne of Green Gables. The defendant challenges the validity of the reversionary copyright of L.M. Montgomery's heirs as well as the validity of any trade mark rights. The defence also asserts various contractual defences including frustration and breach of warranty.
Held: Injunction issued and damages awarded. A person who has bound himself contractually to the terms of use of a property right can be enjoined from breaching those terms. As the licence agreement provided that upon termination the defendant would have no further rights and would be required to permanently discontinue the use of any licensed theme or name associated with Anne of Green Gables, the plaintiffs are entitled to an injunction to restrain the defendant from any further sales, distribution or other dealings in "Anne of Green Gables" merchandise.
As the licence agreement confirmed the Heirs' common law trade mark rights, during the term of the agreement, Avonlea as licensee is estopped from challenging the validity of the trade marks.
The defendant has not presented any credible evidence that would support a finding that the trade mark is invalid for lack of distinctiveness.
If it were necessary to determine the issue, the Court would conclude that the Anne Authority is a public authority as it passes the combined test of control, influence and purpose to promote the public good.
The s. 9 notices published by the PEI government prevented the Heirs from obtaining a registered trade mark but it did not prevent the Heirs from asserting their rights at common law to an unregistered trade mark established by use. The s. 9 notices did not have the effect of frustrating the licence agreement because 1) the agreement itself contemplated a remedy in case difficulties arose after the expiry of copyright and before registration of a trade mark, 2) it was clear that achieving registration of the trade mark was not guaranteed, and 3) the parties treated the contract as binding for an extensive period of time after the publication of the s. 9 notices.
The s. 9 notices did not breach the warranty in the licence agreement because the specific wording of the warranty refers only to the "exclusive right to produce and distribute wares or merchandise" whereas the s. 9 notices were requested for services only.
The Heirs' copyright interest includes the right to license two- and three-dimensional objects bearing a resemblance to characters or situations described in the literary work Anne of Green Gables. Although there is no case-law directly on point dealing with the extension of copyright for literary works in relation to three dimensional objects, the case-law is clear that it is an infringement of copyright if artistic works or sketches protected by copyright are copied into three-dimensional objects. The literary work Anne of Green Gables contains a detailed verbal portrait that captures Anne's physical image and her personal qualities, a portrait that is protected by copyright.
III. OPPOSITION BOARD DECISIONS
1. Moosehead Breweries v. North American Beverage, April 28, 2000 (Folz) Confusion
Application for CHOCOLATE MOOSE & Design for non-alcoholic dairy based chocolate flavoured beverages, ice cream, water ices, and frozen confections based on proposed use and use and registration abroad. Opposition based, inter alia, on s. 12(1)(d) due to confusion with various MOOSE marks registered for brewed alcoholic beverages.
Held: Opposition rejected in view of the differences in the wares and trades of the parties and the lack of resemblance between the marks. Non-alcoholic beverages are not a product that might be encompassed by the wording of the opponents wares or a probable extension of the opponents business.
2. Coranco v. Swissmar Imports, April 28, 2000 (Partington) Descriptiveness/Confusion
Proposed-use application for EURO-CUISINE for various items of cookware. Opposition based, inter alia, on s. 12(1)(b) because the word CUISINE is clearly descriptive and has not been disclaimed and s. 12(1)(d) due to confusion with the mark EUROCHEF registered for cookware and kitchen accessories.
Held: Application refused. Confusion likely given the degree of resemblance between EURO-CUISINE and EUROCHEF in appearance and ideas suggested, and the identity of the parties wares and channels of trade. As the opponent has not alleged that the mark in its entirety is descriptive, it has not pleaded a proper s. 12(1)(b) ground.
3. Super Seer v. 546401 Ontario, April 28, 2000 (Partington) Section 30(b)/Section 30(i)/Confusion
Applications for SEER and SEER & Design for goggles, face shields, helmet visors and peaks, and heated snowmobile hand grips based on use and for sports glasses and anti-fog spray based on proposed use. Opposition based, inter alia, on s. 30(b) because the applicant has not used the marks as alleged, s. 30(i), and s. 12(1)(d) due to confusion with SUPER SEER registered for sports goggles.
Held: Applications refused. As the applicant did not exist as of the date of first use claimed with respect to goggles, face shields, helmet visors and peaks, and it has not relied on use by a predecessor, the s. 30(b) ground of opposition succeeded with respect to those wares. The s. 30(i) ground succeeded with respect to the SEER & Design mark because there was a license agreement between the parties which prohibited the applicant from using SUPER SEER trade marks or any variation thereof and the applicants SEER & Design mark is almost identical to the opponents SUPER SEER & Design mark. The s. 30(i) ground did not succeed with respect to the SEER mark because SEER is not a variation of the opponents SUPER SEER marks and the applicant has used the name SEER since 1983 without objection being raised by the opponent. The s. 12(1)(d) ground succeeded due to the resemblance among the marks and the overlap in the wares and channels of trade.
4. Home Hardware Stores v. General Paint, May 10, 2000 (Folz) Use With Wares/Section 30(b)/Descriptiveness
Use-based application for THE PAINT EXPERTS for interior and exterior coatings, namely latex, oil based and alkyd paints. Opposition based, inter alia, on s. 30(b) because THE PAINT EXPERTS has not been used as a trade mark in association with wares and s. 12(1)(b).
Held: Application refused. Use of the mark on signs hung overtop paint cans would not be perceived by the average consumer as use as a trade mark but rather as a slogan used in the operation of the applicants General Paint Stores (the signs also bear the words General Paint and Paint Questions Answered). Use of THE PAINT EXPERTS on the paint labels is not use of the mark per se because the words do not stand out from the additional material on the labels. The s. 12(1)(b) ground failed as the mark is at most suggestive, not descriptive.
5. GD Express Worldwide v. Skyward Aviation, May 17, 2000 (Partington) Confusion/Admissibility
Proposed-use application for SKYVELOPE for courier envelopes and courier boxes and air courier services. Opposition based, inter alia, on s. 12(1)(d) due to confusion with SKY PAK registered for envelopes, boxes and courier services.
Held: Application refused because of the degree of resemblance between the marks as applied to overlapping wares and services which could travel through the same channels of trade. A joint affidavit was held not to be admissible as it was not clear that the affiants had been administered an oath by the notary and there was no evidence that the affidavit was validly made in the form prescribed by the law of the country where it was signed.
6. Trek Bicycle v. Canadian Lung, May 17, 2000 (Partington) Confusion
Use-based application for BICYCLE TREK FOR LIFE & BREATH for organizing and implementing fundraising programs … organizing sporting events and organizing bicycle rallies. BICYCLE and TREK disclaimed. Opposition based, inter alia, on s. 12(1)(d) due to confusion with the mark TREK registered for bicycles and bicycle frames.
Held: Opposition rejected because the marks bear little similarity and the wares and services differ.
7. Champion Feed Services v. Champion Animal Health, May 17, 2000 (Partington) Confusion
Use-based application for CHAMPION ANIMAL HEALTH/SANTE ANIMALE & Design for warehousing, marketing and distribution of animal feed supplements and animal health products and consulting, namely market research …. Opposition based, inter alia, on s. 16(1)(c) due to confusion with the trade name Champion Feed Services Ltd. previously used for supplying cereal based animal feed.
Held: Opposition rejected with respect to the consulting services as there is no similarity between such services and the opponents business. The application was refused with respect to the warehousing, marketing and distribution services as those overlap with the opponents business.
8. Macdonald, Shymko v. T.E. Financial Consultants, May 17, 2000 (Partington) Use as a Trade Mark
Proposed-use application for THE FEE-ONLY DIFFERENCE for personal financial planning services. Opposition based on s. 16(3)(a) due to confusion with the mark FEE ONLY previously used for financial planning services.
Held: Opposition rejected. The opponent has not established its prior use of FEE ONLY as a mark - the evidence shows use of FEE ONLY to describe the manner of payment accepted by the opponent, not to distinguish the opponents services from those of others.
9. Ferrero v. Soldan Holding, May 17, 2000 (Martin) Confusion
Proposed-use application for KINDER EUKAL & Design for pharmaceutical preparations, nose sprays, medical teas, cough lozenges and pastilles, cough syrups, cough drops, teas and balsams for adults and children; medicated comprimates, tablets, dextrose, tablets and compressed sugar tablets, eucalyptus lozenges, diet candy, vitamin candy, diet dragées, diet toffees, diet-bars, diet chewing gums. Opposition based, inter alia, on s. 12(1)(d) due to confusion with the mark KINDER registered for chocolate and chocolate bars, candy, cakes, etc.
Held: Application refused with respect to cough lozenges and pastilles, cough drops, medicated comprimates, tablets, dextrose, tablets and compressed sugar tablets, eucalyptus lozenges, diet candy, vitamin candy, diet dragées, diet toffees, diet-bars, diet chewing gums. Such wares are similar to the opponents wares in that they are all confectionery. It is not uncommon for non-medicated confectionery and diet or medicated confectionery to be sold next to one another. Canadians would likely associate the word KINDER with the word "kindergarten" and conclude that the associated wares are probably intended for children.
10. Canadian Tire v. The Pep Boys Manny, Moe & Jack, May 17, 2000 (Herzig) Section 30(a)/Confusion
Proposed-use application for THE RIGHT CARD for retail automotive store services, vehicle maintenance and repair services. Opposition based, inter alia, on s. 30(a) because the applicant has misdescribed its services, s. 12(1)(d) due to confusion with the mark THE RIGHT CHOICE HAS NEVER BEEN SO CLEAR. CANADIAN TIRE registered for selling vehicular parts, and s. 16(3) due to confusion with the mark THE RIGHT CHOICE previously used for selling vehicular parts and servicing and maintenance of vehicles.
Held: Opposition rejected. The s. 30 ground was based on the argument that the applicant intended to use its mark on credit cards but that did not succeed because use of a mark on credit cards is not incompatible with also using the mark in association with automotive services. The s. 12(1)(d) ground could not succeed because the registration relied upon was recently expunged pursuant to s. 45. The s. 16 ground failed because the opponents mark possesses a low degree of inherent distinctiveness and the opponent has not demonstrated a significant reputation for its mark.
11. Mini Togs v. Siebruck Hosiery, May 23, 2000 (Bradbury) Confusion/Surrounding Circumstances
Proposed-use application for MINI KIDS for tights. Opposition based, inter alia, on s. 16(3) due to confusion with the marks MINI TOGS and LES KIDS previously used by the opponent for childrens clothing.
Held: Application refused. The fact that the opponent has employed two marks, each comprising one half of the applicants mark, is a significant surrounding circumstance. Despite the common adoption of the words KIDS and MINI in the trade, the opponents reputation with respect to both LES KIDS and MINI TOGS emphasizes the similarity with MINI KIDS.
12. X-Treme Elements Custom Outerwear v. J.N. Sport, May 23, 2000 (Bradbury) Confusion
Proposed-use application for JN EXTREME & Design for sport wear and exploitation of an enterprise of retail clothing sales. Opposition based on s. 16(3)(a) due to confusion with the mark X-TREME used for winter outerwear and operation of a retail clothing store.
Held: Application refused. The resemblance between the marks is considerable, especially considering the appearance of the applicants mark on clothing which shows the letters JN appearing very faint compared to the highly legible word XTREME.
13. Novartis Animal Health Canada v. Intervet International, May 23, 2000 (Bradbury) Confusion
Proposed-use application for PROGARD for veterinary vaccines for dogs. Opposition based, inter alia, on s. 12(1)(d) due to confusion with the mark PROGRAM registered for veterinary preparations for the control and prevention of flea infestations in animals and their environment.
Held: Opposition rejected primarily because of the differences between the marks.
14. Vision-Care v. Hoya, May 23, 2000 (Bradbury) Confusion
Use-based application for VISION CARE & Design for lenses for eyeglasses. VISION CARE disclaimed. Opposition based, inter alia, on s. 16 due to confusion with the trade name Vision-Care Limited previously used with providing optical services.
Held: Opposition rejected because the common features "vision care" are words that belong in the public domain.
15. Venator Group Canada v. Upsteins, May 24, 2000 (Martin) Section 30(b)/Confusion/Family of Marks
Use-based application for NORTHERN NATURALS for various items of clothing. Opposition based, inter alia, on s. 30(b) because the applicant did not use the mark since the date claimed and s. 12(1)(d) due to confusion with the marks NORTHERN TRADITIONS, NORTHERN REFLECTIONS, NORTHERN GETAWAY etc. registered for various clothing items.
Held: Application refused. The s. 30 ground succeeded because the applicants own evidence revealed that its mark was likely not in use with its wares as of its claimed date. The s. 12(1)(d) ground also succeeded. The Board Member was left in a state of doubt respecting the likelihood of confusion given the overlap in the wares and trades, the extent to which the opponents marks have become known, the resemblance among the marks and the existence of the opponents family of NORTHERN marks, and notwithstanding the common use by others of NORTHERN marks in the clothing trade.
16. Enterprise Car & Truck Rentals v. Enterprise Rent-A-Car, May 26, 2000 (Folz) Section 30(b)/Entitlement/Confusion/Re-advertisement
Application for E Design for car and truck rental and leasing etc. based on making known and use and registration abroad. Opposition based, inter alia, on non-entitlement because the applicant is not a legal entity, s. 30(b) because the applicant has not made the mark known since the date claimed, and non-distinctiveness because there has been uncontrolled use of the applicants mark.
Held: Application restricted to delete making known claims. The non-entitlement ground is not a proper ground as the applicants status as a legal entity is not an issue under s. 16. The s. 30(b) ground succeeded but did not cause the application to be rejected as the application was based on dual grounds. The Board Member followed the findings in earlier opposition and Federal Court decisions to conclude that use of the mark by the applicants subsidiaries accrued to the applicants benefit. The advertisement of the application incorrectly stated its grounds but re-advertisement is not necessary as the priority date of the application was not misstated.
17. Enterprise Car & Truck Rentals v. Enterprise Rent-A-Car, May 26, 2000 (Folz) Section 30/Entitlement/Confusion
Application for Wrapped Car Design for automobile rental services based on use and registration abroad. Opposition based, inter alia, on non-entitlement because the applicant is not a legal entity, s. 30 because the mark has not been used with the services and has not been used as a trade mark, and non-distinctiveness because there has been uncontrolled use of the applicants mark.
Held: Opposition rejected. The non-entitlement ground is not a proper ground as the applicants status as a legal entity is not an issue under s. 16. The validity of the U.S. registration is not in issue. The fact that the U.S. registration included a stippling note, which was not included in the Canadian application, does not mean that the mark applied for in Canada has a broader scope of protection. Use of the mark by the applicants subsidiaries accrues to the applicants benefit for the reasons set out in the contemporaneous decision re the applicants E Design mark.
18. American Automobile Association v. Arc Achievers, June 13, 2000 (Martin) Confusion
Proposed-use application for AARP & Design for arranging insurance, travel and publishing services for members at discount rates. AARP disclaimed. Opposition based, inter alia, on s. 12(1)(d) due to confusion with AAA & Design registered for similar services.
Held: Application refused because the applicant failed to satisfy the onus on it to show that its mark is not confusing. As the opponents evidence does not clearly evidence use of its mark in Canada, it would have been difficult to determine the fame of its mark but the applicant conceded in its written argument that the opponents mark is well known. There is no evidence to support the applicants submission that its mark would be pronounced as the coined word "aarp"; the design employed, with the second A being larger, suggests that consumers would be more likely to pronounce the letters as an acronym.
19. Sico v. Brewster Wallcovering, June 14, 2000 (Partington) Confusion
Proposed-use application for CHATEAU ROYALE for wallcoverings. Opposition based, inter alia, on s. 12(1)(d) due to confusion with CHATEAU registered for paints, varnishes…
Held: Application refused because the applicant failed to satisfy the onus on it to show that its mark is not confusing. The applicant has taken the opponents mark in its entirety and the parties related wares could travel through the same channels of trade.
20. Wells Dairy v. Produits Nestlé, June 14, 2000 (Bradbury) Confusion
Application for POLAR TREATS for frozen confections based on proposed use and use and registration abroad. Opposition based, inter alia, on s. 16 due to confusion with POLAR & Design and POLAR used for ice cream novelties.
Held: Application refused due to the identity of the wares and the resemblance between the marks.
21. ConAgra v. McCain Foods, June 14, 2000 (Bradbury) Confusion
Proposed-use application for HEALTHY DECISION for a variety of food items. Opposition based on s. 16(3)(a) due to confusion with the mark HEALTHY CHOICE previously used for pasta sauces and frozen dinners and entrees.
Held: Application refused with respect to fresh entrees, frozen prepared entrees, lasagna and pasta dishes and frozen microwavable prepared lunches; opposition rejected with respect to remaining wares. Confusion likely with respect to certain wares due to the resemblance between the marks in ideas suggested, the overlap in the wares and channels of trade, and the significant use of the opponents mark prior to the filing of the applicants application. Although it is not clear that sales of HEALTHY CHOICE frozen dinners and entrees were ongoing as of the date of advertisement of the applicants application, the opponent had not abandoned its mark as of that date. The Hearing Officer rejected the opponents argument that HEALTHY CHOICE cannot be a trade mark due to the reference to "healthy choice" in the Guide to Food Labelling and Advertising. Although consumers are not likely to be confused simply because two marks both start with the word HEALTHY, the evidence does not support a conclusion that there is dilution with respect to the idea suggested by the two marks in issue.
22. Church & Dwight v. Lerwood Holdings, June 21, 2000 (Martin) Confusion
Proposed-use applications for BON BRIL and LA PODEROSA DE BON BRIL for cleaning material. Opposition based, inter alia, on s. 12(1)(d) due to confusion with the mark BRILLO registered for scouring pads.
Held: Opposition rejected. Notwithstanding the resemblance between the wares and trades, confusion not likely in view of the absence of any reputation associated with the marks and the absence of any significant degree of resemblance between the marks.
23. Williams Electronics Games v. West End Systems, June 22, 2000 (Bradbury) Confusion
Proposed-use application for WEST END & Design for telecommunications equipment comprising access and transmission hardware, software and firmware. Opposition based, inter alia, on s. 12(1)(d) due to confusion with the mark Winged W Design registered for coin operated amusement games.
Held: Application refused because the Hearing Officer was left in a state of doubt concerning the likelihood of confusion. The W design portion of the applicants mark is remarkably similar to the opponents mark and the opponents cross-examination of the applicants affiant extracted support for its position that the parties wares and channels of trade are converging. The applicant did not respond to the call for written arguments and therefore may have lost interest in its application.
24. J. Brian Enterprises (Vancouver) v. Haeyoon Enterprises, June 29, 2000 (Partington) Distinctiveness/Section 12(1)(a)
Use-based application for KIM-JOHN for retail china, crystal ware and giftware store services. Opposition based, inter alia, on s. 12(1)(a) because the mark is primarily merely the name of an individual and non-distinctiveness because the mark cannot distinguish the applicants services from wares and services sold by others under KIM-JOHN trade marks and trade names.
Held: Application refused. Use of the trade mark KIM-JOHN by the opponents predecessor for more than nine years with the same type of retail outlet is more than sufficient to meet the opponents evidential burden in relation to its non-distinctiveness ground. The fact that it may have ceased use of the mark nineteen months prior to the date of opposition is not sufficient to offset the lengthy concurrent use of confusingly similar marks for essentially identical services in the same geographic area. The s. 12(1)(a) ground failed because the evidence did not show that KIM-JOHN is the name or surname of any person or family; rather it showed telephone listings for persons having the name John Kim.
25. Sunshine Village v. Sun Peaks Resort, June 29, 2000 (Partington) Confusion
Use-based application for Sun/Mountains Design for a variety of wares including clothing, alcoholic beverages and golf equipment and services including the provision of ski instructions. Opposition based, inter alia, on s. 12(1)(d) due to confusion with the mark SUNSHINE VILLAGE & Design registered for resort memorabilia and operating a ski resort.
Held: Opposition rejected. The opponent has submitted that skiers from Eastern Canada, the U.S. and abroad would be confused by the trade marks but there is evidence that skiers who travel to resorts are well informed and will make careful comparisons; the name and logo of a resort is a minor factor for skiers trying to decide which resort to select unless they have visited the resort previously. The existence of a SUN VALLEY resort in the U.S. is relevant because skiers willing to travel might consider the SUN VALLEY resort as well the resorts of the applicant and the opponent when deciding on a ski vacation in the Rockies. There is relatively little similarity between the marks. SUNSHINE has a geographic significance associated with the alpine region where the opponents resort is located.
26. Sunshine Village v. Sun Peaks Resort, June 29, 2000 (Partington) Confusion/Evidence of Confusion
Application for SUN PEAKS SPORTS for operation of a retail store selling sports merchandise based on use and operation of a business renting sports equipment to others based on proposed use. Opposition based, inter alia, on s. 12(1)(d) due to confusion with the mark SUNSHINE VILLAGE registered for resort memorabilia, operating a ski resort and resort retail shop, and providing athletic equipment rental.
Held: Opposition rejected. The opponent has submitted that skiers from Eastern Canada, the U.S. and abroad would be confused by the trade marks but there is evidence that skiers who travel to resorts are well informed and will make careful comparisons; the name and logo of a resort is a minor factor for skiers trying to decide which resort to select unless they have visited the resort previously. The existence of a SUN VALLEY resort in the U.S. is relevant because skiers willing to travel might consider the SUN VALLEY resort as well the resorts of the applicant and the opponent when deciding on a ski vacation in the Rockies. There is not a significant degree of resemblance between the marks. SUNSHINE has a geographic significance associated with the alpine region where the opponents resort is located. Evidence of alleged confusion is often more evidence of mistake. Diminished weight was accorded to this evidence as it was introduced by employees who were not the ones who documented the instances of alleged confusion.
27. Canadian Bankers Association v. Richmond Savings Credit Union, June 29, 2000 (Partington) Section 30(i)/Bank Act/Descriptiveness/Section 12(1)(e)
Proposed-use application for WERE NOT A BANK. WERE BETTER. for personal and commercial financial services. Opposition based, inter alia, on s. 30(i) because the applicant could not have been satisfied that it was entitled to use the mark because use of the mark would constitute an offence under the Bank Act, s. 12(1)(e) because inclusion of the word "bank" in the mark would likely lead to the belief that the services are performed under the approval of the Federal Government of Canada and s. 12(1)(b).
Held: Opposition rejected. The issue of the applicants compliance with the Bank Act is a matter that can be addressed by the Registrar under s. 30(i). The Registrar might also have the authority to consider a s. 9(1)(d) ground of opposition that is based on the applicants non-compliance with the Bank Act; although prohibitions in provincial statutes regulating professions are beyond the scope of s. 9(1)(d), the issue as to whether the prohibitions of a federal statute are beyond its scope has yet to be determined by the Federal Court. The s. 30(i) ground failed because the evidence does not show that the applicant considered that its mark offended the Bank Act when it filed its application. It is doubtful if the mark does offend the Bank Act; the applicant has begun using the mark and no proceedings have been commenced against it under the Bank Act. Regarding the s. 12(1)(e) ground of opposition, assuming that the word BANK would lead the average person to believe that the associated services are performed under government approval, the ground nevertheless fails because the applicants mark does not so nearly resemble as to be likely to be mistaken for the word BANK. There is little admissible evidence of relevance to the descriptiveness ground and the opponent has therefore not met its evidential burden in relation to that ground. In any event, the applicants mark does not, in its entirety, as a matter of immediate impression, either clearly describe or deceptively misdescribe the applicants services.
28. Investment Centre Financial Group v. Direct Line Insurance, June 30, 2000 (Martin) Confusion
Proposed-use application for Telephone Design for encoded cards and magnetic cards, stationery… insurance services and financial services…. Opposition based, inter alia, on s. 12(1)(d) due to confusion with eight marks that comprise a Telephone Design or the word PHONE registered by third parties.
Held: Opposition rejected in view of the inherent weakness of the marks, the absence of any evidence of reputation and the low degree of resemblance between the marks.
29. Southam Magazine Group v. New Communications Group, June 30, 2000 (Martin) Confusion/Onus
Proposed-use application for TRUCKERS NEWS & Design for periodical publications. NEWS and TRUCKERS disclaimed. Opposition based, inter alia, on s. 16 due to confusion with the trade mark TRUCK NEWS previously used with printed publications.
Held: Application refused in view of the resemblance between the wares, trades and marks of the parties. There is an additional burden on an opponent relying on descriptive or laudatory marks to establish that there has been at least some recognition by the public of its marks as trade marks. This was satisfied by evidence of sales and distribution figures.
30. QL Systems v. Intuit Canada, June 30, 2000 (Herzig) Distinctiveness/Family of Marks/Onus
Use-based application for QUICKTAX for computer software and manuals. Opposition based, inter alia, on non-distinctiveness in view of the opponents use of QUICKTAX for computer software.
Held: Application refused. Although the opponent began using its QUICKTAX mark several years after the date of first use claimed by the applicant, the opponents mark, in the context of its family of QUICK marks, had become sufficiently known to negate the distinctiveness of the applied for mark as of the material date. Where an opponent may rely on a family of marks, the opponents task to negate the distinctiveness of an applied for mark is less onerous than in the ordinary case.
31. Intuit v. QL Systems, June 30, 2000 (Herzig) Section 30(a)/Distinctiveness/Family of Marks/Onus
Use-based application for QUICKTAX for computer software and related services. Opposition based, inter alia, on s. 30(a) because the wares are not stated in ordinary commercial terms, s. 16 due to confusion with the mark QUICKTAX previously used by the opponent for computer software and non-distinctiveness due to the opponents use of QUICKTAX.
Held: Opposition rejected. The s. 16 ground failed because there was no clear or credible evidence that the opponent used its mark before the material date. An individual experienced in the field of authenticating electronic data attested that the software introduced as the opponents 1989 QUICKTAX software was placed on the diskette after 1994. Although the opponent evidenced significant sales of its QUICKTAX software as of the material date for the non-distinctiveness ground, given that the applicant has a family of QUICK marks, the opponents task to negate the distinctiveness of a newcomer to that family of marks is more difficult than in the ordinary case. The opponent did not meet its evidential burden with respect to its s. 30(a) ground. The Board Member agreed with the applicants submissions to the effect that computer software was not further particularized because the Trade-marks Office practice of requiring the specification of the area of use and function of computer software was introduced after the filing of this application.
32. Xerox v. Interdoc, June 30, 2000 (Herzig) Section 30(b)/Evidential Burden/Clearly Inconsistent
Use-based application for INTERDOC for provision of a consulting service for document management, organization of conferences and seminars. Opposition based on s. 30(b) because INTERDOC has not been used as a trade mark with the services since the date claimed.
Held: Opposition rejected. As the opponent is relying on the applicants evidence to meet its evidential burden, the opponent must show that the applicants evidence is clearly inconsistent with the applicants claims in its application. Although the opponent has pointed out deficiencies in the applicants evidence, a deficiency is not an inconsistency and there must be something more, something that raises a doubt about the applicants claims, to satisfy the opponents evidential burden.
33. Phantom Industries v. Sara Lee, June 30, 2000 (Herzig) Confusion
Proposed-use application for SILKIENCE for hosiery, pantyhose and tights. Opposition based, inter alia, on s. 16 due to confusion with the mark SILKS previously used for hosiery etc.
Held: Opposition rejected in view of the relatively low inherent distinctiveness of the opponents mark and the state of the register evidence showing 31 relevant SILK marks in the names of 18 different owners.
34. The Big Apple v. BAB Holdings, June 30, 2000 (Herzig) Distinctiveness
Proposed-use application for BIG APPLE BAGELS & Design for bakery products and restaurant and carry-out services… Opposition based, inter alia, on non-distinctiveness in view of the opponents use of the mark THE BIG APPLE for bakery products and a retail business dealing in foods.
Held: Application refused. As of the material date, the opponents mark had acquired a significant reputation in the Colborne area of Ontario while the applicants mark had only a minimal reputation in Canada. The onus is on the applicant to establish that its mark distinguishes its wares and services throughout Canada. The mark is not distinctive because persons living near Colborne, being familiar with the opponents mark, are likely to assume that the applicants wares and services are approved, sponsored or licensed by the opponent.
IV. SECTION 45 DECISIONS
1. Moffat v. Westinghouse Air Brake, April 28, 2000 (Savard) Use by Whom/Mergers/Use with Each Registered Ware
UNIVERSAL registered for spring draft gears, friction draft gears, draft lugs, draft yokes...
Held: Registration expunged. The registrants affiant stated that the registrant was in the business of manufacturing and selling railway equipment and that it had used the mark with the specific wares covered by the registration, which he then referred to as the registered goods. The Hearing Officer held that it was unclear whether the "UNIVERSAL registered goods" included each of the registered wares. In addition, the invoices and brochures referred to another company as being the manufacturer. Such company was the owner of the mark 20 years ago before it merged into Westinghouse Air Brake. The registrant argued that its use therefore qualified as the registrants but the registrations chain of title showed that the earlier Westinghouse Air Brake assigned the mark to another company that subsequently changed its name to Westinghouse Air Brake, with the result that the present Westinghouse Air Brake is not the same entity as the former.
2. Smith Lyons v. Vertrag Investments, June 19, 2000 (Bradbury) Use with Services
INVESCO registered for real estate agency services including trading in real property and leaseholds, development of real, oil and gas properties and brokers for securities, investments, mortgages and financing.
Held: Registration restricted to real estate agency services including trading in real property and brokers for investments and financing. The registrant had offered and was prepared to perform certain of its services in Canada during the relevant time period and the fact that its services may not have been required or performed is not relevant.
3. Lang Michener v. Canadian Healthcare, June 28, 2000 (Savard) Sufficiency of Evidence/Use with Services
INFOSANTE registered for computers and computer software for the health-care industry… and various services.
Held: Registration amended by deleting the wares and restricting the services to provision of access to a computer-based information retrieval system. The renting out of mailing lists on diskettes consists of a service and not a use with wares and therefore the use of the mark on such distinguishes the registrants services, not its computer software. Such use is borderline use with respect to "provision of access to a computer-based information retrieval system" if those services are interpreted broadly, given that the diskette permits the customer to retrieve data readable by a computer and retrievable by a computer.
4. Daniel Chenard v. Laboratoires Cunard, June 28, 2000 (Savard) Use of Composite Mark/Proving Ownership/Use with Registered Wares
CASSE-GRIPPE registered pursuant to s. 12(2) for analgesic for adults and children in Ontario, Québec and New Brunswick. (The English equivalent of CASSE-GRIPE is "flu suppressant".)
Held: Registration expunged. A company called Homeocan claimed to be the owner of the mark and to have sold products under the mark since 1995. The manner in which Homeocan had been using the mark was in the expression LE CASSE-GRIPPE #1. The words CASSE-GRIPPE in the expression LE CASSE-GRIPPE #1 were not distinct enough to be perceived as use of the registered mark. Furthermore, there was serious doubt over who owned the mark at what point in time, as an alleged cession of the mark to Homeocan in 1997 was granted by a party that did not appear to own the mark at the time. When a new owner presents itself after the issuance of a s. 45 notice, claiming that it owned the mark at the relevant time, the Hearing Officer is entitled to assess the documentary proof of transfer of title, even if a change of ownership has been recorded on the Register in the interim. Here, written statements were produced claiming that the party who assigned the mark to Homeocan had implicitly acquired this mark from its original owner as part of the transfer of another mark. As this was not submitted by way of affidavit or oath, nor by anyone with personal knowledge of this alleged transfer, the Hearing Officer did not find this evidence credible. Consequently, Homeocan had no legal title to the mark. Finally, Homeocan claimed that its product was a homeopathic medicine whereas the registration covered analgesics. The Hearing Officer expressed severe doubt as to whether this was in fact the product for which the mark had been registered but did not elaborate as the other factors were sufficient for expungement to be ordered.
5. Riches, McKenzie & Herbert v. Miami Subs of Delaware, June 30, 2000 (Savard) Special Circumstances
SUBS & Design registered for restaurant services.
Held: Registration expunged. The mark is not presently in use and the registrant has not provided the date of last use, the reason why its contract with a broker was terminated, or any indication when use is to resume.
V. FOREIGN DEVELOPMENTS
(a) Patents
Australia Court of Appeal Decision
The case Bristol-Meyers Squib v. FH Faulding, [2000] FCA 316, originally started as a patent dispute over a cancer drug. The decision, however, affects Australian patent practice on three contentious issues.
1. The Federal Court Appeal has confirmed that methods of treatment claims are patentable in Australia.
2. The Court has decided that the presence of prior art in a specification (for example references in the specification to information derived from a number of publications, or "prior art") could render the patent invalid by treating the prior art as an admission that it is common general knowledge.
3. The Federal Court Appeal has ruled in favour of contributory infringement in Australia, i.e., a person can infringe by supplying the goods or materials used by others in performing the process claimed.
Israel Patent Law
To meet its obligations under TRIPS (World Trade Organization Agreement on Trade-Related Aspects of Intellectual Property Rights Including Trade in Counterfeit Goods), Israel has made amendments to its Intellectual Property Laws. These amendments came into force on January 1, 2000. Highlights of the Patent Law changes include:
• The definition of a "patent of invention" has been amended to include invention in "any technological field and which may be used in industry." The law does not specify what the term "industry" means, but based on the intent of the law (i.e., explanations submitted to the Israel parliament) it is clear that the amendment was meant to encompass the broader requirements of TRIPS to not discriminate between different types of inventions;
• The burden of proof in infringement actions has shifted to an alleged infringer. The onus of adducing evidence that the alleged infringer does not use the claimed product is now on the alleged infringer; and
• Compulsory license provisions have been amended so that it is no longer considered an abuse of monopoly to provide a patented product by way of import only. In addition, the specific provisions for granting a compulsory license for medicines have been abolished.
