Recent Decisions August 2002
I. Federal Court Decisions
(a) Patents
1. Apotex v Merck et al., May 28, 2002, FCA (Malone J.A., Stone J.A., Sharlow J.A.) Patent Infringement/Issue Estoppel
Appeal from an order of a Motions Judge granting summary judgment in favour of the respondent Merck, on the basis of issue estoppel. In a previous action between the parties, the appellant Apotex was found to have infringed the respondent’s patent for chemical compounds known as enalapril and enalapril meleate. The appellant appealed on the following grounds: the judge erred in applying the doctrine of issue estoppel in this case since the facts are different from those considered in the previous action, namely the amount of enalapril maleate acquired by the appellant from a licenced vendor and when it was acquired; a subsequent decision of the Supreme Court of Canada changed the law with respect to rights inherent in patent material purchased from a licensed vendor, and therefore issue estoppel should not apply; the Federal Court of Appeal’s reliance on s. 12 of the Patent Act Amendment Act in the previous action, an issue which was neither pleaded nor argued before that Court, is a special circumstance that should defeat the operation of issue estoppel; and the Motions Judge erred in granting summary judgment because the issues raised are best left for trial.
Held: Appeal dismissed. The Court determined that the Motions Judge did not err in applying issue estoppel. The facts and issues raised in both cases were determined to be materially identical. Neither the Supreme Court of Canada nor the Federal Court of Appeal have ever stated that a subsequent change in law justifies a relaxed application of issue estoppel. In any event, the Court held that the Supreme Court of Canada decision did not operate to overrule the decision in the previous action. Furthermore, the Court held that the circumstances of this case do not justify a relaxation of the issue estoppel rules. While application of the issue estoppel rules may be relaxed with respect to administrative tribunal decisions, a decision to relax the issue estoppel rules in respect of final judicial decisions will not be made lightly. Finally, the Court held that the Motions Judge did not err in granting summary judgment because he was in as good a position as a trial judge to interpret the relevant law and facts, in concluding that there was no genuine issue for trial.
2. Hoffman-LaRoche v. Apotex, May 28, 2002, FCA (Sexton J.A., Evans J.A. and Sharlow J.A.) Motion to Strike Statement of Claim/Patented Medicines (Notice of Compliance) Regulations
Appeal by Hoffman-LaRoche from an order dismissing a motion to strike out the statement of claim of Apotex.
Held: Appeal dismissed. The issues in this case depend on the interpretation of the words "court hearing the application" in s. 8(1) of the 1998 version of the NOC Regulations, and the interpretation of the word "pending" in s. 9(6) of the Regulations. There is no jurisprudence on these issues and other judges have declined to strike out statements of claim where the interpretation of those sections was involved. It is not plain and obvious that the plaintiff's claim in the present case is certain to fail: see Hunt v. Carey Canada Inc., [1990] 2 S.C.R. 959. We are unable to say that the motions judge made a palpable and overriding error in holding that the plaintiff's statement of claim should not be struck out.
3. SmithKline Beecham Pharma v. Apotex and Canada (Minister of Health), May 28, 2002, FCA (Linden J.A., Evans J.A. and Malone J.A.) Patents/Anticipation /Standard of Review on Appeal/Patented Medicines (Notice of Compliance) Regulations
Appeal from the order of the applications judge dismissing SmithKline's application to prohibit the Minister from issuing a NOC to Apotex in respect of paroxetine hydrochloride tablets. The sole question on appeal was whether one of two patents issued to SmithKline anticipated the other.
Held: Appeal dismissed. Whether a claimed invention has been anticipated is a question of mixed fact and law, as it requires the application of a legal standard to a set of facts. The applications judge used the correct legal test of anticipation. The Court of Appeal must afford considerable deference to his decision, and intervene only if his finding constitutes a palpable and overriding error. Mechanical skill rather than inventive genius was required in order to apply the first patent to arrive at the second. There is nothing new or novel in the second patent. The applications judge's essentially factual finding should not be disturbed. However, since this issue has arisen only in the context of an application for prohibition, the outcome of this proceeding does not necessarily determine the outcome of any future action for a declaration that the patent is invalid or any potential action for its infringement.
4. Novartis Pharmaceuticals Canada v. Apotex and Canada (Minister of Health), June 6, 2002, FCTD (Tremblay-Lamer J.) Abuse of Process/Patented Medicines (Notice of Compliance) Regulations, s. 6(5)
Motion by Apotex to set aside the order of the Prothonotary and to dismiss the application for abuse of process. Apotex sent multiple notices of allegation to Novartis in respect of patents for the medicine cyclosporin. Novartis commenced multiple prohibition proceedings. In response to a notice of status review in this application, the parties agreed that the outcome of another application would determine the outcome of this proceeding. A stay was granted. When the other application for prohibition was dismissed by Blais J., Novartis refused to discontinue this application. The Prothonotary dismissed a motion by Apotex to dismiss this application as an abuse of process.
Held: Motion granted, the order of the Prothonotary is set aside, and the application is dismissed. This proceeding amounts to an abuse of process. The moving party in these types of motions must show that the legal process has been used for an ulterior or collateral purpose: see Levi Strauss & Co. v. Roadrunner Apparel Inc. (1997), 76 C.P.R. (3d) 129 (F.C.A.). The burden of proof is very high. In this case, because this prohibition proceeding is still pending, the Minister is prevented from issuing a NOC to Apotex for cyclosporin. An appeal in the other prohibition application is still pending. However, once an NOC has issued, the appeal is moot. Novartis is using the present proceeding for an ulterior purpose, namely, to preserve the right of appeal that would be lost if Apotex were granted its NOC prior to the appeal in the other application being heard. There is no evidence that Novartis ever intended to prosecute this application.
5. Pfizer Canada v. Canada (Attorney General), June 25, 2002, FCTD (Blanchard J.) Patent Register/Patents Ineligible for Listing Based on Filing Date/Patented Medicines (Notice of Compliance) Regulations, s. 4(4)
Applications for judicial review of decisions of the Minister of Health refusing to list certain patents on the Patent Register maintained pursuant to the NOC Regulations. The Minister interpreted the words "filing date" in s. 4(4) of the Regulations to refer solely to the filing date of an application for patent in Canada. Since the filing dates of the patent applications in question did not precede the filing date of the corresponding supplemental new drug submissions, the patents were ineligible for inclusion on the Register.
Held: Applications for judicial review dismissed. The Minister correctly interpreted the phrase "filing date", and correctly refused to list the patents. The term "filing date" in s. 4(4) refers to the filing date of an application for patent in Canada, and does not include a priority filing date in another country.
6. Novartis Pharmaceuticals Canada v. RhoxalPharma and Canada (Minister of Health), July 3, 2002, FCTD (Lemieux J.) Abuse of Process/Patented Medicines (Notice of Compliance) Regulations, s. 6(5)
Motion by RhoxalPharma to dismiss an application brought by Novartis as an abuse of process. Novartis' application seeks to prohibit the Minister from issuing NOCs to RhoxalPharma in connection with 25 mg and 50 mg cyclosporin capsules for oral administration. Tremblay-Lamer J. dismissed a previous Novartis application for prohibition in connection with 100 mg capsules of cyclosporin. An appeal by Novartis to the Federal Court of Appeal was dismissed for mootness because the Minister had issued a NOC for 100 mg capsules to RhoxalPharma.
Held: Motion dismissed. Novartis' application is not an abuse of process. The circumstances surrounding the application are unique, arising when RhoxalPharma was successful in having the Novartis appeal from Tremblay-Lamer J.'s judgment dismissed for mootness. In that proceeding before the Court of Appeal, RhoxalPharma stated that if it filed new NOAs for different dosage strengths of its cyclosporin capsules, Novartis could respond with new evidence in NOC proceedings. The Novartis application that RhoxalPharma now seeks to strike is in response to new NOAs. In the circumstances, Novartis' application cannot vex RhoxalPharma, cannot be unfair to it and cannot bring the administration of justice into disrepute.
7. Syntex (U.S.A.) et al. v. Canada (Minister of Health) and Apotex, July 8, 2002, FCA (Linden J.A., Rothstein J.A. and Sharlow J.A.) Judicial Review/Effect of Deceptive or Misleading Notice of Allegation/Patented Medicines (Notice of Compliance) Regulations, s. 6(1)
Appeal from an order striking out an application for judicial review brought by Syntex. Apotex sent a NOA for apoketorolac solution for ophthalmic application. The appellants did not apply for an order of prohibition within the 45-day period provided under the NOC Regulations. The appellants state that only after the expiry of the 45-day period, it came to their attention that the NOA served on them was deceptive and misleading. Being out of time under the Regulations, the appellants brought an application for judicial review under ss. 18 and 18.1 of the Federal Court Act. The motions judge struck out the application on the grounds that it did not disclose any possibility of success and is an abuse of process of the Court.
Held: Appeal dismissed. The Regulations are engaged by serving a NOA on the patentee, even if that NOA is deceptive or misleading. Once the NOA is served, the patentee must decide whether or not to seek prohibition. If the patentee fails to do so within the prescribed time, it cannot later resurrect its rights under the Regulations by bringing an application for judicial review. A generic producer that files a deceptive or misleading NOA risks serious consequences, including the granting of an order of prohibition under the Regulations, and the award of punitive damages or solicitor-client costs in a patent infringement action.
8. Genpharm v. Canada (Minister of Health) and Procter & Gamble Pharmaceuticals Canada, July 8, 2002, FCA (Linden J.A., Rothstein J.A. and Sharlow J.A.) Application for Prohibition/Defective Notices of Allegation/Infringement of Use Claims Through Sale of Product by Generic Producer/Patented Medicines (Notice of Compliance) Regulations
Appeal from the order of the applications judge allowing Procter & Gamble's application for prohibition. The order of prohibition prevented the Minister from issuing NOCs to Genpharm for etidronate disodium tablets. The applications judge found that Genpharm's NOAs were fatally flawed.
Held: Appeal dismissed. The Procter & Gamble patent teaches a new use for an existing drug, namely, the use of etidronate in intermittent cycles to treat osteoporosis. There are two groups of claims in the patent: one set describes the new use of the drug in treating osteoporosis. The other group of claims provides for a kit that contains an appropriate number of tablets and is used to facilitate compliance with the intermittent regimen. Genpharm states in its NOAs that it will not package its product in kits and therefore the patent would not be infringed. However, the use claims are not subsumed in the kit claims. The detailed statements in the NOAs ignore the use claims in the patent, and Genpharm has not advanced any facts to support its allegations of non-infringement of the use claims.
Turning to the merits, Genpharm asserts that its product will be used to treat two relatively rare diseases, and not osteoporosis, and that should its product be used to treat osteoporosis, it would be patients and not Genpharm that would be infringing the patent. Section 5(1)(b)(iv) of the NOC Regulations does not say, as Genpharm argues, that the act of infringement must be the act of the generic producer. In the case of a use patent, if the generic producer sells its product and infringement results by patients using the product, there will be infringement of that patent for the purposes of the Regulations. The connection between the generic producer and infringement by the patient is in the generic producer selling its product. It is not necessary for the patentee to demonstrate that the generic producer induced or procured patent infringement by patients or others. There is overwhelming evidence that Genpharm's product would inevitably be used for the treatment of osteoporosis in the cyclical regimen of the invention. Genpharm's allegations of non-infringement are not justified.
(b) Trade Marks
1. Kirkbi and LEGO Canada v. Ritvik Holdings, May 24, 2002, FCTD (Gibson J.) Passing Off/Distinguishing Guise /Functionality /Effect of Patent/ Distinctiveness/Survey
Passing off action against Ritvik, the maker of copycat LEGO bricks known as MICRO MEGA BLOKS. Lego alleged that it had goodwill in Canada attached to the "look" of the stud pattern on the top of LEGO bricks and other play elements (the "LEGO Indicia"), that Ritvik's use of the LEGO Indicia on its MICRO line of products and their packaging was causing confusion and that Lego had suffered damage as a result. In defence, Ritvik argued that the LEGO Indicia could not support a passing off action in the Federal Court because it was a functional distinguishing guise and had been the subject of prior patents. Ritvik also denied that the LEGO Indicia was distinctive or that it had caused any confusion in the marketplace.
Held: Action dismissed on the basis of functionality and a finding that despite there being evidence of actual confusion, Ritvik's use of the LEGO Indicia did not constitute a misrepresentation. Lego has appealed to the Federal Court of Appeal.
Functionality - The LEGO Indicia trade mark is functional in all respects and the functionality relates primarily or essentially to the wares themselves. The Court interpreted the decision of the Federal Court of Appeal in Remington Rand v. Phillips (1995) 64 C.P.R. (3d) 467 (FCA), leave to appeal to SCC refused (1996), 67 C.P.R. (3d) VI (note) (SCC), as precluding a passing off action based on a functional distinguishing guise. In Remington Rand the Federal Court of Appeal had held that "a mark which goes beyond distinguishing the ware of its owner to the functional feature of the wares themselves is transgressing the legitimate bounds of a trademark." Lego argued that Remington Rand could be distinguished. In Remington Rand, monopoly rights were asserted based on the registrations for a functional distinguishing guise whereas Lego was only arguing that based on the goodwill attached to the LEGO Indicia trade mark it was entitled to an injunction requiring the defendant to take steps to avoid confusion. Lego also argued that functionality could not be an absolute bar to the enforceability of a distinguishing guise trade mark because the statutory definitions in the Trade-Marks Act of "distinguishing guise" and "trade mark" are not limited in that way. It was also argued that Remington Rand was wrongly decided in that the cases applied to the registrations under the Trade-Marks Act by the Federal Court of Appeal in Remington Rand had been decided under the Unfair Competition Act, which defined trade marks differently.
Prior Patents - Having found that LEGO Indicia was functional, the Court did not give extensive reasons with respect to Ritvik's argument that the LEGO Indicia could not be an enforceable trade mark because it was the subject of expired patents. The Trial Judge did comment that, in his view, the concept of "evergreening" of rights under patents extends to "evergreening" by seeking protection beyond the expiration of a patent monopoly through an action for passing off, citing a passage from the decision of the Privy Council in Canadian Shredded Wheat v. Kellogg [1938] All E.R. 618 at 633. In that passage, Lord Russell of Killowen had commented that he found "it difficult to conceive" that a manufacturer of goods manufactured in accordance with expired patents and marked with the name by which the patented goods had been known while under patent could be guilty of passing off. However, Lord Russell continued in the passage to say,"In the case of a patent long ago expired, the evidence might possibly establish that the name had become distinctive of a particular manufacturer rather than descriptive of the goods, with the result that other manufacturers of the goods could be compelled to adopt some means of effectively distinguishing their goods from those of the particular manufacturer."
The Trial Judge distinguished this passage, saying "we are not here concerned with circumstances where there is an allegation of adoption by Ritvik of a name, but only of the LEGO Indicia." There was no discussion of why the principle should not apply if the shape of the patented goods had become distinctive.
In obiter, the Trial Judge went on to consider the 3 elements of the tort of passing off under s. 7(b) of the Trade-Marks Act: goodwill, misrepresentation and damage.
(1) Goodwill/Distinctiveness – It was not contested that the Lego group had "goodwill" in the sense of the benefit and advantage of the good name, reputation and connection of its business. Both parties' marketing experts testified that Lego is the market leader in the construction toy category. What was at issue was whether Lego's goodwill was attached, at least in part, to the LEGO Indicia. Ritvik tendered the evidence of an expert in cognitive science who testified that as a matter of visual perception and shape recognition, the LEGO Indicia was not inherently distinctive. The Trial Judge did not disagree with this observation but went on to say, "But that is far from the end of the matter. The LEGO Indicia may have acquired distinctiveness through its long use, the dominant market position of the Lego Group and its extensive marketing activities in which it has prominently feature the LEGO Indicia."
Both parties tendered distinctiveness surveys that purported to measure the extent to which the LEGO Indicia had acquired secondary meaning; the Court gave significant weight to the evidence of Lego's survey expert. In addition to the survey evidence, witnesses called by Lego "clearly established that the LEGO Indicia has been a central feature of point-of-sale display materials provided by the plaintiffs to retailers, television advertisements, catalogues, consumer oriented print material and packaging.”
The Trial Judge concluded, "on the issue of whether the LEGO group’s goodwill derives in whole or in part from the LEGO Indicia, that the answer to that issue is, in the Canadian market place, “yes”, albeit that, on the totality of the evidence before me, I find it impossible to quantify that contribution.”
(2) Confusion/Misrepresentation – In order to prove misrepresentation, it is not enough to establish confusion. Something more is required to show that the confusion amounted to a deception of the public due to a misrepresentation. The Trial Judge cited Renewal Manufacturing v. Reliable Toy et al, (1949), 9 C.P.R. 67 (Ex.Ct.) for the proposition that when a defendant has adopted elements that are “common to the trade,” the question will be whether the finished articles, and the get-up of the packaging are “calculated to deceive.” The Trial Judge did not explain how the LEGO Indicia was "common to the trade" if it had acquired secondary meaning and was now distinctive of the Lego Group.
The confusion evidence consisted of: (1) survey evidence from Lego and Ritvik experts, (2) the testimony of 5 consumers who had purchased Ritvik products believing them to be Lego products, (3) some 800 pages of logs of customer complaints made to Lego about Ritvik products, and (4) evidence that Ritvik and Lego products are displayed close to one another in stores and are often mixed on the shelves. Based on this evidence the trial judge held "that the plaintiffs have met the onus on them to establish a likelihood of confusion, and indeed, actual confusion, in the Canadian market place, based upon the LEGO Indicia."
Lego submitted that the decision of the House of Lords in Reckitt & Colman Products v. Borden [1990] R.P.C. 341 (H.L.) stands for the proposition that if a person adopts the get-up of another, which has an established reputation and image, they have a duty to take adequate steps to distinguish their products. If they fail to do so they are liable in passing off. The Trial Judge chose to follow the decision in Kun Shoulder Rest v. Joseph Kun Violin and Bow Maker (1998), 83 C.P.R. (3d) 331 (F.C.T.D.) in which it was held that by making a shoulder rest for a violin that was similar to that of the plaintiff, the defendant had merely used the same practical, functional features of the plaintiff’s product, which were common to the trade. That, in and of itself, did not constitute passing off, even if consumers may have confused the source of the two products. The Trial Judge did not address the fact that the LEGO Indicia had been proven to be distinctive of the plaintiff.
The Trial Judge found that Ritvik had not intentionally adopted the LEGO Indicia so as to confuse consumers and so, notwithstanding his finding that confusion had arisen from the defendant’s use of the LEGO Indicia, there was no misrepresentation on which to found an action for passing off.
(3) Damage – The Lego Group has suffered damage in the way of loss of market share as a result of Ritvik having put the MICRO line on the market.
2. Canadian Jewish Congress v. Chosen People Ministries and Reg. TMs, May 28, 2002, FCTD (Blais J.) Official Marks /Judicial Review of Public Notice/Section 18.1(1) Federal Court Act/Public Authority
Application for judicial review of the Registrar's decision to give public notice pursuant to s. 9(1)(n)(iii) of the Trade-marks Act of the adoption and use by Chosen People Ministries ("CPM") of the official mark "Menorah Design". After refusing to publish the official mark twice, the Registrar reversed his position, without explanation.
Held: Application allowed. The Registrar erred in the exercise of his discretion - the public notice of "Menorah Design" is ineffective. CPM is a United States charity with operations in Canada - such a status is insufficient to constitute it as a public authority. The applicant has standing to seek judicial review because the publication of the official mark would forbid it, a Jewish organization, from adopting the menorah in its activities.
3. Ontario Association of Architects v. Association of Architectural Technologists of Ontario, May 28, 2002, FCA (Stone J.A., Evans J.A., Sharlow J.A.) Official Marks /Appeal/Judicial Review of Public Notice/Public Authority/Governmental Control
Appeal from decision that dismissed an application by OAA to reverse the Registrar's decision to give public notice of the adoption and use of the official marks ARCHITECTURAL TECHNICIAN, ARCHITECTE-TECHNICIEN, ARCHITECTURAL TECHNOLOGIST, and ARCHITECTE-TECHNOLOGUE. The Trial Judge held that the Registrar had committed no reviewable error in concluding that AATO is a public authority.
Held: Appeal allowed. The Trial Judge was correct in his framing of the test for determining whether AATO is a public authority - the broad criteria are governmental control and public authority. However, he erred when he concluded that AATO's statutory origin is in itself sufficient to make it a public authority. The test for governmental control calls for some ongoing government supervision of the activities of the "public authority". "S. 9(1)(n)(iii) should not be given an expansive meaning by equating the need for legislative amendment with governmental control." Obiter: The Trial Judge did not err in concluding that AATO's regulatory activities benefit the public; the fact that its activities "also benefit its members is not a fatal objection to characterizing them as benefiting the public."
Judicial review, not an appeal, is the appropriate way for a party to oppose the giving of public notice - a person who was not a party in the proceedings has no standing to exercise a statutory right of appeal. Nor should such a person be given the right to adduce evidence before the Court. It would also be inappropriate for such a person to be granted leave to appeal as an intervenor as the power to allow intervenors exists to ensure that justice would be done to all affected persons and here there is another remedy available, namely judicial review.
4. Intuit v. Quicklaw, June 4, 2002, FCTD (Hansen J.) Opposition Appeal /Distinctiveness/Family of Marks
Appeal from opposition decision that rejected Intuit's opposition to Quicklaw's use-based application for QUICKTAX for "computer software and operation of a business providing customers with instructions in the use, databases, word processing, electronic mail and providing telecommunications". Intuit claimed that the mark was not distinctive of Quicklaw because Intuit has used QUICKTAX for its personal financial software for three overlapping years. Quicklaw relied in part on its family of QUICK trade marks.
Held: Appeal dismissed - the Registrar's decision was reasonable.
5. Weetabix of Canada v. Kellogg Canada, June 24, 2002, FCTD (Blais J.) Opposition Appeal/Co-existence Abroad /Material Date re Section 16
Appeal from opposition decision that refused Weetabix's application for FRUIT DOTS for breakfast cereals on the basis that it was confusing with FROOT LOOPS. Weetabix filed new evidence on appeal concerning matters that post-dated the filing of its trade mark application.
Held: Appeal allowed. There are small differences between the marks that serve to distinguish them, namely, the spelling of the first word FRUIT versus FROOT and the appearance, sound and meaning of the second word DOTS versus LOOPS. The state of the register evidence shows that words that allude to the shape of cereals are commonly used and that there are many FRUIT cereal marks that co-exist with FROOT LOOPS. The Court had difficulty reconciling the Registrar's finding that the marks are confusing even though the marks are not inherently distinctive. The Court considered it significant that the marks co-existed in the United States. The appellant's argument that the material date should be the date of the Registrar's decision was rejected, with the result that its additional evidence was ignored.
(c) Copyright
1. CCH Canada et al. v. The Law Society of Upper Canada, May 14, 2002, FCA (Linden J.A., Sharlow J.A., Rothstein J.A.) Copyright Infringement/Appeal/Originality/ NAFTA/Fair Dealing /U.S. Law /Library Exemption
A group of publishers, the creators of various legal materials, sued LSUC for copyright infringement on the basis that LSUC, through its Great Library, (a) operated a non-profit custom photocopying service whereby the Library made single copies of the plaintiff's materials upon receiving individual requests from patrons and (b) allowed patrons to make copies of the publishers' materials at freestanding photocopiers placed in the Great Library. The specific works that were put into issue included reported judicial decisions, the head notes for these decisions, a case summary, a consolidated topical index, an annotated statute, a textbook and a monograph from a textbook. The Trial Judge had held that (a) copyright did not subsist in the reported judicial decisions, the head notes, the case summary and the topical index and (b) LSUC did infringe the copyright subsisting in the other works by (i) reproducing the works and (ii) knowingly distributing and possessing infringing copies of the works. The issues on appeal were 1) the Trial Judge erred in not finding copyright in the reported judicial decisions, the head notes, case summary, and topical index, and 2) the Trial Judge erred in finding LSUC's actions in respect of the other works constituted infringement. LSUC raised several defences, including that the copies were insubstantial takings, fair dealing applied, implied consent existed, delay, laches, acquiescence, and public policy concerns.
Held: Appeal allowed in part, cross-appeal dismissed.
Original Works: The Trial Judge erred in holding that "imagination or creative spark" were essential to a finding of originality under Canadian law. The definition of originality indicates that the work must not be copied from that of another, but rather must create some new material. The Trial Judge erred in interpreting Tele-Direct Publications v. American Business Information, [1998] 2 F.C. 22 as supporting the view that a higher standard of originality was now required based on the U.S. decision in Feist Publications v. Rural Telephone Service (1991), 111 S.Ct. 1282 and NAFTA. Canada's obligations under NAFTA were not intended to alter the standard of originality of Canadian copyright law. U.S. copyright law should be applied carefully by Canadian courts, due to significant differences in each country's law. The definition of the word "original" is not closed or statutory in nature, and is often determined on a case-by-case basis. The Court held that each of the publishers' materials were "works" on their own, each being capable of existing outside the context in which it was published, and all were original because they required skill and labour.
Infringement: In respect of primary infringement, the Court held that there was no issue of whether there was a substantial part copied, given its ruling that the head notes, monograph and edited judicial decisions constituted separate works. Therefore, the works were copied in their entirety.
Authorization: LSUC did post a general notice warning against copyright infringement, but took no further steps to monitor the use of the machines. Although LSUC did not expressly purport to grant the patrons the right to make reproductions, "no other inference can reasonably be drawn from LSUC's provision of and control over its freestanding photocopiers, which are readily available to patrons of the Great Library, which is full of materials like the publishers' works". On that basis the Court held that LSUC implicitly "sanctioned, approved or countenanced" its patrons to reproduce the materials.
Fair Dealing: It was difficult to assess this defence because it is the intent of the recipient of the copies in using the publishers' materials that is relevant, rather than that of the Library. A fair dealing defence must be decided on a case by case basis (i.e. each copy requested must be looked at for the intent of the requesting party to determine if that was a fair dealing with the work). However, Mr. Justice Linden did provide a fairly lengthy discussion of the general principles of the defence in order to try and help the parties resolve the dispute.
Fairness: Once the purpose was determined, the Court then had to determine if the use for that purpose was fair. The concept of fairness is a matter of impression and degree in each case and generally has to be in a good faith manner. In determining this question, there were a number of factors to be examined, as set out in UK and Canadian case law, and in the U.S. statute's fair use provisions. They are: purpose/character of dealing; amount of the dealing; alternatives to dealing; nature of the work; effect of the dealing on the work. LSUC would need to prove each patron's fair dealing every time an infringement was alleged.
Library Exemption: This exemption was brought into the statute after the litigation commenced and therefore was not available for the parties in respect of past uses. However, on a forward-going basis, the Court indicated that LSUC could rely on this exemption, which expressly permits a "library", defined as one operated for non-profit that was open to the public and researchers", to do anything for a person that that person could do themselves under the fair dealing provisions.
The other defences raised in this action were unsuccessful.
The publishers failed to obtain a general injunction against the photocopying service because there was insufficient evidence that each of the publishers' works copied by the service was an original work subject to copyright (other than the 11 works specifically referred to in the decision). Similarly, LSUC failed to obtain a declaration that its service generally was for the purposes of fair dealing and, therefore, a non-infringement.
2. Society of Composers, Authors and Music Publishers of Canada v. 1007442 Ontario and Crystal B. Morey, June 11, 2002, FCTD (Kelen J.) Summary Judgment/Copyright Infringement/Personal Liability of Directors and Officers
The corporate defendant, who had failed to pay royalties with respect to the recorded music used at its exotic dancing club, consented to summary judgment for copyright infringement. The plaintiff also moved for summary judgment against Morey, the president, director, owner and operator of the corporate defendant, claiming that she is personally liable for the infringement.
Held: Motion dismissed. In order to determine if personal liability is appropriate, one must analyze "the conduct of the personal defendant, to determine whether or not her actions can be characterized as dishonest, 'deceptive and deliberately reckless behavior', or indifference to the obvious consequences of her action". Morey alleges that she did not believe the royalties were payable by her club because the dancers at her club were not employees. Confusion concerning the applicable tariff has been acknowledged by the Copyright Board, which ultimately revised the tariff in order to clarify it. Morey's evidence concerning her understanding of the tariff must be assessed by a Trial Judge - questions of fact and credibility must be decided before the Court will pierce the corporate veil. There is a genuine issue for trial and therefore summary judgment is not appropriate.
(d) Practice
1. Monsanto Canada et al. v. Percy Schmeiser et al., April 17, 2002, FCTD (MacKay J.) Directions on Costs
Monsanto was successful at trial against farmer, Percy Schmeiser, in the "Roundup Ready Canola" patent case and awarded costs as determined in accordance with directions to be given by the Trial Judge. Monsanto asked for a direction that their costs be assessed at the highest unit level of column III of Tariff B because (1) they had made a r. 420 offer to settle; (2) the case was difficult and (3) Schmeiser had not admitted that the patented gene was present in his canola crops. The draft bill was for fees of $58,080, disbursements of $157,099 and GST of $12,186. (The actual amount charged to Monsanto was $726,768.) Schmeiser argued that Monstanto should only be awarded $10,000.
Held: Rather than issue directions to the assessment officer, the Court fixed Monsanto's costs at $39,000 for fees (lower to mid-range of column III), disbursements to a maximum of $102,000 and GST up to $12,000. (1) The offer did qualify under r. 420, but would have only entitled Monsanto to a direction that it receive 133% of its costs after the date of the offer, not double costs. The offer was found to contain elements of compromise. Even though Monsanto had proposed that many of the claims be settled in their favour, the offer did not include punitive or exemplary damages, or costs on a solicitor and client basis. The fact that the judgment found infringement where the defendant "knew or ought to have known about the presence of the patented gene" did not render it less favourable than the offer. However, MacKay J. felt that the higher costs of the trial due to the nature of the invention and the difficulty in proving infringement should not be doubled. (2) The fact that the invention was expensive to defend was not a factor that should be reflected in a higher than normal level of costs. The extra cost of defending the patent was an aspect of Monsanto's overall business expense. (3) The refusal to admit that the patented gene was present in his canola was not a factor to be held against Schmeiser. Schmeiser did no more than require Monsanto to prove its case. Schmeiser's arguments that the case was novel and had significant implications for both Monsanto and farmers generally, among whom Schmeiser had been selected as a test, supported the restriction of costs to a level somewhat below the normal party-and-party costs.
2. Apotex v. Merck et al., May 31, 2002, FCTD (McKeown J.) Motion to Settle the Terms of Judgment/Reference versus Trial /Jurisdiction of a Motions Judge on a Motion for Summary Judgment/Punitive Damages/Right of Discovery
Merck obtained summary judgment from McKeown J. in action T-294-96 on its counterclaim that Apotex had infringed their '349 patent. On a motion to settle the terms of the judgment, Merck sought a declaration of infringement, delivery up, a reference for damages or an accounting of profits, as they may elect after due enquiry (with Apotex not being entitled to discovery of Merck unless they elected for damages), exemplary or punitive damages, interest and costs. In action T-294-96 Apotex had sought a declaration that its use of 772 kg. of bulk enalapril maleate did not infringe Merck's patent. In an earlier action tried by MacKay J. (T-2408-91), Apotex's use of 44.9 kg. of the same compound was found to infringe the '349 patent. That decision had been upheld on appeal. Apotex had acquired both quantities of the compound under similar circumstances. The second and larger batch was purchased by Apotex after the trial in the first action, but before judgment was rendered. McKeown J. dismissed Apotex's action for a declaration of non-infringement on the basis of res judicata. (The Court of Appeal recently upheld his decision.) The main issue on the motion to settle the terms of the judgment was whether the factual issues underlying the relief requested by Merck ought to be determined by a reference (which Merck wanted), or proceed to a full trial (which Apotex wanted).
Held: Motion granted, in part. Apotex argued that it was entitled to a trial of the factual issues underlying the remedies sought since such relief is ordinarily given after trial, by a trial judgment, and by a trial judge. McKeown J. reviewed the leading cases on the jurisdiction of a motions judge on a motion for summary judgment – in the Ontario Court and in the Federal Court – and noted that the Federal Court Rule on summary judgment is broader than the Ontario Rule. In the Federal Court, a motion's judge can "find facts" (r. 216(3)). Also, under the Federal Court Rules (r. 153(1) and 216(2)(a)) where a motion's judge finds that the only genuine issue for trial is the amount a party is entitled to, summary judgment can be granted with a reference to determine the amount – McKeown J. held that the Ontario Court jurisprudence did not apply to these provisions. Further, the policy behind res judicata of providing finality to litigation would be frustrated if a party could be required to submit to the expense and delay of a trial even though the issue of liability was res judicata. McKeown J. held that the remaining issues of fact could be determined most efficiently on a reference. He even held that there was a "complete factual record on which the [the Court] could make a finding of entitlement to punitive damages." Although Apotex had acquired the additional quantity of enalapril maleate prior to the delivery of Reasons for Judgment in the earlier action it did not disclose the fact to the Trial Judge, or to the Court of Appeal on the appeal from the trial decision. In so doing, it had acted in "callous disregard" for the injunction issued by the Trial Judge in the earlier action and this warranted an award of punitive damages. Merck was entitled to elect between general damages and profits after having discovery of Apotex. Although the award of the equitable remedy of profits is always at the discretion of the Court, as a general rule a successful plaintiff in a patent case will be entitled to such an election, unless there are circumstances warranting otherwise. The amount of the punitive damages, if any, was to be determined on the reference, subsequent to the determination of damages or profits. If the amount of the other damages and profits was sufficient to punish Apotex, Merck may not be entitled to an additional amount for punitive damages. Finally, on the issue of discovery, McKeown J. granted Merck's request that it be permitted to examine Apotex before making its election between profits and damages and that Apotex only be permitted to examine Merck if damages were elected. The Court agreed with Merck's submission that on a reference for profits Merck's evidence would not be relevant, so Apotex need not have any right to examine unless damages were elected. Restricting Apotex's right of discovery on the reference was held to be most expeditious (see r. 3) and justifiable under r. 230 which permits the Court to relieve a party from production or inspection of a document based on the issues in the case and the order in which they are likely to be resolved.
3. Desnoes & Geddes v. Hart Robinson Breweries et al., June 3, 2002, FCTD (Dawson J.) Contempt/Penalties/Costs
Having found the corporate respondent (Hart Robinson Breweries) and one individual (Hart), who aided and abetted the corporation, liable for contempt of court and dismissing the application as against another individual (Robinson), Dawson J. gave the parties an opportunity to speak to the issues of penalty and costs.
Held: Hart was fined $2,000 and the corporation was fined $4,000. The plaintiff was awarded solicitor and client costs fixed at $40,000, apportioned between Hart ($13,000) and the corporation ($27,000). The person who was not found in contempt was awarded double party-and-party costs fixed at $6,000. The Court considered the written apology by the individual contemnor and other documents offered on the issue of penalty (letters of support from the community and statements offered to show that he had diminished financial resources to pay a fine or costs). The corporate contemnor was bankrupt. The trustee had not opposed the application for contempt, or appeared on the sentencing hearing. As there was no dividend to be paid to any unsecured creditors the trustee took the view that the quantum of any Order would be irrelevant. The amount of the fines was determined on the basis of the principle that the amount should reflect the severity of the law yet be sufficiently moderate to show the temperance of justice. Even though the individual had not acted with intent to disobey an order of the Court and there was no evidence that he had benefited financially from his contemptuous acts, "his conduct in ignoring a judgment served upon him was, at best, foolish and was culpable." In contrast the corporation did benefit financially and did not offer any apology. With respect to costs, the Court noted that where an application for an order finding contempt of Court is successful, the normal practice is to award reasonable costs on a solicitor-client basis to the plaintiff. This reflects the policy of the Court that a person who assists the Court in the enforcement of its orders and in ensuring respect for its order should not be put out of pocket. An offer by Hart to be bound by the injunction was less favourable than the result (a finding of contempt) obtained by the plaintiff and was not considered. Robinson's offer to be bound was more favourable, entitling him to double costs. The costs were apportioned between Hart and the corporation to reflect the extent of culpability of each of them, because Hart had not benefited financially and because the plaintiff had chosen to proceed against the insolvent corporation.
II. OTHER COURT DECISIONS
1. Canadian Fly-In Fishing (Red Lake) v. Lac Seul Airways, April 12, 2002 OSCJ (Smith J.) Passing Off/Injunction
The plaintiff seeks an injunction restraining the defendant from using "Canadian Fly-In Fishing". Both parties operate as outfitters in the same geographical area.
Held: Injunction granted. The plaintiff established on a balance of probabilities that it has a proprietary interest in the phrase "Canadian Fly-In Fishing" acquired through years of use. The defendant is attempting to reap the benefit of the plaintiff's goodwill and has caused confusion through its use. The continued actions of the defendant will cause the plaintiff irreparable harm and the balance of convenience favours the plaintiff.
2. Chancellor Management v. Oasis Homes and John Haddon Design, May 21, 2002 ACQB (Fraser J.) Copyright in Architectural Works/Copyright Ownership /Copyright Infringement/Section 34(4)(a) Copyright Act
Plaintiff seeks a declaration that it is the owner of the architectural work represented by the plans for a show home and an injunction to enjoin the defendants from using the plans. The plaintiff hired Haddon to design the plans and requested that certain features be included in them. The contract between the parties stated that the plaintiff was only entitled to build one home based on the plans unless it paid additional fees. The plans indicated on each page that it was a Haddon design. The plaintiff built five more homes without permission.
Held: Injunction denied; plaintiff ordered to pay the defendants the usual fees for the additional homes that it built. Copyright exists in the plans. The house plans need not be unique, in the sense that the elements contained therein have never been seen before, in order to engage copyright protection. The Court held that the combination of the various design elements in the plans are distinctive but commented that, given the amendment to the definition of "architectural work of art" in 1993, distinctiveness may no longer be required in order for house plans to be subject to copyright. The only reasonable interpretation of the contract between the parties is that Haddon owns the copyright. Also, the appearance of "John Haddon Design" on the plans raises the presumption that Haddon is the author under s. 34(4)(a) of the Copyright Act. Although the plaintiff may have come up with some of the ideas for the plans, it did not put those ideas to paper and the mere expression of ideas does not attract copyright.
3. Pastor v. Chen, May 21, 2002 BCPC (Romilly J.) Confidentiality Agreement/Restraint of Trade/Copyright in Dance Moves
The plaintiff, a dance instructor, claims to have invented and added particular movements to the traditional Salsa dance form. The defendant, a student of the plaintiff, signed a confidentiality agreement before joining the plaintiff's dance company, which provided that he would "not divulge, publicly perform or teach the artistic work that I have had access to as a performer/student of Cuban Dance Entertainment, without the Director Amando Pastor's, permission. I understand that everything I have been taught by him is confidential, and is his property, for which he holds copyrights." The defendant left the plaintiff's dance company and several months later collaborated with the plaintiff's competitors in performing and teaching the dance style and moves that the plaintiff claims to have invented and copyrighted. The plaintiff claims breach of contract in relation to the confidentiality agreement.
Held: Defendant ordered to pay plaintiff's loss of income. The agreement was not unreasonable in restraining the trade of the defendant; the defendant could have taught Salsa in the many other forms that exist. The defendant breached the confidentiality agreement. The plaintiff's dance moves have a "significant element of originality, not already in the realm of public knowledge" and are properly covered by copyright.
III. OPPOSITION BOARD DECISIONS
1. Bata Industries v. Lamasz Sport, May 7, 2002 (Bradbury) Confusion
Proposed-use application for POWER 2000 for wearing apparel, headwear and footwear. Opposition based, inter alia, on s. 12(1)(d) due to confusion with the mark POWER registered for footwear.
Held: Application refused. The applicant did not meet its onus to show that confusion not likely given that it did not file any evidence, the marks resemble each other and the wares overlap.
2. 917301 Ontario v. Softsider Tubs Canada, May 7, 2002 (Bradbury) Confusion
Use-based application for WE'LL GET YOU IN HOT WATER…AND YOU'LL LOVE IT! for hot tubs, spas, and replacement components thereof including filters. Opposition based on s. 16 and non-distinctiveness due to confusion with the slogan WE'LL GET YOU IN HOT WATER AND YOU'LL LOVE IT previously used to promote the sales of hot tubs.
Held: Application refused.
3. Wells' Dairy v. Ault Foods, May 7, 2002 (Bradbury) Section 30
Use-based application for POLAR for ice cream and ice cream novelties. Opposition based on s. 30.
Held: Opposition rejected. The applicant's evidence is not clearly inconsistent with the claim that it used the mark with the wares since the claimed date.
4. HRB Royalty v. Express File, May 9, 2002 (Folz) Section 30/Confusion
Use-based application for EXPRESS FILE for electronic tax filing services. Opposition based, inter alia, on s. 30(b) because the applicant did not use the mark in Canada since the date alleged and s. 16(2)(b) due to confusion with the opponent’s mark EXPRESS FILE H&R BLOCK which is the subject of a previously filed application for the same services.
Held: Application refused on both grounds. Although some Canadians may have received the applicant's promotional materials, there is no evidence that the applicant's services were performed or available to be performed in Canada as of the date claimed. There is a likelihood of confusion given the degree of resemblance between the marks as applied to identical services.
5. Interprovincial Lottery et al. v. Western Gaming Systems, May 10, 2002 (Martin) Section 30(i)/Illegal Use
Proposed-use applications for COUNTRY LINE DANCE, POWWOW, DREAMCATCHER, GOLDEN CROWNS and PEROGIE DOUGH for lottery tickets and retail sale of lottery tickets. Opposition based, inter alia, on s. 30(i) because the applicant could not have been satisfied that it was entitled to use the mark since it is not permitted pursuant to the Criminal Code to manage and conduct lotteries. The applicant did not file evidence.
Held: Applications refused. The opponents' evidence makes out a prima facie case that the applicant's proposed use would violate a federal statute. The Criminal Code provides that lottery schemes can only be conducted by the government of a province through legislatively designated entities or licensees. The opponents represent all of the provincially designated authorities charged with managing and conducting lotteries and they indicate that the applicant has not been authorized to operate a lottery and has not taken any steps to conform with the Criminal Code.
6. Sleep Products International v. Park Avenue Furniture, May 14, 2002 (Bradbury) Section 30(e)/Confusion/Expert Evidence /Admissibility of Trade-mark Database Searches
Proposed-use application for CHIRO POCKET for mattresses. Opposition based, inter alia, on s. 30(e) because the applicant does not intend to use the mark and s. 12(1)(d) due to confusion with the marks CHIROPRACTIC, CHIROPRACTOR and COMFORT POCKETS registered for mattresses.
Held: Application refused under the s. 30(e) ground only. The applicant's evidence appeared to show use of the applied-for mark by another entity. As the applicant did not chose to file any evidence to support its argument that the reference was not in fact to a third party, the opponent's onus re s. 30(e) was satisfied and the applicant's onus was not. The s. 12(1)(d) ground failed - use of the marks may not have enured to the benefit of the opponent, the mark CHIROPRACTIC may be weak to the extent that it indicates the effect of the mattresses, and others have used CHIRO in association with mattresses. The Hearing Officer gave little weight to the conclusions of the opponent's linguistics expert. Although the applicant did not consent to the admissibility of an affidavit that dealt with a database trade- mark search, the Hearing Officer did allow it as the information for the database was provided by the Trade-marks Office and the affiant was a professional trade-mark searcher.
7. Lactantia v. Nicola, May 17, 2002 (Bradbury) Confusion/Amendment of Statement of Opposition/Standing of Assignee to Pursue Opposition
Application for OLIVIO for olive oil spread to be used as a butter or margarine alternative based on use and registration abroad. Opposition based, inter alia, on s. 12(1)(d) due to confusion with the mark OLIVINA registered for margarine.
Held: Application refused. Confusion is likely due to the similarities between the marks and their wares and the fact that OLIVINA appears to be the only OLIV… mark to have acquired a reputation in this specific field in Canada. At the oral hearing, the applicant questioned the opponent's standing to pursue the opposition given that the registration had been assigned. Although the Hearing Officer held that the new owner of the registration had standing to pursue the opposition in its own name, she did not allow the statement of opposition to be amended to refer to the new owner because that was not necessary in order for the opposition to succeed and because of the delay that would be caused by the applicant's claim that any amendment would result in the need for it to amend its counter statement and file additional evidence.
8. Royal Bank of Canada v. Manufacturers Life Insurance, May 21, 2002 (Folz) Confusion
Use-based application for TRANSACT & Design for electronic information transfer services, namely the transfer of insurance, financial, bank and mutual fund information via private lines, third party servers, and the Internet, to and from agents, brokers and others. Opposition based, inter alia, on s. 12(1)(d) due to confusion with the mark TRANSACT & Design registered for banking services, namely commercial and corporate banking services. TRANSACT disclaimed by both parties.
Held: Application refused. Although there is little actual overlap between the parties' services and trade, it is the statements of services that govern. The applicant's statement of services is not restricted to agents and brokers and could be used by the general public in the future. The opponent's statement of services could include the transfer of transactional data from the sale of investment products.
9. CHUM v. BBS, May 21, 2002 (Folz) Confusion
Use-based application for VT & Design for entertainment services namely the production, broadcast, recording, transmission and distribution of television programs, and the operation of a television station. Opposition based, inter alia, on s. 12(1)(d) due to confusion with the mark VTV & Design registered for entertainment and television broadcasting services.
Held: Application refused. Confusion is likely given the extent to which the opponent's mark has become known and the degree of resemblance between the marks and services.
10. MKS Informatique v. MKS, May 23, 2002 (Herzig) Pleadings
Use-based application for MKS WEB INTEGRITY for computer software for configuring, modifying, archiving, tracking, editing, publishing, and retrieving computer code, media content, files and documents for web sites, and instruction manuals therefor sold as a unit. The opponent pleaded that the applicant was not the person entitled to register the mark because it was confusing with certain registered trade-marks. The applicant pleaded that the opponent has not set out a proper ground of opposition.
Held: Opposition rejected. If the opponent meant to plead that the applicant's mark was unregistrable in view of its trade-mark registrations, it should have responded to the applicant's objections by taking action to correct its statement of opposition. Since it did not, the deficiencies were not treated as an inconsequential technical error and the ground was dismissed as invalid.
11. Molson Breweries v. Saigon International Enterprise, May 27, 2002 (Folz) Section 30(b)/Confusion/Descriptiveness
Use-based application for SAIGON EXPORT for brewed alcoholic beverages, all kinds of beer, ale and porter. Opposition based, inter alia, on s. 30(b) and s. 12(1)(d) due to confusion with various MOLSON EXPORT marks.
Held: Application refused. Re s. 30(b), the opponent met its evidential burden by pointing to the fact that the applicant has given its address as that of its trade-mark agent. As the applicant did not evidence its date of first use and continuous use of its mark, it did not satisfy its burden. Re s. 12(1)(d), the probability with respect to confusion was equal given the significant use of the MOLSON EXPORT marks and the similarity between the wares and the channels of trade. As the onus lies on the applicant, the s. 12(1)(d) ground succeeded. This might not have been the outcome if the applicant had shown relevant marketplace evidence or evidence of co-extensive use without actual confusion. The Board Member also held that SAIGON EXPORT either clearly describes the origin of the beer if it comes from Saigon or is otherwise deceptively misdescriptive.
12. Digital Security Controls v. Paradox Security Systems, May 27, 2002 (Martin) Confusion
Proposed-use application for PARADOX DIGITAL DETECTION & Design for security system, namely motion detector. DIGITAL and DETECTION disclaimed. Opposition based, inter alia, on s. 16(3) due to confusion with the mark DIGITAL SECURITY CONTROLS which was the subject of a previously filed application for similar wares.
Held: Opposition rejected. The opponent's mark is inherently weak, given its descriptive nature, and there is only evidence of it having acquired minimal reputation. There is only a low degree of resemblance between the marks.
13. Canadian Medical Association v. Enzymatic Therapy, May 29, 2002 (Bradbury) Section 30(b)/Confusion/Misdescriptiveness /Section 12(1)(e)
Proposed-use application for DOCTOR'S CHOICE for nutritional products, namely vitamin, mineral, dietary and herbal supplements. Opposition based, inter alia, on s. 12(1)(b) because the mark is deceptively misdescriptive, s. 12(1)(d) due to confusion with the registered mark PATIENT'S CHOICE, and s. 12(1)(e) because it is likely to be mistaken for the opponent's official mark DOCTOR.
Held: Application refused under s. 12(1)(b) and (e).
S. 12(1)(b): The primary public perception of the meaning of DOCTOR, as applied to nutritional products, would be that of a doctor of medicine. The mark is deceptively misdescriptive if an ordinary purchaser is likely to be misled into thinking that the applicant's wares are the choice of a doctor, when that is not the case. It would have been an easy matter for the applicant to evidence that one or more doctors had approved its wares if that was in fact the case. In the absence of such evidence, the applicant has not shown that on a balance of probabilities that a typical purchaser would respond to the trade mark as a fanciful name, mere puffery or as merely indicative of source, rather than as deceptively misdescribing the wares as favoured by the medical profession.
S. 12(1)(d): Confusion is not likely between DOCTOR'S CHOICE and PATIENT'S CHOICE because of the differences between the marks.
S. 12(1)(e): Based on first impression and imperfect recollection, the degree of resemblance between DOCTOR'S CHOICE and DOCTOR in appearance, sound and idea suggested is sufficient to result in DOCTOR'S CHOICE being likely to be mistaken for DOCTOR.
14. North American Air Travel Insurance Agents v. Travel Guard Group, May 29, 2002 (Bradbury) Section 30(b)/Confusion
Use-based application for TRAVEL GUARD for underwriting travel, accident and health insurance services. Opposition based, inter alia, on s. 30(b) and s. 12(1)(d) due to confusion with the mark TRIPGUARD registered for travel insurance policies and travel insurance services.
Held: Application refused. The s. 30(b) ground succeeded because the applicant's evidence showed only use of the mark by entities whose relationship to the applicant was not explained. The s. 12(1)(d) ground succeeded because of the resemblance between the marks, the overlap of their services, and the lack of evidence that it is common in the insurance industry to use marks that end in GUARD.
15. Air Miles International v. Kendall Marketing, June 4, 2002 (Bradbury) Confusion /Section 50(2)
Use-based application for VACATIONMILES for promoting the goods and services of others by awarding credits related to travel or vacations based on the purchase of the goods and services of others and promoting the businesses of others by awarding credits related to travel or vacations based on the achievement of business goals of others. Opposition based, inter alia, on s. 12(1)(d) due to confusion with AIR MILES registered for advertising and promotion of the wares and services of others, organization and supervision of sales and promotional incentive schemes.
Held: Application refused because the opponent's use has been longer and more extensive, the services are very similar, there is a fair degree of resemblance between the marks, and there is no evidence of the common adoption of the suffix MILES for marks in this field. Although the use of AIR MILES by the opponent's licensee did not fall under s. 50(1), notices appearing on many of the materials did invoke the benefit of s. 50(2).
16. The Casket Store v. Thomas P. Crean, June 6, 2002 (Folz) Confusion
Proposed-use application for THE FAMILY CASKET STORE for retail store services and retail catalogue services in the area of caskets, funeral and memorial products. CASKET STORE disclaimed. Opposition based on s. 16 and non-distinctiveness due to confusion with THE CASKET STORE previously used by the opponent for funeral related wares and services.
Held: Application refused. The word FAMILY does not add much inherent distinctiveness to the applicant's mark.
17. Arden Holdings v. DCNL, June 6, 2002 (Martin) Distinctiveness Pleadings
Application for SOPHIST-O-TWIST for hair ornaments based on proposed use and use and registration abroad. Opposition based, inter alia, on non-distinctiveness.
Held: Opposition rejected. Although the opponent filed evidence designed to show that the applicant's mark was not distinctive because it was used by another party, its distinctiveness ground did not plead this.
18. Irwin Toy v. Flambeau Products, June 17, 2002 (Bradbury) Confusion/Improper Reply Evidence
Application for PRO YO based on sue and registration abroad for return top toys. Opposition based, inter alia, on s. 12(1)(d) due to confusion with the opponent’s marks YO-YO and PRO registered for similar wares.
Held: Opposition rejected. The opponent's YO-YO mark possesses no inherent distinctiveness because it is the name of the wares. The use of PRO YO and YO-YO in the same area would be unlikely to lead to the inference that the wares associated with such marks are manufactured or sold by the same person, given that yo-yo is the name of the wares. Confusion between PRO and PRO-YO also unlikely because of the highly suggestive nature of the word PRO, the use of the word PRO by other yo-yo traders, and the absence of evidence of PRO having acquired any distinctiveness. The opponent's reply evidence was disregarded on the basis that it was not proper reply evidence but rather resulted in the opponent splitting its case.
19. Hudson's Bay v. Mark's Work Wearhouse, June 17, 2002 (Bradbury) Section 16 Initial Burden/Use with Wares
Proposed-use application for BELOW ZERO for head gear, footwear and clothing. Opposition based, inter alia, on s. 16 due to confusion with the mark SUB-ZERO FLEECE previously used by the opponent for outerwear.
Held: Opposition rejected. The opponent failed to evidence prior use of SUB-ZERO FLEECE as a trade-mark. Displaying the mark in advertisements does not qualify as use for wares and the appearance of SUB-ZERO FLEECE on hang tags was more in a descriptive, rather than in a trade-mark, sense.
20. COA v. Thyssen Krupp, June 26, 2002 (Martin) Section 9(1)(n)(iii)
Application for Three Rings Design for base metals and their alloys, etc. Opposition based, inter alia, on s. 12(1)(e) based on the opponent's Five Rings Design official mark.
Held: Opposition rejected. Although there is some resemblance between the marks, the resemblance is insufficient to find that the applicant's mark is almost the same as the opponent's official mark. Not only does the applicant's mark consist of only 3 (not 5) rings but also the overlapping structure of the applicant's rings differs from that of the opponent's mark.
IV. SECTION 45 DECISIONS
1. 88766 Canada v. National Cheese, June 20, 2002 (Savard) Deviation from Registered Mark
TRE STELLE & Design registered for cheese.
Held: Registration maintained. The mark used contained the four essential elements of the registered mark. The omission of the words "National Cheese Company Limited, Toronto, Ontario" or the words "Made From Pasteurized Milk" does not detract from the essence of the mark as registered and the changes to the stars design and the change in lettering are unimportant alterations.
2. Smart & Biggar v. Jascor Home Products, June 20, 2002 (Savard) Use with Registered Wares
MAXIM registered for portable electrical appliances namely food choppers.
Held: Registration maintained. Although the packaging referred to the ware as a "food grinder and sausage maker", the affiant pointed out that the French translation of food chopper in the Trade-marks Journal was "hache-aliments" and attested that a hache-aliments and a food chopper are the same ware, which may also be designated as a food grinder. Furthermore, the instruction manual indicated that the food grinder will grind and chop food. The Hearing Officer therefore accepted that the product sold could be called either a food grinder or a food chopper.
3. Paul Smith v. Brink, Hudson & Lefever, June 26, 2002 (Savard) Use with Services
INVESTORDIRECT registered for financial services.
Held: Registration maintained. The mark appeared on brochures distributed in Canada and the services were available to be performed during the relevant time period.
4. Logan v. Dig This Garden Retailers, June 27, 2002 (Savard) Use with Wares
DIG THIS registered for seeds, seed boxes, … baskets and the operation of a retail business relating to gardening and horticulture.
Held: Registration restricted to services. There was no evidence of sales of the wares in association with the mark. Rather, the wares bearing the mark appeared to be used only as advertising and promotional items.
5. Lang Michener v. Carrera Optyl Marketing, June 27, 2002 (Savard) Deviation from Registered Mark
CARRERA & Design registered for protective sports eyewear, soaps … ski poles.
Held: Registration expunged. The registered mark consists of 2 dominant elements: a stylized "C" centered over the word CARRERA. The packaging displays both the stylized "C" and the word CARRERA, but they are far apart with additional matter in between. As a matter of first impression, the letter "C" and the word CARRERA as they appear on the packaging would probably not be perceived as forming a single mark.
V. FOREIGN DEVELOPMENTS
(a) Patents
Australia Patent Law
A number of changes to Australian patent law took effect on April 1, 2002 including the following:
(1) Test for Novelty —now requires global novelty (not just Australia);
(2) Test for Inventive Step —now more stringent since 2 or more documents may be combined to show lack of inventive step (no longer limited to a single prior art document supplemented by common general knowledge);
(3) Duty of disclosure —must disclose all documents identified in search results conducted by or on behalf of applicant, or by a patent office, "for the purpose of assessing patentability" of an invention; the duty of disclosure is not limited to 'relevant' documents;
(4) Grace Period —the new legislation provides a 12-month grace period for disclosure by the applicant prior to filing the application.
European Union Community Design Regulation
Council Regulation (EC) No. 6/2002, which was adopted December 12, 2001, is based largely on the Community Trade Mark Regulation. It provides protection for unregistered as well as registered designs.
Unregistered Designs —protection of unregistered designs became available as of March 6, 2002. Eligibility requirements include that the design be disclosed in the EU prior to disclosure anywhere else in the world. The protection is limited in scope, primarily to protection against copying, and is limited in time to a period of 3 years following disclosure.
Registered Designs —this protection scheme is not yet available. It is expected that Registered Community Design protection will be available in early 2003, after the Implementing Rules and the Rules on Fees have been adopted. The Office for Harmonization in the Internal Market (OHIM) in Alicante, Spain, which administers the Community Trade Mark system, will also administer the system of Registered Community Designs.
PCT Time Limits
PCT Article 22(1) was amended effective April 1, 2002 to require all contracting states to provide a time limit of at least 30 months (rather than 20 months) from the priority date within which applicants must enter the national/regional phase of the PCT application process, regardless of whether or not a Chapter II demand has been filed.
As of June 10, 2002, 21 contracting states had not yet complied with this requirement, having notified the International Bureau of incompatibility of the new PCT time limit with existing national law. Among these 21 states are Japan, Sweden, Republic of Korea, Switzerland, and Brazil. Until the national law has been amended, the extended time limit will not apply when entering the national phase in these states.
Contracting states which have complied with the new time limits include the EPO (31 months), US (30 months), Great Britain (31 months), Australia (31 months), and Canada (30 months, extendable to 42 months with penalty fee). In Canada, the corresponding amendments to s. 58 of the Patent Rules are available at: http://canada.gc.ca/gazette/part2/pdf/g2-13607.pdf.
