Recent Decisions August 2003
I. FEDERAL COURT DECISIONS
(a) Patents
1. Biolyse Pharma v. Bristol-Myers Squibb et al., April 7, 2003 FCA (Strayer, Nadon, Evans JJ.A.) Interpretation /Requirement to Serve Notice of Allegation /Patented Medicines (Notice of Compliance) Regulations, ss. 5(1) and 5(1.1)
Appeal by Biolyse from the Trial Division's decision that quashed a decision of the Minister of Health to grant a NOC to Biolyse in respect of its drug paclitaxel. Bristol-Myers holds two patents in respect of its drug Taxol, which contains paclitaxel. The drug that Biolyse manufactures differs from the Bristol-Myers drug in one respect: the paclitaxel in Biolyse's drug is derived from a different species of yew. Because of this difference, Biolyse was required to seek approval for its drug by submitting a New Drug Submission, rather than by an Abbreviated New Drug Submission. Since Biolyse could not seek approval for its drug on the basis of an ANDS, it was not granted a declaration of bioequivalence. Biolyse submitted a short NDS containing many references to, and comparisons with, Taxol. The Minister issued a NOC without requiring Biolyse to send a NOA to Bristol-Myers. Bristol-Myers brought an application for judicial review. The applications judge quashed the NOC granted to Biolyse on the basis that the Minister erred in failing to require that a NOA be served.
Held: Appeal dismissed. Biolyse argued that s.5(1.1) of the NOC Regulations was limited to situations where a second person filed an ANDS and applied for approval of its drug by comparing it to a first person's drug in order to establish bioequivalence. Bristol-Myers argued that if s. 5(1.1) was given such an interpretation, generic companies could avoid triggering s. 5 by submitting documents that took the form of a NDS, but in reality were a disguised ANDS. The Court ruled that giving effect to Biolyse's suggested interpretation would require the addition of words to a provision that is neither ambiguous nor incoherent. The Court concluded that the plain meaning of s. 5(1.1) is consistent with the overall purpose of the NOC Regulations, which gives more effective patent protection to new drugs. On a plain meaning interpretation of s.5(1.1), Biolyse had met all of the conditions contained therein and should have been required to serve a NOA.
2. Procter & Gamble Pharmaceuticals Canada v. Canada (Minister of Health) and Genpharm, May 12, 2003 FCTD (Gauthier J.) Patent Register/Eligibility for Inclusion on Register of Reissue Patent Granted and Issued on Different Dates/Patented Medicines (Notice of Compliance) Regulations, s.4(4)
Application by Genpharm seeking a declaration that Procter's reissued patent, Canadian Patent 1,338,376 (the '376 Patent) was not eligible for inclusion on the Patent Register. Procter filed an application for a reissue patent, and in accordance with s. 47(1) of the Patent Act, Canadian Patent 1,282,702 was surrendered when the '376 Patent was issued to replace it. Genpharm alleged that the '376 Patent was not eligible to be listed on the Patent Register pursuant to s. 4(4) of the NOC Regulations, because it was not submitted for registration within 30 days after issuance.
Held: Application dismissed. Genpharm alleged that because the 30 day limit applied, the patent was ineligible for the Patent Register because the '376 Patent was granted and issued on June 11, 1996, while Procter's date of filing the NOC submission was July 17, 1996. Procter submitted that the '376 Patent was granted on June 11, 1996, but not issued until June 18, 1996 because of a printing problem at the Patent Office that delayed the physical issuance of patents granted on June 11, 1996. On the basis of s. 43 of the Patent Act, the Court stated that there is a difference between the grant of a patent and its issuance. The Court ruled that the date of issuance was not June 11, 1996, but declined to decide the exact date of issuance. Nevertheless, on the basis of the evidence presented, it was not plain and obvious that the '376 Patent was not eligible for inclusion on the Patent Register.
3. Reddy-Cheminor v. Canada (Attorney General) et al., May 14, 2003 FCTD (Layden-Stevenson J.) Review of Minister's Decision Refusing to Process Abbreviated New Drug Submission (ANDS)/Food and Drug Regulations, Section C.08.002
Application for judicial review of a decision by the Minister of Health refusing to process an ANDS submitted by Reddy. Reddy sought approval from the Minister to market its version of omeprazole by submitting an ANDS referring to Losec, which contains omeprazole magnesium and is marketed by AstraZeneca, as the Canadian reference product. Since the Food and Drug Regulations require the drugs being compared to contain identical amounts of identical medicinal ingredients, and since omeprazole and omeprazole magnesium were found to be different medicinal ingredients, the Minister concluded that Reddy's submission could not be reviewed as an ANDS and refused to process it.
Held: Application dismissed. Reddy based its argument on the fact that the original NDS for Losec was for omeprazole, and through a SNDS, AstraZeneca changed its product to omeprazole magnesium. Reddy argued that as an SNDS is used to permit changes to marketed drugs, and not to permit the marketing of a new drug, omeprazole and omeprazole magnesium must be the same drug. The Court concluded that Reddy had confused the principles governing an ANDS with those governing a SNDS. The Court found that the circumstances requiring the filing of a SNDS (s. C.08.003 of the Regulations) include matters such as the plant and equipment to be used in manufacturing, the manufacturing methods and the specifications of the ingredients of the drug. The Court ruled that this differs from an ANDS where the drugs being compared must contain identical amounts of the identical medicinal ingredients. Reddy also submitted that the ANDS was at least entitled to a review so as to confirm pharmaceutical equivalence. The Court found that in the absence of error (of which the Court found none), the Minister was not obliged to review the ANDS. The Minister's decision to reject Reddy's ANDS was made with regard to the provisions of the Regulations and was not patently unreasonable.
4. Astrazeneca v. Apotex and Canada (Minister of Health), May 21, 2003 FCA (Rothstein, Sexton and Sharlow JJ.A.) Application for Prohibition/Appeal from Decision Permitting Filing of Additional Affidavit /Patented Medicines (Notice of Compliance) Regulations
Appeal from the decision of a Trial Division judge upholding a decision of a prothonotary that permitted Apotex to file an additional affidavit in prohibition proceedings commenced by Astrazeneca under the NOC Regulations. Astrazeneca submitted that the affidavit raises matters beyond the legal and factual basis set out in the NOA.
Held: Appeal dismissed. The prothonotary concluded that the affidavit was required to permit Apotex to explain what the appellants apparently considered to be a contradiction that arose in other material filed in the course of the proceedings. The trial judge concluded that the prothonotary had considered the relevant facts and exercised her discretion judicially. The trial judge made no error of law, or any other kind of error that warrants intervention.
5. Realsearch et al. v. Valone Kone Brunette et al., May 28, 2003 FCTD (Noël J.) Preliminary Patent Claim Construction /Federal Court Rule 107(1)
Motion pursuant to r. 107 of the Federal Court Rules seeking a separate determination of the issue of patent claim construction. Defendants submit that r. 107(1) allows the Court to order the construction of a patent claim in a separate proceeding.
Held: Motion granted. The suggested "Markman" style procedure might speed up the litigation in patent infringement actions. Construing the claims early in the litigation process in a separate proceeding will allow the parties to better determine the relative merits of their positions. The issue of claim construction should be dealt with by the case management judge in collaboration with the parties.
6. Eli Lilly Canada v. Canada (Attorney General), May 29, 2003 FCTD (Dawson J.) Patent Register/Review of Minister's Decision to Remove Patent from Register/Patented Medicines (Notice of Compliance) Regulations, s. 4(2)(b)
Application for judicial review of a decision of the Minister of Health refusing to list a patent on the Patent Register. The patent in question was for a sustained release capsule adapted to be inserted in the rumen of a ruminant animal for continuous delivery of a biologically active composition. Lilly sought to have the patent listed with its drug Rumensin, since the patent included claims for the capsule containing the active ingredient present in Rumensin. The Minister refused to list the patent because, although there may have been claims in the patent to the dosage form used in administering the medicine, there is no claim to the medicine as required by s. 4(2)(b) of the NOC Regulations. The Minister relied on Glaxo Group Ltd. v. Novopharm Ltd. (1999), 87 CPR (3rd) 525 (FCA) which states that "…patents for devices by which medicament can be administered to or by patients rather than for the substance being administered, are not a 'medicine' within the meaning of the regulations."
Held: Application dismissed. The issue was whether the Lilly patent contains "a claim for the medicine itself" as required in s. 4(2)(b) of the NOC Regulations. The patent does not claim protection for the medicine contained in the drug but is a patent for a mechanical device. The case was distinguished from Hoffman-La Roche Limited v. Canada (Minister of National Health and Welfare) (1995), 62 CPR (3d) 58 (FCTD) which held that a claim to a dosage formulation combining active ingredients with non-active ingredients is a "claim for the medicine itself" within the Regulations since the claim language more closely resembled the claim language in the Glaxo case which claimed "a device for administering medicaments". The fact that three NOCs had issued for Rumensin capsules, proving that the product is regulated as a drug and not as a medical device, was considered irrelevant. The NOC Regulations show that a "drug" is not equivalent to a "medicine" but rather a "drug" contains, among other things, a "medicine".
7. GlaxoSmithKline et al. v. Apotex and Canada (Minister of Health), May 30, 2003 FCTD (Kelen J.) Application for Prohibition /Allegations of Non-infringement and Invalidity Justified/Anticipation/Double Patenting /Patented Medicines (Notice of Compliance) Regulations
Application for an order prohibiting the Minister from issuing a NOC to Apotex in respect of the medicine paroxetine hydrochloride until after the expiry of Glaxo patent 2,214,575 ("the Glaxo patent"). The Glaxo patent claimed a paroxetine formulation prepared in the absence of water and the absence of excipient microcrystalline cellulose. The patent was a divisional from a patent claiming the same process carried out in the absence of water alone. Glaxo uses paroxetine hydrochloride hemihydrate (water present) in its Paxil tablets; Apotex proposed to distinguish its product by using paroxentine hydrochloride anhydrate (no water present).
Held: Application dismissed. The following issues were addressed by the Court: the proper construction of the claims in the Glaxo patent; the allegation that Apotex will not infringe the Glaxo patent; whether the claims of the Glaxo patent were anticipated by previous patents and articles; and whether the Glaxo patent was void on account of double patenting and improper divisional application. The contraversy focused on the definition of "paroxetine" and "a paroxetine formulation" claimed in the Glaxo patent. Neither term was defined in the disclosure, nor was paroxetine hydrochloride anhydrate mentioned anywhere in the specification. The Merck dictionary meaning of paroxetine, suggesting it included the anhydrate salt, was given little weight. Further no evidence was provided that the problem solved by the Glaxo patent (pink discolouration of tablets) affects the anhydrate form. Lastly, including the anhydrate form would protect an invention that has no utility. Hence the patent was found not to include the anhydrate form. Based on the adopted construction, Apotex proposed to alter an essential element of the invention and therefore will not infringe. In addition, the claims of the Glaxo patent were found to be anticipated by earlier patents. A skilled formulator would find in the prior patents all of the steps needed to create the invention in Glaxo patent. Finally the Glaxo patent was found to be an improper divisional application and invalid on account of double patenting. The formulation in the Glaxo patent is an obvious variant from the composition claimed in the parent application, such that the claims of the Glaxo patent display no novelty or ingenuity over the claims of the prior patent. Glaxo failed to refute the Apotex allegation of double patenting.
8. Apotex v. Ferring and Canada (Attorney General), June 19, 2003 FCA (Rothstein, Noël and Sexton JJ.A.) Patent Register/NOC Regulations/Strict Time Constraints for Filing Patent List/Permitting Change in Trade Name to Overcome Time Limitation Would Render Time Requirements Meaningless/Patented Medicines (Notice of Compliance) Regulations
Appeals by Apotex and by the Attorney General from an order of the applications judge requiring the Minister of Health to reinstate Ferring's patent on the Patent Register and to revoke the NOC issued to Apotex for its drug Apo-Desmopressin. The Minister refused to list Ferring's patent on the Patent Register because Ferring had not complied with the time requirements contemplated by s. 4(4) of the NOC Regulations. The next day, Ferring submitted a SNDS seeking a NOC for its drug Desmopressin Acetate under a different trade name and sought to list the patent. The applications judge distinguished Bristol-Myers Squibb v. Canada (AG) (2002), 16 CPR (4th) 425 (FCA), which confirmed that there was no right to list a patent initially omitted by changing the trade name when the only purpose of that change was to overcome the time requirements embodied in s. 4(4) of the NOC Regulations, on the basis that the Bristol-Myers case involved an attempt to amend an existing patent list while the present case did not.
Held: Appeals allowed. A review of the decision in Bristol-Myers reveals that it did not involve an attempt to amend an existing patent list. The applications judge pointed to no other ground or basis for disregarding the decision in Bristol-Myers. The only conclusion that can be drawn from the facts of this case is that the change in trade name was part of a strategy designed to overcome the time limitation in s. 4 of the NOC Regulations. This strategy, if sanctioned, would render the time requirements in s. 4 meaningless. There was no basis for distinguishing the situation in the present case from that in the Bristol-Myers case. The applications judge was bound to follow precedent and erred in failing to do so.
9. Abbott Laboratories v. Canada (Min. of Health) and Genpharm, June 26, 2003 FCTD (Heneghan J.) Motion to Extend Statutory Stay/Patented Medicines (Notice of Compliance) Regulations, s. 7(5)(b)
Motion by Abbott for an order extending the period of time within which the Minister is prohibited from issuing a NOC to Genpharm by ten months. Abbott wrote to counsel for Genpharm asking for disclosure of information relating to its NOA. Abbott subsequently brought a motion for an order requiring Genpharm to disclose the requested material. Genpharm eventually complied with the order for production, but only after several months had passed and a protective order had been obtained. Abbott then brought the present motion to extend the twenty-four month statutory stay.
Held: Motion dismissed. The test for deciding whether to extend the time for the statutory stay is set out in s. 7(5)(b) of the NOC Regulations. The question arising from Abbott's motion is whether Genpharm has failed to reasonably cooperate in expediting the application: see David Bull Laboratories (Canada) Inc. v. Pharmacia Inc., [1995] 1 FC 588 (CA). Abbott did not produce evidence to show that Genpharm failed to reasonably expedite the conclusion of the proceeding. The evidence produced by Abbott showed that there had been delay, contributed to by both parties. There was also merit in Genpharm's argument that Abbott did not make a clearly defined request for specific information until nearly three months after the initial generalized request for disclosure. Finally, it was not clear that the parties will be unable to finalize their respective cases in time to obtain a hearing prior to expiry of the twenty-four month statutory stay in May 2004. The Court found the motion to be premature, having regard to the fact that slightly more than ten months remain of the legislative stay period. If necessary, the issue of an extension of time can be raised after Genpharm has served and filed its affidavits.
(b) Trade Marks
1. A. Lassonde v. Reg. TMs, April 25, 2003 FCTD (McKeown J.) Appeal/Extension of Time to File Declaration of Use/Section 40/Section 47(1)/Practice Notice re Extensions of Time
Appeal from Registrar's decision that denied an extension of time in which to file a declaration of use for a trade-mark application filed in 1983. The notice of allowance was issued January 31, 1997. On July 10, 1998, the Registrar accepted a declaration of use for some of the proposed use wares but refused the appellant's request that a certificate of registration be issued for those wares. The appellant argued that the Registrar could issue one registration now and a second one later when a declaration of use was filed for the balance of the wares. The appellant obtained some extensions of time on the basis that it would soon be signing some commercial agreements needed for the use of the mark in association with the outstanding wares but the Registrar ultimately advised that in the absence of the outstanding declaration being filed by April 25, 2000, the application would issue to registration for the limited wares and the appellant would have to refile to add any wares not yet in use.
Held: Appeal dismissed. It is permissible for the Registrar to adopt guidelines, in the form of a practice notice, indicating the type of consideration that will generally direct him in the exercise of his power to defer the filing of a declaration of use. The requirement of significant and substantive reasons to justify allowing an extension after a period of three years is very clearly what Parliament had in mind when it drafted s. 40(3). The "new" reasons for non-use put forward on appeal are not sufficient to affect the exercise of the Registrar's discretion. The Court refused to deal with the appellant's request for a declaration that the Registrar's Practice Notice of August 7, 1991 is inapplicable and that s.40(2) allows multiple registrations to be issued as declarations of use are filed, because it considered such request to be extraneous to the appeal.
2. Alticor v. Nutravite Pharmaceuticals, June 9, 2003 FCTD (Kelen J.) Opposition Appeal/Confusion/Distinctiveness
Appeal from opposition decision that rejected an opposition to the registration of the trade-mark NUTRAVITA for vitamins, minerals, and herbs. The appellant's position was that NUTRAVITA was confusing with its mark NUTRILITE registered for chemical preparations, namely vitamin and mineral food supplements, nutrition enhancing food products and powder mixes for food and beverage products for weight control. The Registrar's decision was largely premised on the state of the register evidence that showed the common adoption of the prefix NUTR- in association with similar wares.
Held: Appeal dismissed. The determining factors with respect to confusion are the lack of inherent distinctiveness of NUTRILITE and the high number of marks including the prefix NUTR- that are registered with respect to the same wares. It can be inferred that customers are accustomed to making minor distinctions between wares bearing the prefix NUTR- in this field. Relying on Boston Pizza International Inc. v. Boston Chicken Inc., 2003 FCA 120, rev'g 15 C.P.R. (4th) 345, the appellant submitted that the NUTRAVITA mark cannot be distinctive because it has not been used in Canada and is an inherently weak mark. However, the Court distinguished the Boston Pizza decision on the basis that such decision concerned a descriptive mark whereas NUTRAVITA is an invented word. Although inherently weak, NUTRAVITA does not entirely lack inherent distinctiveness.
3. Chosen People Ministries v. Canadian Jewish Congress and Reg. TMs, June 19, 2003 FCA (Sexton, Rothstein, Noël JJ.A.) Appeal/Section 9 Notice/Public Authority /Government Control over Charities
Appeal from Trial Division's decision that held that the Registrar erred in publishing notice of the official mark "Menorah Design" under s. 9. The motions judge held that the appellant was not a public authority
Held: Appeal dismissed. The appellant is not a public authority because there is no government control over its activities. The fact that the appellant, as a charity, is obliged to comply with the law generally relating to charities does not give rise to sufficient government control to qualify it as a public authority.
4. NTD Apparel v. Ravinsky Ryan, June 25, 2003 FCTD (Layden-Stevenson J.) Section 45 Appeal/Special Circumstances
Appeals from decisions under s. 45 to expunge two registrations for the trade mark KOALA BLUE. The Registrar ordered the registrations to be expunged because no one responded to s. 45 notices issued against them. The registrant had become bankrupt and its marks were assigned to the appellant but the appellant's ownership had not been recorded in the Trade-marks Office when the s. 45 notices were issued.
Held: Appeals dismissed. The appellant's position is that special circumstances existed that justified non-use of the mark during the relevant time period. Given the nature of the appellant's business, it needed a licensee who could make and distribute KOALA BLUE products in Canada. Until the appellant could consolidate and renew its rights in the marks in Canada, potential licensees were reluctant to enter into a license. Once the appellant had recorded its ownership in the Trade-marks Office and renewed expiring registrations, it actively sought licensees, undertook market studies and prepared artwork for labels and signage. However, the Court found that the period of non-use is lengthy and the appellant's evidence with respect to its efforts to find licensees is little more than bare assertions. Similarly, no details have been provided concerning the market studies. In the absence of "specificity regarding what efforts were made, when they were made, what happened and what is happening", the Court found there to be no basis to conclude that the absence of use was due to obstacles beyond the appellant's control. Also, insufficient facts have been provided to support the appellant's asserted intention to resume use of the mark shortly. The fact that a third party may be able to take advantage of the goodwill associated with the KOALA BLUE trade marks if these registrations are expunged is not relevant in s.45 proceedings.
5. 4-YOU A/S v. Christina America, June 27, 2003 FCTD (Kelen J.) Section 57(1) /Expungement/Confusion
Application under s. 57(1) to expunge the registration for CHRISTINA 4 YOU & Design on the basis that it was confusing when filed with the applicant's mark 4 YOU Design.
Held: Application dismissed because the marks are not confusing. The design marks bear no degree of resemblance in appearance or the ideas suggested by them. The first word CHRISTINA in the respondent's mark plays a prominent role in distinguishing the mark from others that incorporate the expression 4 YOU. The phrase 4 YOU is a common expression in the English language that conveys an obvious meaning other than that provided by the applicant's products.
6. Ten Ren Tea v. Van Cheong Tea et al., July 2, 2003 FCTD (Layden-Stevenson J.) Summary Judgment/Credibility
Motion by plaintiff for summary judgment in an action claiming trade-mark infringement and passing off. The defendants claim that the plaintiff's trade-mark registrations are invalid due to prior use by the defendants.
Held: Motion dismissed. The plaintiff's attack on the credibility of the defendants' affiants is in itself sufficient to decide the motion, because credibility must be decided by a trial judge. In addition, the evidence on the motion is insufficient to determine whether the plaintiff's goodwill lies in its registered trade-marks or in its business name. Other issues also require not only that evidence be weighed and assessed but also that additional evidence be provided. Overall, the action raises issues with respect to distinctiveness, confusion and passing off that are complex and cannot be disposed of on the basis of the materials presented.
7. Nefco Furniture v. The Brick Warehouse, July 9, 2003 FCTD (Dawson J.) Opposition Appeal/Confusion
Appeal from opposition decision that refused an application to register the trade mark MATTRESS EXPRESS. The Registrar held that there was a likelihood of confusion with the previously registered mark BEDDING EXPRESS.
Held: Appeal allowed. While the nature of the wares, the nature of the trade and the degree of resemblance between the marks suggest a likelihood of confusion, the determining factors are the inherent weaknesses of the marks and the fact that the opponent's registered mark was not known to any significant degree as of the material date. The Registrar erred in finding that a weak mark that has been out of use for 7 years could be a source of confusion.
(c) Practice
1. Sobeys Group v. Tolix Holdings et al., June 13, 2003 FCTD (MacKay J.) Motion to Stay Federal Court Action/Section 50 Federal Court Act
Motion by defendants to stay the Federal Court action wherein Sobeys seeks a declaration that the defendants' patent was not infringed and was invalid. The defendants had commenced an earlier action in the Supreme Court of Nova Scotia against Sobeys, claiming breach of licensing and confidentiality agreements and infringement of the subject patent. Sobeys had raised the issue of validity in defence of the Nova Scotia action.
Held: Motion dismissed. The Court noted that a stay pursuant to s. 50 of the Federal Court Act is granted only in the clearest of cases, where the moving party establishes that continuing the action would be oppressive or vexatious or an abuse of process, and where a stay would not cause an injustice to the responding party (see Apotex Inc. v. AstraZeneca (Canada), [2003] FCJ No. 224 at para 12, upheld on appeal [2003] FCA 235). MacKay J. was not persuaded that Sobeys should be denied access to the court of its choice and a declaration in respect of the patent that would relate to its operations in several provinces. Also, even though the Nova Scotia action could be determined on the basis of invalidity of the patent, it may not be determined on that issue, leaving the validity of the patent an open issue between the parties. The Court acknowledged the concern that there not be undue inconvenience and extra cost as a result of two actions in different forums. However, the issues were still undefined in the case at bar since no defence had been filed, and there was no undertaking given by the defendants (as there was in the Apotex case) that they would abide by any decision of the provincial court in relation to validity of the patent. In the Apotex case an undertaking had been given that it would consent to Federal Court proceedings by AstraZeneca for expungement of the copyright registration that was the subject of that action if the provincial court ruled that it was not valid. In the circumstances, the Court was not satisfied that a stay would be in the interests of justice.
2. Intel Corporation v. 3395383 Canada et al., July 18, 2003 FCTD (Morneau P.) Refusals/Fishing Expeditions
Both the plaintiff and the defendants in this trade mark infringement action brought refusals motions. In the action, the plaintiff, the owner of the PENTIUM trade mark, claimed that the defendants' use of PENTIUM CONSTRUCTION, and their registration and use of the domain name pentiumconstruction.com and Pentium.ca, were infringing.
Held: Motion denied, in part. The Prothonotary restated the principle that discovery cannot be used as a fishing expedition, and that a party is not required to answer questions not within its means or knowledge (Crestbrook Forest Industries v. Canada, [1993] 2 F.C. 251 (C.A.)). To put it another way, it is improper to ask questions in an effort to find out something about which the party presently knows nothing, only in the hope that he might find something upon which to build a case (Burnaby Machine & Mill Equipment Ltd. v. Berglund Industrial Supply Co. (1984), 81 C.P.R. (2d) 251 at 254 (FCTD)). With that background, among the questions which were refused were questions designed to elicit the names of suppliers, subcontractors and customers of the defendants, so that the plaintiff could ascertain whether their exposure to the defendants' trade names had actually caused confusion or adversely affected the plaintiff's reputation. The plaintiff was not aware of any actual cases of confusion, only the confusion measured through a survey, which the Prothonotary held "would not accordingly reflect actual confusion as it merely reflects responses to questions posed by the plaintiff to individuals who were not engaged in such dealings or transactions." The Prothonotary agreed with the defendants' submission that permitting the plaintiff to contact the suppliers, subcontractors and customers of the defendants in order to find evidence of confusion would put a strain and even disruption on the defendants' business relations.
3. Suntec Environmental v. Trojan Technologies, July 23, 2003 FCA (Linden J.A.) Stay Pending an Appeal/Summary Judgment/Serious Issue to be Tried/Irreparable Harm/Balance of Convenience
Motion by Suntec for a stay of an injunction that was granted following a motion for summary judgment.
Held: Motion granted. The test for obtaining a stay pending an appeal is the same as that for obtaining an interlocutory injunction. The applicant has established that there is a serious issue to be tried, namely whether the motions judge was correct in preferring the respondent's experts over the applicant's given that there was no viva voce evidence. The applicant would suffer irreparable harm if the injunction is not stayed as its business would be unable to continue to operate. It is not speculation that it would encounter grave difficulties in rebuilding its business should it succeed on the appeal. The balance of convenience favours the applicant because the serious disadvantages suffered by the respondent, as a result of the applicant's continued operation, do not compare with the applicant's loss of its business altogether. The applicant must keep an account of its revenues and profits, shall make no new bids to customers and may not adjust the terms of its existing contracts so as to reduce its profits. The appeal of the matter will be expedited.
4. Express File v. HRB Royalty, July 28, 2003 FCTD (Martineau J.) Motion to Strike Affidavit Evidence/Hearsay
The applicant appealed to the Trial Division from a Prothonotary's decision to (1) strike affidavit evidence of a CBC documentary and (2) refuse to permit the applicant to file an affidavit attesting to its efforts to obtain better evidence than the documentary.
Held: Appeal dismissed. The documentary was about Canadian residents who work in the U.S., or work for U.S. companies in Canada and are paid in U.S. dollars (and, therefore, are liable to pay U.S. income tax). The number of Canadians who pay U.S. income tax was an important issue in the proceeding because the wares and services related to the applicant's electronic U.S. tax preparation and filing service. The evidence was hearsay evidence on an important controversial issue, and not sufficiently reliable to be admitted. Rule 81 of the Federal Court Rules, 1998 requires that, except on motions, affidavits be confined to facts within the personal knowledge of the deponent. While this does not necessarily exclude hearsay evidence, in order to be admitted the hearsay must be "reasonably necessary" and "reliable." Martineau J. found that the Prothonotary had not erred when he held that the evidence was not sufficiently reliable. Martineau J. commented that "…I am far from being convinced that broadcast documentaries or newspaper articles can be adduced in court proceedings in order to prove the truth of their contents, simply because a litigant is encountering difficulties in collecting first hand evidence from reliable sources, governmental or otherwise." Nor had the Prothonotary erred in ordering the offending paragraphs struck before the hearing. In the case of P.S. Partsource Inc. v. Canadian Tire Corp. (2001), 267 N.R. 135, the Federal Court of Appeal held that where hearsay goes to a controversial issue and the hearsay can be clearly shown, it may be struck before the hearing where prejudice by leaving the matter for disposition at trial can be demonstrated. Martineau J. agreed with the Prothonotary that, in the case at bar, the respondent would suffer prejudice as a result of not being able to conduct an effective and valid cross-examination in opposition to the allegations, since the person making the affidavits could provide no information other than that already contained in their affidavits.
II. OTHER COURT DECISIONS
1. Jamie Salé and David Pelletier v. Barr, May 16, 2003 ABQB (Lee J.) Interlocutory Injunction/Personality Rights /Passing Off
Application for interim injunctive relief to prevent the reproduction and distribution of photographs of the applicants taken by the respondent. The respondent took a photograph of the applicants, professional figure skaters, at a public event. Copies of these photographs were subsequently sold on behalf of a charity, who allegedly was informed by a third party that the applicants had consented. The applicants claim appropriation of personality and passing off.
Held: Application granted. Irreparable harm exists because one cannot put a price on one's reputation. The evidence suggests that the respondent is in the practice of "appropriating" and "passing off" photographs of well-known local athletes for personal financial gain.
2. AMEC E&C Services v. Whitman Benn and Associates et al., May 16, 2003 NSSC (Wright J.) Interlocutory Injunction /Passing Off/Estoppel
Application for an interlocutory injunction to require the defendants to stop using Whitman Benn in their name and to withdraw their application to register WHITMAN BENN as a trade mark. The plaintiff acquired all of the shares of Whitman Benn Enterprises Limited. The individual defendants, who had been vendor shareholders of Whitman Benn Enterprises Limited, became employees of the plaintiff. The plaintiff discontinued use of the name Whitman Benn; about a year and a half later, the individual defendants, having left their employ, started a competing business under the name Whitman Benn.
Held: Application granted. The plaintiff has shown a strong prima facie case of its entitlement to the exclusive use of the Whitman Benn name to avoid public confusion. The defendants did not acquire the right to use WHITMAN BENN. While there is no evidence of any confusion having occurred, that may be because the defendants only began using the name 2 months ago. It is sufficient that the offending practice is likely to deceive rather than intended to deceive. The plaintiff is not estopped from seeking this injunction on the basis that the defendants had earlier told individual officers of the plaintiff of their intentions: the plaintiff need not raise a complaint until the actual use of Whitman Benn commenced.
3. Janssen-Ortho v. Amgen Canada and Karisma Canada, May 21, 2003 OSCJ (Nordheimer J.) Interlocutory Injunction /Misleading Communications/Irreparable Harm /Right to Free Speech
Motion for an interlocutory injunction to restrain the defendants from communicating false or misleading information regarding the plaintiff's EPREX drug. Amgen hired Karisma to help increase the sales of its competing product, in part by implementing a "torpedo plan" against the EPREX product. Amgen's instructions were that its name not be associated with the campaign. In the course of the campaign, Karisma made false/inaccurate statements to the media and the medical profession.
Held: Motion dismissed. Although the applicant has provided sufficient evidence to show that 1) the defendants have made false statements about the EPREX product, 2) such statements were made either for a dishonest motive or were made recklessly, and 3) it may suffer economic loss as a result of these statements, the applicant has not shown irreparable harm. The applicant's evidence with respect to irreparable harm consists merely of statements concluding that irreparable harm has occurred. The applicant should have provided evidence of "physicians refusing to prescribe EPREX as a consequence of the circulation of the impugned statements" or of physicians "reporting an unwillingness on the part of their patients to accept a prescription for EPREX for the same reason" or "of patients saying that they will no longer take EPREX because of their fears arising from the impugned statements." Although the provision of such evidence may place a very heavy burden on the applicant, "given the extraordinary relief which an injunction represents… the burden ought to be a heavy one, especially in a case such as this where the effect of the relief, if granted, necessarily involves some infringement of the constitutionally protected right to free speech." The Court concluded that although the applicant's reputation may have been damaged by the false statements, there was no evidence that such damage is irreversible. The Court was not inclined to accept Amgen's claims that it had nothing to do with the misleading statements disseminated to the media by Karisma. "[E]ven if Karisma was on a frolic of its own, as Amgen now suggests, that conclusion does not necessarily exonerate Amgen. Karisma was hired by Amgen to do certain work for it and Amgen had knowledge of the general actions that Karisma would be undertaking. It is at least arguable that Amgen can be held vicariously liable for the actions of Karisma even if those actions were unauthorized."
4. VS Visual Statement v. Insurance Corp. of British Columbia, May 21, 2003 BCSC (Crawford J.) Copyright Infringement in Computer Software/Breach of Confidence /Negligent Mis-statement/Duty of Care
Action for breach of copyright, negligent mis-statement and breach of confidence. VS developed software to help insurance claims adjusters and received approval from the defendant (ICBC) for a pilot project. Although the software was ultimately approved for recommendation for purchase, no purchase occurred because ICBC's final requirements differed from those used in the pilot. It also turned out that ICBC had developed, but not implemented, its own prototype software for the same purpose. VS had informed ICBC early on that there would be no point in "providing its full efforts if ICBC was running some parallel development". It was given assurances that this was not the case but subsequently, ICBC began developing similar software unbeknownst to the representative with whom VS was dealing. This individual assured VS once again that ICBC was not working on a similar project at a date when such statement was no longer true. The defense's position is that there is no cause of action and VS has not suffered any damage.
Held: Re Negligent Mis-statement: Damages awarded in the amount of $250,000. Since Hedley Byrne & Co v. Heller & Partners Ltd. (1964) A.C. 465, "the law has recognized an obligation on persons in certain situations to be careful in what they say; that the proximity and nature of their relationship can give rise to legal obligations; that if there is reliance on the representations, which prove not to be true, and that reliance causes detriment or damage to the innocent party, there may be a remedy in damages." The 5 elements for a successful Hedley Byrne claim, as set out in the Queen v. Cognos, [1993] 1 S.C.R. 87, have been met. The relationship between the parties imposed a duty of care on ICBC. "The assurances given VS while initially true, lost their validity and subsequently were negligently reiterated. VS reasonably relied on those assurances. By then ICBC was developing software for statement taking and diagramming. It amounts to a negligent mis-statement, VS relied on the assurances and there was damage or detriment to it." "The damages are recompense for an effort they would not have made had they known the true facts, i.e., that ICBC did in fact have a similar product in development. VS argued that had it turned its efforts to the police investigation market in 1998, it would have made a greater inroad into that market. That is the loss of a chance, and a factor I take into account. But, at the end, they are general damages that I award."
Re Copyright: The evidence does not meet the high standards required to support a breach of copyright in software programming as set out in Delrina Corp. v. Tiolet Systems Inc. (1993), 47 C.P.R. (3d) 1, aff'd 2002 17 C.P.R. (4th) 289. Much of the idea that had been carried into expression by VS "was the development of the graphical user interface, which only comes from the grind of turning the idea into software, testing it out on users, and rewriting and testing and rewriting".
Re Breach Of Confidence: ICBC did not take VS's idea and use it to its own benefit and so the 4 pre-requisites to a successful breach of confidence action have not been met.
5. Polansky Electronics v. AGT et al., May 23, 2003 ABQB (Clarke J.) Patent Infringement
The plaintiff claims that the defendants have infringed its patent for an interface device which permits fax transmissions to occur over mobile radio. This is a retrial of the action and includes evidence not previously before the Court. The original judge did not have the benefit of the Supreme Court of Canada's decisions in Camco Inc. et al. v. Whirlpool Corporation et al., (2000), 9 C.P.R. (4th) 129 and Free World Trust v. Electro Santé Inc. et al., (2000), 9 C.P.R. (4th) 168. The 1985 Patent Act applies because the Patent in this case was issued prior to October of 1989.
Held: Action dismissed. The defendants' devices do not include a control and switch in the manner taught by the patent. As those features are essential elements of the patented invention, there is no infringement. The defendants' device employs a hybrid circuit and the plaintiff's inventor "testified that he never thought about using a hybrid circuit and … in his view, a hybrid was simply a passive unit that had no control or switch means." The plaintiff's expert opinion that the definitions of "switch means" and "control means" in the patent claims were broad enough to include hybrid circuits is wrong. The patent's claims ought not to be stretched to give the plaintiff "a monopoly on any device that used an interface which allowed or achieved data transmission over a radio transceiver -- regardless of the methodology used to achieve that result."
While the Court did not rule on the validity of the patent, it noted the defendants' argument that the patented technology is obvious and stated that if the patent were to be interpreted broadly enough to capture the defendants' device then it would be in jeopardy for invalidation on the basis of prior anticipation.
6. Fraser Health Authority v. Hospital Employees' Union et al., May 23, 2003 BCSC (Ross J.) Copyright Infringement/Breach of Confidence/Irreparable Harm/Freedom of Expression
Application brought by the defendant Hospital Employees' Union ("HEU") for an Order setting aside an ex parte Order that required HEU to remove from its website documents that the plaintiff claims infringe its copyright and are in breach of confidence. The documents comprise a draft confidential memorandum prepared by an employee of the plaintiff to summarize various bids received with respect to the outsourcing of security services. There is no dispute that the plaintiff would own any copyright in such materials or that the plaintiff has not given the defendants permission to reproduce these materials. HEU submits that there is no copyright in the documents because they are a mere compilation of information received from others. HEU is strongly opposed to the outsourcing of security services.
Held: Application dismissed. There is a serious issue to be tried because the plaintiff has established a strong prima facie case with respect to its claim of copyright infringement. The requirements for a breach of confidence have also been made out: the documents were confidential; the information was acquired in circumstances of confidence and maintained in such circumstances; no disclosure was authorized and HEU was aware of the confidential nature of the documents; the misuse of the information will cause the plaintiff prejudice. The tort of breach of confidence applies to third party recipients of confidential information (Cadbury Schweppes Inc. v. FBI Foods Ltd. [1999] 1 S.C.R. 142 (S.C.C.)). The publication of the documents will cause harm to the plaintiff and to the integrity of the tender process that cannot be measured or quantified in damages. Because HEU would not normally be entitled to obtain the confidential documents, it cannot suffer any harm from being prohibited from disclosing such documents. The Court found that the public interest in the issue of contracting out of security services did not outweigh the public interest in the preservation of copyright and the confidentiality of the bidding process. HEU will be able to continue to make its objections to the contracting out of security services without recourse to the confidential documents. The Court rejected HEU's submissions that the plaintiff should have to meet a more stringent test than that set out in American Cyanamid. Freedom of expression does not give the defendants the right to infringe the plaintiff's copyright.
7. Panago Pizza v. 957822 Alberta et al., May 26, 2003 ABQB (Kenny J.) Interlocutory Injunction/Passing Off/Surname Use
Application in a passing off action for interlocutory injunctions to prevent the use of PANAGOPOULOS, PANAGO and an ellipse-shaped logo. One of the defendants, Spiros Panagopoulos, started a pizza business but subsequently sold all of the assets of his company, including the goodwill in the Panagopoulos name, to the plaintiff. The plaintiff registered various trade marks incorporating the word Panagopoulos as well as an elliptical shape. The plaintiff now uses an abbreviation of Panagopoulos, namely PANGO. Spiros Panagopoulos is now operating and franchising pizza restaurants under the name Pizzarama Pizzaria. The name Panagopoulos was appearing on signage and boxes used by Pizzarama Pizzaria but that use ceased after the plaintiff complained. The defendants nevertheless maintain that there is no restriction on Mr. Panagopoulos with respect to the use of his name.
Held: Application dismissed because there is insufficient non-speculative evidence. The plaintiff's evidence of confusion is limited and anecdotal. If a loss of goodwill has occurred, there is no evidence that it could not be compensated for in monetary damages. Moreover, given that the defendants are not using PANAGOPOULOS pending the outcome of the trial, it is difficult to envisage that there is any irreparable harm occurring that requires an interlocutory injunction. Although the plaintiff may have abandoned use of PANAGOPOULOS, it may still have enough residual goodwill in that name to support a passing off action. The plaintiff's trade mark registrations disclaim the right to the exclusive use of the word "Panagopoulos" apart from the trade marks. "[T]his non-exclusivity forecloses most actions by trade mark since it is uncertain there is an infringement of the trade mark." As neither party filed a copy of their agreement, the Court cannot determine if Mr. Panagopoulos permanently surrendered his right to use his name in association with a pizza restaurant. Any harm that may arise through the defendants' use of elliptical shapes on menus is too speculative to support an interlocutory injunction.
III. OPPOSITION BOARD DECISIONS
1. i2 Technologies v. Global Development, June 25, 2003 (Bradbury) Confusion
Application for i2K based on proposed use for computer software which guides, facilitates, documents and generates information in connection with information management projects and programmes for the collection, storage, visualization, analysis and reporting of multi-sectoral data, and user manuals and guides therefore etc. Application also based on use for various related services. Opposition based, inter alia, on s. 12(1)(d) due to confusion with i2 TECHNOLOGIES & Design registered for computer software for manufacturing, planning and scheduling, software, installation, maintenance and repair of computer software, and computer programming for others. The applicant filed neither evidence nor written argument.
Held: Application refused. The extent to which the marks have become known and the length of time that the marks have been used favour the opponent. The opponent's affiant stated that the parties' wares would travel the same channels of trade. The applicant has not met the onus on it with respect to the issue of confusion.
2. Hudson's Bay Company v. William E. Coutts, June 25, 2003 (Bradbury) Confusion /Section 50
Proposed-use application for EXPRESSIONS FROM HALLMARK & Design for gift wrapping paper, gift enclosure cards, gift trim, personal notes and personal stationery, stickers, seals and calendars. Opposition based, inter alia, on s. 12(1)(d) due to confusion with REAL EXPRESSION registered for stationery, namely wrapping paper, wrapping tissue, bows and ribbons.
Held: Application refused. Use of the applicant's mark has not been shown to accrue to the benefit of the applicant under s. 50 of the Trade-marks Act. The word EXPRESSIONS is the largest and most dominant feature of the applied for mark. Reputation acquired separately with respect to the other features of the mark (HALLMARK and the Crown Design) does not assist the applicant, in part because such reputation may not have accrued to its benefit. There is a strong overlap between the nature of the parties' wares and their channels of trade.
3. Red Carpet Food Systems v. James B. Furgale, June 25, 2003 (Bradbury) Confusion
Proposed use application for CARIBOU COFFEE for ground and whole bean coffee, beverages… coffee cups… tea pots… gift baskets… operation of a coffee café… coffee machines etc. Opposition based, inter alia, on s. 12(1)(d) due to confusion with CARIBREW COFFEE registered for coffee machines and ground coffee… office coffee supply services. The applicant filed neither evidence nor written argument.
Held: Application refused due to the resemblance between the marks and the similarity of the related wares and services.
IV. SECTION 45 DECISIONS
1. Shapiro Cohen Andrews & Finlayson v. 1089751 Ontario, April 2, 2003 (Savard) Trade Name vs. Trade Mark Use/Section 50
LAUGHING STOCK registered for use in association with the operation of a business dealing in party wares, gift wares, household utensils, office supplies, wrapping supplies, paper goods, gourmet foods, wearing apparel, stuffed animals, toys, candy, greeting cards, glassware and crockery.
Held: Registration expunged. Use of the corporate name "Laughing Stock (1995) Inc." on invoices does not constitute use of LAUGHING STOCK per se as a trade mark. The presumption that a company name is a trade-name can be rebutted if it is shown that the words constituting the trade mark stand out from the remainder of the company name and/or address. The words "LAUGHING STOCK" appear in the same size and same lettering as the remainder of the corporate name "Laughing Stock (1995) Inc. The license agreement filed does not contain any provisions concerning the control by the registrant of the character and quality of the services provided by Laughing Stock (1995) Inc. Hence, any use by Laughing Stock (1995) Inc. is not use complying with s. 50 of the Act.
2. Baker & McKenzie v. Proxima Systems, April 17, 2003 (Savard) Section 4(1)/Evidence of Use
PROXIMA registered for use in association with computer software, computers, computer hardware, data display applications, battery back-up systems and consulting services in information management.
Held: Registration restricted to computer software and the services. Registrant used PROXIMA on the user manuals accompanying its software programs. Invoices and sales figures filed showed sales of the computer software associated with the trade mark to Canadian companies during the relevant period.
3. Riches, McKenzie & Herbert v. Smith & Nephew, April 17, 2003 (Savard) Sufficiency of Evidence/Minor Deviation
ENDO-BUTTON registered for use in association with medical and surgical instruments namely, surgical fasteners.
Held: Registration maintained. The registrant provided several invoices bearing dates during the relevant period and an original sample of the package in which the surgical fasteners are sold in Canada. Although the use of the trade mark on the packaging appears as one word rather than two words, the Hearing Officer found this variation to be minor.
4. Smart & Biggar v. Swede Can Group, April 17, 2003 (Savard) Section 4/Sufficiency of Evidence/Oral license/Use of Mark Per Se
I.Q. FURNITURE registered for use in association with various types of furniture and office accessories and retail furniture sales.
Held: Registration restricted to the services. An oral license was granted by Swede-Can Group Incorporated to I.Q Furniture Incorporated for use of the mark. I.Q Furniture Incorporated became bankrupt and its assets, including the right to use the mark, were purchased by Gallery I Enterprises Incorporated. Evidence filed by the president of Gallery I Enterprises Incorporated showed price tags bearing the trade mark attached to furniture sold by the registrant and posters outlining the company's payment and return policies bearing the mark "I.Q." The requesting party argued that since there is no information concerning the provisions of the oral license, particularly the control of the character and quality of the wares and services, any use shown cannot be deemed use by the registrant. Since the affiant was president of the licensee during the relevant period, the Hearing Officer inferred that the registrant would probably have had control over the character and quality of the services and/or wares associated with the trade mark. A registrant need only establish a prima facie case of use. The Hearing Officer would have preferred invoices or sales figures showing that the registrant or its licensee had been operating a retail furniture store during the relevant period. However, the Hearing Officer was prepared to infer from the affiant's statements of fact that the licensee was operating a retail furniture store in Canada and that price tags were affixed to the furniture during such period. Use of "I.Q." on the store policy posters does not constitute use of the registered trade mark "I.Q. FURNITURE", as the omission of the word "FURNITURE" is a major deviation. However, use of the registered trade mark in the return policy poster, as follows: "Thank you for shopping at I.Q. Furniture store" - would constitute use of the mark. Use of the mark on the price tags appears as a design, and not just the words "I.Q. FURNITURE". Hearing Officer cannot conclude that the words "I.Q. FURNITURE" per se would be perceived as forming a distinct trade mark apart from the whole matter.
5. Sim & McBurney v. Jempak Canada, April 17, 2003 (Savard) Minor Deviation
BLUE-JET registered for use in association with "savons et détergent synthétisé".
Held: Registration amended to delete "savons". The evidence showed that the trade mark BLUE-JET had been used on the side panel of the packaging for lemon scent detergent. Although the mark appears without the hyphen, such deviation is very minor and is not apt to deceive or injure the public in any way.
6. Bereskin & Parr v. Lander Co. Canada, April 17, 2003 (Savard) Evidence of Use with Registered Wares/Sufficiency of Evidence
ALL CLEAR registered for use in association with anti-dandruff shampoo.
Held: Registration maintained. Evidence showed that during the first year of the relevant period the registrant sold "shampoo" in association with the trade mark. Requesting party argued that this was not evidence of use in association with "anti-dandruff shampoo". The registrant submitted that it markets its ALL CLEAR shampoo towards the "dandruff shampoo market". Hearing Officer concluded that the registrant's ALL CLEAR shampoo qualifies as an anti-dandruff shampoo. The fact that the general public may or may not be aware that the registrant's shampoo is addressed to a particular market is irrelevant. The Hearing Officer held that when the registrant marketed and sold its shampoo to the retailers it was clear that it was targeting the dandruff shampoo market.
7. Hillerrich & Bradsby v. Head Sport, April 23, 2003 (Savard) Sufficiency of Evidence
GENESIS registered for use in association with various sporting shoes, gymnastic and sporting articles and tennis rackets.
Held: Registration amended. The evidence only showed use in association with tennis rackets and envelopes for tennis rackets within the relevant period. The Hearing Officer held that the remainder of wares covered by the registration ought to be deleted.
8. Swabey, Ogilvy, Renault v. Selcom, April 30, 2003 (Savard) Sufficiency of Evidence
SELCOM registered for elevators and lifts, door openers, elevator doors, elevator door operators, elevator door hangers, and parts for the aforesaid.
Held: Registration maintained. The registrant provided invoices and annual sales figures showing sales to various elevator companies in Canada during the relevant period. Sample labels were provided bearing the trade mark as placed on the packaging of the wares.
9. Americal v. Wertex Hosiery, April 30, 2003 (Savard) Sufficiency of Evidence/Special Circumstances
SILKY FIT registered for use in association with hosiery.
Held: Registration expunged. The registrant supplied hosiery products to Kmart Canada pursuant to an exclusive arrangement. Zellers acquired Kmart and ceased purchasing the registrant’s products. The registrant asserted that “to the best of his belief” products bearing the trade mark were sold to Kmart during the relevant three year period. The registrant's allegation of use without any supporting documentation was insufficient for the Hearing Officer to conclude that there was use during the relevant period. Special circumstances excusing the non-use were held not to exist – the termination of the exclusive arrangement was beyond the registrant’s control, but could not excuse non-use throughout the whole of the relevant period. The Hearing Officer concluded that the registrant made a voluntary decision to not resume use of the trade mark during the relevant period.
10. Riches, McKenzie & Herbert v. Sediver Société Européenne d'Isolateurs en Verre et Composite, June 11, 2003 (Savard) Sufficiency of Evidence
ARMOURLITE registered for use in association with high-tension composite insulators.
Held: Registration maintained. Registered owner filed an explanatory brochure presenting the range of products manufactured and distributed by the owner, invoices and purchase orders concerning the sale of the wares. The invoices filed confirm that there were some sales of the wares during the relevant period in the owner's normal course of trade.
11. Gowling Lafleur Henderson v. Original Sacher-Torten Handel-Und, June 12, 2003 (Savard) Section 50/Evidence of Use
SACHER registered for use in association with coffee, instant coffee and powdered coffee.
Held: Registration expunged. Registered owner licensed Sacher Hotels to sell SACHER coffee throughout the world, including Canada. Requesting party argued that any use shown by Sacher Hotels is not use accruing to the registrant pursuant to s. 50 of the Act. Although the registrant has stated that Sacher Hotels is the licensee of the trade mark SACHER, there is no evidence that the registrant has direct or indirect control of the character and quality of the wares sold in association with the trade mark. Hearing Officer unable to conclude that the use shown is in compliance with s. 50 of the Act. Invoices filed are in a foreign language, and appear to evidence sales occurring outside of Canada.
12. Fasken Martineau DuMoulin v. AGF Management, June 12, 2003 (Savard) Use of Mark Combined with Other Words/Section 4(2)
MULTIMANAGER registered for use in association with various types of investment and financial services.
Held: Registration maintained. Registrant submitted that it advertised its services in association with the trade mark on the Internet and through the distribution of print advertisements to investors and investment advisors in Canada. Use of the ™ symbol after the word MULTIMANAGER, such as in "MultiManager™ Pool Selection", would be sufficient to draw the purchaser's attention to the fact that MULTIMANAGER is being used and is functioning as a trade mark.
13. Swabey, Ogilvy Renault v. Mary Maxim, June 26, 2003 (Savard) Section 4/Use of Mark in Catalogues
CRAFTERS' GALLERY registered for use in association with various knitting and handicraft supplies, retail catalogue and mail order services, retail outlet services for sale of handicraft items, supplies and kits.
Held: Registration maintained. Registrant evidenced use of the mark on mail order catalogues, sample price tags and representative invoices. The Hearing Officer found that at the time the customer orders the wares from the catalogue, notice of the association between the trade mark and the wares would be given to the purchaser by way of the fact that the wares are shown in the CRAFTERS' GALLERY section of the catalogue.
V. FOREIGN DEVELOPMENTS
Designs Australia
The Designs Bill 2002 is presently before the Australian Parliament and is expected to be passed shortly. This bill will repeal the Designs Act 1906, and makes a number of important changes, including:
- reducing the maximum term of protection from 16 years to 10 years;
- replacing pre-registration substantive examination with a post-registration, pre-litigation, substantive examination; and
- providing a "spare-parts" defence to what would otherwise be an infringing use of a registered design in connection with replacement of spare parts.
PCT
South Africa has amended its national law with effect from April 23, 2003, to comply with amended PCT Article 22(1), extending the minimum time limit for Chapter I national phase entry from 20 months to 30 months. Twelve contracting states have not yet complied with the amended Article 22(1), including Sweden, Switzerland, Brazil, and Singapore.
