Recent Decisions August 2006
I. FEDERAL COURT DECISIONS
(a) Patents
1. Abbott et al. v. The Minister of Health and Ratiopharm, May 18, 2006 FCA (Sharlow, Décary and Malone JJ.A.) Appeal/Prohibition Order/Infringement/Invalidity/Anticipation/Intermediate/Patented Medicines (Notice of Compliance) Regulation 5(1)(b)
Appeal from a decision dismissing an application for an order prohibiting the Minister from issuing an NOC to Ratiopharm in respect of clarithromycin until the expiration of 3 patents owned by Abbott in respect of its product marketed under the name Biaxin. Abbott claims to have discovered 3 forms of clarithromycin: "Form 0", "Form I", and "Form II". Form 0 is an unstable intermediate that is inevitably produced in the process of making Form II, the medicine contained in Ratiopharm's product. Abbott alleged infringement of the '274 patent claiming Form 0. Ratiopharm alleged non-infringement and invalidity. The Court held that Ratiopharm did not infringe because a listed patent can only be asserted against the final product of a second person, and not against an intermediate used by the second person. The Judge held, however, that in the event he was mistaken, the patent was invalid due to anticipation. Abbott also argued that the Judge erred in finding the '606 patent invalid and in finding that Ratiopharm did not infringe the '361 patent.
Held: Appeal dismissed. The Judge erred when he found that Ratiopharm's product did not infringe the '274 patent since s. 5(1)(b) of the Regulations is broad enough to include the use of a patented substance at an intermediate stage in the production of the proposed new drug. Ratiopharm’s allegation of invalidity due to anticipation is justified. The '274 patent is anticipated because a skilled person making Form II following the teaching of the prior art would inevitably make Form 0, even though steps were not taken to stabilize it, and even though the formation of Form 0 may not have been recognized by the skilled person. The claims of the '274 patent in issue are directed to Form 0 itself and are not related to the claims for stabilizing Form 0. When the subject-matter described in the prior art results in infringement if performed, then the disclosure condition is satisfied; that is, what would infringe if later, anticipates if earlier. The Judge did not err in holding the '606 patent invalid due to anticipation and in holding that the '361 patent was not infringed by Ratiopharm.
2. Pharmascience v. Sanofi-Aventis and The Minister of Health and Schering, June 7, 2006 FCA (Sharlow J.A.) Notice of Motion/Prohibition Order/Invalidity/Abuse of Process/Patented Medicines (Notice of Compliance) Regulations
Motion on appeal by Pharmascience seeking an order that a certain patent is invalid and incapable of supporting an order under the Regulations. Pharmascience argued that the patent was found to be invalid in another case under the Regulations, which was affirmed on appeal. In the alternative, Pharmascience sought an order that it is an abuse of process for Sanofi-Aventis to continue to argue that the patent is valid.
Held: Motion dismissed. The prior unrelated trial judgment dismissing an application for a prohibition order is not a final determination as to the validity of the patent. NOC proceedings are summary and do not determine the validity of a patent, but only whether the NOA is justified and whether an order of prohibition should issue. The abuse of process argument has no merit. The Trial Judge in the prior unrelated case found the generic company's assertion that the patent was invalid for lack of sound prediction justified. In this case, Pharmascience is alleging invalidity on the basis of double patenting. The respondents cannot be faulted for failing to respond to an allegation of invalidity that was not raised.
3. Pfizer et al. v. The Minister of Health and Ratiopharm, June 9, 2006 FCA (Linden, Létourneau and Malone JJ.A.) Appeal/ Prohibition Order/Selection Patents/Special Advantage/Empirical Investigation/Verification/ Patented Medicines (Notice of Compliance) Regulations
Appeal from a decision dismissing an application to prohibit the Minister from issuing an NOC to Ratiopharm for the production of a generic version of amlodipine besylate (Besylate) until after the expiry of Pfizer's patent. The invention claimed in the patent is the selection of Besylate from a class of about 80 pharmaceutically acceptable salts of amlodipine. Besylate was selected because of the discovery of its unusual combination of desirable properties when preparing pharmaceutical formulations. The search for an alternative salt form became necessary when Pfizer found that the maleate salts could not be formulated into a suitable dosage form. The Applications Judge concluded that because of the lack of rationale and explanation offered by Pfizer as to why certain salts from a known class were tested, there was no disclosure of a special advantage. The subject matter of the patent was held to be merely an exercise in verifying existing properties and testing the degree of known characteristics, which is not patentable. At issue in the appeal was whether Pfizer's research leading up to its patent was merely verification of Besylate's formulation properties or whether its analysis amounted to actual invention of Besylate, allowing Pfizer to claim a selection patent.
Held: Appeal allowed. Order for prohibition issued. The patent is a valid selection patent as Pfizer's discovery of Besylate's special formulation properties created a special advantage in dosage stability and processability. The formulation properties of any salt of amlodipine could never have been expected, but had to be determined empirically. The Applications Judge erred when he concluded that Pfizer's investigation amounted to mere verification, which relates to confirmation of compounds already discovered and made. Empirical research for the purpose of making a selection from a class is not verification.
4. Pharmascience v. Sanofi-Aventis, The Minister of Health and Schering, June 21, 2006 FCA (Sharlow, Sexton and Malone JJ.A.) Appeal/ Prohibition Order/Sufficiency of NOA/Invalidity/Obviousness/Double Patenting/ Patented Medicines (Notice of Compliance) Regulation 5(1)(b)(iv)
Appeal from an order prohibiting the Minister from issuing an NOC to Pharmascience for ramipril capsules (marketed under the name Altace) until after the expiry of the '457 and '206 patents. Three patents were listed in respect of Altace; the '087 and '457 patents are owned by Aventis and the '206 patent is owned by Schering and licensed to Aventis. Pharmascience alleged that it would not infringe the '457 patent because it intended to use ramipril for the treatment of hypertension, not cardiac insufficiency. The Trial Judge held that Pharmascience's NOA was inadequate as it failed to set out the basis upon which marketing would not include marketing for the treatment of cardiac insufficiency. The central point in the appeal regarding the '456 patent was whether the allegation of non-infringement was justified in view of the interpretation of s. 5(1)(b)(iv) of the Regulations. Pharmascience argued that the '206 patent was invalid on the basis of obviousness and double patenting, alleging that the compounds claimed were not patentably distinct from those claimed in the expired '087 patent. Pharmascience further alleged that both the '087 and '457 patents would have taught the skilled person the invention disclosed in the '206 patent.
Held: Appeal dismissed. The prohibition order ceased to have effect with respect to the '457 patent when it expired on December 13, 2005, but remains in effect with respect to the '206 patent. The Trial Judge did not apply the correct legal test in finding that the NOA was inadequate. The record establishes that Aventis was in no doubt, after being served with the NOA and the detailed statement, that Pharmascience proposed to market its product for use in the treatment of hypertension and not for cardiac insufficiency. Pharmascience is entitled to the benefit of the presumption that it will market its ramipril capsules only for use in the treatment of hypertension. The narrower interpretation of s. 5(1)(b)(iv) of the Regulations is correct. The Regulations are intended to prevent infringement by Pharmascience, not by patients. As there was no evidence that Pharmascience would infringe the '457 patent, or that it would induce or procure the infringement by others, the allegation of non-infringement is justified. The Trial Judge was correct to find that the allegation of invalidity of the '206 patent was not justified. There was no evidence that showed that the range of compounds covered would have been obvious to a skilled person in the art in view of the '087 and '457 patents. It was unnecessary to consider whether the Trial Judge was correct to conclude that the doctrine of double patenting is not limited to cases involving a single inventor. However, the Court stated it was not prepared to adopt the proposition that double patenting can never apply unless there is a single inventor and stated that the doctrine should be left to evolve on a case by case basis. Because the inventors of the '087 and '457 patents were working independently of the inventors of the '206 patent, the Court stated that it was not reasonable to find that the filing of the '206 patent was an attempt to unduly extend the term of the '087 and '457 patent.
5. Aventis Pharma and Sanofi-Aventis Deutschland v. Pharmascience and The Minister of Health, July 10, 2006 FCTD (Gauthier J.) Prohibition Order/Declaration/ Sufficiency of NOA/Infringement/Patented Medicines (Notice of Compliance) Regulations
Application by Aventis seeking a declaration that Pharmascience's NOA is not sufficient under the Regulations. In the alternative, Aventis sought an order prohibiting the Minister from issuing an NOC to Pharmascience in respect of ramipril oral capsules until after expiration of the '089 patent. Pharmascience was seeking an NOC for ramipril for the treatment of hypertension and alleged non-infringement of claim 11 of the '089 patent, which was directed to the use of the compound for the treatment of cardiac and vascular hypertrophy and hyperplasia. Aventis argued that Pharmascience's NOA was deficient because it failed to explain how infringement by patients would not occur. Aventis also argued that Pharmascience's allegation of non-infringement is not justified because infringement by patients would inevitably occur. Aventis further argued that a footnote of one reference cited in Pharmascience's product monograph discussed the uses protected by its patent.
Held: Application dismissed. Following the FCA's recent decision in Pharmascience v. Sanofi-Aventis (2006 FCA 229), the Court held that the NOA was adequate as it contained a clear reference to the fact that its marketing would not be directed toward the treatment of cardiac insufficiency. Pharmascience's allegation of non-infringement is justified. The Court concluded that it is probable, and likely inevitable that in some cases patients suffering from hypertrophy and hyperplasia, who do not also suffer from hypertension, will use Pharmascience's product; however, Aventis' evidence and arguments did not establish that Pharmascience's proposed product monograph or its actions would induce infringement by patients. The Court also adopted the conclusion in Aventis Pharma v. Apotex (2005 FC 1461) where the same argument was raised by Aventis and where Justice von Finckenstein concluded that the reference listed in the product monograph could not be considered to link ramipril with the treatment of cardiac and vascular hypertrophy and hyperplasia.
(b) Trade Marks
1. Cluett, Peabody Canada v. Effigi, March 23, 2005 FCTD (de Montigny J.) Opposition Appeal/Confusion
Appeal from opposition decision that rejected the appellant’s opposition to the respondent’s proposed use application to register AEROPEAK BY DE UNGAVA for clothing. The Registrar held that there was not a likelihood of confusion with the appellant’s ARROW marks, registered for clothing.
Held: Appeal dismissed. Although the first four factors listed in s. 6(5) favour the appellant, the resemblance between the marks is most important. The Court rejected the appellant’s argument that special weight must be given to the first portion of the mark. “The first portion of a mark is important, to be sure, but it cannot be decisive when the mark, taken in its totality and without dissecting it, is not similar in appearance, sound or idea suggested.”
2. Loblaws v. No Frills Auto and Truck Rental, April 28, 2006 FCTD (O’Keefe J.) Opposition Appeal/Section 30(b)
Appeal from opposition decision that rejected the appellant’s opposition to the respondent’s application to register NO FRILLS for a car and truck rental operation based on use since September 1992. One of the grounds of opposition was that the respondent had not used its mark but the Registrar found that the appellant had not met its evidential burden with respect to this ground. The appellant filed new evidence on appeal; the respondent filed neither evidence nor submissions.
Held: Appeal allowed. The appellant’s new evidence would have materially affected the Registrar’s decision. The Court concluded that the s. 30 ground should succeed because the appellant’s evidence showed irregularities in the respondent’s corporate records and the respondent did not file any evidence that addressed these irregularities or demonstrated any use during the four years prior to the filing of its application, i.e. it did not satisfy the Court that it had used its mark continuously since its claimed date of first use.
3. H-D Michigan v. MPH Group, April 28, 2006 FCTD (O’Keefe J.) Opposition Appeal/ Confusion/Evidence that Postdates the Material Date
Appeal from opposition decision that rejected the appellant’s opposition to the respondent’s proposed use application to register HARLEYWOOD for the operation of a nightclub, clothing and mugs. The Registrar held that there was not a likelihood of confusion with the appellant’s mark HARLEY-DAVIDSON (registered inter alia for restaurant and bar services and clothing) in part because, although the appellant had a reputation with motor cycles, there were flaws with respect to its evidence of use with services and clothing, which resulted in the mark lacking distinctiveness in their regard. The Registrar did however comment that if he was wrong about the appellant’s lack of distinctiveness with respect to restaurant services, then he would have found a likelihood of confusion with the appellant’s HARLEY mark, registered with respect to such services. Both parties filed new evidence on appeal.
Held: Appeal allowed. The new evidence would have materially affected the Registrar’s findings of fact and assessment of the likelihood of confusion. In particular, the appellant’s new evidence addressed some of the inadequacies which caused the Registrar to find that the appellant had not established use of its marks. Also, the respondent’s evidence of the expungement of one of the appellant’s registration four months after the registrar’s decision is significant to the s. 12(1)(d) ground. In addition, the Court held that evidence of the abandonment of one of the appellant’s pleaded applications was an important fact, even though the abandonment occurred after the advertisement of the opposed application. Use of a related but unpleaded mark can be considered as a surrounding circumstance under s. 6(5); it was relevant that there is a section of the appellant’s New York City HARLEY DAVIDSON café that is called HARLEYWOOD. The Court found all of the s. 6(5) factors to favour the appellant, with the result that the Registrar’s decision re the s. 12(1)(d) ground was wrong. The Court stated that its conclusion was “reinforced by the fact that the respondent has not suggested that it has any inherent reason for adopting a trade-mark that includes the HARLEY term.”
4. Loblaws v. Telecombo, May 25, 2006 FCTD (Mactavish J.) Opposition Appeal/ Section 30(b)/Evidence of Contents of Prosecution File
Appeal from opposition decision that rejected the appellant’s opposition to the respondent’s application to register RESIDENT’S CHOICE for restaurant services and retail pharmacies. The respondent did not file evidence before the Board or the Court and did not appear at the appeal.
Held: Appeal allowed. The application was based upon use but there was a letter from an employee of the respondent in the file that requested expedited examination on the basis that the respondent wanted to “launch our service package to apartment and condominium residents in the Greater Toronto Area”. The Registrar refused to consider this letter since it had not been introduced as evidence, but he did comment that it would have had a material effect if it had been in evidence. The appellant filed a copy of the letter as new evidence on appeal and on this basis the Registrar’s decision was reversed.
5. Yee Hong Centre for Geriatric Care v. Grace Christian Chapel, May 29, 2006 FCTD (Heneghan J.) Summary Judgment
Motion for summary judgment in an infringement and passing-off action. The plaintiff owns a registration for YEE HONG (and for a Chinese character version of this mark) for nursing home services and seeks to enjoin the defendant from using Chinese characters, which translate into YEE HONG in English, in its advertisements for nursing homes. When asked to stop use, the defendant responded that confusion was not likely because the pronunciations would be different to speakers of Chinese dialects other than Mandarin. The defendant says that the English version of its name is “Grace Seniors Home”, not “Grace Yee Hong Seniors Home”. Although the same characters appear in its name as in the plaintiff’s registration, the defendant says that these characters are generic with reference to rest homes and nursing homes. Each party filed conflicting expert evidence concerning the meaning of the Chinese characters. An amended statement of defence was filed to claim that the plaintiff’s registration is invalid on the basis of lack of distinctiveness.
Held: Motion dismissed because there is conflicting evidence as to the meaning of the Chinese characters. The resolution of their meaning is key to the outcome of this action.
6. Bojangles’ International v. Bojangles Café, May 31, 2006 FCTD (Noël J.) Opposition Appeal/Distinctiveness/Initial Onus/Survey Evidence
Appeal from opposition decision that rejected the appellant’s opposition. The Registrar held that the non-distinctiveness ground failed because the opponent’s mark was neither well known in at least one area of Canada nor widely known in Canada.
Held: Appeal dismissed. Although the Registrar erred in stating the opponent’s initial onus, the outcome does not change. The proper test for determining if an opponent has met its initial onus with respect to a distinctiveness ground of opposition is: at the material date, was the opponent’s mark known “to some extent at least”, which can be decided by assessing whether the reputation of the opponent’s mark was substantial, significant or sufficient enough to negate the distinctiveness of the applicant’s mark. The opponent’s restaurants are located in the U.S. Evidence of some Canadians viewing its website and attending its restaurants was not determinative of it being known to some extent in Canada. Nor were a limited number of advertisements/articles that appeared in some magazines that circulate in Canada. Advertisements directed to potential franchisees would not have any notable impact on the reputation of the opponent’s mark from the standpoint of a Canadian customer. Signs on highways likely used by Canadians travelling in the U.S. did not support any conclusion in favour of the opponent given that customers travelling by car are inundated by advertising and the exposure of the opponent’s mark appears limited. Participation in events that Canadians attended at the U.S. Embassy in Ottawa on one date is relevant but not significant. This case is distinguishable from the Motel 6 and Andres Wines cases in that in both those cases there was evidence that the foreign trade mark was known by the general public in Canada through word of mouth or the media.
The opponent filed new evidence on appeal, namely a survey, but it is irrelevant since it was conducted after the material date. In any event, the first question, “are you aware of the Bojangles’ restaurants, or not?” is biased and the survey did not employ a control condition. The fact that the opponent’s solicitor, rather than its survey expert, drafted the questions casts further doubts as to the validity of the survey.
7. Voltige v. Cirque X, June 5, 2006 FCTD (Phelan J.) Interlocutory Injunction/ Irreparable Harm
Motion for an interlocutory injunction in a trade mark infringement case. The plaintiff seeks to enjoin the defendant from using AVAIA on the basis that it is confusing with its registered mark CAVALIA. Both marks are used in association with circus-type horse shows.
Held: Motion dismissed. The plaintiff has not demonstrated irreparable harm. The plaintiff simply made bold allegations of loss rather than providing an indication of the nature, type and quality of loss and some analysis of the circumstances to demonstrate that the loss is not reasonably calculable.
8. Eli Lilly v. Novopharm, June 30, 2006 FCTD (Heneghan J.) Opposition Appeal/ Distinctiveness/Res Judicata
Appeal from opposition decision that refused the appellant’s application to register the colours used on its 20 mg capsules of PROZAC on the basis of lack of distinctiveness.
Held: Appeal dismissed. The appellant argued that the Court should conduct a de novo hearing because the Registrar committed errors of law in rejecting 1 affidavit and in excluding certain evidence of others. This argument failed because those affidavits are not “new evidence”. The Registrar is authorized to make findings of fact; he assessed the admissibility of the evidence and there is no basis on which the Court can reweigh the evidence. The Registrar’s decision was reasonable. Res judicata based on a passing-off action between the parties does not apply; although both proceedings involve an assessment of the issue of distinctiveness, the context differs.
9. Tradition Fine Foods v. Groupe Tradition’l, July 10, 2006 FCTD (Blanchard J.) Opposition Appeal/Distinctiveness
Appeal from opposition decision that rejected the opponent’s opposition to an application to register BAGEL TRADITION’L & Design. The appellant’s position is that the respondent’s mark is confusing with its mark TRADITION, used in association with baked goods.
Held: Appeal dismissed. The Court found “there to be almost no points of resemblance between the” marks. It agreed that because the marks are weak and the nature of their respective wares – muffins versus bagels – are different, little weight should be given in this case to the fact that both marks exist in the same general class.
II. OTHER COURT DECISIONS
1. Mattel v. 3894207 Canada, June 2, 2006 SCC (Binnie J.) Opposition Appeal/Standard of Review/Famous Marks/Confusion/Survey Evidence
Appeal from FCA decision that upheld the Opposition Board’s rejection of the appellant’s opposition. The appellant opposed the respondent’s application for BARBIE & Design for various restaurant services, claiming a likelihood of confusion with its BARBIE mark, which is famous for dolls. The appellant argued that the Board gave too much weight to the differences between the parties’ wares and services.
Held: Appeal dismissed.
The consumer to be considered with respect to ordinary consumer wares and services is one of average intelligence, “who is running behind schedule and has more money to spend than time to pay a lot of attention to details” and who is functionally bilingual. “There is no evidence that adult consumers would consider a doll manufacturer to be a source of good food, still less that the BARBIE trade-mark would be understood to guarantee, as the 1953 Report (at p. 38) put it, ‘character and quality’.” “Nevertheless, the recognition in our society that ‘famous brands’ are widely licenced for wares and services not traditionally associated with the mark must be kept in mind as another ‘surrounding circumstance’.”
Binnie J. drew an adverse inference from the lack of evidence of actual confusion.
Although the lower courts and Board commented on the parties’ actual operations, this did not constitute an error as they did not misapprehend that the issue is what the registration would entitle the respondent to do.
The appellant argued that the Pink Panther case wrongly limited the scope of protection available to a famous mark, by focusing too much on the connection or similarity between the parties’ wares/services. Binnie J. agreed that the underlined portion of the following comment of Linden J.A. in Pink Panther put the bar too high, “Where no connection is established, it is very difficult to justify the extension of property rights into areas of commerce that do not remotely affect the trade-mark holder. Only in exceptional circumstances, if ever, should this be the case.” (However, Linden J.A. did state the correct test elsewhere in his decision.) Similarly, in the Lexus case Linden J.A. “misspoke to the extent he suggested that, for confusion to occur, there must be ‘some resemblance or linkage to the wares in question’.” However, in their dispositive passages, neither the Pink Panther or the Lexus decisions departed from the totality of the circumstances test. To the extent that Linden J.A.’s obiter statements can be interpreted to always require a “resemblance” between the respective wares and services, they should not be followed.
The appellant argued that the respondent was “a deliberate free rider” but mens rea is of little relevance to the issue of confusion.
The Applications Judge was correct in excluding the appellant’s survey evidence on the basis that it is not relevant to the issue at hand. (The survey asked, “Do you believe that the company that makes BARBIE dolls might have anything to do with this sign or logo?”) In any event, at most the proffered survey indicated that BARBIE is well known and the courts have all been willing to accept that without the survey evidence.
Binnie J. confirmed that the proper standard of review with respect to a decision of the Opposition Board is reasonableness.
2. Veuve Clicquot Ponsardin v. Boutiques Cliquot et al., June 2, 2006 SCC (Binnie J.) Famous Marks/Trade Mark Infringement/ Depreciation of Goodwill
Appeal from FCA decision that upheld the FCTD’s finding that there was little risk of confusion between VEUVE CLICQUOT champagne and CLIQUOT women’s clothing stores and that the use of the latter mark did not depreciate the goodwill attached to the former mark. The appellant seeks to expunge the respondents’ trade mark registrations and claims that the respondents’ actions infringe its VEUVE CLICQUOT registrations and depreciates the goodwill associated therewith, contrary to s. 22.
Held: Appeal dismissed. The onus is on the appellant.
In assessing the likelihood of confusion between the marks, the fame of the appellant’s mark does not entitle it to absolute protection. The difference between the appellant’s luxury champagne and the respondents’ mid-priced women’s wear is significant and a consumer would not think that there was an association between the two sources (despite evidence that elsewhere the appellant has distributed fashion ware as promotional items and in Canada had participated in events targeted at women).
In order to succeed under s. 22, the appellant must establish that 1) its registered mark was used by the respondent in connection with wares/services, 2) its mark is sufficiently well known to have significant goodwill attached to it; 3) its mark was used in a manner likely to have an effect on that goodwill (linkage) and 4) the likely effect would be to depreciate the value of its goodwill (damage). The test under s. 22 is not confusion but whether a consumer would make a mental association between the two parties’ marks that is likely to depreciate the value of the goodwill attaching to the senior user’s mark. The appellant failed to meet the third and fourth requirement. The Court cannot assume linkage and the appellant’s evidence did not establish it – “likelihood” is a matter of evidence not speculation. While depreciation could occur, there is no evidence that depreciation is likely to occur. “The trial judge [correctly] concluded that the casual consumer, on the evidence, would not associate the name of the respondents’ stores with the house of VEUVE CLICQUOT, whose mark would continue to distinguish without depreciation the famous French champagne. The goodwill would remain intact. There would be no negative perceptions to tarnish its positive aura.”
III. OPPOSITION BOARD DECISIONS
1. ICN Pharmaceuticals and ICN Canada v. Unger, February 3, 2006 (Folz) Confusion
Proposed use application for VIRAZOST for pharmaceutical preparations for human and veterinary use namely, for the treatment of insect and parasitic irritations; bacterial, fungal, and viral skin conditions; summer itch and girth itch. Opposition based, inter alia, on s. 12(1)(d) due to confusion with the opponent’s mark VIRAZOLE registered for pharmaceutical preparations, namely a broad spectrum anti-viral agent.
Held: Application refused. Confusion is likely given the high degree of resemblance between the marks, the potential for overlap between the parties’ wares and channels of trade, and the extent to which the opponent’s mark has become known in Canada.
2. Screenlife Productions v. Whitney, February 6, 2006 (Carrière) Section 30(b)/ Section 30(i)/Distinctiveness
Use-based application for FLIGHTPATH for producing videos and still photographs for and about the aviation and aerospace industries. Opposition based, inter alia, on s. 30(b), non-distinctiveness and s. 30(i).
Held: Opposition rejected. The s. 30(b) ground failed because the opponent could have clarified the ambiguities in the applicant’s evidence through cross-examination, i.e. the statements were not clearly inconsistent with the claim of use. The distinctiveness ground failed because the opponent’s evidence only showed use that occurred 4 years before the material date. The s. 30(i) ground claimed that the applicant could not have been satisfied that it was entitled because it had abandoned an earlier application for the same mark after it was opposed by the opponent. However, there was no evidence as to why that application was abandoned.
3. Calgary Cooperative v. Cooper Market, February 10, 2006 (Bradbury) Distinctiveness
Proposed use application for $1.49 DAY for grocery retail store services. Opposition based, inter alia, on non-distinctiveness due to the opponent’s prior use of $1.49 DAY and $1.49 WEEK.
Held: Application refused. The opponent satisfied its initial onus and the applicant did not file any evidence, resulting in the applicant failing to satisfy its legal burden.
4. Bosch Rexroth v. Paccar, February 21, 2006 (Martin) Confusion
Proposed use application for FLEX AIR & Design for heavy duty truck parts and components, namely suspension systems. Opposition based, inter alia, on s. 12(1)(d) due to confusion with FLEXAIR registered by the opponent for manually operable pneumatic control valves employed in industrial machinery.
Held: Opposition rejected. Confusion is not likely because the marks are inherently weak, the opponent has only a limited reputation, there are differences between the wares and trades of the parties, the wares are fairly expensive items, and FLEX is a common prefix for marks used with machinery and the like.
IV. PATENT APPEAL BOARD DECISIONS
1. Patent Application 2,286,794, Commissioner’s Decision #1264, January 13, 2006 Review of Final Action Rejection/Section 28.3 of the Patent Act
A request by Scott Blair for review of the Final Action on a patent application that relates to the incorporation of a video display system in a subway car. The subway car includes multiple video terminals mounted near the ceiling to be used as a television public service message display, and an entertainment and advertising system. The Examiner rejected the application on the basis that the claims were common knowledge in the art, and that several claims were a mere aggregation of elements and an exhaustive combination. Specifically, the Examiner stated that the subway car and video monitors each perform a known function and that the specification does not teach some working inter-relationship between the known integers.
In response, the applicant argued that there was nothing in the prior art evidencing the incorporation of a TV video system in subway cars, and that the claims are clearly restricted to special features that overcome structural and installation problems encountered with subway cars. Specifically, the applicant argued that the feature of the screen of the monitor being substantially flush with the adjacent wall surface structure of the car is inventive and unobvious. Finally, the applicant submitted that the feature of a rigid transparent unit overlying the screen of each monitor and shaped to coincide with the shape of the internal wall of the subway car was not found in any of the cited references.
Held: Final Action Rejection maintained. The Board found that the applicant was claiming an invention that was obvious, but that the combination of elements was not an aggregation and was not an exhaustive combination. In concluding that the invention was obvious, the Board considered both the “unimaginative skilled technician” test for obviousness espoused in Beecham Canada Ltd. v. Proctor and Gamble Co. (1981), 56 CPR (2d) 214, (F.C.T.D.), aff’d (1982), 61 CPR (2d) 1 (FCA), leave to appeal refused (1982), 63 CPR (2d) 260 (SCC), and also the “man in the Clapham omnibus of patent law” test espoused in Beloit Canada Ltd. v. Valmet Oy (1984), 78 CPR (2d) 1 (FCTD), rev’d (1986), 8 CPR (3d) 289 (FCA). The Board applied these tests in light of the observation in Canadian Gypsum Co. Ltd. v. Gypsum, Lime & Alabastine, Canada, Ltd., (1931) Ex.C.R. 180, that both the idea and the method of putting the idea into practise must be obvious to satisfy the tests. The Board concluded that the idea of the invention was obvious in view of Doigan et al. (US Patent #5,606,154), which discloses the incorporation of TV-type entertainment and advertising systems in a rail car type environment. The Board further concluded that it would not seem to involve invention for the technician to simply determine the most appropriate mounting location for the components or to determine an appropriate routing for wiring. Finally, the Board concluded that the rigid transparent unit overlying the screen of each monitor was a prudent measure that the skilled person would be forced to consider. Though the Board found the claims to be unpatentable on the basis of obviousness, it went on to consider the issues of mere aggregation and exhaustive completion. The Board found that the feature of mounting the video screens “substantially flush with the adjacent wall surface structure of the car” was such that the elements were not merely placed “side by side” or “tacked” together, but that they were integrated in some “working inter-relation” to produce a unitary and common result. With respect to the issue of exhaustive combination, the Board relied on Re Application No. 132,421 (1976) 52 CPR (2d) 220 at 224, aff’d (1977) 52 CPR (2d) 229 to find that claiming a video display system in combination with a subway car did not go beyond the alleged invention given that the objective of the invention was to provide such a combination and a manner of implementing it.
2. Patent Application 2,275,720, Commissioner's Decision #1266, February 2, 2006 Review of Final Action Rejection/Patent Rule 30(4)/Section 2 of the Patent Act
A request by Index Systems for review of the Final Action on an application that relates to an apparatus and method for displaying electronic program guide (EPG) material consisting of lines of television program listings on a display screen and inserting lines of advertising material on lines between the lines of program listings. The Examiner rejected the application on the basis that: (1) the invention claimed was obvious over cited prior art on EPG displays and common knowledge of text displays inserted between program listings (specifically, pay-per-view program listings), and (2) it was not directed to subject matter which falls under the definition of invention as the layout and design of the data on a screen belongs to a fine art and the lines of advertising do not contribute to a unitary result of the conveyance of a television program guide to the reader.
In the applicant's reply to the Final Action, it cancelled all existing claims and submitted new claims. With respect to the first objection of obviousness, the applicant argued that the Examiner's comments appear to have been taken out of context and that the prior art teaching has been incorrectly compared to the wording of the applicant's claim as it does not describe provisions for altering menu positions to insert advertising between lines of program listings in an EPG. Further, the applicant argued that none of the references disclose or suggest that a display including EPG listings with advertising inserts could be used to provide advantages to advertisers, broadcasters, viewers, and others, which are advantages made available though the present invention claimed. With respect to the second objection of lack of patentable subject matter, the applicant argued that the Examiner has mischaracterized the result of the invention as being the perception and integration of the information interpreted by a reader, but rather, the result is what is recited in the claims, namely a single integrated display in which advertising is integrated into an electronic program guide between lines of program listings.
Held: The Board recommended that the rejection of the application and claims be reversed and that the application be returned to the Examiner for further prosecution consistent with this decision. With respect to the first objection of obviousness, the Board applied the test for obviousness set out in Beloit Canada Ltd. v. Valmet OY (1986, 8 C.P.R. (3d) 289 at 294) and found significant differences between the operation of the prior art systems and the present invention, and that there is a lack of any direction in the prior art which would lead a skilled worker to modify the prior art systems to operate in the manner set out in the application. With respect to the second objection of lack of patentable subject matter, the Board considered the meaning of the word art as summarized in Progressive Games, Inc. v. Commissioner of Patents (2000, 3 C.P.R. (4th) 517) as a process that: (i) is not a disembodied idea but has a method of practical application; (ii) is a new and innovative method of applying skill or knowledge; and (iii) has a result or effect that is commercially useful. As a result, the Board found that the new claims submitted by the applicant in response to the Examiner's Final Action set forth a method which is not a disembodied idea but is one which has a practical application, and as such, falls under the above stated definition of "art".
3. Patent Application 2,307,153, Commissioner's Decision #1265, February 2, 2006 Review of Final Action Rejection/Patent Rule 30(4)/Section 2 of the Patent Act
A request by Northern Light Technology Group for review of the Final Action on an application that relates to a system used to track the maintenance and repairs of light fixtures in a building or a group of buildings. The Examiner rejected all of the claims: (1) as being obvious over cited prior art consisting of one Canadian patent and three United States patents relating to scanning systems and thus merely workshop improvements, (2) as being indefinite for failing to include all of the essential elements required to prepare the repair route report, and (3) because they contain no patentable subject matter according to Schlumberger Canada Ltd. v. Commissioner (1982, 56 C.P.R. (2d) 204-206) as inspection and repair of light fixtures are known procedures and what the applicant has described is a computer used to implement discovery.
With respect to the first objection of obviousness, the applicant argued that the combined references fail to lead a person skilled in the art to the present invention, as the inventory items (mobile articles of clothing brought to a dry-cleaning establishment) and the nature of the indicia (generated on a per-transaction basis) are different. With respect to the second objection of indefiniteness, the applicant argued that the objections raised by the Examiner suggest an overly critical analysis which does not credit the inventor for what he has truly invented and the plain meaning of the language used to describe and claim the invention. With respect to the third objection based on lack of patentable subject matter, the applicant contended that the Examiner had mischaracterized the inventive aspect of the present invention, which is the association of labels marked with unique indicia with immovable light fixtures such that the repair task route may be generated, either manually or by computer based on the spatial relationship of the fixtures. The applicant further submitted that the fact that a computer is available to manage a database containing information relating to the fixtures does not inevitably lead to the concept of applying labels bearing indicia on light fixtures in order to generate a repair task route based on the spatial relations of the fixtures, or to track their repair requirements or history.
Held: The Board recommended that the rejection of the application and claims be reversed and that the application be returned to the Examiner for further prosecution consistent with this decision. With respect to the first objection of obviousness, the Board found that while all of the references cited by the Examiner have as a common feature the use of a bar code reader which reads a bar code containing information which is unique to one thing (i.e. an animal, a printer, a location, or an item to be dry cleaned) and the information is manipulated to generate a report, it would not have been obvious to take this general concept and adapt it to the applicant's specific use, as each of the references is directed to a particular application and there is no teaching of the general idea being used in any other area in the references. With respect to the second objection of indefiniteness, the Board examined the disclosure and claims and found that the claims are not difficult to understand and are adequately supported by the disclosure so that the claims are not indefinite and that they include all of the essential elements of the system. With respect to the third objection on lack of patentable subject matter, the Board found that the invention is more than a computer doing calculations or making comparisons by using information contained in a database, as it also includes labels containing indicia, a reader which can read the indicia on the labels and the preparation of a report which specifies the sequence of fixture maintenance. Further, the Board noted that the Examiner offered no evidence to support his contention that the method and system claimed in the instant application are well known and that the applicant has merely substituted a computer for the manual system of pen and paper.
