Recent Decisions December 2002
I. FEDERAL COURT DECISIONS
(a) Patents
1. AB Hassle et al. v. Apotex and The Minister of Health, September 4, 2002 FCTD (Kelen J.) Application/Prohibition/Adequacy of NOA/Patented Medicines (Notice of Compliance) Regulations, s. 5(3)(a)
Application for a declaration that a letter from Apotex does not constitute a NOA under the Regulations, and for an order prohibiting the Minister from issuing a NOC to Apotex in respect of omeprazole-magnesium tablets. The claims in the omeprazole patents are directed to pharmaceutical preparations comprising a core region containing the drug, a subcoating disposed on the core region, and an enteric coating disposed on the subcoating, as well as a process of manufacturing the preparation. Apotex served a terse NOA which stated that its tablets would not infringe because there would be no subcoating between the cores and the enteric coating.
Held: Application allowed. The Court held that the Apotex letter did not comply with the NOC Regulations and did not constitute a NOA. Therefore, the Minister was prohibited from issuing a NOC to Apotex. The Court found the NOA was deficient because the detailed statement required under s. 5(3)(a) of the Regulations was not sufficiently complete. It did not provide the facts about the formulation of the Apotex drug and/or samples of the drug to enable the applicants to determine whether the tablets have an inert subcoating. The Court criticized the expert evidence as speculative "shadow-boxing", when the Apotex omeprazole tablets could have been tested for the presence of a subcoating but were not made available for testing. Further, the NOA did not include an allegation to provide a legal basis for Apotex's argument at the hearing that the composition claims have an implied process limitation.
2. Wyeth-Ayerst Canada et al. v. Faulding (Canada) et al., September 13, 2002 FCTD (Layden-Stevenson J.) Application for Prohibition/Presumption in Section 6(6) of Patented Medicines (Notice of Compliance) Regulations
Application by Wyeth and American Cyanamid (the "applicants") for an order prohibiting the Minister of Health from issuing a NOC to Faulding with respect to the medicine piperacillin sodium until after the expiry of the applicants' patent.
Held: Application dismissed. The patent includes claims for a process for the preparation of a freeze-dried penicillin derivative and to a pharmaceutical injectable dosage prepared by the process claims. In the detailed statement supporting its NOA, Faulding alleged that its proposed product would be made by a process outside the scope of the patent. The applicants did not file any evidence challenging the factual or legal basis of Faulding's NOA. Their sole argument was that a prohibition order should be made based on the presumption set out in s. 6(6) of the Regulations. The applicants argued that pursuant to this subsection, the piperacillin sodium product proposed to be produced by Faulding is presumed to be prepared or produced by the process described in their patent. Thus Faulding is presumed to infringe the patent, unless they adduce evidence to prove otherwise. The Court stated that the NOA and detailed statements are presumed to be true, except to the extent that the contrary has been shown. In this case the applicants provided no contrary evidence. In addition, the Court held that the presumption in subsection 6(6) only applies in the absence of proof to the contrary. The Court found that Faulding's NOA and detailed statement constitute proof to the contrary for the purposes of the presumption in s. 6(6) of the Regulations and that Faulding's process does not infringe the applicants' patent.
3. In the Matter of a Reference by the Minister of Health under Subsection 18.3(1) of the Federal Court Act, regarding a Question as to the Application of Section 4 of the Patented Medicines (Notice of Compliance) Regulations, September 25, 2002 FCTD (Gibson J.) Motion to Set Aside Order/Standard of Review/Cross-Motion to File Evidence/Patent List/Patented Medicines (Notice of Compliance) Regulations, Section 4
Motion by the Minister of Health seeking to set aside part of an order of the Prothonotary which struck, with leave to amend, the Notice of Application for a Reference that initiated this proceeding. Cross-motion by Eli Lilly Canada to overturn the order of the Prothonotary which denied Lilly's request to file affidavit evidence.
Held: Appeal and cross-appeal dismissed, and Notice of Application made by the Minister struck out without leave to amend. Eli Lilly filed a new drug submission for certain doses of ZYPREXA (olanzapine). Lilly then filed a patent application which contained a claim to the medicine specified in the new drug submission. Lilly subsequently filed a number of supplemental new drug submissions based on new strengths and new dosage forms not covered by the patent application. The patent eventually was granted and Lilly attempted to add the patent to the patent list. The Minister had to decide whether the requirements of s. 4 of the NOC Regulations were satisfied. In view of the complexity of the question and the potential number of similar cases, the Minister decided to apply to refer the question to the Federal Court. Lilly disputed the facts in the Notice of Motion for the Reference question. The Prothonotary found the Reference question unanswerable and struck the application for Reference with leave to the tribunal to amend and refused Lilly's motion to present evidence. The Court reviewing the Prothonotary's decision first considered the standard of review and held that it would exercise its discretion de novo. The Court then concluded that it had authority to strike a Reference the substance of which is established on ex parte motion. Turning to the Reference question itself, the Court held that it was plain and obvious that it would be an abuse of the process of the Court to allow the Minister's Reference to proceed on the basis of a factual underpinning that is clearly in dispute.
4. Novartis Pharmaceuticals Canada v. Canada (Attorney General), October 7, 2002 FCTD (MacKay J.) Patent Register/Patent Not Containing Claim For the Medicine or Use of the Medicine/Minister Not Erring by Removing Patent From Patent Register/Patented Medicines (Notice of Compliance) Regulations, Section 4(2)
Application for judicial review of a decision of the Minister of Health to remove a Novartis patent from the Patent Register maintained pursuant to the NOC Regulations. During an audit of the Register, the Minister determined that the patent claims, for transdermal patches for administering estradiol and norethindrone acetate, were not considered to be claims for a medicine, or the use of a medicine, under the Regulations.
Held: Application for judicial review dismissed. The Minister did not err in deciding to remove the patent from the Patent Register. To be eligible for inclusion on a patent list under s.4(2) of the Regulations, a patent must include a claim for the medicine itself or a claim for the use of the medicine. The patent relates to a system for the administration of medicine, and does not claim the medicine itself or use of the medicine. The fact that the Patented Medicines Prices Review Board regulates the patches in question is immaterial, as that regime is distinct from, and serves a different purpose from, the regime set out in the NOC Regulations.
5. Abbott Laboratories v. Canada (Minister of Health) and Genpharm, October 22, 2002 FCTD (Campbell J.) Motion for Production/Drug Master File/Abbreviated New Drug Submission/Patented Medicines (Notice of Compliance) Regulations, Section 6(7)
Motion by Abbott pursuant to s. 6(7) of the NOC Regulations for an order requiring Genpharm to produce evidence concerning the composition of the solvent and its process for crystallizing clarithromycin from the Drug Master File filed with the Minister.
Held: Motion allowed. Genpharm filed a new drug submission for clarithromycin and Abbott sought evidence from Genpharm concerning the composition of the solvent and the process for crystallizing clarithromycin. The Court found that the relevant evidence was contained in the Drug Master File. Genpharm argued that it could not be required to produce this evidence under s. 6(7) of the Regulations because it is not contained in the Abbreviated New Drug Submission filed by them. The Court concluded that the new drug submission includes both the Drug Master File and the Abbreviated New Drug Submission and thus both fall within the definition of "submission for notice of compliance" used in s. 6(7). Genpharm is required to produce the relevant evidence from both the Drug Master File and the Abbreviated New Drug Submission pursuant to s. 6(7) of the Regulations.
6. AB Hassle et al. v. Canada (Minister of National Health and Welfare) and Apotex, November 1, 2002 FCA (Linden, Sexton and Evans JJ.A.) Prohibition Application/Sufficiency of Evidence/Infringement of Use Patent by Patients/Second Person Cannot be Prevented from Obtaining a NOC Solely Based on Sale of a Known Compound/Patented Medicines (Notice of Compliance) Regulations
Appeal from an order dismissing AB Hassle's application to prohibit the Minister from issuing a NOC to Apotex in respect of omeprazole capsules for oral administration. Omeprazole was a known compound. The AB Hassle patent contained claims for a new use of omeprazole, namely uses related to treatment of Campylobacter infections. Apotex asserted in its NOA that it would not seek approval for use of the medicine in the treatment of Campylobacter infections, and undertook that its product monograph would not include any such use.
Held: Appeal dismissed. AB Hassle filed three affidavits claiming that, regardless of whether omeprazole is approved for treating Campylobacter infections, it will in fact be used for such treatment based on practices followed by physicians and pharmacists. The Court found that the Trial Judge did not err in rejecting the evidence of AB Hassle's affiants. No evidence was provided to support their generalized statements about the practice of physicians and pharmacists. No independent studies or properly conducted surveys were tendered. AB Hassle also argued that the recent Court of Appeal decision in Genpharm Inc. v. Canada (Minister of Health), (2002) F.C.A. 20, applied in the circumstances of the present case, and that Apotex should not be granted a NOC to sell omeprazole because infringement by patients would inevitably occur. The Court rejected the argument. Apotex cannot be prevented from obtaining a NOC solely on the basis that it will sell omeprazole. Otherwise, the patent holder would effectively control not just the new uses for the old compound, but the compound itself, even though the compound itself is not protected by the patent in the first place. AB Hassle has not proved that, if a NOC were issued to Apotex and it were to sell omeprazole, patients or other third parties would infringe AB Hassle's use patent. If a first person cannot prove in prohibition proceedings that future infringements will occur if a NOC is issued, it cannot obtain a prohibition order by relying on s. 5(1)(b)(iv).
7. Biovail v. Minister of National Health and Welfare et al., November 5, 2002 FCTD (Noël J.) Motion for Production/Patented Medicines (Notice of Compliance) Regulations, Section 6(7)
Motion by Biovail to set aside the order of the Prothonotary and to require RhoxalPharma to produce further portions of its Abbreviated New Drug Submission (ANDS). In the main proceeding, Biovail seeks to prohibit the Minister from issuing a NOC to RhoxalPharma in respect of diltiazem hydrochloride capsules. RhoxalPharma had previously sent to Biovail excerpts from its ANDS, its detailed formulation and a description of the manufacturing process, and the parties had both filed their evidence in the proceeding.
Held: Motion dismissed. The Prothonotary exercised his discretion properly and based his decision on the evidence before him. Subsection 6(7) mentions that the motion for production can be brought at any time. This should not be interpreted literally. In the context of NOC proceedings, the Court must be in a position to control the timing of a request, and a party must establish that the motion has been brought without delay. Normally, motions for disclosure are presented before the filing of evidence. Exceptionally, such motions can be made after the filing of evidence, when new matters are brought up in the other party's evidence that was not foreseen and some explanation is given for the delay. Biovail attempted to rely on evidence filed in the main proceeding, but did not file any affidavit evidence in support of its s. 6(7) motion for production. There is no affidavit evidence explaining why the motion was not presented in a timely fashion, after the parties had filed their evidence in the main proceeding. There is no affidavit evidence to explain why the information already disclosed was not sufficient, nor is there any affidavit demonstrating that the information requested is relevant to the determination of issues in the proceeding.
(b) Trade Marks
1. Novopharm v. Astrazeneca and Reg. TMs, October 15, 2002 FCA (Rothstein, Linden, Malone JJ.A.) Opposition Appeal /Sufficiency of Pleadings/Distinctiveness
Appeal from Trial Division's decision that upheld the Registrar's rejection of two oppositions. The Registrar held that Novopharm's statements of opposition were insufficiently detailed to enable Astrazeneca to respond to the assertions that its trade marks were not distinctive. The Trial Judge upheld the Registrar's decision on the basis that the Registrar was not clearly wrong. The Registrar also held that the opposition failed because there was insufficient evidence. Although Novopharm filed new evidence before the Trial Division, the Trial Judge did not consider it because the appeal was disposed of on the first ground.
Held: Appeal allowed. The recent decision in Novopharm v. Ciba-Geigy Canada; Novopharm v. Astra [2002] 2 F.C. 148 is dispositive of the procedural issues in this appeal. The Registrar erred by considering the adequacy of the statements of opposition without regard to the evidence that was filed. The appropriate time to challenge pleadings is at an interlocutory stage before evidence is filed. Even though there is no provision in the Trade-mark Regulations for interlocutory proceedings, there is also nothing that precludes interlocutory motions. In fact, it follows from r. 40 that an opposition party may make an interlocutory motion to strike all or any portion of the other party's pleadings. If the adequacy of the pleadings is challenged after evidence is filed, the Registrar cannot decide whether the parties know the case they have to meet unless he has regard to the evidence. The Registrar did not apply the correct legal test in this case in so far as he failed to consider relevant factors, namely the evidence - this constitutes a reviewable error. Although the statements of opposition only provided limited information concerning similar trade marks in the marketplace, the evidence cured this deficiency by providing details of third party products. Astrazeneca was therefore fully able to know and respond to the products that Novopharm was relying upon with respect to non-distinctiveness.
The Trial Judge erred in not going on to consider the secondary basis for rejection. The matter was therefore remitted back to the Trial Division for determination of the merits on the basis of the new evidence filed before it.
2. FileNET v. Reg. TMs, October 29, 2002 FCA (Sharlow, Linden, Sexton JJ.A.) Appeal/Judicial Review/Section 9(1)(n)(iii) Trade-marks Act/Adoption of an Official Mark
Appeal from Trial Division's decision that dismissed an application for judicial review of the Registrar's decision to give public notice under s. 9(1)(n)(iii) of the Crown's adoption and use of NETFILE & Design as an official mark for services: filing of tax related information with Revenue Canada or the Canada Customs and Revenue Agency. FileNET raised the issue of whether the Crown had adopted and used the mark before filing its s.9 request. The Crown submitted an affidavit concerning the use of the mark. The affiant was cross-examined and the Trial Judge concluded that there was sufficient use. Although the related services could not be performed until a date after the filing of the s. 9 request, the mark had been used by being advertised on a website.
Held: Appeal dismissed. The Trial Judge's conclusion that the mark had been used is correct in law and is based on facts that are supported by the evidence. FileNET argued that the official mark had never been adopted because there was no formal resolution evidencing its formal adoption. However, the adoption of an official mark is a question of fact and that fact is sufficiently proven by the request made under s. 9, unless there is some reason to believe that the request was not authorized; there is no particular procedure for the adoption of an official mark.
3. Farside Clothing et al. v. Caricline Ventures, November 12, 2002 FCA (Evans, Strayer, Nadon JJ.A.) Section 57 Expungement/Validity/Distinctiveness/Standing
Appeal from a decision that held that Caricline's PHARSYDE trade mark registration was valid, dismissed Farside's counterclaim for expungement, and found for Caricline in its infringement action against Farside. Farside's expungement counterclaim was based on s. 17 of the Trade-marks Act, by virtue of its alleged prior use of the confusingly similar trade mark FARSIDE, and under s. 18, on the basis that PHARSYDE had ceased to be distinctive when the counterclaim was filed due to Farside's prior use of FARSIDE.
Held: Appeal dismissed. The Court of Appeal disagreed with Farside's contention that the Trial Judge erred in law by treating the infringing use of FARSIDE as irrelevant because it was an infringing use; the Trial Judge's words can be interpreted as indicating that he correctly considered both the appellant's infringing and non-infringing prior use (the non-infringing use having occurred before the respondent's registration issued). The Court of Appeal also rejected the appellant's argument that, even if the Judge had applied the correct test, his finding that the respondent’s mark was distinctive was clearly wrong. Although there was evidence of actual confusion, it was not so powerful as to make the Trial Judge's finding of distinctiveness unreasonable.
The Court of Appeal also upheld the Trial Judge's finding that the appellant lacked standing with respect to s. 17 because it did not satisfactorily show that it owned the FARSIDE mark at the relevant point of time. The fact that the Trial Judge "did not expressly consider whether a transfer could be implied on the basis of evidence given by Hafis Devji, described by the Judge (at para. 42) as 'uncertain' and 'provided from memory', does not amount to palpable and overriding error".
(c) Practice
1. Benisti Import-Export v. 150512 Canada, February 25, 2002 FCTD (Morneau P.) Motion for Particulars
The plaintiff/defendant by counterclaim brought a motion for particulars of the principal areas of the industrial design registration alleged to have been infringed.
Held: Motion granted. The Prothonotary applied the patent law principal that a party is required to particularize the “substance” of his invention, even if it is ultimately for the Court to reach a final conclusion on the point, since the “substance” of an invention is a question of fact. [Northern Telecom Ltd. v. Reliance Electric Co. (1986), 8 C.P.R. (3d) 224 at 227] Even though the determination of the principal areas of the industrial design called for some expression of technical opinion, the details sought by the plaintiff were essentially factual.
2. Consorzio Del Prosciutto Di Parma v. Maple Leaf Meats, October 28, 2002 FCA (Rothstein and Nadon JJ.A., Décary J.A. dissenting) Directions Regarding Costs
The respondent, Maple Leaf, incurred approximately $80,000 in costs in successfully responding to Consorzio’s appeal of the decision dismissing Consorzio’s application to expunge Maple Leaf’s PARMA trade mark. Maple Leaf sought a direction that its party-party costs on the appeal be fixed at $40,000.
Held: First, the Court considered whether directions regarding costs are an issue for the appeals judge that signed the judgment or the entire panel that heard the appeal. Although r. 403(3) regarding motions for directions provides that motions for directions are to be brought before “the judge.. who signed the judgment,” a motion for directions was held to be a statutorily sanctioned procedure for the amendment or variation of a judgment. Therefore the panel that decided the matter should also decide the directions motion, unless impracticable or impossible, in which case, pursuant to r. 3, the Chief Justice may designate another judge or panel to decide the matter.
The majority exercised their discretion to depart from the Tariff provided for in the Rules and to award $25,000, inclusive of fees, disbursements and GST and the costs of the motion, and directed the assessment officer to assess costs accordingly. The majority noted: there were twelve issues raised on appeal and each required a full response; the issues involved complex questions of fact, including expert evidence and survey methodology; the argument lasted close to a whole day; the case was an intellectual property matter involving sophisticated clients. In the circumstances, a departure from the Tariff was warranted and had the advantage of saving costs to the parties that would otherwise be incurred in the assessment process.
Décary J.A. would have awarded only $10,000. In his view, the discretion under r. 400(4) to award “a lump sum in lieu of, or in addition to, any assessed costs”, should be exercised in exceptional cases only and in a manner that is proportionally related to the Tariff, otherwise costs awards may become unpredictable, arbitrary and unfair. His Lordship suggested that a special tariff for specialized areas like intellectual property where counsel fees are higher might be appropriate. He was of the view, however, that in the absence of such a tariff, prudence dictates a conservative approach.
II. OTHER COURT DECISIONS
1. Black v. Molson Canada, July 18, 2002 OSCJ (Wright J.) Domain Name Registration/Bad Faith
Application by Black for a declaration that he is the rightful owner of the domain name "canadian.biz". Black acquired the domain name through an online auction. As part of the acquisition, he agreed to submit to an administrative hearing to resolve any ownership disputes. Molson requested an administrative hearing, claiming that the name should be transferred to it in view of its trade mark registration for CANADIAN for beer. The adjudicator ordered that the name be transferred.
Held: Declaration granted. According to the administrative body, three elements must be proved in order for a domain name to be transferred to a complainant: the domain name must be identical to a trade mark in which the complainant has rights; the respondent has no rights or legitimate interests in respect of the domain name; and the domain name has been registered or is being used in bad faith. Molson's trade mark registration disclaims the right to the exclusive use of the word CANADIAN for all wares other than beer and Black does not intend to use the domain name in connection with beer. Since the trade mark registration does not give Molson the exclusive use of the word CANADIAN, any person should be able to own the domain name "canadian.biz". Given the auction nature of the purchase of the domain name, it is not surprising that Black did not have a complete business plan as to his proposed use of the domain name, but that does not mean that he didn't intend to use it in good faith in association with a bona fide business.
2. The Great Canadian Oil Change v. Dynamic Ventures et al., September 5, 2002 BCSC (Goepel J.) Copyright in Architectural Works/Copyright Infringement/Section 40 Copyright Act/Section 64.1 Copyright Act /Summary Judgment
The plaintiff moves for summary judgment in an action that claims that the defendant has infringed the plaintiff's copyright in its glass building design. The parties acknowledge that they are asking the Court to decide novel points of law with respect to s. 40(1) of the Copyright Act. Also, as a complete bar to the claim, the defendants raise s. 64.1 of the Copyright Act; a section that they say has not yet been judicially interpreted.
Held: Motion dismissed with respect to copyright issues. The copyright issues are not suitable for determination by summary judgment given the mass of materials and the complexity of the issues. In addition, given the potential harm to the professional reputation of the defendant's architect, it would be unjust to decide the copyright infringement issue on a summary basis. Further, summary trials are not generally the appropriate place to decide novel and original points of law.
3. Netsmart v. Poelzer et al., September 20, 2002 ACQB (Belzil J.) Anton Piller Order /Confidential Information
Application to set aside or vary an Anton Piller Order. The defendants, former employees of the plaintiff, began a competitive business. The plaintiff claimed that the defendants used confidential information, contrary to the terms of employment and confidentiality agreements signed by all employees. One of the defendants destroyed the agreements before leaving the plaintiff. An Anton Piller order was issued pursuant to which the plaintiff seized computers from the defendants' homes. These computers were found to contain some of the plaintiff's confidential information. The defendants argue that the seizure was improper because the defendants' children's computers were seized, some commercial music CDs were seized and the plaintiff's lawyers did not disclose to the Court that one of the defendant's wife ran a daycare in the home.
Held: Application dismissed. The tripartite test was met for the granting of the Anton Piller Order. There was substantial compliance with the Order and with established procedures for execution of Anton Piller Orders; any non-compliance arose from the inexperience of counsel and not as a result of any dishonesty or improper motive. "A children's computer could well be used to store data which is the subject of seizure and thus it was entirely proper to have seized the computer. It would be completely absurd if a party executing such an order was obligated to accept the labelling which had been placed on electronic media by an opposing party as being accurate and thus it was entirely appropriate to seize CDs and floppy disks and review the same before they were returned to the Defendants. By the same token, it was entirely proper to examine the hard drives on the computers, for without examining the data on a hard drive, a physical inspection of the hard drive would reveal nothing." There is no proof that the plaintiff was aware of the defendant's wife's business so it cannot be faulted for not disclosing these facts to the Court. Even if the plaintiff was aware of this information, it is not clear that it could be categorized as material non-disclosure although clearly the information, if known, should have been disclosed. As admitted by the plaintiff's lawyer, the commercial music CDs should not have been seized.
4. Aim Funds Management v. Brandes Investment Partners et al., September 30, 2002 OSCJ (Nordheimer J.) Confidential Information/Injunction/Relevant Examination Questions
The plaintiff moves to compel answers to questions refused on the examination of one of the defendants. The examination is in furtherance of a motion for an interlocutory injunction brought by the plaintiff in an action that claims that the plaintiff's former employees took confidential information when they left and became employees of Brandes. Brandes admits that it received the information but refuses to say which individuals provided it. The defendants' complaint with the refused questions is that the plaintiff is attempting to conduct an examination for discovery in the guise of an examination on a pending motion. For the purposes of the injunction motion, the defendants have admitted that there is a serious issue to be tried and argue that since the Court need only deal with the issues of irreparable harm and balance of convenience, questions concerning past events are irrelevant.
Held: Defendants ordered to answer questions concerning who took the confidential information and what they did with it. "The defendants' position is a fair one but … they have attempted to take it too far in terms of their position on the relevancy of the questions asked. Some of the questions to which objection is taken are as relevant to the issue of the balance of convenience as they are to the requirement of a serious issue to be tried."
III. OPPOSITION BOARD DECISIONS
1. athome.net v. Barrie Connex, September 10, 2002 (Folz) Confusion
Application for @INTERNET AT HOME & Design for electronic data communication services (based on use) and Internet services (based on proposed use). INTERNET AT HOME disclaimed. Opposition based, inter alia, on s. 12(1)(d) due to confusion with the mark @HOME registered for electronic network and Internet work transmission services.
Held: Application refused. The applicant has not discharged its legal burden - although both marks lack inherent distinctiveness, there is a resemblance between the marks and the opponent's mark has become known to a greater extent.
2. AIM Funds Management v. McDonald Investment Management, September 10, 2002 (Folz) Section 30(b)/Descriptiveness
Use-based application for EURO PLUS for managing and investing funds of others. Opposition based, inter alia, on s. 30(b) because the applicant hasn't used the mark since the date claimed. Only the opponent filed evidence.
Held: Application refused. The opponent's evidence shows inconsistencies regarding the date of inception of the applicant's services and the applicant's failure to file evidence results in it failing to meet its onus. Obiter: The Board would have found EURO PLUS to be clearly descriptive of a fund that invests in European equities, and also in equities not usually considered part of Europe.
3. Anglofranchise v. Novenchi, September 10, 2002 (Herzig) Confusion
Application for BOY LONDON for various items of clothing based on proposed use and use. BOY and LONDON disclaimed. Opposition based, inter alia, on s. 12(1)(d) due to confusion with the mark BOY & Design registered for clothing.
Held: Opposition rejected. The common component of the two marks is clearly descriptive of the wares and the overall visual impressions and ideas suggested by the marks differ. The opponent did not evidence any acquired distinctiveness for its mark.
4. ARC Sport Supply v. Timothy C. Bonerb, September 19, 2002 (Folz) Confusion
Proposed-use application for ICEPRO & Design for mechanical systems for the removal of ice and snow from buildings namely inflatable bladders or flexible panels, air compressors and blowers and electrical controllers, all sold as a unit. Opposition based, inter alia, on s. 16 due to confusion with the opponent’s mark ICEPRO previously used for the design, construction and maintenance of ice arenas.
Held: Opposition rejected. The marks are not inherently distinctive. The specific trades of the parties appear to be different. "[T]he fact that both parties' wares and services relate to fairly sophisticated construction and building maintenance products and services and the fact that they both involve fairly large sums of money underscores the likelihood that customers would know that they are dealing with different types of businesses."
5. Alberta Law Reform Institute v. ASAP Holdings, September 24, 2002 (Herzig) Confusion
Proposed-use application for LAW COURTS CENTER & Design for stationery supplies and providing office space. LAW, COURTS, and CENTER disclaimed. Opposition based, inter alia, on s. 16 due to confusion with the opponent's mark ALBERTA LAW REFORM INSTITUTE & Design previously used for the services of providing legal research concerning the administration of justice.
Held: Application refused. Although the nature of the parties' wares and services are different, both parties provide their wares and services to the legal profession. In addition, the overall visual impression is quite similar.
