Recent Decisions December 2003
I. FEDERAL COURT DECISIONS
(a) Patents
1. AB Hassle et al. v. Apotex and Canada (Minister of Health), June 20, 2003 FCTD (Campbell J.) Application for Prohibition /Allegations of Patent Invalidity /Anticipation /Obviousness/Patented Medicines (Notice of Compliance) Regulations
Application by AB Hassle for an order prohibiting the Minister from issuing a NOC to Apotex for the medicine omeprazole until after expiry of Canadian Patent No. 1,264,751 ("the '751 patent"). Apotex alleged that the '751 patent was anticipated by a published European patent application, and that the claimed invention was obvious. The European application claimed omeprazole and the "therapeutically acceptable salt thereof", while the '751 patent claimed a specific form of omeprazole, namely base addition salts. Apotex asserted that "therapeutically acceptable salt thereof" included base addition salt and alternatively was a term of art. AB Hassle asserted that while the science was well understood that a person skilled in the art could produce base addition salts of omeprazole, a skilled person operating in a therapeutic environment would not have, because it would not have been expected that a based addition salt would have therapeutic value.
Held: Application granted. The Minister is prohibited from issuing a NOC to Apotex until after expiry of the '751 patent. Apotex failed to prove its allegations that the '751 patent is invalid on a balance of probabilities. The '751 patent was not anticipated, because the term "therapeutically acceptable salt thereof" in the European application did not include both acid addition salts and base addition salts. Base addition salts were not explicitly claimed in the patent. "Therapeutically acceptable salt thereof" was not a term of art. Apotex did not supply any history or context of the term, as one would expect when asserting that the phrase is a term of art. An affidavit from an expert did not suffice. The fact that solution studies of omeprazole would inevitably result in the formation of base addition salts was irrelevant to whether the European application was a prior publication within the meaning for the test for anticipation. The patent did not lack inventive step. Although the person skilled in the art could have produced the base addition salt of omeprazole, they would not have done so because the base addition salt was thought to be too reactive and therefore not useful for pharmaceutical administration. The Court concluded that there was sufficient teaching away from the use of base addition salts so as to discourage experimentation.
2. GlaxoSmithKline et al. v. Apotex and Canada (Minister of National Health), September 10, 2003 FCTD (Russell J.) Motion to Dismiss Prohibition Application/Patents Not Improperly Listed on Patent Register /Prohibition Application Not Frivolous, Vexatious or an Abuse of Process/Patented Medicines (Notice of Compliance) Regulations, s. 6(5)
Motion by Apotex for an order dismissing Glaxo's application for a prohibition order under the NOC Regulations. Glaxo sought to prohibit the Minister from issuing a NOC to Apotex for its paroxetine hydrochloride anhydrate tablets. In this motion, Apotex asserted that Glaxo's patents were not properly listed on the Patent Register, and even if properly listed on the Register, the patents are not relevant to Apotex's drug submission so that Glaxo's prohibition application is frivolous, vexatious and an abuse of process.
Held: Motion dismissed. The strict timing requirements for listing a patent on the Register are to ensure that generics are not unfairly impeded from accessing the market. Glaxo markets paroxetine hydrochloride hemihydrate tablets for which an original NOC was filed, long before several patents for the same drug issued. Four supplemental submissions were filed. Apotex asserted that the time restrictions do not run afresh from the date of the submissions for these NOCs as the drug product was identical to the product marketed under the original NOC. This argument was found to be unpersuasive, as “submissions" within s. 4 and 5 of the Regulations includes supplemental submissions. Glaxo was not in violation of the timing requirements. Apotex also asserted that the Glaxo patents were incorrectly listed because under s. 4(2) the patent must contain a claim for “the medicine itself”. The products sold by Glaxo all contain the hemihydrate form of paroxetine whereas the patents related to the anhydrous polymorphs of paroxetine. However, both the hemihydrate and anhydrate forms of paroxetine can be used in the tablets. Further, Apotex had filed an ANDS comparing its tablets of paroxetine hydrochloride anhydrate to Glaxo's tablets that contain hemihydrate. In permitting Apotex to use Glaxo's hemihydrate tablets as a Canadian reference product, the Minister in effect confirmed that these forms are pharmaceutical equivalents. The patents should not be excluded from the Register on this basis. Apotex further asserted that the Glaxo patents were not relevant to the medicine or the submission in respect of which they are listed. This argument was rejected since a tablet formulation patent need only be “relevant to the dosage form, strength and route of administration" of the drug containing the medication (s. 4(7)(b)). It is irrelevant whether a tablet formulation patent could be used by a patentee to prepare the commercial tablet formulations of the particular medicine. Finally, it is not plain and obvious that Glaxo's prohibition application is frivolous, vexatious and an abuse of process.
3. H. Lundbeck A/S et al. v. Canada (Minister of Health) and Genpharm, October 3, 2003 FCTD (Blais J.) Application for Prohibition/Allegation of Non-Infringement /Generic Product to be Marketed for Non-patented Use/Patented Medicines (Notice of Compliance) Regulations
Application by Lundbeck to prohibit the Minister from issuing a NOC to Genpharm for the medicine citalopram hydrobromide, which Lundbeck markets under the brand name Celexa®. The NOC that issued to Lundbeck specifies that Celexa is to be used for the symptomatic relief of depressive illness. The NOC does not cover the uses claimed in the patent, i.e. treatment of dementia, cerebro-vascular diseases (CVD), or any other disorder named in the patent claims. Genpharm alleges non-infringement since it intends to market citalopram solely for the well-known use recognized by the NOC, namely depression. Lundbeck submits that given the considerable overlap of patients that suffer from both depression and dementia or CVD, it is inevitable that Genpharm's tablets will be prescribed to patients suffering from dementia or CVD, and that nothing prevents off-label uses.
Held: Application dismissed. Lundbeck did not discharge its burden of proving that Genpharm's allegations of non-infringement are without merit. Expert evidence suggested that citalopram is not used or prescribed for anything else than depression. Depression is not dementia or CVD, and treating the former is not treating the latter. The patent makes no claim as to depression, since that use is well established and thus cannot be patented. Further, there was no evidence that citalopram was recognized by the medical profession as a promising medication for any of the patented uses claimed in the patent list. Citalopram offers an effective remedy against depression, and that use is not protected.
4. Genpharm v. Canada (Minister of Health) et al., October 3, 2003 FCTD (Blais J.) Application for Judicial Review/Minister Refusing to Remove Patent from Patent Register/No Necessary Link Between Claimed Use in Patent Listed on Register and Approved Use of a Medicine in Notice of Compliance /Patented Medicines (Notice of Compliance) Regulations
Application by Genpharm for judicial review of the Minister's refusal to remove a patent from the Patent Register. Genpharm sought a declaration that Lundbeck's patent was improperly listed, as well as an order requiring the Minister to remove the patent from the Register. Lundbeck's patent is for the use of the medicine citalopram in the treatment of dementia and cerebro-vascular disorders (CVD). The NOC for citalopram was issued for the treatment of depression, which was not among the uses protected by the patent and listed on the Register. The issue for the Court was whether or not a patent with a claim for the use of a medicine can be listed in the Register if that use has not been approved by means of a NOC.
Held: Application dismissed. The Court felt bound by Eli Lilly Canada Inc. v. Canada (Minister of Health), 2003 FCA 24, which ruled that there was no necessary link between the NOC and the patent list, beyond the requirements of s. 4 of the NOC Regulations. The proper forum for contesting the relevance of a particular patent is via an allegation of non-infringement in the NOA. The necessary requirements for inclusion on the Register are fulfilled and Lundbeck's listing of the patent is allowed. Even if the patent was not eligible for listing, the declaratory and injunctive relief sought by Genpharm is not available as a remedy. Relief exists in s. 6 and 8 of the NOC Regulations.
5. Pfizer Canada et al. v. Novopharm and Canada (Minister of Health) October 10, 2003 FCTD (Martineau J.) Motion to Re-attend for Cross-examination/Production of ANDS, Drug Master File and Samples of Medicine /Patented Medicines (Notice of Compliance) Regulations, s. 6(7)
Motion by Pfizer for an order requiring Novopharm's witness to re-attend for cross-examination, and to produce tableted material and all relevant portions of its ANDS and drug master file. Pfizer further seeks an order under s. 6(7)(b) of the NOC Regulations requiring the Minister to verify that the portions of the ANDS and drug master file correspond to the information on file with the Minister. Novopharm alleged that it would not infringe the claims of Pfizer's patent for azithromycin dihydrate because it would be selling azithromycin monohydrate. Pfizer was concerned that the manufacturing process could produce some dihydrate or that the monohydrate might convert to dihydrate over time, and that Novopharm had not provided sufficient details concerning its crystallization and tableting processes. Novopharm opposed the motion on the basis that the information was in the possession of its supplier Teva, a related third party.
Held: Motion granted. The requested information is necessary to establish the evidentiary foundation in order to allow the Court to assess the allegation of non-infringement. There was insufficient evidence to establish that Novopharm had tried, and failed, to obtain the information from the supplier. Novopharm should also produce the azithromycin tablets that it used to conduct its testing. Two directions to attend were served on Novopharm's witness, requiring him to produce samples of the tablets. The information sought by Pfizer is highly relevant to the proceeding and arise from the affidavit itself. The tablets are central to whether Novopharm's product contains dihydrate or converts to dihydrate over time. Fuller disclosure is needed in this case in order to allow Pfizer to present its best case. It would be unfair to grant absolute control on the samples to Novopharm.
6. Bayer v. Apotex and Canada (Minister of Health), October 17, 2003 FCTD (Gibson J.) Prohibition Application /Validity /Process and Product-by-Process Claims Not Obvious/Patented Medicines (Notice of Compliance) Regulations
Application by Bayer for an order prohibiting the Minister from issuing a NOC to Apotex in connection with ciprofloxacin hydrochloride tablets until after the expiration of Canadian Patent No. 1,218,067 ("the '067 patent"). The '067 patent contains process and product-by-process claims for the compound ciprofloxacin. Apotex alleged that certain process claims and product-by-process claims of the '067 patent were invalid on the basis of obviousness.
Held: Application granted. The Minister is prohibited from issuing NOCs for ciprofloxacin hydrochloride tablets to Apotex until after expiry of the '067 patent. The product-by-process claims in the '067 patent were not invalid by reason of obviousness. In particular, the Court found that a person skilled in the art would not be motivated to combine the prior art references, that there was prior art that teaches away from the claimed invention, that the invention had unexpectedly improved properties, and that the invention fulfilled a long-felt need in the marketplace and was a commercial success. The Court also held that the process claims in the '067 patent were not invalid by reason of obviousness. In particular, the Court stated that having found the product-by-process substance to be new and useful, the process for preparation of the product, ciprofloxacin, was not obvious.
7. GlaxoSmithKline et al. v. Genpharm and Canada (Minister of Health) October 24, 2003 FCTD (Heneghan J.) Prohibition Application/Claim Construction/Validity/Non-infringement/Applicant Failing to Establish Patent Infringement/Testing of Respondent's Product Unreliable/Patented Medicines (Notice of Compliance) Regulations
Application by Glaxo for an order prohibiting the Minister from issuing a NOC to Genpharm in connection with paroxetine hydrochloride tablets until after the expiration of Canadian Patent No. 1,287,060 ("the '060 patent"). The four-word claim at issue is for "Crystalline paroxetine hydrochloride hemihydrate." Paroxetine hydrochloride was previously known, but the hemihydrate form displayed improved handling qualities. Genpharm alleged that the '060 patent was invalid, and that it would not infringe the patent because its product contains anhydrate rather than the hemihydrate form of paroxetine. Glaxo asserted that the patent was valid and would be infringed because Genpharm's product contains small amounts of the hemihydrate, or that the anhydrate form would convert to the hemihydrate over time.
Held: Application dismissed. The claim at issue was construed to mean crystalline paroxetine hydrochloride hemihydrate when it is found in a drug in sufficient quantity that it improves the handling properties of such drug during manufacture. The interpretation urged by Glaxo, essentially that the claim covers any amount of the paroxetine hemihydrate found anywhere, for any reason, was found to be inimical to the stated purpose of the patent, that is to improve the handling properties of a drug product including paroxetine hydrochloride. Genpharm's allegations of invalidity were rejected. The art cited by Genpharm failed to meet the relevant tests for anticipation and obviousness. However, Glaxo failed to establish that Genpharm's allegation of non-infringement was not justified. Glaxo relied on testing of the bulk material and certain tablets to show that some of Genpharm's product contained low amounts of paroxetine hemihydrate. However, Genpharm cast doubt on the reliability of that testing, based on discrepancies arising from the tests that were revealed in cross-examination of Glaxo's expert witnesses. Glaxo failed to establish infringement by Genpharm, on a balance of probabilities.
8. Apotex v. AB Hassle et al., November 3, 2003, FCA (Décary, Linden, Rothstein JJ.A.) Appeal/Prohibition Order/Claim Construction /Failure to Construe Claim by Trial Court/Court of Appeal Construing Claim to Include Appellant's Formulation/Patented Medicines (Notice of Compliance) Regulations
Appeal by Apotex from a decision granting an order prohibiting the Minister of Health from issuing a NOC for Apotex's product, Apo-Omeprazole tablets. Apotex asserted that the applications judge erred by failing to construe the relevant patents before considering the issue of infringement, and that the patents, properly construed, did not cover Apotex's product. Apotex also argued that the applications judge erred by finding that its NOA was deficient.
Held: Appeal dismissed. The object of the invention disclosed in the patents is to provide an enteric coated tablet of omeprazole that is resistant to dissolution in the stomach. The relevant product claim includes three elements, a core region, an inert subcoating and an outer layer. Apotex alleged that it would not infringe the patent because its tablets would not include a subcoating that is separately applied to the core. In his decision, the applications judge did not expressly make any finding with respect to the construction of the claim or whether there would be infringement by Apotex, but instead found the NOA to be deficient. The Court of Appeal reviewed the expert evidence and construed the claim itself, concluding that the relevant claim describes a pharmaceutical preparation that, in its finished product form, contains a subcoating or separating layer, however the subcoating or separating layer is formed. The Court rejected Apotex's argument that the patent disclosure should be read to limit the claim. The Court of Appeal did not need to consider the issue of infringement, as Apotex had conceded that if the claim was construed in this way, it would infringe.
(b) Trade Marks
1. Neptune v. A.G. Canada, June 6, 2003 FCTD (Martineau J.) Trade Mark Registration /Descriptiveness
Appeal of the Registrar’s refusal to register DELI SNACK for a variety of fish wares. The Examiner held that the mark was clearly descriptive of the wares and that the mark is a term that everyone should have the right to use.
Held: Appeal dismissed. The Registrar’s decision was reasonable. It does not matter that DELI SNACKS might suggest “delicious snack”, rather than “delicatessen snack”.
2. ITV Technologies v. WIC Television, September 10, 2003 FCTD (Tremblay-Lamer J.) Section 57 Expungement /Descriptiveness /Passing Off/Trade Mark Infringement/Section 22/Use of Internet at Trial/Best Evidence Rule
Action by ITV to expunge WIC’s trade mark registrations for ITV and ITV & Design on the basis that they were not registrable because they were clearly descriptive. The registrations cover television services. WIC had complained to ITV about its use of ITV in association with its Internet based business. ITV at first agreed to change its name but then started this action. WTC filed a counterclaim claiming passing off and trade mark infringement and obtained an interim injunction against ITV. The injunction was subsequently terminated by the Court but ITV is no longer using ITV because it was sold to a company who abandoned such use.
Held: Expungement action dismissed. An ordinary user would not conclude that ITV clearly describes WIC’s services. The term ITV has been used to mean “interactive television”, “independent television”, “instructional television” and “Internet television”; the fact that the letters can represent different meanings indicates that they are not clearly descriptive. For the same reason, ITV is not the name of WIC’s services and its registrations cannot be expunged pursuant to s. 12(1)(c) of the Trade-marks Act.
The infringement action was dismissed. Broadcasting and web casting are related in that they both provide audio-video content to a mass audience, but they are not similar services. Although WIC operated a web site, it was not known in relation to its web site – its web site was a vehicle to promote its broadcasting services. Also, there is a difference between the parties’ marks in that ITV uses ITV in its corporate name ITV Technologies Inc., in its business name ITV.net and as a domain name for its www.itv.net web site. “[T]he word Technologies and the suffix .net are sufficient to distinguish the marks of ITV Technologies with those of WIC.” The fact that WIC registered ITV did not entitle it to a monopoly of domain names with the prefix ITV. Misdirected e-mails may have been sent as a result of confusion between similar e-mail addresses, as opposed to confusion over the source of the trade mark. The fact that WIC did not follow up on these e-mails indicates that it was not concerned about this alleged confusion.
WIC’s claim that ITV was depreciating the goodwill in its trade mark failed because an ordinary consumer, upon seeing ITV’s use, would not immediately make a connection with WIC.
The passing off action was also dismissed – the marks are not confusing and ITV never portrayed to the public that it was WIC.
The Court allowed ITV to use the Internet at trial for retrieving electronic versions of documents that had been produced at discovery (www.archive.org was used to access the versions of the web sites as they appeared at the relevant time). The Court expressed the view that “official web sites of well-known organizations can provide reliable information that would be admissible as evidence, the same way the Court can rely on Carswell or C.C.C. for the publication of Court decisions without asking for a certified copy of what is published by the editor.” Copies of magazines, dictionaries and the like “are admissible, not to prove the truth of the contents, but as evidence that the letters ITV were capable of various meanings at different time periods”. The Court refused to apply the best evidence rule to rule the photocopies inadmissible.
3. Tommy Hilfiger v. International Clothiers, September 19, 2003 FCTD (MacKay J.) Passing Off/Copyright Infringement/Ornamentation vs. Trade Mark Use/Section 22(1)/Post-sale Confusion
Action for passing off and copyright infringement; counterclaim for expungement of Tommy Hilfiger’s trade mark and copyright registrations with respect to a Crest Design used on clothing. The defendant, a clothing retailer, bought some clothing bearing a crest to which it applied its own trade mark, unaware that such clothing had been the subject of an objection raised by the plaintiff in another jurisdiction. The crest complained about is similar but not identical to that of the plaintiff.
Held: The defendant did not infringe the plaintiff’s trade mark registration but did direct public attention to its wares in such a way as to cause confusion contrary to s. 7(b) of the Trade-marks Act. The fact that the plaintiff has used other trade marks with its Crest Design and has not indicated that the Crest Design is a trade mark does not mean that it has not been using that design as a trade mark. The plaintiff’s Crest Design has acquired distinctiveness through continual, extensive use. The defendant is not infringing the trade mark registration because it used its crest as mere ornamentation, not as a trade mark. (Obiter: If the defendant had been using the crest as a trade mark, then it would have infringed the plaintiff’s registration.) The defendant has not depreciated the plaintiff’s goodwill under s. 22(1) of the Trade-marks Act, because it did not use the crest to distinguish its wares from those of others. The defendant infringed the copyright in the crest. Although this was done at first innocently, once the plaintiff alleged copyright infringement, the defendant became responsible for the ongoing infringement. Although the last infringement took place in 1998, the Court still considered it appropriate to issue a permanent injunction, in addition to damages. The Court refused to consider the plaintiff’s claim in relation to passing-off arising because of post-sale confusion, a claim recognized under United States law, but not under s. 7(b).
4. Molson Canada v. Anheuser-Busch, November 5, 2003 FCTD (O’Keefe J.) Opposition Appeal/Confusion
Appeals of Registrar’s decisions that rejected Molson’s oppositions to Anheuser-Busch’s registration of MICHELOB GOLDEN DRAFT & Design and MICHELOB GOLDEN DRAFT. The Registrar held that there was no likelihood of confusion with Molson’s registered trade mark GOLDEN even though each of the marks is used for beer.
Held: Appeals dismissed. The Registrar did not make an error when he determined that the word GOLDEN was clearly descriptive based on statements in two Federal Court of Appeal decisions. In ruling that “golden” is descriptive, the Registrar was not attacking the validity of the opponent’s registration; he was just considering the distinctiveness of the mark as required by s. 6(5)(a) of the Trade-marks Act. When the parties’ marks are considered in their entirety, there is very little similarity between them. Molson does not have a family of GOLDEN trade marks. Since the opponent’s case with respect to confusion was strongest under its s. 12(1)(d) ground of opposition, the Registrar did not err by not reassessing the likelihood of confusion as of the date material for the distinctiveness ground. The distinctiveness ground, which was based only on confusion, was properly disposed of by the Registrar.
(c) Practice
1. Apotex v. The Wellcome Foundation and GlaxoSmithKline, October 21, 2003 FCTD (von Finckenstein J.) Motion for a Further and Better Affidavit of Documents /Standard of Review/No Requirement for Compelling Evidence/Motion Granted and Further Production Ordered
Appeal by Apotex from an order of the Prothonotary dismissing Apotex's motion for a further and better affidavit of documents. Apotex commenced this action pursuant to s. 8 of the NOC Regulations, for damages allegedly incurred as a result of the "patent hold" which was in effect during prohibition proceedings. The action had been ordered as a specially-managed proceeding and affidavits of documents had been exchanged. Apotex brought a motion for an order requiring Wellcome to produce a further and better affidavit of documents. The Prothonotary dismissed the motion on the basis that Apotex had "failed to establish through compelling evidence that relevant documents exist, but have not been listed by the defendants in their affidavit of documents".
Held: Appeal allowed in part. The Prothonotary applied the wrong principle when he concluded that Apotex had failed to provide "compelling evidence". The requirement of compelling evidence raises the barrier too high. An order for further production will be warranted where the requesting party produces sufficient or persuasive evidence that documents exist and have not been disclosed. A corporate relationship existed between Glaxo and Wellcome during material times and documentation relating to this relationship should be disclosed. The Court did refuse to order disclosure of other documents relating to alleged arrangements between Wellcome and Technilab and Altimed Pharmaceuticals to produce a pseudo-generic product. There was no evidence as to any corporate relationship between the defendants and the third parties, and disclosure could not be ordered on the basis of mere speculation.
2. Merck et al. v. Canada (Minister of Health) and Apotex, October 23, 2003 FCTD (Tabib P.) Motion to Strike Out Affidavits/Tests Conducted Pendente Lite/Section 7 Canada Evidence Act/Patented Medicines (Notice of Compliance) Regulations
Motion by Merck to strike out all or part of Apotex's affidavits in the context of a prohibition proceeding pursuant to the NOC Regulations. Merck alleges that Apotex's affidavits introduce: (i) file wrappers of certain patent applications as evidence of prior art, (ii) evidence of the results of experiments conducted pendente lite (during the litigation) without notice or opportunity to attend being given to Merck and (iii) testimony of more than five expert witnesses without leave of the Court, contrary to s. 7 of the Canada Evidence Act.
Held: Motion allowed in part. The test for striking all or parts of affidavits at a preliminary stage is whether it is obvious that the evidence is inadmissible or irrelevant, and whether it can be demonstrated that prejudice would occur by leaving the matter for disposition by the judge hearing the application on the merits. (i) Publications were not produced as additional instances of prior art but in specific response to an issue raised by Merck, therefore, the issue is properly left to the judge hearing the application. File wrappers may be admissible in certain situations to clarify the inventor's invention. (ii) There is no general rule of inadmissibility of test results conducted ex parte and pendente lite in summary proceedings, and Merck's motion on this basis is premature. (iii) The proper interpretation of s.7 of the Canada Evidence Act is that the 5 expert witness limitation applies to the entire case and not to each particular issue. Apotex is only entitled to rely on the evidence of five expert witnesses, and must file a notice electing five of the affidavits.
3. Biovail et al. v. Canada (Minister of Health) and RhoxalPharma, October 31, 2003 FCA (Décary, Létourneau and Nadon JJ.A.) Appeal/Motion for Production of ANDS/No Evidence Demonstrating the Relevance of Documents Sought/Timeliness/Patented Medicines (Notice of Compliance) Regulations, s. 6(7)
Appeal by Biovail from a decision dismissing Biovail's motion seeking production of all relevant portions of RhoxalPharma's ANDS, and the new drug application of RhoxalPharma's supplier in the United States. The Prothonotary dismissed the motion on the basis that Biovail had failed to demonstrate that the disclosure sought was "required and important", and that Biovail had not brought its motion for production in a timely manner. On appeal, the motions judge formulated a three-part test for obtaining disclosure under s. 6(7) of the NOC Regulations: (i) that the request for disclosure is timely, (ii) that the information already provided is not sufficient to enable the applicant to properly address the issues, and (iii) that the sought-after information is necessary because it is relevant to the issues before the Court. The motions judge found that Biovail had not satisfied any part of the test, and that the motion ought to have been filed prior to Biovail adducing its evidence on the merits. Biovail appealed.
Held: Appeal dismissed. Biovail argued that the motions judge erred in finding that the words "at any time during a proceeding" in s.6(7) of the NOC Regulations should be interpreted as requiring it to bring its motion for production "without delay". Biovail also asserted that the evidence before the judge did meet the requirement that the documents sought be relevant to the issues before the Court. The Court disagreed, finding that Biovail failed to demonstrate the relevance of the documents sought. Biovail did not adduce any evidence to show that portions of RhoxalPharma's ANDS are relevant to the issues in the litigation. The Court concluded that the issue of the timeliness of the motion need not be decided. However, once satisfied that the documents sought are relevant, a judge may consider a number of factors in deciding whether production ought to be ordered. The timeliness of an application is a consideration which a judge may take into account in deciding whether production should be ordered under s. 6(7) of the Regulations.
II. OTHER COURT DECISIONS
1. Toronto Cricket Skating & Curling Club v. Cricket Club Townhouses, September 16, 2003 OSCJ (Ferrier J.) Stay of Injunction/Passing Off
Motion by Cricket Club Townhouses for a partial stay of an interlocutory injunction pending disposition of a motion for leave to appeal the injunction. The injunction prohibits the applicant from using the words Cricket Club. The applicant has changed most of its references from Cricket Club Townhouses to Cricket Club Area Townhouses but seeks a stay with respect to one expensive brochure because the leave motion will be argued in about 6 weeks time.
Held: Motion dismissed. The changes made by the applicant do not comply with the injunction and therefore it is really seeking a much broader stay than it has indicated. It matters not that the other side may not object to the new wording, it is still contrary to the Court’s Order. The length of time until the appeal is heard is not insignificant given that the applicant is wrongfully using the respondent’s name, which the Court has found will cause the respondent irreparable harm.
III. OPPOSITION BOARD DECISIONS
1. Pharmacia v. Homeocan, August 8, 2003 (Carrière) Section 30(b)/Confusion/State of the Register
Use-based application for NICOTINEX for homeopathic product, namely drops and grains taken to help stop smoking and to detoxify the body. Opposition based, inter alia, on s. 30(b) and 12(1)(d) due to confusion with the mark NICORETTE registered for nicotine-containing chewing gum.
Held: Application refused. The applicant’s evidence raised serious doubts as to whether the mark had been used since the date claimed. Confusion is likely because the parties’ products, trades and marks are similar and the opponent’s mark has acquired a reputation. Ten NICO prefix marks on the Register are insufficient to make any conclusions about the state of the marketplace.
2. CFER Technologies v. Réseau Québécois des CFER, August 8, 2003 (Carrière) Confusion/Acronyms
Use-based application for CFER for operation of a business training centre and waste recycling. Opposition based, inter alia, on s. 16 due to confusion with the mark CFER previously used for research and development and engineering services.
Held: Opposition rejected. Confusion is not likely given the differences between the parties’ services and trades. Trade marks that are easily identifiable acronyms are typically entitled to a narrower ambit of protection.
3. Institut National des Appellations D’Origine v. Vincor (Québec), September 4, 2003 (Carrière) Descriptiveness/Section 10/Appellations of Origin
Proposed-use application for SAVEUR DE PROVENCE for wines from Provence. PROVENCE disclaimed. Opposition based, inter alia, on s. 10 (because it so nearly resembles the French appellations of origin Côtes de Provence, Coteaux d’Aix-en-Provence and Les Baux-de-Provence as to be likely to be mistaken for them) and s. 12(1)(b).
Held: Application refused. The opponent’s evidence showed “that the average Canadian consumer associates the word PROVENCE with a region of France, that he recognizes this region for its wines and that he is aware of wines with the appellation of origin “Côtes de Provence’, ‘Coteaux d’Aix-en-Provence’ and ‘Les Baux-de-Provence’.”
4. Protek Paint v. Protek Products, September 15, 2003 (Carrière) Section 30(b)/Confusion
Use-based application for PROTEK PRODUCTS for sealing and cleaning products for paving stones, etc. PRODUCTS disclaimed. Opposition based, inter alia, on s. 30(b) and on s. 16 due to confusion with PROTEK previously used for paints, varnishes, stains and sealers.
Held: Application refused. The s. 30(b) ground succeeded because there was no clear evidence of use of the mark as of the claimed date and doubts were raised as to its use by a unilingual label, the applicant’s licensee’s lack of knowledge of the early use, and documents suggesting that the first imports were of samples, rather than of products destined for sale in the normal course of trade. The s. 16 ground also succeeded.
5. MCI Multinet Communications v. TGV, September 15, 2003 (Bradbury) Confusion
Application for MULTINET for computer software for use in computer network operations based upon use and registration abroad. Opposition based, inter alia, on s. 16 due to confusion with MCI MULTINET COMMUNICATIONS previously used for distribution, installation and maintenance services in the field of computer software.
Held: Application refused. Despite the differences between the parties’ fields, an ordinary purchaser having an imperfect recollection is reasonably likely to associate MULTINET computer software for use in computer network operations with the opponent given its longer and more substantive use of a trade mark and trade name incorporating the word MULTINET.
6. Now Communications v. CHUM, September 15, 2003 (Bradbury) Confusion
Application for NEWS NOW Design for television broadcasting services etc. based on use and for a variety of wares including magazines based on proposed use. NEWS disclaimed with respect to the services and some of the wares. Opposition based, inter alia, on s. 12(1)(d) due to confusion with NOW registered for magazines.
Held: Application refused with respect to magazines only. There is no evidence that the applicant has used its mark with magazines or that it is common for television broadcasters to use their marks in association with magazines and the opponent’s rights in the magazine field appear to be undiluted.
7. Shell Canada v. P.T. Sari Incofood, September 15, 2003 (Bradbury) Descriptiveness
Application for JAVACAFE for a variety of food, including coffee, based on both proposed use and use and registration abroad. Opposition based, inter alia, on s. 12(1)(b) because JAVACAFE is clearly descriptive in the English or French language of the character or quality of the applicant’s coffee products or of their place of origin.
Held: Opposition rejected. The opponent’s evidence was insufficient to establish that Canadians know that there is an island called Java or that such island produces coffee.
8. Schur Consumer Products v. Scubs International, September 15, 2003 (Carrière) Section 30(b)
Use-based application for SCUBS for disposable ice cube moulds and plastic bags. Opposition based, inter alia, on s. 30(b) because the applicant has not used the mark since the date claimed.
Held: Application refused. The opponent met its evidential burden by submitting an affidavit from the applicant’s named predecessor who attested that he didn’t transfer ownership rights in the trade mark to the applicant. The applicant filed no evidence to rebut this.
9. Lauri Ward v. Karen Wolinsky and Arthur Blankstein, a partnership, October 2, 2003 (Carrière) Confusion/Making Known
Proposed-use application for USE-WHAT-YOU-HAVE INTERIORS for interior design and decorating services. Opposition based, inter alia, on s. 16 due to confusion with USE-WHAT-YOU-HAVE INTERIORS previously used and made known for the same services, and non-distinctiveness.
Held: Application refused. There is no evidence that the opponent’s services were available in Canada. Articles in magazines are not advertisements that can support a finding of “making known”. In any event, there is insufficient evidence that the opponent’s mark was well known in Canada within the meaning of s. 5. The evidence therefore did not support the s. 16 ground but was sufficient for the non-distinctiveness ground to succeed since that ground doesn’t require that the opponent’s mark be used in accordance with s. 4 or made known in accordance with s. 5.
10. Omega Engineering v. Quantic Laboratories, October 7, 2003 (Bradbury) Confusion
Proposed-use application for OMEGA PLUS for computer software for use by designers and engineers relating to electronic design automation, simulation for signal integrity, cross-talk and electromagnetic compliance. Opposition based, inter alia, on s. 12(1)(d) due to confusion with OMEGA registered for temperature measurement products, transducers and sensors for variable parameters, handbooks and catalogues and OMEGA-SOFT registered for computer software.
Held: Application refused. In support of its argument that the marks are not confusing, the applicant relied upon two differences between the products not included in its statement of wares, i.e. the present high cost of the applicant’s software and the extensive evaluation conducted by potential buyers prior to its purchase. It was not clear to the Board Member that these were inherent features of the applied for wares.
11. Mansfield Medical Distributors v. Colleen Biggs, October 7, 2003 (Bradbury) Confusion/Section 30(b)
Proposed-use application for OVU-TRAC for women’s natural fertility awareness test kit…. provision of individual and couple’s consulting and counseling services in the field of natural fertility awareness for women, etc. Opposition based, inter alia, on s. 12(1)(d) due to confusion with the mark OVU-THERM registered for clinical thermometers and s. 30 because the mark was not used by the applicant since the date claimed.
Held: Application refused with respect to women’s natural fertility awareness test kit only. Confusion is not likely given the suggestive nature of the prefix OVU and the marks themselves. The applicant’s own evidence indicated that names other than that of the applicant were associated with the first sales of OVU-TRAC test kits. The applicant’s failure to explain her relationship with these entities meant that she did not satisfy her burden with respect to s. 30(b) regarding these wares. The opponent did not meet its initial evidential burden with respect to the remaining wares and services.
12. Molson Canada v. Labatt Brewing, October 7, 2003 (Herzig) Confusion/Negative Inference
Proposed-use application for DEEP CHILL for alcoholic brewery beverages. Opposition based, inter alia, on s. 12(1)(d) due to confusion with THE BIG CHILL registered for brewed alcoholic beverages.
Held: Opposition rejected. Confusion not likely given “the low inherent distinctiveness of the opponent’s mark and the lack of evidence of any acquired reputation for the opponent’s mark.” The Board Member refused to draw a negative inference from unclear or ambiguous answers given during cross-examination because the examining party simply accepted such answers without follow through questioning.
13. MEXX International v. NBC Fourth Realty, October 15, 2003 (Martin) Confusion
Proposed-use application for T.J. MAXX for clothing. Opposition based on s. 12(1)(d) due to confusion with MEXX registered for clothing.
Held: Application refused because the Board Member was left in a state of doubt respecting the likelihood of confusion. There is a fair degree of resemblance between the marks – because initials are inherently very weak, consumers would be more likely to focus on the second component of the applicant’s mark. The applicant attacked the distinctiveness of the opponent’s mark on the basis of admissions made during cross-examination that the applicant’s Canadian distributor has sold some goods that are not authorized by the opponent. However, the Board Member indicated that in the absence of the applicant pursuing information as to the extent of such unauthorized use, he was not prepared to conclude that it was sufficient to affect the distinctiveness of the opponent’s mark, particularly as the MEXX products are consistently presented to the consumer as being anonymous as to source.
14. McCain Foods v. Les produits d’alimentation Bologna, November 3, 2003 (Carrière) Confusion/Section 30(b)
Use-based application for NAPOLINA & Design for pasta products, pizza sauces, spaghetti sauces, tomato sauces; dried pastas, pastas and pizza crusts, stuffed, frozen, and in particular stuffed pasta products. Opposition based, inter alia, on s. 12(1)(d) due to confusion with NAPOLI and NAPOLI OLD ITALIAN registered for frozen pizzas and s.30(b).
Held: The opposition succeeded under s.30(b) with respect to all the wares other than pizza sauces and pizza crusts. There is no likelihood of confusion between NAPOLINA & Design pizza sauce and pizza crusts and NAPOLI frozen pizzas because there is no resemblance between the marks as a whole and there is not enough evidence that the opponent’s marks have acquired distinctiveness.
IV. SECTION 45 DECISIONS
1. Ridout & Maybee v. Omega SA, September 30, 2003 (Savard) Sufficiency of Evidence/Use of Mark with Descriptive Word
OMEGA & Design registered for various watch products and technical and scientific apparatus.
Held: Registration restricted to watches and boxes for watches. The evidence failed to show use in association with each of the licensed wares. The Registrar accepted the evidence furnished showing use of the trade mark in association with "montres et boîtes pour montres" (watches), but deleted the category "appareils ou instruments à mesurer et à marquer le temps" ("tachometers"). The registrant argued that use of the trade mark with such category is shown by the sale of a watch having a tachometric scale. The Registrar held that to maintain the tachometer category, the registrant must show use of the items in that category other than with watches. The fact that the watch incorporates a tachometer does not remove it from the category "watches". Use of OMEGA ELECTRONICS & Design is use of the registered trade mark per se because the word "electronics" is descriptive, appears in a size which differs from the word OMEGA and the Greek letter &Mac189;, and is separated by a line of oblongs. Accordingly, the Registrar concluded that the trade mark OMEGA & Design stands out sufficiently from the additional matter to be perceived as a distinct trade mark.
2. Ridout & Maybee v. Omega, September 30, 2003 (Savard) Sufficiency of Evidence /Section 50/Use of Mark with Descriptive Word
OMEGA & Design registered for devices relating to sporting activities, namely stop watches, scoreboards, temperature measurement devices etc.
Held: Registration amended to wares shown to have been sold. The registrant granted a license to Omega Electronics SA to use the trade mark in Canada in association with the registered wares. Pursuant to the license agreement, a third party company has been authorized to use the trade mark in association with the distribution of the wares. The registrant indicated in its affidavit that it has control over the character and quality of the wares sold, and the use and advertisement of the trade mark by Omega Electronics SA. The Registrar was satisfied that the registrant had direct control over the character and quality of the wares and services as used and performed by the licensee and the third party company. Use of OMEGA ELECTRONICS & Design is use of the registered trade mark per se because the word "electronics" is descriptive, appears in a size which differs from the word OMEGA and the Greek letter &Mac189;, and is separated by a line of oblongs.
3. Sim & McBurney v. Home Management Systems, October 23, 2003 (Savard) Special Circumstances/Sufficiency of Evidence
ELECTRONIC GOURMET & Design registered for various computer software systems that input, store and retrieve recipes and menus.
The registrant submitted affidavit evidence indicating that the trade mark was transferred to Steppe Enterprises Limited in March 1993. The right to market the software system and database content to internet companies was licensed to InfoTech Inc. In December 1999, Wellness Checkpoint, a division of InfoTech Inc., granted CANOE Limited the right to use the database content on its website. Wellness and CANOE agreed that each party would be authorized to use the other's copyrights and trade marks for promotional purposes. CANOE did not properly identify the ownership of the trade mark ELECTRONIC GOURMET & Design to Steppe Enterprise on its website. The registrant contends that special circumstances exist to excuse the absence of use of the trade mark during this period.
Held: Registration expunged. The Registrar held that the license between CANOE and InfoTech Inc. arguably amounted to a transfer of wares in the registrant's normal course of trade. On that basis, a transfer of wares emanating from the registrant occurred during the relevant period. However, the evidence failed to show whether the trade mark as registered was associated with the wares at the time of transfer of the wares. Regarding the existence of special circumstances, the Registrar held that there was no evidence to suggest that the non-use of the trade mark was due to circumstances beyond the registrant's control. Further, the registrant has not shown an intention to resume use of the mark in the immediate future. The Registrar rejected the registrant's submission at the oral hearing that the current owner, not having benefited from professional advice, had used the trade mark in an improper manner and was now attempting to correct the past errors. The Registrar rejected evidence submitted by the registrant by way of its written argument since it was filed outside of the statutory time limit for filing evidence, and was not furnished by way of an affidavit or statutory declaration.
4. Bavaria v. Verband Bayerischer Ausfuhr-Brauereien, October 23, 2003 (Savard) Section 4(1)/Sufficiency of Evidence
GENUINE BAVARIAN BEER & Design registered for beer.
Held: Registration expunged. The registrant is an association of Bavarian breweries whose purpose is to protect, promote and represent the common beer export interest of the Bavarian brewery industry. The registrant submitted declarations executed by officers of each of the breweries attesting to exports of genuine Bavarian Beer to Canada during the relevant period. The requesting party successfully contended that the declarations fail to show that the trade mark as registered was associated with the beer when it was exported to Canada as required by s. 4(1).
5. Sunny Fresh Foods v. Sunfresh, October 23, 2003 (Savard) Use of Corporate Name
SUNFRESH registered for various food products, including meat, milk, eggs, cakes and laundry detergent.
Held: Registration expunged. The registrant estimated that sales of products featuring the SUNFRESH trade mark over the past five years have been in excess of $9.5 billion dollars. The registrant submitted representative packaging on which the trade-mark SUNFRESH was used with additional matter as follows: SUNFRESH LIMITED or SUNFRESH LIMITED/LIMITÉE. The Registrar held that the packaging showed use of the business name Sunfresh Limited or Sunfresh Limited/Limitée, and not of the trade mark SUNFRESH. The perception of the average person upon seeing the words Sunfresh Limited or Sunfresh Limited/Limitée would be that it is the use of a corporate name, and not use of the word SUNFRESH as a trade mark.
6. Shapiro Cohen v. Wallace International Silversmiths, October 23, 2003 (Savard) Whether the Use Shown Constitutes Use of the Registered Trade Mark
Section 45 notices were issued in respect of the following eight registered trade-marks:
F.B. ROGERS registered for various silverplated and stainless steel cutlery.
WM. ROGERS MFG. CO. registered for "table silverware along with silver electro-plated spoons and forks."
ROGERS & BROS.AI XII & Design registered for silverware and cutlery.
1847 ROGERS BROS XS TRIPLE & Design registered for "silver electro plated flatware namely forks, spoons and serving pieces."
1847 ROGERS BROS. XS QUINTUPLE & Design registered for "silver electro plated flatware namely forks, spoons and serving pieces."
1847 ROGERS BROS. XII XS TRIPLE & Design registered for "silver electro plated flatware namely forks, spoons and serving pieces."
1847 ROGERS BROS. A.I. 1847 ROGERS BROS. XII & Design registered for "silver electro-plated flatware namely, knives, forks and spoons."
WM. ROGERS & SON & SON registered for "table silverware along with silver electro-plated spoons and forks.
Held: Registrations expunged. The registrant submitted that its licensee manufactured and distributed silverware in Canada. Under the license arrangement, the registrant had direct or indirect control of the character and quality of the products manufactured, distributed and sold bearing the registered trade marks. The registrant submitted sales figures and packaging, flyers and representative advertisements showing use of the mark 1847 ROGERS BROS. The mark 1847 ROGERS BROS. does not constitute any of the registered trade marks. The differences between the trade mark being used and the registered trade marks are more than petty details and minor variations.
7. Caves Aliança v. Inniskillin Wines, October 23, 2003 (Savard) Sufficiency of Evidence
ALLIANCE registered for wines.
Held: Registration maintained. The registrant submitted a cash register receipt evidencing the sale of one bottle of wine at the registrant's retail outlet. Further, the registrant submitted the volume of wine sold in bottles bearing labels marked with the trade mark in Canada during each of the years 2000, 2001 and 2002. Sample labels showing the use of the ALLIANCE trade mark were submitted. Sales reports from the parent corporation of the registrant company were also provided. The Registrar held that the evidence as a whole was clear and straightforward and related sufficiently to the facts. The labels clearly bear the name of the registrant and, hence, clearly indicate that the wares emanate from the registrant. The fact that a parent company may maintain sales reports concerning the wine sold by the registrant does not in any way negate the fact that the use shown by the evidence was by the registrant.
8. Charchuterie La Tour Eiffel v. J.M. Schneider, October 29, 2003 (Savard) Sufficiency of Evidence
OKTOBERFEST registered for sausages; sauerkraut, cheese meat pies, pumpkin pies and bake shop buns; bread and rolls; pork burgers; sauces and mustards; breaded seasoned pork schnitzel.
Held: Registration amended to delete wares not being sold. The registrant indicated that the OKTOBERFEST trade mark has been used in Canada during the relevant period on the packaging for sausages, sauerkraut, sauces, mustards, and breaded seasoned pork schnitzel and submitted packaging /photographs of labels for these wares, together with sales figures and invoices.
9. Baker & McKenzie v. McHenry Laboratories, October 29, 2003 (Savard) Section 4(1)
ORA5 registered for topical bactericidal medication for treatment of inflammation and superficial soreness of oral tissue.
Held: Registration maintained. The registrant develops and distributes the registered wares into Canada by direct mail to individual consumers, professionals, wholesalers and distributors. The registrant submitted invoices evidencing Canadian sales of the antimicrobial agent product associated with the trade mark, as well as information sheets and representative packaging bearing the trade mark.
10. Swabey Ogilvy Renault v. Sterling Shoes, October 29, 2003 (Savard) Section 4(1)
BE WILD registered for men's and women's shoes and boots.
Held: Registration maintained. The furnished evidence showed that the trade mark was being used in Canada by the registrant during the relevant period in association with the registered wares. Although the evidence shows the trade mark being used with additional matter, the Registrar held that the words "Be Wild" stand out sufficiently from the additional matter as to be perceived as use of the trade mark per se.
