Recent Decisions December 2005

I. FEDERAL COURT DECISIONS

(a) Patents

1. Aventis Pharma v. Canada (Minister of Health), Apotex et al., September 20, 2005 FCTD (MacTavish J.) Prohibition Order/Allegation of Patent Invalidity/Double Patenting/Date of Construction/Date for Assessing Sound Prediction and Sufficiency of Disclosure/Hearsay/Patented Medicines (Notice of Compliance) Regulations

Application by Aventis seeking an order declaring that Apotex's NOA was not valid or in the alternative, an order prohibiting the Minister from issuing a NOC to Apotex for the drug ramipril until after the expiry of the '206 Patent. Under license from Schering, Aventis manufactures a drug containing ramipril. Schering's '206 Patent was involved in a protracted conflict proceeding such that the Patent did not issue for more than 20 years after filing. Apotex asserted that the '206 patent was invalid on a number of bases including: 1) lack of sound prediction; 2) claims broader than invention; 3) lack of utility; 4) insufficiency (s. 34 old Patent Act); 5) anticipation and 6) double patenting. Apotex also asserted that a conflict should have been declared between the '206 and '087 Patents.

Held: Application dismissed. The date of construction of a patent filed under the old Patent Act is the date of issue. The date for assessing soundness of prediction including the date for assessing the third prong of the Wellcome sound prediction test, is the filing date. Schering had neither a sound basis for prediction nor made adequate disclosure to satisfy the third prong of the Wellcome test on either the priority or the filing date. With respect to sufficiency of the patent, Apotex sought to rely on declarations from American proceedings but these were excluded as hearsay. Further the date for assessing whether an applicant correctly and fully described an invention under s. 34(1) is the date of patent issue even though, in the current case, this permits Schering to benefit from considerable advances in public knowledge. Regarding inutility, the evidence relied on by Apotex disclosing test results supporting its allegation of inutility was excluded as raising new facts. Regarding anticipation, the issue did not arise since Schering did not have a sound basis for predicting the '206 invention. If the invention had been soundly predicted then the invention would not have been anticipated.

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2. Abbott Laboratories v. The Minister of Health and Apotex, September 28, 2005 FCTD (Phelan J.) Patented Medicines (Notice of Compliance) Regulations/Section 27(5) of the Patent Act

Application by Abbott for an order prohibiting the Minister from issuing an NOC to Apotex until after the expiry of the '732 patent. The '732 patent is a product by process patent which claims the active medicinal ingredient 6-O-methylerythromycin A Form II (also referred to as Clarithromycine Form II). Amongst standard allegations of invalidity, Apotex asserted in particular, that claims 1 and 15 were invalid for novelty, sound prediction and utility. Claims 1 and 15 of the '732 patent claim a multitude of different solvents from which clarithromycin can be recrystallized. Abbott argued that while some of the solvents claimed may be inoperable, s. 27(5) of the Patent Act allowed it to argue that where a claim is made in the alternative, so long as one alternative is patentable, the claim is valid.

Held: Application dismissed. In addition to holding the patent invalid for anticipation, lack of a sound prediction and inutility, the Court ruled that s. 27(5) of the Patent Act could not rescue claims which contained inoperable subject matter. Section 27(5) requires that if there are alternative claims, each alternative must meet the test for patentability-novelty, utility and inventiveness. Failure to establish that each alternative meets the test for patentability would result in the alternative being invalid as well as the whole of the claim.

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3. Pfizer Canada et al. v. Canada (Minister of Health) and Apotex, September 28, 2005 FCTD (Heneghan J.) Application for Prohibition Order/Allegations of Patent Invalidity and Non-infringement/Double Patenting/Burden of Proof/Experiment Testing Evidence/Sound Prediction/Confidentiality Order/Patented Medicines (Notice of Compliance) Regulations

Application by Pfizer seeking an order prohibiting the Minister of Health from issuing a NOC to Apotex for the ACE inhibitor drug quinapril hydrochloride until after the expiry of the '330 and '615 Patents. Apotex filed two NOAs (July 18, 2003 and July 24, 2003) alleging that its tablets would not infringe the '615 Patent and that the '330 Patent was invalid on a number of grounds. The grounds of invalidity included: 1) lack of actual utility 2) lack of sound prediction of utility; 3) anticipation; 4) obviousness; 5) claims broader than invention or disclosure and 6) double patenting. The '330 Patent had been involved in a conflict proceeding where the Commissioner of Patents found that the conflicting patent was the first to invent. However by consent judgment the claims of the '330 Patent were issued, in Canada only, to the Applicants. Apotex presented experimental testing evidence that the actual drug in both Apotex's and the Applicant's tablets is not actually quinapril hydrochloride and argued that the '615 Patent was therefore not applicable. Pfizer criticized these test results and alleged that Apotex carried the burden of proof in relation to invalidity due to the presumption of validity arising under s. 45 of the pre-1989 Act. In addition Pfizer challenged the adequacy of the July 18, 2003 NOA.

Held: Application dismissed. Pfizer bears the burden of establishing that Apotex's allegations of invalidity are not justified. Regarding the '330 Patent, the relevant claims were found to lack utility but were soundly predicted and therefore valid. Apotex's allegations of invalidity on the bases of anticipation and obviousness were unjustified and the '330 Patent was not invalid for double patenting. The fact that '615 had not been involved in the '330 conflict proceeding was persuasive evidence to refute the allegation of obvious-type double patenting. However the relevant claims were overly broad in light of the construction of the patent and therefore invalid. Although it was appropriate for Apotex to withhold the formulation of its product until a confidentiality order was obtained, the NOA was insufficient with respect to the alleged contents of the Applicant's product. The defect was however not fatal. With respect to the '615 Patent, the Applicants failed to discharge their burden regarding Apotex's allegation of non-infringement. Although Pfizer was provided with a sufficient sample of Apotex's product Pfizer elected not to test the sample which could have substantiated its charge of infringement.

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4. Pfizer Canada et al. v. Canada (Minister of Health) and Novopharm, October 3, 2005 FCTD (Blanchard J.) Application for Prohibition Order/Allegations of Patent Invalidity and Non-infringement/Person Skilled in the Art/Claim Construction/Essential Element/Patented Medicines (Notice of Compliance) Regulations

Application by Pfizer seeking an order prohibiting the Minister from issuing a NOC to Novopharm in respect of the drug azithromycin monohydrate until after the expiry of the '071 Patent. Novopharm alleged that its product would not infringe the tablet claims of the '071 Patent since it did not make its tablets by wet granulation and alleged that claim 23 of the '071 Patent was invalid for anticipation, obviousness, overbroad claiming and indefiniteness. Novopharm also argued that only a pharmaceutical formulator was a person skilled in the art and contested the construction of "pharmaceutical dosage form" in claim 23. Pfizer argued that "pharmaceutical dosage form" was limited to oral dosage forms while Novopharm insisted that it should include non-oral dosage forms.

Held: Application granted. Novopharm's allegation of invalidity of claim 23 was justified but Novopharm's allegation of non-infringement of the tablet claims was not justified. A person skilled in the art was not limited to a pharmaceutical formulator and the claims were construed such that wet granulation was not an essential element of the invention. A person skilled in the art would have known that substituting wet granulation would not make a difference to how the invention worked. Furthermore, "pharmaceutical dosage form" was construed to refer to oral dosage forms. However, since claim 23 was construed to claim a desired result, it was beyond the scope of the patent and therefore invalid. Novopharm's allegation of non-infringement was not justified since it was founded on a non-essential element. If "wet granulation" had been an essential element however, Pfizer would have failed to discharge its burden that the allegation of non-infringement was unjustified since Pfizer was not entitled to rely on the presumption set out in s. 6(6) of the Regulations. The '071 Patent was not granted for the medicine azithromycin but for a drug containing azithromycin and therefore Pfizer could not claim the benefit of the presumption provided by s. 6(6).

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5. Aventis Pharma et al. v. Apotex and The Minister of Health, October 11, 2005 FCTD (Simpson J.) Application for Prohibition/Declaration Order/Detailed Statement/Patented Medicines (Notice of Compliance) Regulations

Application for an order prohibiting the Minister of Health from issuing a NOC to Apotex for Ramipril. Aventis also sought a Declaration that Apotex's letter dated August 20, 2003 is not a NOA as contemplated by the Regulations. Apotex argued that the '457 patent only covers the use of Ramipril in the treatment of heart failure and therefore its manufacture and sale of Apo-Ramipril for the treatment of hypertension will not infringe. The Court addressed three issues: (1) What is the test for Infringement? (2) Is the test met in this case? and (3) Does the first product monograph ("PM") suggest that Apo-Ramipril may be used to treat heart failure? The Court also dealt with two preliminary issues: 1) Which PM is relevant in this application? and 2) Whether limited interchangeability is at issue in this application. Apotex submitted its first PM with the NOA. Aventis disputed various portions of the first PM in its application for prohibition. Before cross-examinations were held on the affidavits, Apotex filed a revised PM and argued that the second PM is relevant to this application because a PM is not final until the Minister issues an NOC. Aventis argued that only the first PM is relevant because time limits are tight and they must have certainty about the content of an NOA. Apotex also argued non-infringement on the basis of limited interchangeability: pharmacists would only be reimbursed if they could show that Apo-Ramipril had been dispensed for the treatment of hypertension. Aventis argued that limited interchangeability should not be considered because it is neither mentioned in the NOA, nor in Apotex's affidavit evidence.

Held: Application granted. Declaration granted. The applicants have demonstrated that infringement will occur and also that the disputed passages in the first PM shows that the allegations of non-infringement in the NOA are not credible. The applicant bears the onus of showing that future infringement "will" occur. This does not require the applicants to show that Apotex will be the infringing party. Proof on the balance of probabilities that third parties will infringe would satisfy the test. Ramipril will be prescribed for heart failure and prescriptions will not show why it was prescribed. Since pharmacists (at least in Ontario) will be obliged by law to dispense Apo-Ramipril unless directed otherwise by the doctor or patient it is inevitable that Apo-Ramipril will be dispensed for heart failure. The disputed passages in the first PM suggest that Apo-Ramipril can be used to treat heart failure. The first PM was relevant to this application. A party filing a NOA is obliged to put its full and best case forward. It does not accord with the time limits in the Regulations or with the purpose of an NOA to accept the second PM as part of the record in the circumstances of this case. Limited interchangeability was not relevant since it was not mentioned in the NOA. A detailed statement pursuant to s. 5(3)(a) of the Regulations requires that the NOA must clearly set out all the reasons why the second person alleges it will not infringe.

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6. Pfizer Canada et al. v. Canada (Minister of Health) and Apotex, October 17, 2005 FCTD (Mosley J.) Application for Prohibition Order/Allegations of Patent Invalidity and Non-infringement/Disclosure by Prior Sale/Scope of Cross-Examination/Claim Construction/Commercial Success/Mere Discovery/Eligibility for Listing on the Patent Register/Patented Medicines (Notice of Compliance) Regulations

Application by Pfizer seeking an order prohibiting the Minister from issuing a NOC to Apotex in respect of the drug azithromycin until after the expiry of the '071 Patent. Claim 23 was at issue and was directed to use of the compound for preparing a drug that does not exhibit an adverse food effect in the treatment of a microbial infection. Apotex argued that its tablets are made in accordance with the prior art and thus satisfy the Gillette defence; and alternatively, that they undertake not to market them as intended for administration to a patient that has eaten. Apotex also alleged invalidity and that the patent was improperly listed on the Patent Register. Further, Pfizer refused to answer written interrogatories concerning the sale of Pfizer branded products in Europe. The parties also contested the construction of claim 23 - Pfizer argued that the claim was for a new use of azithromycin in particular dosage forms while Apotex argued the claim related to a formulation of azithromycin dosage forms.

Held: Application dismissed. The claim was construed purposively as a new method of administering azithromycin. Pfizer should have answered interrogatories regarding product sales in Europe as the information was properly the subject matter of cross-examination and the information could easily have been obtained. The refusal permitted the drawing of an unfavourable inference but the evidence was insufficient to establish anticipation by publication or prior sale. The '071 Patent was invalid as obvious and the Applicant's commercial success was not persuasive as showing novelty. Further, the invention was found to be a mere discovery. There was no direct infringement since Apotex's formulation falls within the prior art or alternatively, claim 23 was invalid for claiming the prior art. Further, there was no indirect infringement since there was no evidence that Apotex had or would actively encourage third parties to infringe Pfizer's patents. The patent was improperly listed on the Patent Register as it was out of time. Apotex was permitted to raise the issue during the hearing and was not required to bring a motion under s. 6(5) of the Regulations in advance even though this provided Apotex the tactical advantage of having the burden to disprove the allegations resting with the Applicants instead of having to carry the burden on a preliminary motion to dismiss.

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7. Fournier Pharma et al. v. The Minister of Health and Cipher Pharmaceuticals, October 21, 2005 FCA (Sexton, Evans, Sharlow J.J.A.) Appeal/Judgment Dismissing Application For Prohibition Order/Patented Medicines (Notice of Compliance) Regulations

Amended reasons for appeal of a judgment dismissing Fournier's application for an order prohibiting the Minister of Health from issuing a NOC to Cipher for Lipidil Supra fenofibrate. Cipher alleged non-infringement of the '475 patent on the basis that the fenofibrate in the Cipher products is not micronized. Fournier did not succeed in adducing evidence that disproved Cipher's factual allegation. Fournier argued that Cipher's NOA was intended to describe fenofibrate in the form in which it is supplied to the formulator and not the form in which it appears in the finished product. As such, Fournier argued that when the Judge concluded that Fournier failed to establish that Cipher's finished product contains fenofibrate in the micronized form, she was finding a justification that was not asserted in the NOA.

Held: Appeal dismissed. There is no error of law and no palpable and overriding error of fact in the Judge's interpretation of the NOA. The Judge did not read the NOA as narrowly as Fournier contended. It is also equally apparent that Fournier's own expert responded to the NOA by opining on the finished Cipher product. The Judge did not err in reaching the factual conclusion that the fenofibrate in the finished Cipher product would be non-micronized.

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8. Apotex v. Merck et al.; Merck et al. v. Apotex and Canada (Attorney General), October 25, 2005 FCTD (Gauthier J.) Federal Court Rule 220(1)/ Section 8/Patented Medicine (Notice of Compliance) Regulations

Appeal by Apotex from Prothonotary Aronovitch's decision dismissing its motion requesting the determination of a question of law under Federal Court r. 220(1). Apotex sought a determination on the law respecting a defendant's right, in a proceeding brought pursuant to s. 8 of the Regulations to defend on the basis that infringement would have occurred by the plaintiff had the prohibition proceeding not been commenced by the defendant under s. 6(1). Apotex argued that the Prothonotary misapplied the relevant case law dealing with the interpretation of s. 8, and that she failed to give proper consideration to the relevant circumstances, such as the fact that the trial would be shortened if Apotex was successful on its motion. Apotex also alleged that the Prothonotary gave undue weight to irrelevant considerations, such as the right of the parties to appeal the decision on the motion and delay the pursuit of the main action.

Held: Appeal dismissed. The decision by the Prothonotary was discretionary, and the issue before her was not vital to the final determination of the litigation. The Prothonotary correctly applied the relevant case law, and gave appropriate consideration to the factors raised by the parties, including the potential benefit to Apotex had it been successful. Further, the Prothonotary was correct to consider the eventual appeal of her decision, and the resultant delay of the trial of the other issues at stake between the parties. The question of law raised at the motion was novel, requiring a thorough analysis of the history and purpose of section 8 which could not be easily extricated from the several other s. 8-related defenses raised by Apotex. There was nothing clearly wrong with the Prothonotary's decision, and adopting the process suggested by Apotex would result in both unnecessary duplication and a failure to bring the litigation to a more just conclusion.

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9. GlaxoSmithKline v. Canada (Attorney General) and The Minister of Health, October 25, 2005 FCTD (Layden-Stevenson J.) Patented Medicines (Notice of Compliance) Regulations/Patent Register/Requirements for Listing

Appeal by Glaxo from a decision of the Director of the Therapeutic Products Directorate who refused to list Glaxo's patent on the Patent Register. Glaxo's patent claimed an aerosol can and valve which could dispense a variety of medications. The Director refused to list the patent on the Patent Register ruling it did not comply with s. 4 of the Regulations, which states that only a patent with a claim to a medicine or the use of that medicine can be listed on the Patent Register.

Held: Appeal dismissed. The Court relied on the Federal Court of Appeal's decision in Glaxo Group Ltd. v. Novopharm Ltd. (1999), 87 C.P.R. (3d) 525 which ruled that an inhaler used to administer a medicament to patients did not contain claims to the medicine itself or to the use of that medicine. The invention in Glaxo's patent is not medicine, rather it is the design of a system, including particularly a special valve, for the delivery or administration of medicaments.

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10. Aventis Pharma et al. v. Apotex and The Minister of Health, October 27, 2005 FCTD (von Finckenstein J.) Off Label Use/Indirect Infringement/Patented Medicine (Notice of Compliance) Regulations

Application by Aventis for an order prohibiting the Minister of Health from issuing a NOC to Apotex in respect of ramipril oral capsules until after the expiry of the '089 Patent. Aventis has a NOC to make, use or sell ramipril for the treatment of hypertension. The '089 Patent, which includes ramipril amongst its claimed compounds, concerns the treatment of cardiac and of vascular hypertrophy and hyperplasia (collectively "Hypertrophy"). Aventis does not have a NOC for the patented use, namely to treat Hypertrophy. Apotex wanted to obtain a NOC for the use of apo-ramipril to treat hypertension. In its NOA, Apotex asserted that it would not infringe the '089 Patent, since the only indication listed in amo-ramipril's Product Monograph ("PM") would be for the treatment of hypertension, and not Hypertrophy. Aventis asserted that Apotex's allegation of non-infringement was not justified because even though Hypertrophy is not an approved use for ramipril, due to the existence of "off-label" prescription, it is actually prescribed for that indication. Similarly, if apo-ramipril was allowed on the market, although only approved for hypertension, physicians would nevertheless prescribe it for Hypertrophy, pharmacists would dispense it for Hypertrophy, patients would use it for Hypertrophy, and the '089 Patent would be infringed.

Held: Application dismissed. Apotex conceded that "off-label" use of apo-ramipril would occur once the NOC it sought was issued, and Aventis took the position that, with this concession, no further evidence linking the indirect infringement to Apotex was required. However, the Court ruled that the mere sale by Apotex of a medicine subject to a use patent, such as apo-ramipril, was not sufficient to constitute infringement. The law respecting indirect infringement requires "something more" on the part of Apotex before there could be a finding of infringement, such as inducement, procurement, marketing or some other nexus. The Court rejected Aventis' assertion that (1) Apotex's failure to warn against "off-label" use in its PM, and (2) a scientific reference in Apotex's PM to an article that mentions the use of ramipril in the treatment of Hypertrophy, each amounted to the "something more" required to establish infringement. Apotex's failure to warn against "off-label" use could not be used to infer an intention to infringe. Further, the scientific reference highlighted by Aventis did not deal with Hypertrophy, but rather only mentioned ramipril's utility in the treatment of Hypertrophy in its introduction.

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11. Bristol-Myers Squibb Canada et al. v. Novopharm and The Minister of Health, October 28, 2005 FCTD (Gibson J.) Invalidity/Test for Obviousness/Patented Medicine (Notice of Compliance) Regulations

Application by BMS for an order prohibiting the Minister of Health from issuing a NOC to Novopharm in respect of gatifloxacin oral tablets until after the expiry of the '316 Patent. Gatifloxacin is included amongst the compounds claimed in the 316 Patent. In its NOA, Novopharm asserted that the '316 Patent was invalid because of obviousness.

Held: Application granted. Novopharm's expert alleged that the prior art documents would have been well known to persons skilled in the art before the priority date, and that such skilled persons would then be led directly to the solution taught by the '316 Patent. The Court accepted the evidence of Novopharm's expert respecting the state of the prior art, but rejected Novopharm's allegation of obviousness. Novopharm's expert had engaged in a classic exercise of hindsight analysis: instead of starting with the prior art to determine whether it led him to gatifloxacin, the expert incorrectly started with gatifloxacin and then consulted the prior art to find the path that would lead him most directly and with the least difficulty to the drug.

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12. Aventis Pharma et al. v. Apotex and The Minister of Health, November 4, 2005 FCTD (Tremblay-Lamer J.) Patented Medicines (Notice of Compliance) Regulations/Application for Prohibition Order/Abuse of Process

Application by Aventis for an order prohibiting the Minister from issuing a NOC to Apotex until after the expiry of the '457 patent. Apotex alleged the standard arguments of invalidity, including anticipation and obviousness. However, this was not the first NOA that Apotex had issued to Aventis concerning the '457 patent. Apotex alleged non-infringement of the '457 patent in the first NOA. Aventis submitted that the allegations advanced by Apotex in this proceeding related to the same product and the same patent as in the first NOA, and therefore constituted an abuse of process. Aventis alleged that because Apotex only alleged non-infringement in the first proceeding, they accepted the validity of the '457 patent.

Held: Application dismissed. The '457 patent was invalid for obviousness and there was no abuse of process. Although Apotex only alleged non-infringement in the first proceeding, they did not necessarily accept the validity of the '457 patent. It is well-established law that multiple allegations are permissible provided that the legal and factual bases underlying each allegation are separate and distinct. However, it would be more efficient to bring separate and distinct allegations in the same notice so that the proceedings are conducted in a just and expeditious manner.

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13. Pfizer Canada et al. v. The Minister of Health and Ranbaxy Laboratories, November 11, 2005 FCTD (Kelen J.) Appeal from Prothonotary/Federal Court Rule 385

Appeal by Pfizer from an Order of Prothonotary Milczynski. Ranbaxy provided Pfizer with a NOA in relation to the alleged infringement of Pfizer's drug Lipitor. The NOA relied on file wrappers from foreign patent prosecutions by Pfizer and a transcript presented at a U.S. trial by an expert during litigation. In accordance with r. 385(1)(a), Pfizer sought direction from the Prothonotary that file wrapper evidence was not relevant and that the expert evidence was inadmissible. In the appeal, Pfizer submitted that the Prothonotary erred in concluding that she had no jurisdiction to grant the order sought.

Held: Appeal dismissed. It was clearly not wrong for the Prothonotary to conclude that r. 385 does not empower her to effectively strike out or restrict sections of the NOA. Relief sought under the case management r. 385 should not derogate from a party's substantive right in preference of alleviating another's procedural right. Rule 385(1)(a) should not operate so as to override the NOA.

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(b) Trade Marks

1. Omeganutrel, Stoney Creek Dairy and Grand Valley Fortifiers v. Food Systems Innovation, October 11, 2005 FCTD (Phelan J.) Gag Order/False and Misleading Statements re Patent Infringement/Section 7(a) Trade-marks Act

Plaintiff (ONI) sought an interim injunction to prevent the defendant (FSI) from disseminating statements alleging a breach of a Canadian patent, and from threatening legal proceedings for infringement. FSI was the exclusive licensee of a patent, and ONI has a patent application pending, and claims it is the owner of technology for a novel feed supplement. Phelan J. characterized this motion as a 'gag order' that arose from a claim by the plaintiffs pursuant to s. 7(a) of the Trade-marks Act (false and misleading statements). ONI alleged that buyers had stopped purchasing products that used ONI technology because of the dispute over the technology.

Held: Motion dismissed because the plaintiff did not establish either that irreparable harm would result if no injunction was granted, or that the balance of convenience favours the granting of an injunction. Phelan J. was not satisfied that ONI had established that it would suffer irreparable harm, even though it had established an arguable case of non-infringement. There was no evidence that damages were not quantifiable. The Judge went on to state that even if ONI had made out a case for irreparable harm, the Court would be extremely reluctant to issue an injunction which amounts to prior censorship. The concern for deleterious effects resulting from these communications must be weighed against the legitimate interest of a party to protect its rights including the giving of notice that rights are being infringed. The Judge also stated that courts have been reluctant to issue interim injunctions restraining the publication of alleged libels.

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2. Albian Sands Energy and Jeff Stibbard v. Positive Attitude Safety System et al., October 17, 2005 FCA (Desjardins, Rothstein, Pelletier J.J.A.) Appeal/Summary Judgment/Passing Off/Internal Use of a Trade Mark/Copyright Infringement/Public Performance of Copyrighted Matter

Appeal from decision that granted partial summary judgment in a copyright and trade mark infringement action. The respondents developed an industrial safety system which they called PASS. They licensed it to a mine in Australia. When Stibbard, the mining manager of a related Canadian mine, visited the Australian mine, he learned of the PASS system and when he returned to Canada he implemented the PASS system by reproducing the materials and without obtaining a licence. Stibbard subsequently became an employee of Albian Sands Energy where the PASS system continued to be used without a licence. Since Albian refused to seek a licence, Stibbard helped produce a safety system called ASESS for Albian's use, but this system reproduced key features of the PASS system.

Held: Appeal allowed. The Motion Judge did not err in finding that there was no infringement. Both trade mark infringement and passing off require there to be confusion or a likelihood of confusion, which in turn requires there to be a transfer of goods in the course of trade. Since the appellants only used the system internally, there cannot be a finding of confusion, nor of trade mark infringement or passing off. The question of copyright infringement should be decided by the Trial Judge because it is that judge who will deal with the issue of whether the copyright owner consented to the appellant's conduct. The Court upheld the Motion Judge's conclusion that the “safety huddle”, which was part of the system, was not a performance and therefore was not a copyright infringement. The Motion Judge based this conclusion on his understanding that while the questions asked at a safety huddle may be “scripted”, the answers are not, so the huddle as a whole was something other than the work in which the copyright subsists.

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3. Tradition Fine Foods v. Oshawa Group, Sobeys et al., October 25, 2005 FCA (Létourneau, Rothstein, Malone J.J.A.) Appeal/Trade Mark Infringement/Confusion/ Survey Evidence/Misdirected Telephone Calls

Appeal from decision that dismissed Tradition's action for infringement of its rights in the trade mark TRADITION registered for bakery goods. Sobeys uses MARCHE TRADITION for a chain of grocery stores that sell, inter alia, bakery goods.

Held: Appeal dismissed. The Trial Judge did not err in minimizing the weight of the appellant's expert's survey evidence - a judge is not bound by expert evidence. The Trial Judge did not err in finding that misdirected phone calls were not evidence of actual confusion. Mr. Submarine Ltd. v. Amandista Investments Ltd. (1987). 19 C.P.R. (3d) 3 (F.C.A.) is distinguishable because there “the two parties were in the identical business and the necessity of contacting the appropriate place by phone was much more important in the pizza/submarine sandwich business than in the grocery/bakery business.” Evidence of misdirected phone calls “may be relevant within the overall test for likelihood of confusion, but it does not amount to evidence of actual confusion.”

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4. 3925928 Manitoba et al. v. 101029530 Saskatchewan et al., October 28, 2005 FCTD (Snider J.) Trade Mark Infringement/Default Judgment/Double Recovery/Accounting of Profits/Damages

Motion for default judgment against the defendants for infringement of various SHAPES FOR LIFE trade marks used for franchise fitness centres. The plaintiffs had previously obtained an interlocutory injunction and an order for the custody and preservation of property. The defendants have not acted in contravention of the injunction but have failed to comply with the order for custody and preservation.

Held: Permanent injunction issued. Accounting of profits calculated and awarded. The plaintiffs argued that damages should also be awarded but that would result in double recovery. In any event, there is insufficient evidence to show that each client obtained by the defendants represents a lost client for the plaintiffs. Furthermore, a claim for general damages for the amount spent to build up their trade marks is not supported by evidence of the destruction of the plaintiff's goodwill. Punitive damages are not justified here given the absence of evidence of continued infringement.

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(d) Practice

1. Safilo Canada v. Contour Optik and Chic Optic, October 29, 2004 FCTD (Morneau P.) Jurisdiction/Motion to Strike Statement of Claim/Sections 60(1) & 60(2) Patent Act

Motion by Chic to strike the statement of claim on grounds that the Court lacks jurisdiction. Safilo brought an action under s. 60 of the Patent Act asking the Court to either rule that a patent held by Contour is invalid or that certain items that Safilo marketed do not infringe the patent. The patent is licensed to Chic. Chic argued that s. 60(1) and (2) do not allow a plaintiff to join the holder of a licence as defendant in one or the other of the two actions covered by the provision and therefore the Court lacks jurisdiction to hear the action against Chic. Chic relied on the fact that s. 60 only uses the word "patentee" and unlike s. 55 does not include the phrase "and to all person claiming under the patentee". Safilo argued that s. 60(1) does not expressly prohibit the addition of a licensee as a defendant. It also argued that the purpose of s. 60(2) is to enable a party wishing to market a product in Canada to ask the Court to declare that the marketing of the product does not contravene the rights of the holder of a Canadian patent. If Chic's interpretation is adopted it would cause an imbalance between the rights of some and the rights of others in that a licensee could bring an infringement action, but a person concerned would not be able to obtain a non-infringement declaration against a licensee.

Held: Motion dismissed. The lack of jurisdiction must be "plain and obvious" to justify striking out of pleadings at this preliminary stage. Chic's argument is based on complex statutory interpretation. In addition, the interpretation put forward by Safilo seems to be correct and is worth considering. Therefore, Chic's interpretation is not plain and obvious.

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2. Sun Pac Foods v. A. Lassonde, August 23, 2005 FCTD (Morneau P.) Trade Marks/Addition of Party/Assignment of the Right to Sue or be Sued/Continuation of an Examination

There were two motions by the plaintiff by counterclaim, Sun Pac Foods. The first was to add Industries Lassonde as a defendant by counterclaim pursuant to Federal Court r. 104(1)(b). The two bases on which Sun Pac wished to add Industries were: 1) that there was ambiguity as to which of A. Lassonde or Industries was the true owner of the FRUITE mark; and 2) A. Lassonde assigned to Industries its right to sue and be sued in this case. The second motion was for the continuation of an examination.

Held: Motions dismissed. Although there seemed to be ambiguity as to who was the true owner of the mark, a closer inspection of the licensing agreement made it clear that Industries has been the owner since 2000, and could as of January 17, 2001, grant a license to use the mark to A. Lassonde. The second premise also failed. Under r. 117 and 118, which Sun Pac relied on to add a party, the type of assignment referred to is an assignment of the right to sue or be sued, not the assignment of a license. There was no evidence of such an assignment in this case. Finally, Sun Pac did not succeed based on the case law surrounding r. 104(1)(b). The only reason to add a party is where the action cannot be effectually and completely settled without the addition of the party (Early Recovered Resources v. Gulf Log Salvage Co-operative Assn., [2003] F.C.J. No. 716). In this case, any judgment would be enforced against the Registrar of Trade-marks only, so there was no need to join industries. An affidavit filed by A. Lassonde, of the director of legal affairs for Industries, stated that Industries would recognize any decision of the Court in this case. There was therefore no need to join the company as a party. With respect to the second motion, as new documents produced did not preclude Sun Pac's counsel from asking all relevant questions at the examination, there was no need to continue it.

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3. Merck, Merck Frosst Canada, Syngenta, Astrazeneca UK and Astrazeneca Canada v. Apotex, September 14, 2005 FCTD (Noël J.) Appeal of Prothonotary's Order/Amendments to Statement of Defence/Failure to Comply with Decision of Court of Appeal

Appeal by Apotex from an Order of the Case Management Prothonotary granting Merck's Motion to Strike Apotex's fresh as Amended Statement of Defence and Counterclaim, which was found not to be in conformity with a Court of Appeal Judgment. Amendments to an earlier Defence had been refused in a Court of Appeal decision, but in the intervening years, Apotex had not filed a fresh as amended Statement of Defence complying with the Judgment. Merck brought a motion to have the early Defence struck on the basis that it did not conform to the Court of Appeal Judgment. A fresh as Amended Statement of Defence and Counterclaim was annexed to Apotex's response to the motion to strike, but Merck and the plaintiffs argued that it did not reflect the Court of Appeal decision. The Prothonotary granted the Motion to Strike the early Defence, finding that it was vexatious. In order to avoid further motions, the Prothonotary accepted the fresh as Amended Statement of Defence and Counterclaim as reviewed attached to the Order.

Held: Appeal dismissed. The standard of review was de novo as the issue of whether an Amended Statement of Claim should be struck is vital to the case (Canada v. Aqua-Gem Investments Ltd, [1993] 2 FC 42). Although the Court of Appeal Judgment did not order Apotex to file a new Defence and Counterclaim, Apotex still had an obligation to do so. The Prothonotary did not err in its decision to attach a fresh as Amended Statement of Defence and Counterclaim to the Order. Most of the potential solutions available to the prothonotary were not acceptable. To order Apotex to file and serve a new Defence and Counterclaim would delay the timetable set out by the Prothonotary and would give support to Apotex's behaviour. To use the new Defence and Counterclaim as attached to the response to the Motion was not possible, as it clearly did not conform to the Court of Appeal Judgment. The issuance of Directives would lead to unknown results, and had not been contemplated by the parties. Therefore the Prothonotary correctly chose to use the annexed Defence and Counterclaim, reviewed in the light of the Judgment, the earlier Defences, and the response of Merck and the plaintiffs, to be deemed Apotex's compliant pleadings.

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4. Apotex v. Syntex Pharmaceuticals International and Hoffman-LaRoche, September 26, 2005 FCTD (Blanchard J.) Appeal of Prothonotary's Order/Motion to Strike/Federal Court Rule 221/Motion for Stay Pending Appeal

The defendants appealed the decision of a prothonotary refusing an order to strike part of an amended statement of claim. The amended statement of claim would have removed Syntex from the action. The defendants argued that the plaintiffs had no evidentiary basis to plead the alleged facts, and that the plaintiffs were using the discovery process in order to identify the proper defendants. The defendants asked for a stay pending the disposition of the present motion, and, if unsuccessful, pending appeal.

Held: Appeal dismissed. Stay denied. The facts that Syntex is the holder of the patent, was an applicant in the preceding prohibition proceeding, gave consent to Roche to list the patent and has an exclusive licensing agreement with Roche establish a sufficient factual basis for the material facts pleaded in respect to Syntex's alleged control over and common enterprise with Roche. Evidence that Roche might amend its pleadings following discovery does not amount to evidence of a fishing expedition. Although there is a serious question to be tried, the defendants fail to meet the other two prerequisites for a stay of discovery. The fact that the defendants might be forced to divulge confidential information does not constitute irreparable harm. The irreparable harm is merely speculative. The long duration of the proceedings weighs the balance of convenience in favour of the plaintiffs. Costs to be awarded on an elevated scale by reason of ongoing attempts by the defendants to delay the proceeding and discoveries.

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5. Bristol-Myers Squibb Company et al. v. Apotex, October 3, 2005 FCTD (Kelen J.) Documentary Discovery/Relevancy Test for Discovery/Affidavit of Documents /Patented Medicines/Utility

Appeal by Apotex from an order allowing only in part Apotex's motion for an order requiring BMS to produce further and better Affidavits of Documents regarding a new ground of inutility. The underlying proceeding is an action commenced in 2000 by BMS against Apotex for infringement of Canadian patent 1,198,436 for nefazodone (an antidepressant). BMS withdrew the drug from market in 2003 after Health Canada concluded that the sale of nefazodone should be stopped because of a risk of serious liver damage. Apotex obtained an order allowing it to amend its pleadings and providing the right to documentary discovery in respect of the new allegation of inutility. Not satisfied with BMS' disclosure, Apotex brought the motion which is the subject of this appeal. The order required BMS to disclose all documents regarding clinical data, laboratory results, statistical data or any other documents prepared or used by BMS relating to the side effects of nefazodone. The order excluded documents related to the withdrawal of the drug from the market and communications with health authorities in Canada and the US.

Held: Success in part. The order sought by Apotex smacks of a fishing expedition. The relevancy test for documentary discovery in this case is: "Does the document sought to be produced fairly lead the defendant to a train of inquiry which may directly or indirectly advance its case or damage the plaintiff's case specifically on the new issue of inutility?" The documents excluded from the order are relevant for a different purpose than patent law and therefore the Prothonotary was not clearly wrong. However, in obiter, the Court added that documents of any kind which contain information relating nefazodone to liver toxicity are relevant and would be subject to production if requested. No decision is made on the ultimate relevance of liver toxicity to patent utility.

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6. Merck and Merck Frosst Canada v. Brantford Chemicals, October 4, 2005 FCTD (Hughes J.) Protective Order

Appeal from a protective order granted by a prothonotary, but not entirely in the terms sought. On the basis of the evidence put forward, the prothonotary reasoned that the protective order should not classify documents into the categories of "Confidential", "Highly Confidential" and "Highly Confidential Financial". Further, she stated that there should not be restrictions placed on the defendant with respect to its choice of co-counsel, experts, and information to which the experts would have access.

Held: Appeal dismissed. There was no error, within the meaning of Canada v. Aqua-Gem Investments Ltd., [1993] 2 F.C. 425 (C.A.) as modified by Merck & Co. v. Apotex Inc. (2003), 30 C.P.R. (4th) 40 (F.C.A.), in the prothonotary's reasons or form of order. The prothonotary did not err in deciding that no evidence of unusual circumstances was present. The Court is reluctant, save in unusual circumstances, to issue a protective order with "highly confidential" or "counsel's eyes only" provisions. It was also open to the prothonotary to redraft the order presented by the appellants to apply equally to the plaintiffs and the defendant.

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7. 1395047 Ontario coba FPTV - Festival Portuguese Television and Frank Alvarez v. New Atlantico Café and Restaurante et al., October 4, 2005 FCTD (Hughes J.) Copyright/Default Judgment/Evidence of Ownership

The plaintiffs brought a motion for default judgment against certain defendants who had failed to file a Defence or otherwise participate in the action. The action was for an infringement of copyrights in the broadcast of Superliga (soccer) matches.

Held: The motion is dismissed without prejudice to further motion brought upon good evidence. In the Federal Court, pleadings that are not defended, or if defended, not traversed, are not taken to be true. The plaintiff seeking default judgment is required to prove the essential elements of its claim, which it says entitles it to the relief claimed. Section 34.1(a) of the Copyright Act provides that in an action such as this, unless the contrary is proved, copyright is presumed to subsist in the work or works at issue. Section 34.1(c) of the Act provides for presumptions of ownership where a name is associated with the work, but there is no name associated with this work. There is no evidence of ownership of the copyright. There is further no evidence that the plaintiffs are a "lawful distributor" under the Radiocommunications Act.

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8. Direct Source Special Products v. Sony Music Canada et al., October 5, 2005 FCTD (Milczynski P.) Contempt of Court/Federal Court Rule 467/Implied Undertaking with respect to Documents and Information Produced on Discovery

The defendant, Sony, moved for a show cause order against the plaintiff and its solicitor. The underlying action is for infringement of the plaintiff's trade mark "DANCE MIX". The solicitor for the plaintiff sent a letter to CHUM, a non-party, alleging CHUM had breached a fiduciary duty to the plaintiff and conspired with the defendants to appropriate the goodwill associated with the trade mark based on documents and information provided by the defendant on discovery. With the letter, he enclosed some of the documents provided by Sony on discovery.

Held: Order granted. Documents and information produced on discovery are protected by an implied undertaking by the parties receiving the documents and their solicitors that the documents and information will not be used for purposes collateral to the action without seeking consent or leave of the Court. One who violates this undertaking may be held in contempt of court. The allegations against CHUM are not related to the present action. They are, however, based on documents and information disclosed in this action and are therefore made for collateral and improper purposes. For purposes of r. 467 of the Federal Courts Rules, the Court need only determine the threshold issue of whether the evidence establishes a prima facie case and that the alleged actions have been committed and that they constitute contempt deserving of sanction of the Court. The record reveals that there is an arguable case against the plaintiff and its solicitor.

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9. Abbott Laboratories et al. v. The Minister of Health and Ratiopharm, October 6, 2005 FCTD (Milczynski P.) Confidentiality Order/Federal Court Rule 151

Motion by Abbott Laboratories for a confidentiality order sought on consent.

Held: Motion dismissed. An order to seal documents filed with the Court from public access pursuant to r. 151 of the Federal Court Rules is an extraordinary measure. Based on the test enunciated in Sierra Club of Canada v. Canada (Minister of Finance), [2002] 2 S.C.R. 522 a confidentiality order should only be granted when it is necessary to prevent a serious risk to an important interest, including a commercial interest, and considering whether the salutary benefits of the order, including the right of the litigants to a fair trial, outweigh its effects on the public interest in open courts. The test for obtaining a confidentiality order under r. 151 is a high one.
The documents that are to be subject to a confidentiality order must be clearly identified and the risk of public access must be supported by evidence. In this case, the order was overly broad because it provided blanket confidentiality for anything the parties wished at any stage of the proceeding. Further, the motion for the order was not supported by sufficient evidence regarding the risk or harm of public access to the information.

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10. Aventis Pharma v. Canada (Minister of Health and A.G.) and Novopharm, October 12, 2005 FCTD (Hughes J.) Appeal from Prothonotary's Order/Standing to Appeal Issuance of NOC to Another Party

Appeal from the decision of the Prothonotary striking out portions of the applicant's Notice of Application. The Application concerned the Notice of Compliance (NOC) issued by the Minister of Health to the Novopharm for the drug containing enoxaparin sodium. Aventis had a NOC for enoxaparin sodium and sold the drug under the brand name LOVENOX but its patent claiming the medicine had not been listed on the Patent Register. Aventis filed a Supplementary New Drug Submission (SNDS) to have its patent listed. At the same time Novopharm sought and obtained a NOC for the drug on the basis of an Abbreviated New Drug Submission (ANDS). In the portions of the Notice of Application struck out, Aventis had sought to have the Minister's decision to issue a NOC to Novopharm declared invalid on the basis that the Minister's finding that the generic drug was a "pharmaceutical equivalent" of LOVENOX was erroneous. Aventis had alleged unfair treatment by the Minister of its and Novopharm's contemporaneous submissions but under appeal asserted that it was a person "directly affected" by the Minister's decision and therefore had status to challenge the Minister's decision under s. 18.1 of the Federal Courts Act.

Held: Appeal dismissed. The Prothonotary was correct to strike out the paragraph in the prayer of relief and properly exercised her discretion regarding the remaining paragraphs. Aventis was not a party to the decision taken by the Minister and was affected only in a commercial sense. Therefore Aventis had no status to seek judicial review under s. 18.1. The fact that Aventis had a product on the market was a factual distinction without legal effect. The decision in Merck Frosst Canada Inc. v. Canada (1998) 146 FTR 249 regarding the raising of non-compliance with the health and safety concerns of the Food and Drug Act was found equally applicable to the question of "pharmaceutical equivalence".

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II. OTHER COURT DECISIONS

1. Harris Scientific Products v. Araujo, August 5, 2005 ACQB (Veit J.) Damages for Wrongful Anton Piller Search

Harris, a one-man company owned by Tom Spenceley, improperly obtained and improperly executed an Anton Piller order against the residence of its former employee, Araujo. In applying for the order, Harris misrepresented a crucial fact and the breaches of the execution of the Anton Piller order were numerous and serious. “Indeed, the execution of the order could serve as the poster case of what not to do on the execution of such orders.” Because 1) the order should not have been granted in the first place, 2) the breach of privacy was to a residence rather than to commercial premises, 3) the execution of the order was recklessly bad, and 4) one target of the order suffered affront and mental distress, the Court awarded against Harris trespass damages, at large, of $35,000, plus exemplary/punitive damages of $10,000, for its failure to respect the terms of the order that it obtained. In addition, the Court awarded Araujo $10,000 of exemplary/punitive damages against Tom Spenceley personally, for his contemptuous abuse of the order for reasons that had nothing to do with commercial objectives but everything to do with an attempt to humiliate Araujo. This latter award cannot be paid from any funded undertaking in damages.

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2. EBF Manufacturing v. White, September 2, 2005 OSCJ (MacAdam J.) Interlocutory Injunction/Irreparable Harm

White had granted EBF an exclusive licence to use his patent to manufacture a particular type of fence. White believed that he was not receiving the appropriate royalties from EBF so he began selling an improved version of the fence, in competition with EBF. EBF moves for an interlocutory injunction to prevent White from selling the fences.

Held: Motion granted, but in the event that EBF does not pay the royalties that are due, then White may apply to have the injunction lifted. There is a serious question to be tried, namely whether EBF has such an exclusive license as to preclude White from manufacturing, marketing and selling fences that infringe the patent. Irreparable harm arises from the license agreement, which provides that it expires "immediately prior to the insolvency of EBF". The plaintiff has introduced financial statements and demonstrated that during the period of competition it has suffered a loss in sales while White has had an increase. “The provision in the License Agreement for the expiration of the licence in the event of insolvency is clearly intended to permit the owner to recover the use of the license in the event EBF is unable to continue to manufacture and distribute the patented product. It clearly did not anticipate that one of the causes for financial loss would be the entry of the owner of the patent into the marketplace in direct competition with the licensed user.”

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3. GRI Simulations v. Oceaneering International, September 19, 2005 NLSC (Adams J.) Copyright Infringement/Proper or Necessary Party/Real and Substantial Connection/ Forum Nonconveniens

Oceaneering, a foreign defendant, applies to have service of a statement of claim on it set aside. Oceaneering had purchased software from GRI and GRI sent employees to Oceaneering's offices in the U.S. to install the software. While there, these employees quit their employment with GRI and were hired by Oceaneering to develop similar software. GRI alleges that Oceaneering has incorporated all or part of GRI's copyrighted work into its system without authority or proper attribution and that its former employees have breached their obligations to maintain GRI's confidential information and trade secrets. The former employees are working in Newfoundland on the premises of a company that is related to Oceaneering.

Held: Application denied. Oceaneering is a proper or necessary party to the action, it has a real and substantial connection to this jurisdiction and this jurisdiction is a convenient forum in which to try the action. As the employer, Oceaneering could be held vicariously liable for its employees' actions and it could be held liable on an agency basis for any involvement of its related Newfoundland-resident company which may be found to violate GRI's rights. Under the Copyright Act, anyone found to authorize the breach of copyright can be held liable.

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4. Stonewater Group of Restaurants v. Mikes Restaurants, October 28, 2005 ABQB (Ross J.) Interlocutory Injunction/Breach of Covenant

Motion by Stonewater for an interlocutory injunction to prevent Mikes from entering the Alberta market. Stonewater uses the trade mark/name MR. MIKE'S in association with restaurant services featuring charbroiled steaks, hamburgers and sea food and the serving of alcoholic beverages. In 1977, the parties' predecessors entered into several agreements, whereby Mikes agreed not to use its MIKE'S trade marks "in association with restaurant services featuring charbroiled steaks, hamburgers and sea food and the serving of alcoholic beverages" and each party agreed not to "use their respective trade marks in such style, appearance, and combination with other elements, as to give rise to the possibility of confusion between the trade marks." Mikes at that time was using its marks in association with “the operation of retail outlets offering for sale prepared sandwiches and pizzas”. Mikes has historically been active in the central and eastern parts of Canada whereas Stonehouse has been active in the west. Over the years, Mikes has introduced steak, seafood and alcohol at its restaurants. Recently Mikes began advertising franchise opportunities in Alberta, where Stonehouse has one MR. MIKES restaurant. Stonehouse bases its claim on breaches of restrictive covenants, not trade mark infringement or passing off.

Held: Interlocutory injunction granted. A clear breach of a clear covenant has been demonstrated. When a court finds that there is a clear breach of a clear covenant, the tri-partite test for an interlocutory injunction is applied with less rigour. In particular, irreparable harm need not be shown and a less rigourous approach to the balance of convenience is taken. There is a real potential that Stonewater will lose franchise opportunities if Mikes pursues expansion into Alberta (persons in the franchise industry have already been confused) and, as Mikes has not yet made any business commitments in Alberta, the balance of convenience favours Stonewater.
The Court rejected a number of arguments made by Mikes in support of its claim that the agreements were no longer valid. First, the Court concluded that the validity of the agreements was not affected by the possibility that the certification mark registration obtained by Stonehouse after the agreements is invalid. After all, the agreements were premised on common law rights and Stonehouse is not alleging trade mark infringement. Second, the subsequent conduct of the parties did not amend the agreements. Mikes' failure to amend the statement of services in its trade mark application as required by the agreement and Stonehouse's acquiescence in this omission does not invalidate the agreement. Stonehouse's failure to object to the changes that Mikes made in its business practices in Ontario is easily understood in light of the geographic scope of each party's businesses. Moreover, Stonehouse does not object to the addition of items to Mikes' menus, but to the featuring of such new items on menu covers etc. Third, the agreements are not invalidated on the basis that the parties have changed the design formats of their trade marks - the agreements expressly protect the trade names as well as the designs and the trade names have not changed.

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III. OPPOSITION BOARD DECISIONS

1. Minolta-QMS v. Cheng-Lang Tsai, September 7, 2005 (Carrière) Section 30(e)/Section 50

Proposed-use application for MAGICOLOR for electrical wire and cable. Opposition based, inter alia, on s. 30(e) because the applicant itself does not intend to use the mark.

Held: Opposition rejected. The applicant's evidence showed that its wares were being manufactured and sold through a company of which the applicant is the President. The application relied upon proposed use by the applicant or through a licensee. “The fact that a third party is manufacturing the wares bearing the mark is not in itself sufficient to establish that at the date of filing of the application the applicant did not intend to use the mark in Canada.” Moreover, the FCA has inferred that s. 50 may be invoked where the evidence is that use is by a company of which the trade mark owner is the President and major shareholder.

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2. 172674 Canada v. Holiday Group, September 7, 2005 (Tremblay) Confusion

Proposed-use application for METROPOLIS for luggage, attache cases, handbags, purses, etc. Opposition based, inter alia, on s. 12(1)(d) due to confusion with METROPOLIS registered for clothing and accessories and s. 16 due to confusion with METROPOLIS previously used for clothing, accessories, backpacks and sports bags.

Held: Application refused. Pursuant to s. 12(1)(d) the opposition succeeded with respect to the applicant's handbags and purses. Those wares were considered to be clothing accessories resulting in the balance of probabilities being evenly balanced between a finding of confusion and a finding of no confusion. As the onus is on the applicant, the Registrar held against the applicant. Pursuant to s. 16, the remainder of the applicant's wares were refused because they are somewhat related to the applicant's previously sold backpacks and sports bags.

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3. Tia Maria v. Maple Leaf Distillers, September 9, 2005 (Martin) Confusion/Effect of Failure to Object to Evidence/Assignment of Proposed Use Application

Proposed-use application for TIARA for coffee liqueurs. Opposition based, inter alia, on s. 12(1)(d) due to confusion with TIA MARIA registered for fermented liquors and spirits.

Held: Opposition rejected. Confusion not likely because there is little, if any, resemblance between the marks. Although the opponent's labels only bore the name of an unexplained third party, the Board Member was prepared to assume that all sales accrued to the opponent's benefit because the applicant did not raise any objection. The Board Member raised the possibility that the application might have been open to attack on the basis that the application was assigned and an intention to use may not be an assignable chose; however this was not considered further as it was not pleaded.

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4. Shaw Cablesystems v. Nucleus Information Service, September 14, 2005 (Bradbury) Descriptiveness

Use-based application for LIGHTSPEED INTERNET for the operation of an Internet service provider… Opposition based, inter alia, on s. 12(1)(b).

Held: Application refused. LIGHTSPEED INTERNET clearly describes that the services are Internet services that are performed very quickly.

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5. Proxima Systems v. InFocus, September 14, 2005 (Bradbury) Confusion

Use-based application for PROXIMA for projectors that project images onto a viewing surface and various accessories therefor, including software. Opposition based, inter alia, on s. 12(1)(d) due to confusion with PROXIMA registered for computer software and consulting services in information management…

Held: Application refused. The differences between the parties' wares and services are not sufficient to make confusion unlikely. Their channels of trade overlap to the extent that both target businesses as clients.

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6. Canadian Medical Association v. Eclectic Echinacea, September 21, 2005 (Bradbury) Deceptively Misdescriptive/Section 12(1)(e)

Use-based application for PRAIRIE DOCTOR BRAND for various herbal products. Opposition based, inter alia, on s. 12(1)(b), and 12(1)(e) because it so nearly resembles the official mark DOCTOR as to be likely to be mistaken for it due to confusion with TIA MARIA registered for fermented liquors and spirits.

Held: Opposition rejected. Re s. 12(1)(b): The word DOCTOR is not the dominant portion of the mark and the average consumer would not be mislead by the mark into believing that a medical doctor was associated with the applicant's herbal products. Re s. 12(1)(e): The differences between PRAIRIE DOCTOR BRAND and DOCTOR are more than sufficient to prevent a Canadian consumer from mistaking one for the other.

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7. Conféderation des Caisses Populaires et d'Économic Desjardin du Québec v. Accord Business Credit, September 21, 2005 (Carrière) Section 30(b)/Destroyed Records

Use-based application for ACCORD for recourse and non-recourse factoring services and cre