Recent Decisions February 2002
I. FEDERAL COURT DECISIONS
(a) Patents
1. Pfizer v. A.G. Canada, October 26, 2001, FCTD (Kelen J.) Application for Leave to Intervene/Rule 109, Federal Court Rules/Proposed Intervener Having Participated in Prior Consultation Process Conducted by the Minister of Health/Patented Medicines (Notice of Compliance) Regulations
Application by the Canadian Drug Manufacturers’ Association (CDMA) for leave to intervene. The CDMA sought leave to intervene in 3 parallel applications. The three main proceedings are applications for judicial review of decisions by the Minister of Health. The Minister refused to add certain patents held by Pfizer and Schering to the Patent Register maintained under the NOC Regulations.
Held: Application for leave to intervene allowed without costs. The Minister’s decisions not to add the patents to the Patent Register were made following a policy consultation on the issue. The CDMA made a significant submission to Health Canada. As a result, the position of the CDMA is before the Court, on the record, and relevant. The Minister sought comments from the CDMA before making the decision. This case can be distinguished from other cases where intervener status was not granted to proposed interveners who were not involved in the process leading to the decision of the Minister. The criteria for receiving intervener status is set out in Eli Lilly Canada Inc. v. Canada (2000), 10 C.P.R. (4th) 310 (F.C.T.D.), affirmed, 2001 F.C.A. 108. The factors to be considered by the motions judge in an application for intervener status are set out in C.U.P.E. v. Canadian Airlines Int’l. Ltd., [2000] F.C.J. No. 220 (F.C.A.). Based on an assessment of these criteria and factors in the present case, intervener status is warranted. The CDMA members are directly affected by the outcome of this application; there exists a justiciable and veritable public interest; it is uncertain whether the respondent will advance the CDMA’s position at the hearing; the interests of justice are served by the intervention of the CDMA in this case; the CDMA is already part of this case at the invitation of the Minister; and, the CDMA intervention will not delay the proceedings.
2. Syntex et al. v. The Minister of Health and Apotex, November 1, 2001, FCTD (Kelen J.) Motion to Dismiss Application for Judicial Review as Abuse of Process/Effect of 45 Day Limitation Period Established By Statute/Patented Medicines (Notice of Compliance) Regulations, s. 6
Motion by Apotex to strike out an application for judicial review brought under s. 18 and s. 18.1 of the Federal Court Act. Syntex sought a writ of prohibition to prevent the Minister from granting an NOC to Apotex on the grounds that Apotex served an NOA containing deceptive and misleading information. The application was brought pursuant to s. 18 and s. 18.1 of the Federal Court Act because the applicants’ right to proceed under the NOC Regulations was barred by a limitation period.
Held: Motion granted. The application for judicial review was struck out on the grounds that it did not disclose any possibility of success and was an abuse of the process of the Court. The applicants did not act within the 45 day limitation period set out in s. 6 of the NOC Regulations. They could not bring a subsequent application for prohibition under the judicial review provisions of the Federal Court Act. After the expiry of the 45 day period, the patentee must wait until the new drug enters the market, test the drug, and then commence appropriate legal action for patent infringement if the new drug does in fact contravene the patent. If the generic drug manufacturer has misrepresented the new drug in an NOA under the NOC Regulations, then the patentee has a cause of action. The purpose of the NOC Regulations is to provide for an expeditious procedure for new drugs, while protecting the rights of patentees. If an issue arises outside the time periods provided for in the regulations, the patentee must use its common law rights.
3. AB Hassle v. The Minister of National Health and Welfare and Apotex, November 16, 2001, FCTD (O’Keefe J.) Application for Prohibition/Proof of Direct or Indirect Infringement by Respondent Required/Relevance of Infringement by Third Parties/Procurement and Inducement of Infringement/Patented Medicines (Notice of Compliance) Regulations, ss. 5(1)(b)(iv)
Application by AB Hassle for an order prohibiting the Minister from issuing an NOC to Apotex in respect of omeprazole capsules until after expiration of its patent. AB Hassle’s patent contains claims relating to the use of omeprazole in the treatment of Campylobacter infections. Apotex alleged that its product would not be made, used or sold for the treatment of Campylobacter infections.
Held: Application dismissed. The applicants did not demonstrate that Apotex would directly infringe the patent if an NOC is issued. Further, the applicants failed to establish that direct infringement by third parties would necessarily take place if an NOC is issued to Apotex. It is true that the infringing actions of a third party can become relevant under the NOC Regulations where the applicant can demonstrate that the respondent has induced or procured another to infringe the patent. However, the applicants also failed to establish that Apotex would induce or procure infringement of the patent if an NOC is granted. Finally, the NOA issued by Apotex satisfied the requirements of the NOC Regulations, and was not deficient in fact or law. The Court carefully considered the interpretation of s. 5(1)(b)(iv) of the NOC Regulations, concluding that the infringement referred to therein is limited to infringement by the person applying for an NOC (the generic pharmaceutical company issuing the NOA) and does not extend to infringement by anyone else. The infringement can be direct or indirect, however, and infringement by third parties, such as use of a medicine by a patient, can be relevant under the NOC Regulations where it can be proved that the generic company has induced or procured the infringement.
4. Apotex v. Syntex Pharmaceuticals Int’l and Hoffman-LaRoche, December 6, 2001, FCTD (Blais J.) Appeal from Order of Prothonotary Striking Proceeding/Rule 221, Federal Court Rules/Standard of Review of Discretionary Orders/Patented Medicines (Notice of Compliance) Regulations, s. 8
Motion by Apotex to set aside the order of the Prothonotary striking the proceeding pursuant to r. 221 of the Federal Court Rules. The proceeding was commenced by statement of claim seeking damages pursuant to s. 8 of the NOC Regulations in respect of Apotex’ lost sales of naproxen controlled release tablets. The Prothonotary allowed the defendants’ motion and struck the action, based in part on the interpretation of s. 8 of the NOC Regulations.
Held: Motion granted and order of Prothonotary set aside. The standard of review to be applied by a motion judge to a discretionary order of a prothonotary was established in Canada v. Aqua-Gem Investments Ltd., [1993] 2 F.C. 425 at 462-63 (C.A.). Discretionary orders of prothonotaries ought not to be disturbed on appeal to a judge unless they are clearly wrong, or they raise questions vital to the final issue of the case. The interpretation of s. 8 of the NOC Regulations is a question vital to the final issue of this case, and the Court must intervene and exercise its discretion de novo. Complex matters of statutory interpretation are better left for argument at trial where proper evidence may be adduced. Since there is not yet a clear understanding of what s. 8 of the NOC Regulations really means, it would have been more prudent for the Prothonotary to refuse the order. These sorts of contentious issues are of a complex nature better suited for determination at trial.
5. Almecon Industries v. Anchotek et al., December 19, 2001, FCTD (Gibson J.) Patent Validity/ Patent Infringement
Action for a declaration that the claims of a patent for bore hole plugs used in seismic exploration are valid and infringed. The patent was previously the subject of litigation between the plaintiff and Nutron Manufacturing (heard by both the Trial Division and the Court of Appeal), in which the claims of the patent at issue were construed and the person skilled in the art to which the patent relates was defined. In that earlier case, the trial judge held the patent to be valid. The defendants in this case raised issues with regard to validity that were not raised in the earlier case.
Held: The patent is valid and infringed. While the trial judge in the present case had some reservations regarding the construction of certain elements of the claims of the patent, the construction of the claims at issue provided by the trial judge of the earlier case was nonetheless adopted. The claims are neither invalid for being broader than the invention made nor for being broader than the invention actually disclosed. The defendants failed to discharge the onus of proving that the claims encompass an embodiment that is inoperative and will not function. Despite the fact that a voluntary amendment to the application in the form of a Supplementary Disclosure that introduced two new drawings and four new claims was made by the applicant after the filing date, the Court held that there was no evidence that would lead to the conclusion that the plaintiff failed to disclose the best mode of the invention known to him at the filing date of the application. Accordingly, the plaintiff’s patent is valid. While the design of the defendant’s device, at first blush, creates an impression that it is substantially different from the device embodying the essential elements set out in the claims, it was held that none of these essential elements are in fact different or have been omitted from the defendant’s device. Accordingly, the plaintiff’s patent is infringed. In the decision, the trial judge also provided reasons for his interlocutory rulings made earlier during the course of trial relating to the admissibility of read-ins of various portions of the examinations for discovery.
6. Urea Casale v. Stamicarbon, January 15, 2002, FCA (Stone J.A.) Reissue of Patents/Statutory Interpretation/Claim Construction
Appeal from the decision of a motions judge dismissing the appellant’s counterclaim in the main action, in which the appellant sought a declaration that its patent was infringed. The patent at issue relates to methods for modernizing urea reactors. The respondent had challenged the validity of that patent in the action, and subsequently, the appellant filed an application for reissue of the patent, which was ultimately granted. The motions judge granted the respondent’s motion to dismiss the counterclaim by way of summary judgment, on the ground that the appellant could no longer sue for infringement because the claim at issue as filed was not “identical” to the claim as reissued. Section 47(2) of the Patent Act states that the reissue of a patent does not affect any pending action to the extent that claims in the reissued patent are identical with those in the original patent. In this case, the words “being characterized in that it comprises” were replaced with the word “comprising” in the reissued patent.
Held: Appeal allowed in part. The matter should not be decided at the summary judgment stage, but should proceed to trial where expert evidence can be adduced. The language of s. 47(2) is similar to the reissue provisions in the American statutes, and thus it is appropriate to consider American jurisprudence construing the word “identical”. The Court held that the word “identical” should not be given a strict literal interpretation. The focus should be on whether the scope of the reissued claim has been changed over that of the original claim due to the use of different language in the reissued claim. In this case, whether the term “comprising” serves to broaden the scope of a claim is something that should not have been resolved at the summary judgment stage, particularly as there is a need for expert evidence to assist with the construction of the claim. The Court also confirmed that any pending cause of action at the time of a reissue of a patent is preserved only insofar as the claims of the original and reissued patents are determined to be identical; damages or reasonable compensation may not otherwise be recovered with respect to acts of infringement occurring before the reissue of the patent.
(b) Trade Marks
1. Sunbeam Products v. Mister Coffee & Services, November 7, 2001, FCTD (Kelen J.) Opposition Appeal/Lawful Use of a Trade-mark/Registrar’s Jurisdiction
Appeal from opposition decisions that refused two applications for MR. COFFEE for coffee and cleaning compositions for coffee and/or tea brewing apparatus. The appellant had a long-standing registration for MR. COFFEE for coffee brewers and disposable coffee filters but had tolerated the use of MISTER COFFEE by the respondent for a complete coffee supply service for offices for 10 years without objection. As new evidence, the appellant filed pleadings of a trade-mark infringement action that was commenced against the respondent after the appellant filed its trade-mark applications.
Held: Appeals dismissed. The new evidence would not have materially affected the Registrar’s decisions so the standard of review is reasonableness simpliciter. It was reasonable for the Registrar to find that it was not within his jurisdiction to determine if the respondent’s use of MISTER COFFEE was lawful. When a lawfulness issue is clear, the Registrar has jurisdiction to state that the respondent cannot rely upon its use of a mark because its use is unlawful. In the present case, no clear conclusion could be reached.
2. Borden Ladner Gervais v. House of Kwong Sang Hong International, November 13, 2001, FCA (Décary, Stone, Noël JJ.A.) Section 45 Appeal/Cross-examination
Held: Affidavits filed in a s. 45 appeal by or on behalf of the registered owner are subject to cross-examination.
3. Atlantic Engraving v. Lapointe Rosenstein, November 21, 2001, FCTD (Rouleau J.) Section 45 Appeal
The new evidence of use filed on appeal was poorly drafted and objected to by the respondent on various grounds.
Held: Matter adjourned in order to give the appellant time to file a further affidavit. The respondent’s objections are valid – the affidavit on file is inept, probably due to the inexperience of the appellant’s counsel. The Court stated that it appeared that there may be sufficient evidence to satisfy the requirements of s. 45. “To deprive the applicant of its trade-mark which may have been in use for twenty years, simply on a section 45 application because of ineptitude, as well, the respondent not acting for any particular commercial or competing enterprise, would be unfair.”
4. J.C. Penney v. Gaberdine Clothing, December 4, 2001, FCTD (Nadon J.) Section 18 Expungement/Section 4(1)/Display of Trade-mark in Catalogue/Normal Course of Trade
Application for expungement of the trade-mark ARIZONA BLUES JEANSWEAR CO. on the basis that the respondent was not the person entitled to register the mark because it was confusing with the applicant’s previously used or made known mark THE ORIGINAL ARIZONA JEAN COMPANY.
Held: Application granted. The trade-marks are confusing. Regarding the applicant’s onus to show prior use or making known of its mark, distribution of catalogues in which wares bearing the trade-mark are advertised does not constitute use of the mark. The invoices filed by the applicant do not establish that the wares sold displayed the applicant’s trade-mark. Although the affiant provided the catalogues in which the invoiced wares were featured, the mere appearance of the trade-mark on the relevant pages of the catalogue does not demonstrate that the mark was displayed on the items or associated with the items at the time of the transfer in the property or possession in the items (there was no evidence that the customers received or consulted the catalogue and no evidence explaining how the mark was displayed on the items). The invoices also failed to indicate if the Canadian customers picked up the wares in the U.S. or had them delivered to Canada. There was however evidence from several Canadian purchasers concerning purchases of wares bearing the applicant’s trade-mark that were delivered to them in Canada. A single sale may suffice to prove use of a trade-mark, provided that it is in the normal course of trade. The evidence concerning activities post-dating the material date may be considered for the purpose of determining if the earlier use was in the normal course of trade. Given the number of Canadian credit card holders, the thousands of catalogues mailed to Canadians every year and the sales of the applicant’s wares in the U.S. and elsewhere, it is clear that the sales evidenced were in the normal course of trade. The applicant’s trade-mark was not made known in Canada as of the relevant date because there is no evidence that Canadian recipients of the applicant’s catalogues ever read the catalogues or even saw the trade-mark displayed in the catalogues.
5. Caricline Ventures v. ZZTY Holdings et al., December 5, 2001, FCTD (O’Keefe J.) Trade-mark Infringement/Standing for Section 57 Expungement
Action for various forms of relief with respect to the infringement of the plaintiff’s trade-mark PHARSYDE registered for clothing and operation of a retail business selling clothing. The defendants operate retail clothing stores in association with the word “Farside”.
Counterclaim by defendants for expungement of the plaintiff’s registration on the basis that the plaintiff was not entitled to register the mark because it was confusing with the previously used trade-mark FARSIDE.
Held: Relief granted in the form of a permanent injunction, damages or an accounting of profits, and delivery up of the infringing goods. The defendants admitted to infringement in their pleadings.
The counterclaim failed because the defendant did not have standing to bring such claim as the prior use was by another company, owned by the same family, that had not assigned its rights. In any event, the alleged prior use of FARSIDE was as a type of ornamentation, not as a trade-mark. Obiter: If prior use had been shown, the marks would not have been confusing because neither mark is inherently distinctive and the wares/services are somewhat different because the plaintiff planned to sell a wide variety of clothing whereas the defendant sold primarily hoodies, sweat pants and sweat shirts.
6. Magnotta Winery et al. v. Vintners Quality Alliance, December 20, 2001, FCTD (MacKay J.) Official Marks/Standing to Challenge/Standard of Review/Public Authority/Effect of Use of an Official Mark by a Permitted Party/Costs
Application for judicial review questioning the Registrar’s publication of the official mark ICEWINE. Two weeks before the hearing, the respondent withdrew the publication of its official mark at the request of the federal government which proposed to establish a National Standard of Canada for Canadian wines. The applicants declined to accept the withdrawal since they were uncertain of the legal effect of the withdrawal and since the respondent might apply again for recognition of its official mark. One of the applicants is a member of the respondent; it objected to a requirement from the respondent that it sign an agreement to accept certain standards and provisions for inspection that it considered to be in restraint of trade.
Held: Application dismissed. The standard of review is reasonableness simpliciter because the new evidence before the Court would not have materially affected the Registrar’s decision. The applicants have standing to challenge the Registrar’s decision since, having previously used ICEWINE, their interests were directly affected by the decision. Because the applicants’ affidavit primarily provided opinions, not evidence, it did not effectively challenge the Registrar’s decision that the respondent was a public authority. The applicants’ claims that the respondent had not used ICEWINE before publication of the mark was not supported by any evidence; instead the use of ICEWINE by one of the applicants constitutes use by the respondent as nothing precludes the use of an official mark by a party licensed or otherwise permitted to use it by the public authority. A term may be recognized as an official mark even if it is descriptive or generic. Evidence from cross-examination of an affiant on his/her affidavit may be relied upon by the party on whose behalf the affiant swears an affidavit. The respondent was awarded higher costs both because the applicants inappropriately alleged that the respondent acted in bad faith and because the necessity to continue with the hearing was undercut by the respondent’s withdrawal of publication of the mark.
7. Supertek Canada v. Jacques Gatien, December 24, 2001, FCTD (Rouleau J.) Interim Injunction/Section 7(b)/Irreparable Harm
Application for an interim injunction to prevent the respondent from selling a painting device under the trade-name “The Perfect Edger”. The applicant, who sells a similar device under the name “Edgemaster”, claims that the respondent took advantage of its advertisements, when it introduced its product, contrary to s. 7(b). The applicant claims that the “get-up” used by the respondent supports a passing-off claim.
Held: Application dismissed because the Court was not convinced that the applicant would suffer irreparable harm. The applicant’s ads did not depict the “get-up”, there was no evidence of confusion, and although there was evidence that the applicant’s retailers were concerned, there was no evidence of loss of sales or return of product.
(c) Copyright
1. Masterfile v. World Internett et al., December 20, 2001 FCTD (Simpson J.) Summary Judgment/Copyright Infringement/Standing/Exclusive Licensee/Exclusive Agent/Deemed Assignment/Section 13(4) Copyright Act/Jurisdiction
Motion for summary judgment by the plaintiff in an action for copyright infringement. The plaintiff acquires exclusive rights to images that it then licenses to end-users. The defendant Taalwood used the plaintiff’s images, without licence, on websites that it designed.
Held: Motion dismissed. The plaintiff has no standing to prosecute this action as it has neither an exclusive licence nor an assignment of copyright for the images at issue. The sole right given by the artists to the plaintiff does not make the plaintiff an exclusive licensee but rather an exclusive agent. The artists retain ownership in the copyright. Although there are some provisions in the agreements that deem there to be an assignment of copyright to the extent that such is necessary in order for the plaintiff to sue for breach of copyright without making the artist a plaintiff, deemed assignments are not valid under Canadian law. Section 13(4) of the Copyright Act does not contemplate future assignments – an assignment must actually exist and must be signed. (The Court would have dismissed the action as a whole except that it lacked jurisdiction in the absence of a motion by the defendants for summary judgment.)
(d) Practice
1. Richter Gedeon v. Apotex, December 14, 2001, FCTD (Hugessen J.) Summary Judgement/Adverse Interest/Privilege/Costs
Motion for summary judgment by plaintiff who seeks to have dismissed certain allegations in the statement of defence that assert that the parties settled this litigation during a late night session.
Held: Motion dismissed. The question of whether or not the action was settled is a genuine issue for trial. The conclusions that the plaintiff asked the Court to make should not normally be done on summary judgement and the Court declined to make any findings. In addition, the Court dismissed the motion because the plaintiff did not put its best foot forward, providing only the affidavit of its solicitor, with no evidence from the other people representing the plaintiff at the negotiations. The Court concluded that the decision to not provide evidence from the other individuals supports an adverse inference that the evidence would not have been helpful to the plaintiff. Additional adverse inferences were drawn from the plaintiff’s solicitor’s refusal on the basis of privilege to answer questions directed to letters from him to the other side that were not written without prejudice. The Court awarded substantial costs, because the motion should never have been brought, but it mitigated the costs because some of the time spent on the motion may prove useful to the parties either in going forward for the trial or for pursuing settlement.
II. OPPOSITION BOARD DECISIONS
1. Jalite Public v. Nicholas Suarez Lencina, October 3, 2001 (Bradbury) Distinctiveness/Section 4/Trade-mark Ownership/Distributor/Reconsideration of Ruling
Proposed-use application for JALITE for signal lights, mechanical light, signalling buoys, signalling triangles for damaged vehicles, signalling and beaconing made with different solid and/or liquid products with photo-luminescing properties, fire alarms. Opposition based, inter alia, on s. 30 because the applicant could not have been satisfied that it was entitled to use the mark since it was at one time the opponent’s distributor, and non-distinctiveness because the mark cannot distinguish the applicant’s JALITE goods from the opponent’s JALITE photoluminescent materials, coatings and articles. The mark JALITE was originally owned by another company in various countries. This company entered into a distributorship for certain countries with a Spanish company, one of whose principals was the present applicant. The original owner of the mark became bankrupt and one of its principals wrote a letter to the applicant’s company stating that it could proceed with the mark. The opponent claims that such letter was not authorized and that all of the rights of the original trade-mark owner were transferred to it.
Held: Application refused. The distinctiveness ground succeeded because the opponent did not have to show that it acquired the original owner’s rights but merely that its mark had become sufficiently known in Canada to negate the distinctiveness of the applied-for mark. Although both parties claimed to have used JALITE, neither filed evidence showing use in accordance with s. 4. However, use pursuant to s. 4 is not necessary in order to succeed on a non-distinctiveness ground.
The s. 30 ground failed because, although it is not clear who acquired the rights, the applicant could have been personally satisfied that he was entitled to use the mark in Canada based both on the letter that he received and on the passage of more than 4 years since the dissolution of the original owner.
The Hearing Officer refused to reconsider an earlier ruling made by the Registrar regarding leave to file an amended statement of opposition because it was not demonstrated that the ruling was based on a error of law or an error in the interpretation of the facts.
2. Bio Agri Mix v. Canadian Bio-Systems, November 6, 2001 (Bradbury) Section 30(b)/Confusion
Use-based application for BIO YEAST AG for animal feed supplements. YEAST and AG disclaimed. Opposition based, inter alia, on s. 30(b) because the applicant has not used the mark since the claimed date of first use and s. 12 due to confusion with the mark BIO AGRI MIX registered by the opponent for animal feed additives. The opponent claims that the applicant was its distributor for the BIO YEAST AG product but the applicant claims that the opponent was a toll manufacturer. The opponent agreed that it subsequently assigned the product formulation to the applicant but said that it never assigned the BIO YEAST AG trade-mark. The applicant’s position is that it was the intent of the negotiations and agreements that the trade-mark would be used by the applicant.
Held: Application refused. The Hearing Officer could not reach a conclusion as to the initial relationship between the parties or the intent of the parties’ agreement vis-à-vis the trade-mark BIO YEAST AG. She therefore considered whom the purchaser/consumer of the BIO YEAST AG product would perceive to be the owner of the mark. As it appeared that the manufacturer’s name appeared on the product, then the opponent’s name would have been associated with the product during the first three years after the applicant’s claimed date of first use. The applicant failed to satisfy the burden on it to show that the use of the BIO YEAST AG trade-mark accrued to its benefit when use of the mark commenced – the s. 30 ground therefore succeeded. The s. 12 ground of opposition also succeeded, because the Hearing Officer had some doubt concerning the likelihood of confusion, especially given the lack of any evidence concerning whether or not BIO is a commonly adopted prefix in the parties’ field. .
3. Moosehead Breweries v. Stokely-Van Camp, November 6, 2001 (Bradbury) Confusion
Proposed-use application for ALPINE SNOW for non-alcoholic, non-carbonated fruit flavoured drinks. Opposition based, inter alia, on s. 12(1)(d) due to confusion with the mark ALPINE registered for lager beer.
Held: Application refused. Although the applicant argued that the wares should be considered to fall within two different classes of wares (alcoholic v. non-alcoholic beverages), the Hearing Officer concluded that the applicant had not met its onus to show that there is no reasonable likelihood of confusion in view of the resemblance between the marks, the overlap in the parties’ channels of trade, and the fact that only the opponent’s mark had acquired any reputation.
4. Everlast World’s Boxing Headquarters v. Cadena Star Jewellry, November 13, 2001 (Herzig) Confusion/Famous Mark
Proposed-use application for EVERLAST-GOLD for jewelry. Opposition based, inter alia, on s. 12(1)(d) due to confusion with the mark EVERLAST registered for sports equipment and clothing.
Held: Opposition rejected. The marks are not confusing because small differences between marks are sufficient to distinguish between marks of low inherent distinctiveness – the distinctiveness acquired by the opponent’s mark is insufficient to prohibit the use of a similar mark on unrelated wares. The evidence falls far short of establishing that EVERLAST is a famous mark in Canada.
5. Shen Manufacturing v. The Ritz Hotel, November 27, 2001 (Martin) Confusion/Onus re Section 30(d)
Application for LE RITZ based on use and registration in France for various food items, personal use items, luggage items, items made from precious metals, table linen and everyday cooking and dining items. Opposition based, inter alia, on s. 30(d) because the applicant did not use the mark abroad as claimed and s. 12(1)(d) due to confusion with the mark RITZ & Design registered for cleaning and polishing cloths, towels, potholders, oven mitts, aprons and appliance covers.
Held: Application refused with respect to the linen and ordinary houseware/kitchenware items based on s. 12. The Board Member was left in a state of doubt with respect to such wares because they are similar to the opponent’s wares and could travel through similar channels of trade. Although the Board Member sympathized with the difficulties inherent in the opponent proving that the applicant hadn’t used the mark in France, the s. 30 evidential burden remains; even though the burden is very light, there is no evidence that satisfies it.
6. Canadian Council of Professional Engineers v. John Brooks, December 3, 2001 (Martin) Descriptiveness/Section 12(1)(e)
Proposed-use application for SPRAY ENGINEERING for spray nozzles and manifolds for high and low pressure cooling, cleaning, conditioning and processing; gauges, hoses, connectors and couplings, filters and strainers, lubricators, flow regulators; and fluid handling systems. SPRAY disclaimed. Opposition based, inter alia, on s. 12(1)(b) because the mark is clearly descriptive or deceptively misdescriptive of the persons employed in the production of the wares and s. 12(1)(e) due to the resemblance to the official mark ENGINEERING.
Held: Application refused based on s. 12(1)(b). The evidence shows that the wares are fairly sophisticated and that because a certain expertise is required to incorporate the wares into systems, the everyday user of the wares would often be dealing with professional engineers and would rely on their expertise in manufacturing, selecting or using the applicant’s wares. The applicant’s own correspondence touts its engineering capabilities. The everyday user would view the mark as clearly describing that professional engineers are involved in ensuring the character and quality of the applicant’s wares. In addition, because the mark incorporates the noun ENGINEERING, not the verb ENGINEERED, and because there is a wide variety of sub-disciplines within the field of professional engineering, the everyday user of the wares would likely assume that SPRAY ENGINEERING refers to a particular sub-discipline of professional engineering. The s. 12(1)(e) ground failed because the word SPRAY serves to distinguish the applicant’s mark from the official mark ENGINEERING. The opponent is not required to evidence use and adoption of its official mark in the absence of evidence suggesting that the mark was not used. The applicant’s evidence that it was unable to obtain any evidence of use of the opponent’s official marks from the opponent is not relevant as this took place 7 years after the official mark was published.
7. Express File v. HRB Royalty, December 7, 2001 (Bradbury) Confusion/Use in Association with Services
Proposed-use application for EXPRESS FILE H&R BLOCK for electronic filing of tax returns. Opposition based, inter alia, on s. 16(3)(a) due to confusion with the mark EXPRESS FILE previously used for electronic tax filing services.
Held: Opposition rejected. The s. 16 ground failed because the Hearing Officer was not satisfied that the opponent had used its mark in Canada – although someone in Canada could order the services as of the material date, the opponent’s filing services would always be performed in the United States.
8. Trevor Magee and Reid Flemons v. Three Jay Holdings December 8, 2001 (Bradbury) Confusion
Proposed-use application for MAYDAY MALONES for restaurant and bar services and management of restaurants. MALONES disclaimed. Opposition based, inter alia, on s. 16(3) due to confusion with the mark MALONE’S SPORTS GRILL & Design (MALONE’S, SPORTS and GRILL disclaimed), which was the subject of a previously-filed application for clothing, restaurant and bar services.
Held: Opposition rejected. The word MAYDAY is sufficient to distinguish the applicant’s mark from the opponent’s mark, just as a Christian name is sufficient to distinguish one person with the surname Malone from other Malones.
9. Mapei v. Chembond, December 12, 2001 (Partington) Confusion
Use-based application for ELASTO-BOND for chemical modified Portland powder cement premixed mortar, namely water mixed multi purpose floor and wall tile cement adhesive. Opposition based, inter alia, on s. 12(1)(d) due to confusion with the marks ELASTOCOLOR, EPO/BOND and KERABOND registered by the opponent for cement glue and similar wares. No evidence of use was filed by either party.
Held: Opposition rejected. Although there might be an overlap in the nature of the trade, the limited degree of resemblance between the marks and the inherent weakness of the marks make confusion unlikely.
10. Mapei v. Chembond, December 12, 2001 (Partington) Confusion
Use-based application for QUICK-BOND for fast setting latex modified dry set mortar adhesive for the installation of ceramic tile, multi purpose floor and wall tile cement. Opposition based, inter alia, on s. 12(1)(d) due to confusion with the marks QUICKCEM, KERAQUICK, EPO/BOND and KERABOND registered by the opponent for fast setting thin set mortar for ceramic tile installation, cement glue and similar wares. No evidence of use was filed by either party.
Held: Opposition rejected. Although there might be an overlap in the nature of the trade and some of the wares overlap, the limited degree of resemblance between the marks and the inherent weakness of the marks make confusion unlikely.
11. Sport B.C. v. Kidsport International, December 13, 2001 (Bradbury) Section 12(1)(e)
Application for KIDSPORTS & Design for physical fitness instruction services for children and young adolescents. Opposition based, inter alia, on s. 12(1)(e) based on the official mark KIDSPORT.
Held: Application refused. A person familiar with, but having an imperfect recollection of, the official mark KIDSPORT would be likely to mistake the KIDSPORTS & Design mark for it.
12. Applebee’s International v. BAB Holdings, December 13, 2001 (Bradbury) Confusion
Proposed-use application for BIG APPLE BAGELS & Design for bakery products, deli foods, non-alcoholic drinks, restaurant and carry out services and franchise services. Opposition based, inter alia, on s. 12(1)(d) due to confusion with various APPLEBEE’S & Design marks registered for restaurant services.
Held: Opposition rejected. It is the degree of resemblance between the marks that is the most significant factor in deciding the issue of confusion and the resemblance between these marks is insufficient to result in the ordinary consumer being confused.
13. Boyer Candy v. Hershey Canada, December 17, 2001 (Folz) Confusion/Cross-examination on Inadmissible Affidavit/Section 12(1)(c)/Name of the Wares
Use-based application for PEANUT BUTTER CUPS for candy. Opposition based, inter alia, on s. 12(1)(c) because the mark is the name of the wares and distinctiveness because the mark has been used by others for many years.
Held: Opposition rejected.
S. 12(1)(c): The mark is descriptive of the wares but that does not mean that it is the name of the wares. The evidence does not show a sufficiently broad recognition of the term “peanut butter cups” as the name of a particular type of candy. Evidence of generic use of the words in the U.S. is of little relevance to Canada, especially since the opponent has evidenced that Hershey Food Corporation has agreed to not claim exclusive rights to those words in the U.S. The fact that “peanut butter cups” are included in the statements of wares of some Canadian trade-mark applications/registrations is not decisive; “peanut butter cups” is not listed as an acceptable ware in the Trade-marks Examination Wares and Services Manual. There is no evidence that the word “cup” has some recognizable meaning in the confectionery industry.
Distinctiveness: The opponent’s use of “peanut butter cups” has been sufficient to negate the distinctiveness of the applicant’s mark and in other situations its sales may have been sufficient to render another’s mark non-distinctive. However, here the opponent’s substantial retail sales are less than 1% of the applicant’s and so they would have a minimal effect on the distinctiveness of the applicant’s mark. The applicant satisfied its onus by means of its extensive sales and advertising, as well as 67 affidavits attesting to the recognition of the applicant’s mark.
Certain affidavits were shown on cross-examination to be inadmissible because they were not properly sworn; however the cross-examinations are admissible because the affiants were then properly sworn.
14. UL Canada v. High Liner Foods, December 18, 2001 (Herzig) Descriptiveness
Proposed-use application for HOMESTYLE BAKED FILETS for fish and seafood. BAKED FILLETS disclaimed. Opposition based, inter alia, on s. 12(1)(b).
Held: Application refused. On a balance of probabilities, the opponent’s evidence (dictionary definitions, other food products using the word HOMESTYLE as part of their product names or in product description, and a plethora of cookbooks with titles comprising the word HOMESTYLE) establishes that the mark is clearly descriptive. A trade-mark having a laudatory connotation is not adapted to distinguish a particular trader’s wares. Little importance can be attached to the fact that there are prior registrations for trade-marks incorporating the word HOMESTYLE.
15. Renfrew Tape v. Mosinee Paper, December 20, 2001 (Folz) Confusion
Proposed-use application for RENEWRAP for paper material for packaging paper. Opposition based, inter alia, on s. 12(1)(d) due to confusion with the opponent’s mark RENWRAP registered for pipeline coating products and materials namely, rubber base prime paints and polymer tapes.
Held: Opposition rejected. The parties’ wares are different and there is no evidence of the overlap of the channels of trade for these two products. The fact that the opponent may sell other products under other trade-marks through the same channels of trade as the applicant’s is of little relevance to the issue of confusion.
16. Coca-Cola v. Southland, December 20, 2001 (Martin) Confusion/Survey Evidence
Use-based applications for QUALITY CLASSIC SELECTION & Design and QUALITÉ CLASSIC SELECTION & Design for non-alcoholic beverages, a variety of foods, etc. Opposition based, inter alia, on s. 12(1)(d) due to confusion with the opponent’s marks CLASSIC and COCA-COLA CLASSIC registered for carbonated beverages.
Held: Opposition rejected. Given the inherent weakness of the opponent’s CLASSIC mark, confusion between the applicant’s marks and CLASSIC is not likely. Survey evidence established that a majority of adult Canadians recognize CLASSIC as part of the name of the opponent’s soft drink but there is no evidence of use or acquired reputation for the trade-mark CLASSIC per se. Confusion is also not likely between COCA-COLA CLASSIC and the applicant’s marks both because of the low degree of resemblance between the marks and the fact that there is no evidence of confusion even though both parties’ cola products are sold side-by-side.
17. Vintners Quality Alliance of Canada v. Norfolk Ginseng, December 20, 2001 (Martin) Certification Mark/Use by Licensees/Cross-examination/Confusion
Use-based application for GINSENG QUALITY ASSURANCE GQA for conducting educational awareness for ginseng root and ginseng powder, conducting educational services in the nature of providing seminars and trade shows to manufactures [sic] and consumers about the merits and uses of ginseng. Opposition based, inter alia, on s. 12(1)(d) due to confusion with the opponent’s certification mark VQA & Design registered for wine.
Held: Opposition rejected. Confusion not likely in view of the inherent weakness of the marks at issue, the significant differences between the wares, services and trades, and the low degree of resemblance between the marks. (The applicant claimed that the opponent’s evidence was deficient in not supplying details regarding the opponent’s licensees who used its mark; the Board accepted the affiant’s statements at face value and concluded that the licensees’ use accrued to the opponent’s benefit under s. 23(2) because the applicant chose to not cross-examine.)
18. Canadian Olympic Association v. SmithKline Beecham Biologicals, December 20, 2001 (Partington) Section 12(1)(e)/State of the Register
Proposed-use application for OLYMTIC for vaccines for human use for the treatment/prevention of lyme disease. Opposition based, inter alia, on s. 12(1)(e), the mark not being registrable in view of the opponent’s official mark OLYMPIC.
Held: Application refused – as a matter of first impression and imperfect recollection, a person would be likely to mistake OLYMTIC for OLYMPIC. The applicant submitted that the average consumer of its wares would be doctors, nurses and pharmacists and that such persons would associate OLYMTIC with lyme disease because of the combination of LYM with TIC (which is the means by which the disease is carried). The Hearing Officer however did not consider it appropriate to restrict the test for assessing the resemblance between the marks to any group of persons since the applicant’s mark might come to the attention of the average person through advertisements, etc. The existence of 9 third party registrations for marks comprising the word OLYMPIC does not have an impact on the determination of whether a person might reasonably be likely to mistake OLYMTIC for OLYMPIC.
19. Canadian Olympic Association v. SmithKline Beecham Biologicals, December 20, 2001 (Partington) Section 12(1)(e)/State of the Register
Proposed-use application for ALYMPIA for vaccines for human use for the treatment/prevention of lyme disease. Opposition based, inter alia, on s. 12(1)(e), the mark not being registrable in view of the opponent’s official mark OLYMPIA.
Held: Application refused – as a matter of first impression and imperfect recollection, a person would be likely to mistake ALYMPIA for OLYMPIA. The applicant submitted that the average consumer of its wares would be doctors, nurses and pharmacists and that such persons would associate ALYMPIA with lyme disease because of the combination of LYM with PIA (which is derived from “pain in articulation”, a common symptom of lyme disease). The Hearing Officer however did not consider it appropriate to restrict the test for assessing the resemblance between the marks to any group of persons since the applicant’s mark might come to the attention of the average person through advertisements, etc. The fact that 10 different parties own 13 registrations for marks comprising the word OLYMPIA does not have an impact on the determination of whether a person might reasonably be likely to mistake ALYMPIA for OLYMPIA.
20. Latitude Communications v. Dell Computer, December 20, 2001 (Partington) Section 30(a)/Section 38(3)(a)/Surrounding Circumstances
Proposed-use application for LATITUDE for computers and computer peripherals, namely monitors, keyboards, printers, mouses, co-processors, modems, hard and floppy disk drives, tape drives, cards, memory boards and chips, cables and connectors, operating software and instruction manuals sold together as a unit. Opposition based, inter alia, on s. 12(1)(d) because the mark is confusing the mark LATITUDE registered by a third party for modular office furniture (including computer workstations, mobile computer furniture and keyboard platforms) and s. 30(a).
Held: Application refused. The applicant did not satisfy its burden with respect to the issue of confusion given that the identical marks are associated with related wares that could travel the same channels of trade. As a surrounding circumstance, the Hearing Officer noted that the owner of the LATITUDE registration did not oppose the application and that there was evidence from the applicant that no confusion has occurred. He stated that the lack of confusion might be due to the fact that the applicant is presently only selling its products directly to consumers, not through retail stores, and noted that this restriction was not included in the statement of wares. The s. 30(a) ground failed - while the words “sold together as a unit” makes the statement of wares somewhat ambiguous, the wares are otherwise identified specifically in ordinary commercial terms. The Hearing Officer noted that the s. 30(a) ground was arguably contrary to s. 38(3)(a) because it did not indicate which of the wares were not specifically identified in ordinary commercial terms. However, the applicant did not raise such an objection in its counter statement and did respond to the ground in its evidence.
III. SECTION 45 DECISIONS
1. Ridout & Maybee v. Trattoria Spago, December 20, 2001 (Savard) Use with Services/Special Circumstances
SPAGO registered for restaurant services.
Held: Registration expunged. The registrant evidenced that its American restaurants have acquired a reputation in Canada but that it had not yet opened a restaurant in Canada because it had not yet found a suitable operator. The registrant mentioned that negotiations with a potential operator began in 1999 but that such negotiations are now on hold – it did not explain whether the reason the negotiations were put on hold was a voluntary decision or due to circumstances beyond the registrant’s control. Nor did it indicate when negotiations were likely to reopen or when use might commence. Accordingly, there are no special circumstances justifying the non-use.
2. Ecko Housewares v. Bryce MacKinnon, December 20, 2001 (Savard) Store Services/Use on Invoices
THE BAR NECESSITIES registered for operation of stores specializing in the sale of bar supplies and accessories.
Held: Registration maintained. The registrant’s affiant attested that it had used the mark in association with operating a store specializing in the sale of bar supplies and accessories and provided invoices that showed the mark at the top and displayed the following at the bottom: “Manufacturer and Installer of BAR NECESSITIES trade-mark brand products and services.” The Senior Hearing Officer rejected the requesting party’s argument that use was not shown in association with the operation of a store, pointing out that the word store has several definitions including “a quantity of something kept available for use; articles for a particular purpose accumulated for use; a supply of these or the place where they are kept.”
3. Smart & Biggar v. JemPak Canada, December 20, 2001 (Savard) Special Circumstances
PARA registered for “detersifs”.
Held: Registration expunged. The current owner acquired the mark 2_ years before the issuance of the s. 45 notice and has been unceasingly trying to establish markets for the product without success. However, its goal is to develop a market within a year and to that end it has distributed samples to potential customers since the receipt of the notice. Although a new company may need some time to establish its business, it appears that the registrant chose to build up other product lines prior to the receipt of the notice and only took concrete steps with respect to this trade-mark after it received the notice. The registrant should have demonstrated that prior to the date of the notice, it had a clear intention to commence use in the near future.
4. Ogilvy Renault v. Time Manager International, December 20, 2001 (Savard) Sufficiency of Evidence
TMI & Design registered for recorded computer programmes, computers, magnetic data carriers, disc memories; pens, pencils… periodicals and brochures and folders for educational purposes; business management advisory services; the provision of educational services, teaching services and consulting services.
Held: Registration expunged. The evidence showed use of a completely different trade-mark on most of the wares. Although the registered trade-mark appeared on certain educational booklets or brochures listed in the registrant’s catalogue, the invoices provided did not cover such wares and the absence of such wares from the Product and Price List make it unclear if such wares were available for sale or sold in Canada during the relevant time period. There was no evidence that the services were available to be performed in Canada during the relevant period.
5. Canadian Council of Professional Engineers v. Penn Engineering & Manufacturing, December 20, 2001 (Savard) Use in Corporate Name/Section 4(1)
PENN ENGINEERING registered for self-clinching fasteners, self-locating weld fasteners, and self-clinching drill bushings.
Held: Registration expunged. Although the registrant submitted that its trade-mark appears on the packaging of its wares, it is its name Penn Engineering & Manufacturing Corp. that appears thereon, without the words PENN ENGINEERING standing out from the other elements. The listing of all of the registrant’s trade-marks on its packaging, including the one at issue here, does not constitute use of such trade-marks in accordance with s. 4(1) as such manner does not provide notice of the association between the mark and the wares to the purchaser.
6. Deeth Williams Wall v. World Connect, December 20, 2001 (Savard) Sufficiency of Evidence
GATEWAY PRO registered for computer software programs that facilitate data transfer between communications systems, and consulting services in respect of data transfer between communications systems.
Held: Registration maintained. The mark appears in the body of invoices in association with the description of the wares and services and the invoices accompany the wares. Evidence showing use of the mark as it appeared on computer screens during the relevant time period also shows use of the mark. The Senior Hearing Officer rejected the argument by the requesting party that the registrant’s affiant failed to establish how he obtained material from the registrant’s predecessor; the affiant has indicated that the facts and information were known to him personally or obtained from company files to which he has access and the exhibits corroborate the affiant’s assertions.
7. Sim & McBurney v. Agros Holding, December 20, 2001 (Savard) Section 50/Sufficiency of Evidence/Use in Canada/F.O.B.
SESAME SNAPS & Design registered for confectionery products namely sesame bars.
Held: Registration maintained. The evidence is sufficient to show that Agros Holding is the current owner of the registration. The registrant need not furnish the license agreement under which the trade-mark is used; it is sufficient that the affiant has sworn that a licence exists under which the owner controls the character and quality of the wares. Although the invoices provided are marked F.O.B., the wares were shipped to Canada; a transfer of property thus occurred in Canada when the goods were received in Canada by the distributor.
IV. OTHER COURT DECISIONS
1. Canpark Services v. Imperial Parking Canada, October 5, 2001, OSCJ (Campbell J.) Interlocutory Injunction/Irreparable Harm
Application for an interlocutory injunction to restrain the defendant from bidding on certain parking lot sites. In the course of negotiating for the sale of a parking lot, the plaintiff provided confidential information to the defendant. In a letter of intent, the defendant acknowledged that, if the negotiations fell through, damages would be an insufficient remedy for a breach of the defendant’s agreement to not compete for certain parking lot sites.
Held: Injunction granted. The letter of intent raised the presumption of irreparable harm and the defendant failed to establish that the covenant was in restraint of trade and therefore of no effect.
2. Bayer and Miles Canada v. Apotex, January 24, 2002, OCA (Feldman, MacPherson and Cronk JJ.A.) Remedies/Accounting of Profits/Patent Act, R.S.C. 1985, c. P-4, s. 57(1)/Availability of Apportionment/Direction to Refere
Appeal by Apotex from an order of the trial judge allowing Bayer to elect either damages or an accounting of profits as a remedy for patent infringement, and directing that no apportionment would be permitted at the reference. Apotex manufactured and sold a capsule that could be used in treating angina pectoris attacks. Bayer commenced an action for patent infringement, and was successful at the liability stage of the bifurcated trial: Bayer Aktiengesellschaft v. Apotex Inc. (1995), 60 C.P.R. (3d) 58 (Ont. Ct. Gen. Div.), aff’d., (1998), 82 C.P.R. (3d) 526 (Ont. C.A.). Apotex unsuccessfully argued that the Bayer patent only covered instant oral release capsules that were bitten by patients, and that the Apotex capsules were intended to be swallowed. The trial judge conducted a separate hearing on the remedy issue, and concluded that the plaintiffs were entitled to either damages or an accounting of profits earned through the infringement. The trial judge also directed that sales of all infringing capsules by Apotex were to be considered and that Apotex could not apportion revenues between capsules actually bitten, and those that were swallowed, based upon his conclusion that Apotex had infringed product claims of the Bayer patent.
Held: Appeal dismissed. An accounting is a discretionary remedy, authorized by s. 57(1) of the Patent Act, and available to the respondents at the discretion of the trial judge. The trial judge properly considered the relevant factors before exercising his discretion. Apotex also argued that the trial judge erred by directing that the referee count all infringing capsules, and not just those actually bitten by patients, when calculating profits. Apotex contended that the trial judge had usurped the referee’s function, and that the referee should be entitled to apportion profits to only those capsules that were bitten. The trial judge had heard the arguments about apportionment and the number of capsules to be counted on the reference. They are not live issues. On the reference, the referee must count all of the infringing capsules sold by Apotex. A referee conducts a reference pursuant to the directions of a judge and reports to the judge. There can be no objection to a trial judge structuring the conduct of a reference to take account of the judge’s decisions leading up to the reference.
