Recent Decisions February 2003
I. FEDERAL COURT DECISIONS
(a) Patents
1. Novartis et al. v. Apotex, November 8, 2002 FCA (Strayer J.A., Evans J.A. and Pelletier J.A.) Motion for Dismissal /Mootness/Appeal from Order Refusing Prohibition Application/Patented Medicines (Notice of Compliance) Regulations
Motion by Apotex to have an appeal dismissed for mootness. Novartis' application for prohibition was dismissed by Blais J. on the grounds that a number of the claims in its patent were invalid because they were anticipated, obvious, or overly broad. After Novartis filed its notice of appeal, the Minister of Health issued a NOC to Apotex in connection with one form and dosage of the medicine. In response to the Apotex motion, Novartis argued that the appeal was not moot because Apotex could rely on the finding by Blais J. of invalidity in future NOC proceedings for other forms and dosages of the medicine.
Held: Motion allowed. Novartis sought its remedy under s. 6 of the NOC Regulations to stop the Minister from issuing a NOC. That remedy was denied by the Trial Division, and the NOC has been issued. This lawful administrative action taken by the Minister has rendered the appeal moot: see Pfizer Canada Inc. v. Apotex Inc. (2001), 11 C.P.R. (4th) 245 (F.C.A.). This does not preclude Novartis from other possible remedies available to it under the general patent law. The finding of the Court is for the limited purpose of deciding whether or not the Minister can issue a NOC: no one could suppose that this is a scheme designed for res judicata determinations of the scope or validity of patents.
2. Merck Frosst Canada et al. v. Canada (Minister of Health) and Apotex, November 18, 2002 FCTD (Rouleau J.) Application for Prohibition /Non-operability /Infringement/ Patented Medicines (Notice of Compliance) Regulations
Application by Merck to prohibit the Minister from issuing a NOC to Apotex for the medicine simvastatin. The Merck patent has claims for simvastatin only as prepared by specific processes. In its NOA, Apotex alleged that its simvastatin would not be made by the process claimed in the patent. Merck filed affidavit evidence claiming that the Apotex process was not operable, and could not be used to produce the medicine. In response, Apotex filed three expert affidavits expressing the opinion that the Apotex process did not infringe the patent.
Held: Application dismissed. Merck has not established that Apotex will infringe the process claimed in the patent if it is issued an NOC for simvastatin. Once Apotex adduced evidence that its process was different, the burden of proof fell upon Merck to establish that the allegation of non-infringement in the NOA was not justified. Instead, Merck took the position that the Apotex process did not work, and therefore that it was not a valid chemical process. The concept of operability or workability of the Apotex process is of no concern to Merck and is irrelevant to the matters in issue in a prohibition proceeding. Merck provided no answer or evidence to dispute the Apotex evidence of non-infringement.
3. Parke-Davis Division of Warner-Lambert Canada et al. v. Canada (Minister of Health) and Apotex, November 18, 2002 FCA (Linden, Sexton and Sharlow JJ.A.) Prohibition Application/Validity of Notice of Allegation/Patented Medicines (Notice of Compliance) Regulations
Appeal from an order dismissing Parke-Davis' application to prohibit the Minister from issuing a NOC to Apotex in connection with the medicine atorvastatin calcium. Parke-Davis claimed that it had inadvertently included the Canadian patent for the medicine atorvastatin calcium (sold under the trade mark LIPITOR) on a list of patents that it was dedicating to public use, and caused a notice to be published in the Patent Office Record retracting the dedication. Apotex subsequently served Parke-Davis with a NOA alleging that the patent had been dedicated to the public. The application judge concluded that the allegations in the NOA were justified because Parke-Davis had failed to prove that the dedication of the patent to public use was a mistake.
Held: Appeal allowed. Parke-Davis argued that the NOA served by Apotex could not be justified because Apotex did not file a new drug submission (NDS) for atorvastatin calcium with the Minister. The NOC Regulations require Apotex to have filed a NDS by the date of the hearing of the application for prohibition. A NOA is invalid if no NDS has been filed by the date of the hearing. The evidence established that Apotex had not filed a NDS by the date of hearing, and it follows that the applications judge should not have dealt with the prohibition application. The NOA that Apotex served on Parke-Davis has no legal effect. In addition, Parke-Davis has established that the inclusion of the patent in the dedication documents was a mistake. If the Court had concluded that the NOA served by Apotex was valid, the Court would have held that the allegations in the NOA were not justified, with the result that the application for a prohibition order would have been granted.
4. Westaim v. Royal Canadian Mint, November 22, 2002 FCTD (Hansen J.) Claim Construction/Obviousness/Utility/Patent Infringement
Action for infringement of a patent for a process to produce blanks suitable for minting into coins. Defendant's counterclaim seeks a declaration of non-infringement and invalidity. Prior art processes generally include electroplating cores followed by a heat treatment to soften the cores and form metallurgical bonds between the plating and the cores. The invention was allegedly based on the realization that the heat treatment could be performed before electroplating, thus avoiding problems associated with heating the electroplated cores. The defendant contended that the claims require the cores to be electroplated with a single layer of metal having a minimum thickness of at least 0.01 mm in a single electroplating bath. The defendant argued that it does not infringe any of the claims because it electroplates the cores with multiple layers of different metals in several electroplating baths, and the first layer is less than 0.01 mm thick.
Held: The patent claims are invalid as being obvious and lacking utility. No explicit determination was made on the issue of infringement. Since the patent issued on December 17, 1985, the pre-October 1989 Patent Act applies to the proceedings.
Claim Construction: The Court concluded that the essential elements of the broadest claim are: (a) providing punched cores; (b) heating the cores and then cooling the cores to produce cores having a hardness of less than about 65 Rockwell 30T; and (c) barrel electroplating the cores with a metallic cladding having a thickness of at least 0.01 mm on each face and with 2 to 4 times that thickness on the circumference. The Court did not make an explicit determination as to whether it was an essential element of the claims to have a metallic cladding consisting of a single layer of metal having a minimum thickness of at least 0.01 mm in a single electroplating bath.
Obviousness: A prior art patent taught a process in which steel cores were electroplated with a first layer of metal and then an outer layer of metal. In one embodiment of the patent, the first layer of metal was zinc and the outer layer of metal was copper. The electroplated cores were then "optionally" heat treated to soften the cores and form a metallurgical bond between the plating and the cores. The Court held that the patent claims were obvious in view of this prior patent since it was part of the common general knowledge that: (a) the cores must be heat treated at some point in the process to ensure that they are soft enough to be minted; (b) the melting point of zinc is less than the temperature required to heat treat the steel to soften it; and (c) if zinc was used as an intermediate layer between the outer copper layer and the steel core there would be no option but to heat treat the steel before electroplating, otherwise the zinc would melt upon being heat treated and ruin the outer copper layer. The Court held that the plaintiff failed to prove on a balance of probabilities their claimed date of the invention, which was before the priority date of the prior art patent.
Utility: The defendant argued that one of the claims lacked utility as it did not provide a limitation on the type of steel that is to be heat treated to a hardness of less than 65 on the Rockwell 30T scale. The Court accepted the plaintiff's expert's own admission that tool steels “could not” or would “probably not” be treated in this manner, and held the claim to be invalid for lack of utility.
5. Bristol-Myers Squibb v. Canada (Attorney General) and Biolyse Pharma, November 22, 2002 FCTD (Blanchard J.) Judicial Review of Minister's Decision to Grant NOC/Minister Error/Required Service of NOA /Patented Medicines (Notice of Compliance) Regulations, ss. 5(1) and 5(1.1)
Application by Bristol-Myers for judicial review of a decision by the Minister of Health to issue a NOC to Biolyse in relation to the drug paclitaxel. Bristol-Myers holds NOCs and has submitted patent lists in respect of its drug Taxol, which contains paclitaxel derived from the bark of a yew tree. Biolyse submitted a new drug submission in relation to its drug, which contains paclitaxel derived from the twigs and needles of the Canadian yew bush. The Minister determined that s. 5 of the NOC Regulations was not engaged, and issued a NOC without requiring Biolyse to send a NOA to Bristol-Myers.
Held: Application for judicial review allowed. Biolyse did not compare its drug to or make reference to the Bristol-Myers drug for the purpose of demonstrating bioequivalence, but submitted its own clinical data. As a result, s.5(1) of the NOC Regulations did not apply to the Biolyse submission. However, the Minister erred by failing to require that a NOA be served on Bristol-Myers in accordance with s. 5(1.1), which is triggered when a drug for which a NOC is sought contains "a medicine found in another drug that has been marketed in Canada pursuant to a NOC issued to a first person and in respect of which a patent list has been submitted." The Minister confirmed that Biolyse's drug contained the same medicine, paclitaxel, found in another drug that has been marketed in Canada, namely Taxol, by Bristol-Myers. Both drugs have the same route of administration and are of identical strength and dosage form. The Minister misinterpreted s.5(1.1) in deciding that only submissions based on comparative studies trigger s. 5(1.1), and erred in issuing a NOC to Biolyse before Bristol-Myers was served with a NOA. The NOC granted to Biolyse is quashed.
6. Eli Lilly Canada v. Canada (Minister of Health), December 2, 2002 FCTD (Layden-Stevenson J.) Patent Register/Removal of Patent from Register/Definition of "Medicine" /Claim Construction/Patented Medicines (Notice of Compliance) Regulations, ss. 2 and 4
Application for judicial review of the Minister's decision to remove Eli Lilly's patent from the patent register. The patent relates to an implant adapted for the controlled release of an anabolic agent and to methods of preparing the implant. The Minister decided to remove Eli Lilly's patent from the patent register based on a conclusion that the patent is directed to an implant for administering a medicament and not to a formulation or composition, and thus does not satisfy the definition of "medicine" within s. 4 of the NOC Regulations.
Held: Application dismissed. The Court found that the definition of "medicine" in the NOC Regulations is for a substance that exists or is intended or capable of being used for the diagnosis, treatment, mitigation or prevention of disease, disorder or abnormal physical state or the symptoms thereof, and does not include a substance that the existence and use of "increases the rate of weight gain in suckling and growing steers greater than 80 kg (175lbs) in body weight and increases the rate of weight gain and improved feed efficiency in feedlot steers and heifers greater than 260 kg (575lbs) body weight." In addition, the Court held that based on the principles of claim construction, Eli Lilly's patent relates to an implant and method of preparing that implant, and not to a claim for the medicine or the use of the medicine.
7. Astrazeneca v. Apotex and Canada (Minister of Health), December 2, 2002 FCTD (Layden-Stevenson J.) Abuse of Process /Patented Medicines (Notice of Compliance) Regulations, s. 6(5)(b)
Motion by Apotex to set aside the order of the Prothonotary and dismiss Astrazeneca's application for an order prohibiting the Minister of Health from issuing a NOC to Apotex regarding its Apo-Omeprazole product as an abuse of process. Apotex provided a NOA to Astrazeneca and alleged that Astrazeneca's patent would not be infringed by the making, constructing, using or selling by Apotex of its omeprazole tablets. Apotex alleged that Astrazeneca's patent related only to magnesium omeprazole having a degree of crystallinity higher than 70% and not to amorphous magnesium, which is in the Apotex tablets. Astrazeneca commenced an application seeking an order of prohibition. In response, Apotex initiated a motion for summary dismissal of Astrazeneca's application pursuant to s. 6(5)(b) of the NOC Regulations. The Prothonotary dismissed the motion for summary dismissal.
Held: Motion dismissed; order of the Prothonotary upheld. The Court first considered the standard of review and held that it was that of correctness and that the reviewing judge ought to assess the issues on the appeal de novo. The Court then considered the main issue of the dispute and held that a notice of application will only be struck out in very exceptional circumstances when the application is so clearly improper as to be bereft of any possibility of success. In its analysis, the Court focused on the sufficiency of the NOA. Astrazeneca argued that the NOA was insufficient because it failed to address the crystallinity of the magnesium omeprazole used to make the tablets. The Court held that the issue of the sufficiency of the NOA was not so clearly improper as to be bereft of any possibility of success.
8. Harvard College v. Canada (Commissioner of Patents), December 5, 2002 SCC (McLachlin C.J. and L'Heureux-Dubé, Gonthier, Iacobucci, Major, Bastarache, Binnie, Arbour and LeBel JJ.) Patentable Subject Matter /Biotechnology /Patentability of Higher Life Forms /"Invention" Not Encompassing Higher Life Forms /Patent Act, s. 2
Appeal by the Commissioner of Patents from the decision of the FCA allowing the product claims of Harvard College's patent. Harvard College applied for a patent to an invention entitled: "Transgenic animals." The patent related to a process of creating mice carrying an oncogene and to the product of the process, the oncogene-carrying mice themselves. The Patent Examiner allowed the process claims, but rejected the claims to the transgenic mice. The Commissioner and FCTD upheld the Patent Examiner's decision to reject the claims. The FCA overturned the decision to reject the product claims and held that claims to higher life forms were patentable.
Held: Appeal allowed (by a 5:4 majority). The claims directed to higher life forms were not patentable. The appropriate standard of review in this case was correctness. The main issue of the appeal was whether higher life forms are patentable. Using principles of statutory interpretation, the SCC held that higher life forms are not patentable because they are not a "manufacture" or "composition of matter" within the meaning of "invention" in s. 2 of the Patent Act and that Parliament did not intend to include higher life forms within the definition of "invention." The Court stated that the patenting of higher life forms raises unique concerns which do not arise in respect of non-living inventions and which are not addressed by the scheme of the Patent Act. The final consideration of the Court was whether it was defensible to allow patents on lower life forms while denying patents on higher life forms. The Court held that although the distinction between lower and higher life forms is not explicit in the Patent Act, it is nonetheless defensible on the basis of common sense.
Dissent: The dissenting judgment held that higher life forms are patentable subject matter. The minority of the court decided that the achievement of altering every single cell in the body of an animal which does not in this altered form exist in nature is an inventive "composition of matter" within the meaning of s. 2 of the Patent Act.
9. Bristol-Myers Squibb v. Canada (Attorney General) and Biolyse Pharma, December 20, 2002 FCTD (Blanchard J.) Motion for Stay/Irreparable Harm/Federal Court Rule 398(1)(a)
Motion by Biolyse for a stay of the decision of the applications judge pending the disposition of its appeal. Biolyse developed a way of making the medicine paclitaxel from a novel source. The Minister issued a NOC to Biolyse without requiring it to send a NOA to Bristol-Myers, the holder of a Canadian patent in respect of paclitaxel derived from another source. The applications judge allowed Bristol-Myers' application for review of the Minister's decision, and quashed the NOC issued to Biolyse.
Held: Stay granted, pending the final determination of the appeal. Biolyse is to file a motion for an expedited hearing and sign an undertaking to abide by any order the Court may make as to damages. The conditions for a stay set out in RJR-MacDonald Inc. v. A.G. Canada, [1994] 1 S.C.R. 311, have been met. There is a serious issue to be dealt with on appeal, namely the proper interpretation of s.5(1.1) of the NOC Regulations. Both parties will suffer irreparable harm, based on the assumption that Biolyse will suffer bankruptcy if the stay is not granted, and based on Biolyse's inability to compensate Bristol-Myers in the event of damages. Biolyse is a one-product company which, if not allowed to continue to market that product, will go out of business. Biolyse will undoubtedly suffer greater harm from the refusal of the motion for a stay. Further, it would not be in the public interest to allow a small pharmaceutical company, with an innovative and cheaper product, to go out of business.
(b) Trade Marks
1. Conagra Foods v. Fetherstonhaugh, December 4, 2002 FCTD (Mackay J.) Section 45 Appeal/Use of Trade Mark/Amendment of Wares
Appeal from s. 45 decision that held that the registration for KID CUISINE should be expunged. The evidence before the Registrar was that the product had been launched before the date of the s. 45 notice but all the invoices provided postdated the notice. In addition to finding that there was no evidence of use (i.e. no transfer of the product) during the relevant time period, the Registrar commented that the product sold did not match the description of the registered wares in that corn, not fruit, was sold. New evidence filed on appeal.
Held: Appeal allowed. The new evidence included evidence of an order placed before the date of the s. 45 notice and filled two days thereafter - the Court held that the acceptance of that order prior to the relevant date constituted use of the mark. There was also new evidence of the distribution of sample products to merchants testing the product in the year before the notice - that was also held to constitute use of the mark.
The appellant also evidenced that corn is technically a fruit and that in any event, the description of "side dishes of vegetables and fruit" can be interpreted either jointly or severally. The Court agreed. The Court also expressed the view that pursuant to s. 45(3) the Registrar could have amended the description of the wares to delete the reference to "fruit".
2. Lifegear et al. v. Urus Industrial, December 10, 2002 FCTD (Hugessen J.) Trade Mark Infringement/Summary Judgment/ Distributor's Rights/Injunction
Motion for summary judgment in a trade mark infringement action. The plaintiff entered into a distribution agreement with the defendant for distribution of SATURNE athletic machinery. The defendant admits that it is selling SATURNE equipment that is not of the plaintiff's manufacture. The defendant's defence is one of colour of right, the defendant asserting that the distributorship agreement gives it proprietary rights in the trade mark.
Held: Motion granted - summary judgment given declaring the plaintiff to be the owner of the registered trade mark and declaring that the defendant has infringed that mark. It is trite law that a distributor does not acquire proprietary rights in the trade marks of goods which it distributes and the present distributorship agreement contains no wording that would give the distributor such rights. Injunctive relief also granted (because an injunction sought on a summary judgment motion is a final injunction, the plaintiff need not show irreparable harm).
3. Canadian Business School v. Sunrise Academy, December 12, 2002 FCTD (Layden-Stevenson J.) Passing Off/Section 7(b)
Action for passing off. Both parties are offering vocational courses under the trade mark CANADIAN BUSINESS COLLEGE. The defendant adopted the name without knowledge of the plaintiff's use.
Held: Action dismissed. The plaintiff has not established the goodwill necessary to support a passing off action. Any confusion that has occurred is due to the highly descriptive nature of the name, not to the plaintiff's reputation.
4. Lapointe Rosenstein v. Atlantic Engraving, December 16, 2002 FCA (Nadon J.A.) Section 45/Appeal/Adjournment to Allow the Filing of Additional Evidence due to Counsel's Inexperience
Appeal of the Trial Judge's order to adjourn the hearing of a s. 45 appeal in order to allow the trade mark owner to file better evidence. There was no motion before the Judge for leave to file a further and better affidavit; the Judge decided on his own volition that adjournment would serve the interests of justice because he felt that the failure to adduce satisfactory evidence stemmed from the counsel's lack of experience with respect to trade mark law.
Held: Appeal allowed. There was no basis in either fact or law to adjourn the matter because 1) there was no motion for leave under r. 312, 2) the respondent could not show that the evidence to be adduced had not been available in the past; and 3) the lack of expertise of counsel is not a proper basis for an adjournment. Given that the Trial Judge agreed that the evidence before him was insufficient to overturn the Registrar's decision, the Court of Appeal gave the judgment that the Trial Judge ought to have given, namely the appeal by the trade mark owner to the Trial Division is dismissed.
5. Sullivan Entertainment v. Anne of Green Gables Licensing Authority et al., December 20, 2002 FCTD (Heneghan J.) Summary Judgment/ Public Authority/ Assignment of Official Marks/ Use of Official Marks by Licensees/Standing
Motion for partial summary judgment; the plaintiff seeks a declaration that the defendant cannot rely on certain official marks because the assignment to the defendant was void and because public notice was improperly obtained as a result of the official marks not having been used prior to the s. 9 request. The plaintiff argued that use of official marks by licensees does not qualify as use by the public authority.
Held: Motion dismissed. Whether or not an official mark is assignable is dependent on whether the transferee is a public authority. As the status of the present transferee as a public authority remains undecided at this point of time, the argument that the marks could not be assigned to it fails for lack of evidence. The Court declined to deal with the question of whether the marks had been used before public notice was given because there was too much material filed by both parties to be decided on a motion for summary judgment. Some of the proof of use relied upon use by licensees and there is conflicting jurisprudence on whether such use enures to the benefit of the mark's owner (Magnotta Winery Corp. v. Vintners Quality Alliance (2001), 214 F.T.R. 137 being currently under appeal). It is inappropriate to grant summary judgment on an issue that cannot be separated from other issues in the action. The defendant's argument that the plaintiff lacks standing was dismissed because "[t]he status of the plaintiff to bring this action has been considered, pending a full trial on the issue, albeit in the context of a motion to strike."
(c) Copyright
1. Trawlercat Marine et al. v. Gene Folden et al., November 13, 2002 FCTD (Hargrave P.) Enforcement of Copyright In Rem/Jurisdiction/Section 22 Federal Court Act
Interlocutory motion challenging the jurisdiction of the Court with respect to a warrant for the arrest of the defendant's partially completed yacht. The defendant had paid the plaintiff a deposit to obtain copies of the plaintiff's plans for a yacht but subsequently retained another party to build a substantially different yacht. The plaintiff alleges breach of contract and copyright and claim a declaration that they have a statutory right in rem against the partially constructed yacht.
Held: The yacht is released from arrest. A copyright claim ought not to sound in rem. In rem jurisdiction can only be found pursuant to s. 22(1) of the Federal Court Act, which concerns navigation and shipping. This section does not apply to the present fact situation because the copyright claim involved plans supplied for a ship neither built nor in existence. Also, no in rem proceeding is available in the case of some form of in personam contract to enter into a contract to build a vessel.
(d) Practice
1. W.L. Gore & Associates v. David Goldfarb, December 12, 2002 FCA (Strayer, Linden and Noël JJ.A.) Standard of Review on Appeal
Appeal from a decision of the Trial Division wherein the Trial Judge had found that the respondent Goldfarb first invented the subject matter of eight conflict claims for a prosthetic device.
Held: Appeal dismissed. The appellate court is not free to interfere with a factual conclusion of the Trial Judge regarding the weight to be assigned to the underlying facts. The standard of review applicable to all factual conclusions made by the Trial Judge is that of palpable and overriding error: see Hansen v. Nikolaisen, 2002 S.C.C. 33. The Court of Appeal concluded that no palpable and overriding error was made in awarding the claims to the respondent. The evidence submitted by the appellant did not establish that he had made the contested invention.
II. OTHER COURT DECISIONS
1. Delta Motors v. Abric, November 1, 2002 NBQB (Glennie J.) Interlocutory Injunction/ Confidential Information
Application for injunctive relief to restrain a former employee from using or disclosing confidential information and prohibit the former employee from contacting any companies doing business with the applicant.
Held: Interlocutory injunction issued. The respondent contacted various companies and told them that the applicant was involved in improper business dealings and/or fraudulent transactions. The respondent claimed that he did so out of concern for the other companies but the Court concluded that he did so in order to harm the applicant. The respondent owes a duty of loyalty and confidence owed to his former employer.
2. Smith v. Hussman Canada, December 6, 2002 NSSC (Robertson J.) Interim Injunction/Confidential Information/Fiduciary Duty
Application for an interim injunction to restrain former employees from using confidential information in establishing a competing business.
Held: Application denied because the applicant failed to meet the threshold test of serious issue to be tried. No fiduciary relationship to employer. There was no non competition or non solicitation agreement. The Code of Conduct signed by the applicant's employees is on its face a document that was intended to govern their conduct while employees of the company, not after they were laid off. The respondents did not use confidential customer lists in soliciting customers in their new business.
III. OPPOSITION BOARD DECISIONS
1. G.H. Imported Merchandise & Sales v. Wal-Mart Stores, October 8, 2002 (Folz) Confusion/Channels of Trade/State of the Register
Proposed-use applications for ASH CREEK TRADING. The first application is for watches and the second is to extend an existing registration to include shoes. Opposition based, inter alia, on s. 12(1)(d) due to confusion with the trade-mark ASH CITY for wearing apparel and accessories.
Held: Oppositions rejected. Confusion not likely primarily due to the extent to which the applicant's mark has already become known with respect to clothing and the different channels of trade of the parties. Although neither the applications nor registrations are restricted to the current channels of trade, the Board Member considered the fact that the applicant is a discount retailer whereas the opponent distributes its wares through garment finishers who add a corporate or team name or logo to the clothing before distributing it to consumers. State of the register evidence that located at least 30 marks that used ASH as the first part of the mark for clothing was not considered particularly relevant because such marks did not use the word ASH per se but rather included a word that started with ASH.
2. Sports and Entertainment v. SkyDome, October 10, 2002 (Herzig) Section 30/Descriptiveness
Application for WORLD'S ONLY SPORTS AND ENTERTAINMENT HOTEL based on proposed use for a variety of wares and on use for folders, post cards, and the operation of a hotel. Opposition based, inter alia, on s. 30(i) because the applicant could not be satisfied as to its entitlement to use the mark as it never intended to use it as a trade-mark but rather as a generic slogan.
Held: Application refused because the mark was not used in such a way that the phrase remained recognizable as a trade mark. The words WORLD'S ONLY SPORTS AND ENTERTAINMENT HOTEL were used descriptively by the applicant's licensee in promotional materials. The applied for phrase also appeared as part of a composite mark but there was evidence that it would never be used on its own.
3. Intuit v. Louise Brandolini, October 15, 2002 (Folz) Admissibility/Confusion
Application for IN-TU-IT based on use for various healing and metaphysical services and sexual energy education and on proposed use for audio and video recordings, namely pre-recorded instructional and meditation audio cassettes and pre-recorded instructional and meditation video cassettes. Opposition based, inter alia, on s. 12(1)(d) due to confusion with INTUIT for computer software for use in financial applications and related manuals sold together as a unit.
Held: Application refused only with respect to audio and video recordings, namely pre-recorded instructional audio cassettes and pre-recorded instructional video cassettes because these wares could be interpreted broadly to include pre-recorded instructional audio and video cassettes for any field, including the computer or financial services fields, resulting in the products traveling the same channels of trade. The applicant's affidavit was not given any weight as the body of the affidavit merely stated that the attached exhibits support the application. Although the affidavit was sworn, substantively it attested to nothing as exhibits must elaborate or particularize evidence given in the body of the affidavit. One of the affidavits filed by the opponent in reply was held to be inadmissible hearsay as it did not explain why the knowledge of the affiant (an employee of the opponent's agents) about the opponent's products is reliable and attached as exhibits products that the affiant inferred and verily believed were available in the Canadian market.
4. Potter, Kinnaird v. Timex, October 28, 2002 (Folz) Confusion
Proposed-use application for WATERBRIDGE for watch straps and watch bands, leather straps. Opposition based, inter alia, on s.12(1)(d) due to confusion with the mark WATERBRIDGE registered for confectionery products.
Held: Application refused. Although the wares are quite different, the applicant did not meet its onus because the marks are identical, there is a potential for overlap in the channels of trade and the applicant did not take any active steps beyond filing its counter statement.
5. Data Broadcasting v. Signal 9 Solutions, October 28, 2002 (Folz) Confusion/ Section 30
Use-based application for SIGNAL 9 for computer software programs for data network security involving storing data locally and transmitting data on both intranets and the internet… and related services. Opposition based, inter alia, on s. 30 because the applicant has not used its mark since the date claimed and s. 12(1)(d) due to confusion with the mark SIGNAL registered for computer program, program manuals, and FM receivers all sold as a unit for use in inputting investment data directly into a computer.
Held: Application refused. The s. 30 ground succeeded with respect to the wares because the applicant's evidence was inconsistent with the date of first use claimed in the application - the applicant's affiant attested that it introduced the products on the date listed in the application but that its first sale occurred later. The s. 30 ground did not succeed with respect to the services because "introducing" the services might satisfy s. 4(2). The grounds based on confusion all succeeded based particularly on the potential for overlap between the parties' channels of trade and the high degree of resemblance between the marks.
6. Firezorb International v. Western Industrial Clay Products, November 8, 2002 (Herzig) Confusion
Proposed-use applications for MULTI-ZORB PLUS COMMERCIAL/ INDUSTRIAL/ FOOD SERVICE ABSORBENT for commercial absorbent, industrial absorbent and food service absorbent and for MULTI-ZORB INDUSTRIAL ABSORBENT for industrial absorbent. COMMERCIAL, INDUSTRIAL, FOOD, SERVICE and ABSORBENT disclaimed. Opposition based, inter alia, on s.12(1)(d) due to confusion with the mark MULTIZORB registered for fire-fighting and fire retardant chemicals, solutions and compounds; absorbent particulate material treated with fire-fighting and fire retardant chemicals, solutions and compounds.
Held: Applications refused. The parties would be direct competitors for some industrial applications - although their wares are made of different materials, they are intended to serve, more or less, the same purpose. The applicant's ownership of a registration for MULTI-ZORB HOUSEHOLD ABSORBENT does not of itself assist the applicant.
7. Mapei v. Chembond, November 12, 2002 (Herzig) Confusion
Use-based application for FLOOR-BOND 911 for pre-mixed Portland cement mortar, namely thin set multi purpose floor and wall tile cement and adhesives. FLOOR-BOND disclaimed. Opposition based, inter alia, on s. 12(1)(d) due to confusion with the marks EPO/BOND and KERABOND registered for cement glue, and epoxy binder and filler for concrete, respectively. The opponent did not file a written argument and did not file any evidence other than certified copies of its registrations.
Held: Opposition rejected. Although the parties' wares and channels of trade overlap, the differences among the marks outweigh any similarity that arises as a result of the common, highly suggestive component BOND.
8. Novartis v. Nicolas Sirois, November 19, 2002 (Folz) Confusion/Effect of Expunged Registration
Use-based application for NUTRIFORCE for bread. Opposition based, inter alia, on s.12(1)(d) due to confusion with the mark NUTRISOURCE registered for liquid dietary food supplements, namely a nutritionally complete liquid formula for tube feeding.
Held: Application refused. The opponent has acquired a significant reputation in association with its mark. Although the parties' wares are not similar, their channels of trade could overlap. There was no evidence to support the position that "nutri" prefixed marks are common. The applicant relied upon the fact that the NUTRIFORCE mark had been registered in 1980 but had not been renewed. However, the applicant did not prove that he was the owner of the previously-registered mark and did not evidence any use of NUTRIFORCE.
9. Reckitt & Colman (Overseas) v. Ventana Clinical Research, November 25, 2002 (Martin) Confusion
Proposed-use application for FEMMEGESIC for pharmaceutical products, namely analgesics. Opposition based, inter alia, on s.12(1)(d) due to confusion with the mark TEMGESIC registered for pharmaceutical preparations and substances, namely an analgesic and anti-inflammatory preparation.
Held: Opposition rejected. The opponent did not evidence any reputation of note for the TEMGESIC mark in Canada; furthermore, it appeared that the trade mark owner was identified as the distributor, not the source of the product, on the labeling that was used in Canada. There was also evidence that showed that the suffix "gesic" is used by others in trade marks associated with pharmaceutical preparations.
10. Paramount Pictures v. 2900319 Canada t/a Encore Industries, December 5, 2002 (Folz) Proper Affidavit/Confusion
Proposed-use application for PARAMOUNT for watchbands. Opposition based, inter alia, on s.16 due to confusion with the mark PARAMOUNT previously used by the opponent in association with, inter alia, watches.
Held: Application refused. The applicant failed to meet its burden in view of: the acquired distinctiveness of the opponent's mark in association entertainment goods and services as well as merchandising items; the potential overlap between the parties' channels of trade; and the fact that the marks are identical. The opponent submitted that the applicant's evidence should be disregarded because the "affidavit" did not include a statement that the affiant "made oath" at the time the document was sworn. Nevertheless, the Registrar considered the document to be an affidavit because the affiant's signature appeared at the end with a completed jurat indicating that the document was sworn before a commissioner of oaths. Despite the affidavit being technically admissible, the Registrar ruled that the entire contents were inadmissible because the contents comprised legal arguments and the jurat on the exhibits referred to an affidavit of the corporation, not the individual.
11. Kusha v. Top Star Distribution Group, December 5, 2002 (Folz) Section 30(b) /Confusion
Use-based application for AFTAB for rice. Opposition based, inter alia, on s. 30(b) because the applicant has not used the mark since the date claimed and s. 16 due to confusion with the exact same mark previously used by the opponent for the exact same wares.
Held: Application refused on both grounds. The opponent provided evidence that neither the applicant nor the current assignee of the mark existed as of the date of first use set out in the application.
12. Schering Canada v. Biomune Systems, December 9, 2002 (Bradbury) Confusion
Proposed-use application for OPTIMUNE for nutritional supplements containing immunologically active whey. Opposition based, inter alia, on s. 12(1)(d) due to confusion with the mark OPTIMINE registered for an anti-histamine preparation.
Held: Application refused because: there is a high degree of resemblance between the marks; the opponent's mark has been used for a longer period of time and more extensively; and there is a potential overlap between the parties' channels of trade.
13. Unisys v. Northwood, December 9, 2002 (Bradbury) Confusion/State of the Marketplace
Proposed-use application for VERTICAL MAPPER for software program for use in the preparation of maps. MAPPER disclaimed. Opposition based, inter alia, on s. 12(1)(d) due to confusion with the mark MAPPER registered by the opponent for computers, computer programs recorded on storage devices and printed instruction manuals for computer programs, information, storage and retrieval services in the business management field.
Held: Opposition rejected. The extent to which the marks had become known clearly favours the applicant. Although the opponent claims an earlier date of first use, its evidence does not show use of the mark MAPPER per se. State of the marketplace evidence demonstrated that the term "mapper" is commonly used in the computer software industry. The parties' software programs serve different purposes.
14. Fullmark Private v. Boise Cascade Office Products, December 9, 2002 (Bradbury) Confusion/State of the Register Evidence
Proposed-use application for HIGHMARK & Design for blank computer diskettes, binders, index cards… correction fluid, adding machine paper, and mail order catalog, wholesale, and retail sales services in the field of office supplies and equipment. Opposition based, inter alia, on s. 12(1)(d) due to confusion with the mark FULLMARK Design registered by the opponent for a variety of office products.
Held: Opposition rejected. Given that it appears common to adopt MARK-suffix trade marks in the parties' field, it would be inappropriate to accord a wide scope of protection to the opponent's mark.
15. Warnaco v. Doris Hosiery Mills, December 13, 2002 (Bradbury) Confusion/ Family of Marks
Proposed-use application for SECRET for underwear, undergarments and lingerie. Opposition based, inter alia, on s. 16 due to confusion with SECRET SHAPERS previously used by the opponent for intimate apparel.
Held: Application refused. The Hearing Officer did not consider the applicant's argument that it has a family of SECRET trade-marks to be a significant surrounding circumstance because there was not evidence of use of the individual members of the family before the dates material in this opposition and several other parties have used marks that incorporate the word SECRET in association with undergarments. Although the applicant has exclusive rights with respect to SECRET in association with pantyhose and hosiery, this does not mean that confusion would not be reasonably likely if it were to use SECRET in association with the exact same type of undergarments as are associated with the opponent's SECRET SHAPERS mark. No evidence was filed of the applicant having commenced use of its proposed mark.
16. SmithKline Beecham v. Procter & Gamble, December 16, 2002 (Bradbury) Descriptiveness/Functionality/Pleadings
Proposed-use application for Green and Light Green Toothpaste Design for toothpaste. Colour claimed as a feature of the mark. Opposition based, inter alia, on s. 12(1)(b) and on s. 2 because it is not a trade mark.
Held: Opposition rejected. The s. 12(1)(b) ground was dismissed because the pleadings did not include any allegations of fact to support the assertions and it is not self-evident as to the way in which the mark might be considered to be descriptive. (The Hearing Officer indicated that the argument put forward in the opponent's written argument that the mark clearly indicates that the wares function to both clean teeth and freshen breath would have failed if properly pleaded because such a conclusion is not easy to understand or self-evident.) The ground based on s. 2 was not properly pleaded because it was pleaded as a s. 12 ground, rather than a s. 30 ground; in any event, the pleadings did not provide reasons as to why the mark is not a trade mark, functionality only being raised in the opponent's argument.
17. Jack Spratt v. Circle T Western Wear, December 17, 2002 (Herzig) Confusion/Price Differences
Use-based application for ROUGHRIDER & Design for clothing. Opposition based, inter alia, on s. 12(1)(d) due to confusion with another ROUGHRIDER & Design mark registered for clothing.
Held: Application refused. Confusion likely given the resemblance both between the marks and their respective wares. The Board Member stated that he was not permitted to recognize a distinction between goods of the same general class in which price is the main distinguishing feature, based on the decision in Bagagerie SA v. Bagagerie Willy Ltée (1992), 45 C.P.R. (3d) 503 at 509-510 (F.C.A.).
18. Vitasoy v. Gold Coast Olives, December 20, 2002 (Martin) Section 30(b)/ Confusion/Surrounding Circumstances
Use-based application for VITA & Design for olive oil and importation and wholesale distribution of olive oil. Opposition based, inter alia, on s. 30(b) and s. 12(1)(d) due to confusion with the mark VITASOY registered for non-alcoholic vegetable based beverages… soy bean curd, soy bean yogurt and soy bean cake.
Held: Application refused based on the s.12(1)(d) ground. In view of the similarities between the wares, services and marks, the Board Member was left in a state of doubt respecting the issue of confusion and therefore resolved the doubt against the applicant. Both parties' wares fall within the general heading of food products and thus could be sold through the same type of retail outlets although likely in different sections of these outlets. As an additional surrounding circumstance, the Board Member considered the opponent's evidence of use of the mark VITA for fruit and vegetable drinks. He concluded that as a result of fairly extensive sales of such products, Canadian consumer have come to associate both VITASOY and VITA with the opponent, resulting in a greater likelihood that consumers would assume that a new product bearing a trade mark dominated by the word VITA is produced by the opponent. The s. 30 ground failed because the differences between the mark as used and as applied for were minor.
IV. SECTION 45 DECISIONS
1. Metropolitan Trading v. Zodiac, October 3, 2002 (Savard) Free Distribution of Wares/Normal Course of Trade
ZODIAC registered for various clothing items.
Held: Registration expunged. The registrant sells inflated boats bearing the trade mark and had some clothing items manufactured that it gave to its retailers in an attempt to create goodwill and increase sales of its ZODIAC boats. The transfer of such clothing does not amount to a transfer in the normal course of trade; further, the free distribution of clothing was not made in anticipation of securing sales of such clothing.
2. R. Steinberg v. Venator Group, October 16, 2002 (Savard) Ambiguity
WOOLWORTH registered for retail store services.
Held: Registration expunged. The affiant stated that the mark "has been used in Canada for many years, was in use at the date of the Section 45 Notice and continues to be used today in association with retail store services." The Registrar found this statement to be too vague because it does not clearly indicate use during the relevant period. The affiant also provided a photograph of a store displaying the mark on a sign but he did not indicate if the sign was displayed during the relevant time period. Finally, although the affiant provided "the current sales of the trade-mark WOOLWORTH in association with retail store services" for the calendar year preceding the date of the s. 45 notice, there was insufficient evidence for the Registrar to conclude that the trade mark was used in the manner shown in the photograph when the services were rendered.
3. Performance Apparel v. Uvex Toko Canada, October 17, 2002 (Savard) Admissibility/Uncommissioned Affidavit
HOT CHILLY'S registered for a variety of wares and services.
Held: Registration expunged. The registrant's affidavit was not commissioned and therefore cannot be accepted as evidence. The registrant could have requested a retroactive extension of time to try to correct the situation but instead argued that the uncommissioned affidavit should be accepted.
4. Ridout & Maybee v. 420123 Ontario, October 29, 2002 (Savard) Deviation from Registered Mark
RELAY STATION TRUCK STOPS registered for operation of a fuel station and restaurant.
Held: Registration expunged. Use of BEAMSVILLE RELAY STATION TRUCKSTOPS is not use of the registered trade mark because the public would probably perceive BEAMSVILLE as forming part of the trade mark because all of the words appear in the same script and are of the same size. In any event, it is not clear that such use occurred during the relevant time period.
5. Gowling Lafleur Henderson v. Supertex Industrial, October 29, 2002 (Savard) Sufficiency of Evidence
AMBIDERM registered for gloves for medical use.
Held: Registration maintained. The evidence of a single transfer of AMBIDERM gloves to a possible distributor during the relevant period is sufficient to maintain the registration because the sale was made for the purpose of acquiring goodwill and profit from the marked goods. Although the affiant merely stated that the packaging used in that transfer was similar to packaging provided as an exhibit, the Registrar was prepared to infer that the differences were probably with respect to the name of the distributor that appeared on the packaging, not the mark. The affiant referred to AMBIDERM gloves having been shipped and there is no reason to assume that the affiant was trying to mislead the Registrar.
6. Legault Joly v. Akzo Nobel Coatings International, October 30, 2002 (Savard) Sufficiency of Evidence/Admissibility of Foreign Affidavits
PLASTOFLEX registered for paints, varnishes, lacquers.
Held: Registration restricted to paints. The absence of a date in the jurat is a mere technicality that does not make the affidavit inadmissible. It is the practice of the Registrar to accept, as prima facie acceptable, affidavits sworn by notaries outside of Canada. The evidence is that the mark is used on paints, namely primers - the Registrar accepted the affiant's position that, in his industry, primers are considered to be included in the category of paints, rejecting the requesting party's argument that the definition of primers does not refer to primers being paints.
7. Sim & McBurney v. JemPak Canada, December 18, 2002 (Savard) Section 50
LIQUI-JET registered for detergent liquid and fabric softener.
Held: Registration amended to delete fabric softener. The registrant evidenced that it was using its mark in association with liquid detergent through a wholly-owned subsidiary. It also evidenced a licence agreement with its subsidiary that read that it was effective as of a certain date. The requesting party argued that the licence agreement had been backdated but there is nothing in the document to suggest that the licence was not in place as of the effective date.
8. Sim & McBurney v. JemPak Canada, December 18, 2002 (Savard) Section 50/Nunc Pro Tunc
JET-BLEU registered for synthetic and natural detergents.
Held: Registration maintained. The registrant evidenced that it was using its mark through a wholly-owned subsidiary and that it controlled the quality of the wares pursuant to a licence agreement. Because the agreement was worded as being effective as of a certain date, the requesting party argued that it had been backdated. However, there is nothing in the document to suggest that the licence was not in place as of the effective date - the wording in the document not being similar to that in Marcus c/o/b/a Marcus & Associates v. Quaker Oats Co. of Canada, 20 C.P.R. (3d) 46.
9. Swabey Ogilvy Renault v. Qantel Business Systems, December 19, 2002 (Savard) Use with Services/Section 50
BEST/AOS registered for pre-recorded computer programmes for data processing equipment and customized computer programming services.
Held: Registration maintained. The provision of a manual bearing the trade mark is use of the mark with the services because the affiant has indicated that the provision of such manual constitutes a component of the customization services. The trade mark owner licenses others to use its mark, with one of the terms being that programs or manuals may be reproduced but any reproduction shall include any copyright or similar proprietary notice contained in the original item. The Registrar agreed with the registrant that when a consumer receives a program from one of its licensees that identifies the registrant as the copyright owner, the consumer would infer that the trade mark is used or authorized to be used by the registrant. Thus the use would accrue to the registrant's benefit pursuant to s. 50.
10. Lapointe Rosenstein v. Revlon (Suisse), December 19, 2002 (Savard) Normal Course of Trade
KISS FOR THE CURE registered for watches, adult T-shirts, silk neck-ties, silk scarves, baseball hats, ribbons and pins.
Held: Registration expunged because the mark is not used in the normal course of trade. The registrant, a cosmetics company, decided to lend its high reputation to assist in increasing public awareness of various health issues affecting women. It therefore introduced a line of lipsticks called KISS FOR THE CURE and provided the registered wares for distribution to people making donations to a fund raising event. Invoices were not generated with respect to the distribution of these wares; instead recipients received receipts issued by the charitable organization. Lin Trading Co. v. CMB Kabushiki Kaisha, 5 C.P.R. (3d) 32 and 31 C.P.R. (3d) 417 said that "in the normal course of trade" should be interpreted as requiring that the transfer be part of a dealing in the wares for the purpose of acquiring goodwill and profits from the marked goods. While the transfer of the registered wares would result in the registrant's trade mark acquiring goodwill, the distribution was clearly not part of an activity carried on by the registrant for the purpose of making profit from the marked goods.
11. Davis & Company v. Oasis, December 27, 2002 (Savard) Sufficiency of Evidence
OASIS registered for electrically actuated dehumidifiers for removing moisture from the atmosphere by condensation.
Held: Registration expunged. Although it was clear that a sale of the wares occurred during the relevant time, it was not clear how the mark was associated with the wares when they were transferred. The registrant provided brochures distributed to distributors and two specification sheets illustrating the product. Although these documents bore the trade mark, there was no indication that they accompanied the wares at the time of transfer. Further, the documents do not show that the wares themselves bore the mark.
V. FOREIGN DEVELOPMENTS
PCT
Three more contracting states have recently amended their national law to comply with amended PCT Article 22(1), which extended the minimum time limit for Chapter I national phase entry from 20 months to 30 months. These states and the effective dates of the new provisions are:
Hungary (HU): January 1, 2003
China (CN): February 1, 2003
South Korea (KR): March 12, 2003
PCT applications which may benefit from the new time limits are generally those for which the 20-month time limit has (or had) not expired as of the effective date of the amended legislation. Using Korea as an example, PCT applications claiming a priority date on or after July 12, 2001 can benefit from the new 30-month time limit.
Seventeen contracting states have not yet complied with the amended Article 22(1), including Sweden, Switzerland, Brazil, and Singapore.
Registered Community Designs
The Office for Harmonization in the Internal Market (OHIM) in Alicante, Spain will begin processing applications for Registered Community Designs (RCD) as of April 1, 2003. Applications may be submitted as early as January 1, 2003, but applications received before April 1st will be awarded the April 1st filing date. The standard government fee for filing an application for a single design has been set at €350 (approximately $875 CDN).
An RCD can provide a fairly broad scope of protection for lines, contours, colours, shape, texture and/or materials used in a product or its packaging, and includes graphic symbols and typefaces. To be registrable, the design must be new and have individual character. The holder of an RCD has the right to prevent any third party from using the design anywhere within the European Community.
