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2. Lundbeck v. Canada (Minister of Health) and Apotex, November 12, 2003 FCTD (Martineau J.) Infringement/Old, Known Use of Tablets/Patented Medicines (Notice of Compliance) Regulations Apotex sought an NOC for the manufacture and sale of citaloprom tablets and asserts no infringement of Lundbeck's patent. Apotex asserts that its product is not intended for any of the claimed uses, it is intended only for the treatment of depression, a use well known and documented in the prior art. More particularly, Apotex will not seek approval for its product for any claimed uses included in Lundbeck's product monograph and the only use that will be included in Apotex's product monograph will be the treatment of depression. Lundbeck applied for an order in accordance with s. 6(1) of the Regulations, asserting infringement of the patent, which holds novelty in the use of citaloprom to treat dementia and cerebro-vascular disorders ("CVD"). Lundbeck claims infringement would occur because citaloprom treats both depression and dementia or CVD and, since there is an overlap of patients affected with both depression and dementia or CVD, there will be direct infringement if an NOC is issued to Apotex. Held: Lundbeck’s application denied. There would be no direct infringement by Apotex of the patent as Apotex manufactures citaloprom solely for the unclaimed use of depression. The patent claims use of citaloprom for the treatment of dementia or CVD, where citaloprom is "effective" for such uses. Because Apotex's tablets are neither for the "purpose" nor are "effective" for the claimed uses, there is no infringement. Martineau J. was not persuaded by expert affidavits filed by Lundbeck that alleged the concurrent nature of depression and the claimed uses. Further, he noted that a fatal flaw in Lundbeck's evidence was its failure to produce surveys or other evidence to demonstrate the prescription habits of physicians, the dispensation practices of pharmacists, and whether physicians fail to diagnose dementia or CVD in depressed patients.
3. Hoechst v. A.G. Canada and Patented Medicine Prices Review Board, November 14, 2003 (Aronovitch P.) Production of Staff Report/Institutional Bias Motion by Hoechst within the context of the judicial review of a decision of the Patented Medicine Prices Review Board. The Board declined to set aside its notice of hearing to inquire into the pricing of nicotine patches marketed by Hoechst. The judicial review application alleged institutional bias. This motion, made pursuant to r. 317 and 318 of the Federal Court Rules, is for the production of documents possessed by the Board said to be relevant to the judicial review application. Hoechst requested from the Board a copy of a staff report concerning existing pricing of the nicoderm patch. Hoeschst asserted that an original record before the tribunal may be supplemented on judicial review where bias, or the apprehension of bias, is alleged. Held: Motion denied. The report was not "material relevant to the application and in the possession of the tribunal" within the meaning of r. 317. The report was not before the tribunal as 3 of the 4 members had not seen the report. The fourth member, the Chairperson, was aware of the report but because the report was not itself relied upon as evidence before the panel it was not in the possession of the Board. Although the production of documents to enlarge the record is contemplated in jurisprudence, it is in order to allow a party to make full evidence of the bias of a decision-maker in respect of the decision that is sought to be set aside on judicial review. In this case, Hoechst was alleging bias “in respect of the Chairperson’s decision to call a hearing which then results in the issuance of a notice of hearing”, not in respect of the Chairperson's "view" or opinion leading to the issuance of the notice of hearing.
4. Genpharm v. Procter & Gamble and Canada (Minister of Health), December 3, 2003 FCA (Rothstein, Evans, Pelletier JJ.A) Issue Date on Face of Patent/Issue Estoppel When Defence Not Raised in Previous Proceeding/ Patented Medicines (Notice of Compliance) Regulations Appeal from a decision of a motions judge under s. 6(5)(a) of the Regulations. Genpharm submits that the defendant's patent ("the '376 patent") was issued on June 11, 1996, but was not submitted for inclusion on the Patent Register until July 17, 1996, in violation of s.4(5) of the Regulations, which requires a patent to be listed within 30 days of its issue. The motions judge held the patent to have been properly listed because there was evidence that the patent may not have been mailed out by the Commissioner until June 18. P&G asserts that Genpharm is barred by issue estoppel from raising the eligibility of the '376 patent. Held: Appeal dismissed. The Court remarked on the decision of the motions judge in obiter. The '376 patent bears on its face an issue date of June 11, 1996. Section 43, as it read at the relevant time, prescribed that the issue date be shown on the face of the patent. The Court stated that the date of issue shown on the patent is conclusive and other surrounding circumstances are irrelevant. However, the doctrine of issue estoppel barred Genpharm from raising the eligibility of the '376 patent for inclusion on the Register. Previous litigation regarding a prohibition application between the parties had decided the issue. A patent must be included on the Register to ground a prohibition application. Therefore, because the application issued, it must have been implicit in that decision that the '376 patent was eligible for inclusion on the Register. Further, the Court held that failure to raise this defence in the earlier proceeding did not prohibit the application of issue estoppel. In fact, a week before the previous litigation, Genpharm had raised the issue but McKeown J. held that it was too late to raise this ground. The Court of Appeal found this to be further evidence that Genpharm could have, but failed to, raise the eligibility issue in a timely manner in the first litigation. Evans J.A. dissented. He did not find Genpharm's argument barred by issue estoppel. He took a more discretionary approach to granting issue estoppel and found it unfair to Genpharm and contrary to the public interest to prevent Genpharm from raising the eligibility of the '376 patent.
5. Apotex v. Glaxosmithkline and Canada (Minister of Health), December 15, 2003 FCTD (Rouleau J.) Notice of Discontinuance/Mootness/Patented Medicines (Notice of Compliance) Regulations Apotex was entitled to an NOC for paroxetine hydrochloride, pursuant to three patents held by Glaxosmithkline. However, dispute arose as to whether the NOC should issue as three additional patents held by Glaxosmithkline were added to the subject patent list, which had not been challenged in the original NOA. Glaxosmithkline commenced an application for prohibition and subsequently discontinued the application. The dispute in this proceeding was whether the issue was moot. Held: Application wholly discontinued. The issue was moot despite the motion by Glaxosmithkline to file additional evidence in relation to this matter. The motion to file additional evidence in no way impeded the Notice of Discontinuance.
6. Apotex v. AG Canada and Canada (Minister of Health), December 17, 2003 FCTD (Lemieux J.) Entitlement of Apotex to the Contents of Deliberations Between HPB Staff and its Legal Advisors/Solicitor-client and Litigation Privilege/Implied Waiver/Patented Medicines (Notice of Compliance) Regulations Apotex and the patent holder of Apo-Oflox tablets reached a settlement, which was confirmed by order of Nadon J. in April 1997. Five weeks later, Apotex alleged that it fulfilled all of the Minister's inquires regarding the safety and efficacy of Apotex's new drug submission for its medicine. However, it took a further 8 months for the Minister to issue an NOC to Apotex. This delay caused Apotex to sue the defendants in negligence, breach of statutory duty and discrimination. During discovery of a representative of the Minister, it was revealed that as part of the defence of reasonableness the Minister was to rely on deliberations between HPB staff and its legal advisors to explain the delay in issuing the NOC. The defendants invoked both solicitor-client privilege and litigation privilege to bar production of these deliberations, insisting that the defence would not rely on the substance of the deliberations. On June 11, 2003, Lafreniere P. held that privilege had been impliedly waived by the defendants because the defendants had put the communications in issue to base a defence of reasonableness. Held: Appeal dismissed. Lemieux J. found privilege impliedly waived by the defendants. Fairness to a party facing a trial is a guiding principle when determining waiver of solicitor-client privilege. Having asked for and received legal advice to explain the delay, the Minister made relevant the contents of the legal advice received. This entitled Apotex to test whether, how, and to what extent the communications contributed to the delay in issuing the NOC to Apotex.
7. AB Hassle et al. v. Genpharm et al., December 22, 2003, FCTD (Layden-Stevenson J.) Application for Prohibition/Allegations of Patent Invalidity and Non-infringement/"Old" Use/Obviousness/Patented Medicines (Notice of Compliance) Regulations Application by AB Hassle for an order prohibiting the Minister from issuing an NOC to Genpharm in connection with omeprazole tablets until after the expiration of four Canadian patents; "the '693"; "the '377"; "the '668"; and "the '762". The '693 and '377 patents are formulation patents relating to omeprazole. Omeprazole is inherently unstable in acidic conditions. To be effective for a patient, omeprazole once ingested must pass through the stomach, with its acidic juices, and be released in the small intestine. Consequently omeprazole tablets must be carefully formulated to ensure adequate storage life and once ingested timely degradation. It was known in the prior art that an enteric coating of the omeprazole core protects against acidic conditions. The '693 invention was the addition of alkaline materials to the omeprazole core and of a water soluble, inert subcoating between the outer enteric coating and the inner omeprazole core. This subcoating was necessary because of the surprising reaction encountered by the addition of an enteric coating to an alkaline omeprazole core. The '377 patent claimed the addition of basic inorganic salts to the omeprazole core. Genpharm alleged that the claims of the '693 patent were invalid due to anticipation and obviousness and the '377 claims invalid for obviousness. The '668 and '762 patents were “new use” patents, the new use of omprazole being treatment of antimicrobial activity. Genpharm alleged that it would not infringe the claims of either patent as its drug would be used for the "old" purposes, not antimicrobial activity. Held: Application granted. The addition of alkaline to the omeprazole core was not obvious. The skilled person would not have followed this path "directly and without difficulty" at the priority date. The patent cited by Genpharm as anticipating the '693 claims disclosed an omeprazole formulation containing an alkaline core surrounded by either a hard or soft gelatin capsule. "Capsule" in this case referred to conventional capsules, which are acidic and would therefore react with omeprazole. Such capsules would not be inert. Therefore the skilled person reading the prior art patent would not learn to apply an inert subcoating. The '693 patent was not anticipated. The '377 patent was not obvious; adjusting the pH to stabilize the omeprazole core was not a common technique. Genpharm's position amounted to the English "worth a try" approach to obviousness, which is not the law in Canada. The claims of the '668 patent would be infringed by Genpharm. Labelling by Genpharm of its omeprazole tablets only for the "old" uses of omeprazole was not sufficient in light of other evidence. Finally the '762 patent would be infringed by Genpharm. Although the '762 patent claims pharmaceutical compositions or a synergistic combination of compounds, such as omeprazole and an antibiotic, the patent was not limited to a single formulation. Therefore, Genpharm's assertion that its omeprazole product will not infringe because it will not contain an antibiotic was without merit.
8. Apotex v. AstraZeneca et al. and Canada (Minister of Health), December 22, 2003, FCA (Malone, Sharlow, Rothstein JJ.A.) Successful Appeal of Interlocutory Order/Struck Statement and References not Found in Affidavit/Patented Medicines (Notice of Compliance) Regulations Appeal by Apotex from an interlocutory order made in an application by AstraZeneca seeking to prohibit the Minister of Health from issuing an NOC to Apotex for Apo-Omeprazole tablets until the expiry of AstraZeneca's patent. Apotex asserts that it will not infringe the patent. The patent refers to certain compositions, including a basic inorganic salt. One of the grounds for prohibition is the assertion by Astrazeneca that there would be infringement because the tablets to be produced by Apotex will contain a sodium salt. In this appeal Apotex sought to strike a statement from AstraZeneca's memorandum of fact and law, which stated that the tablets to be produced by Apotex contained sodium salts and two literature references in support of the statement. Both the prothonotary and motions judge construed the issue as relating solely to the admissibility of evidence which led them to defer the motion to strike to the judge who will hear the application for prohibition. Held: Appeal allowed. None of the affidavits submitted by AstraZeneca made the statement Apotex seeks to strike and the two supporting documents were not attached to any affidavit. AstraZeneca could not submit the documents as "authorities"; they were not statutes, jurisprudence or legal writings. To allow their admission would result in the trier of fact being presented with evidence that is unsupported by any affidavit or oral testimony and that is untested by cross-examination. Further, the materials could not be submitted as a source from which a court may take judicial notice.
9. Abbott Laboratories et al. v. Apotex and Canada (Minister of Health), December 22, 2003 FCTD (Heneghan J.) Motion to Strike Portions of Reply Affidavits/Patent Rule 312 /Patented Medicines (Notice of Compliance) Regulations Appeal by Abbott seeking an order to strike out portions of Apotex's reply affidavits on the ground that these affidavits were not "proper reply" evidence. Abbott asserts that the Prothonotary erred in law in allowing the impugned affidavits to stand, notwithstanding the provisions of her Order that struck out certain paragraphs from two of the affidavits. Abbott further asserts that the decision is reviewable on a de novo basis and that the Prothonotary further erred in dismissing the motion on the basis of lack of expert evidence as to any alleged prejudice to Abbott flowing from the introduction of the Apotex affidavits. Held: Appeal dismissed. The strict test characterizing reply evidence in a trial does not necessarily apply in respect of proceedings taken under the Regulations. Such proceedings are dealt with by way of application and are governed by Part 5 of the Rules. Those rules are silent about filing reply evidence but r. 312 provides for the filing of additional affidavits. Three factors will be considered when a party seeks to file additional affidavit evidence as established in Eli Lilly v. Apotex (1997), 76 C.P.R. (3d) 15: will the further evidence serve the interests of justice, will it assist the Court and will it cause substantial or serious prejudice to the other parties. The Prothonotary did not require expert evidence as to prejudice, per se. The reference to the lack of expert evidence on behalf of Abbott in responding to the motion must be read in relation to absence of expert evidence as to its inability to conduct the same testing carried out by Apotex.
10. Merck v. Apotex and Canada (Minister of Health), December 22, 2003 FCTD (Heneghan J.) Number of Expert Affidavits Allowed/Section 7 Canada Evidence Act/Patented Medicines (Notice of Compliance) Regulations Appeal from the decision of the Prothonotary requiring Apotex to elect affidavits from five expert witnesses, pursuant to s. 7 of the Canada Evidence Act. Apotex's evidence consisted of 14 affidavits by experts. Held: Appeal allowed. The Prothonotary erred in law by ignoring and failing to follow the jurisprudence of the Federal Court in Eli Lilly & Co. v. Novopharm Ltd. (1997), 73 C.P.R. (3d) 371 (F.C.T.D.) and GlaxoSmithKline Inc. et al. v. Apotex et al. (T-876-02) interpreting s. 7 of the Canada Evidence Act as a limitation upon the total number of experts per issue, rather than for the case as a whole.
11. Merck et al. v. Apotex, December 22, 2003 FCA (Richard, Létourneau, Décary J.J.A.) Motion to Amend Statement of Defence and Counterclaim to Withdraw Admission /Standard of Review/Affidavit by Co-counsel /Patent Infringement/Patented Medicines (Notice of Compliance) Regulations Appeal by Merck from a decision dismissing the appeal from the Prothonotary's order that granted Apotex leave to file another Amended Statement of Defence and Counterclaim, in the context of an infringement action against Apotex for the sale of apo-lisinopril, protected by Merck's patent. Apotex's defence had always been that apo-lisinopril came from an inventory of lisinopril acquired by Apotex before the issue of the patent or through a third party authorized to sell it under a compulsory licence. Counsel for Apotex admitted in a previous proceeding that there would be infringement, absent the protection of s. 56 of the Patent Act. The amendments under appeal plead that lisinopril dihydrate is not included within the scope of the patent and Apotex's use and sale containing such consequently does not infringe the patent. The motion is supported solely by the affidavit of co-counsel of Apotex. Held: Appeal allowed. In determining whether a discretionary order of a prothonotary should be reviewed, a judge should logically determine whether the questions are vital to the final issue: it is only when they are not that the judge effectively needs to engage in the process of determining whether the orders are clearly wrong. Amendments that would advance additional claims or causes of action have consistently been found to be vital to the final issue of the case. While the factors to be considered are essentially the same for all amendments, the burden to be met by the amending party should be heavier when the amendments purport to withdraw substantial admissions and would result in a radical change in the nature of the questions in controversy. A preliminary issue to be considered is whether the amended cause of action or defence is a triable one. The Court will only decide that there is no reasonable defence where it is plain and obvious that the pleadings disclose no reasonable defence. The affidavit of co-counsel was lacking in value and credibility and the Court drew an adverse inference from the omission, abstention or failure of Apotex to file affidavits of qualified persons. Furthermore, it was more consonant with the interests of justice that the amendments be denied. Dissent (Richard C.J.): Reduced to their essentials, the amendments set out that lisinopril dihydrate is a different chemical compound from lisinopril, with different chemical properties, and does not come within the scope of the patent. Thus, these amendments raise an additional defence. In making this statement, Richard C.J. referred to the substance of the amendments themselves rather than to the fact that they were deposed in an affidavit by Apotex's counsel. The jurisprudence also cautions against allowing amendments to pleadings if the result would be injustice or prejudice to a party that is not capable of being cured with an appropriate award of costs. Allowing these amendments serves the interests of justice by allowing this proceeding to be determined on its merits.
12. Realsearch and Dingwell’s Machinery & Supply v. Valon Kone Brunette and BDG Machinery, January 9, 2004 FCA (Stone, Sharlow, Rothstein JJ.A.) Federal Court Rules 3 and 107/Markman-type Order/Bifurcation Appeal from an order made pursuant to r. 107 that permitted the construction of a patent claim to be determined separately before trial of the merits. Held: Appeal allowed. The Court may interfere with the order because the Motions Judge did not give sufficient weight to all relevant considerations. Although the Motions Judge noted that a procedure of the type that he ordered has been available in the U.S. since Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996), neither side suggests that Markman by itself is of any assistance in determining whether r. 107 was intended to be applied in the present kind of case. Federal Court r. 3 requires that the other rules be interpreted and applied so as to secure “the just, most expeditious and least expensive determination of every proceeding on its merits”. “[R]ule 107 was designed to assist the Court in achieving the just, expeditious and least expensive determination of the proceeding on the merits rather than to assist the parties to reach an out-of-court settlement of their dispute.” Insufficient attention was here given to the proceeding being “just” and to whether the appellants would suffer some injustice under the order. There is also uncertainty as to the extent that the discoveries/trial will be reduced by the order, there being no evidence as to the expected duration of each approach. The Court clarified that this does not mean that a Markman-type order would never be available under r. 107; however given that the issuance of Markman-type orders could produce a novel and fundamental change in current Canadian patent law practice, such a change might be better pursued by the bar submitting it for consideration to the Court’s rules committee.
1. Carter-Wallace v. Wampole Canada, October 8, 2003 FCTD (Snider J.) Costs re Section 45 Appeal/Federal Court Rule 408(3) After successfully defending a s. 45 appeal, Wampole submitted a request for assessment of its costs, including as an alternative that its costs be paid by Carter-Wallace’s counsel, MacBeth & Johnston. MacBeth & Johnson, solely on its own behalf, submitted that there was no basis on which it should be liable for Wampole’s costs and also requested that its costs be assessed for defending the assessment. In response, Wampole withdrew its request that costs be assessed against MacBeth & Johnson. The Assessment Officer awarded Wampole its costs but denied MacBeth & Johnson’s claim for its costs for defending the request for costs. MacBeth & Johnson now move for a review of the assessment insofar as its claim is concerned. Held: According to r. 408(3), an assessment officer may only assess the costs of a party to the proceedings. It was open to the trial judge to determine that costs were payable by someone other than the parties named in the proceeding, but he did not do so and it was on this basis that MacBeth & Johnson successfully argued that the Assessment Officer did not have jurisdiction to award costs against it. For the same reason, MacBeth & Johnson cannot receive an award of costs. Wampole’s withdrawal of its request was not the equivalent of an abandonment or discontinuance since Wampole’s request for assessment continued despite the withdrawal. Simply serving MacBeth & Johnson with the Notice of Appointment for assessment did not make it a party for the purpose of r. 408.
2. Lifegear and Pride International v. Urus Industrial, January 9, 2004 FCTD (O’Reilly J.) Trade Mark Infringement /Contempt/Good Faith Efforts Proceedings against the defendant for contempt of court pursuant to r. 466 and 467. The plaintiffs allege that the defendant failed to respect the injunction that issued pursuant to their summary judgment motion for trade mark infringement. Held: The defendant knowingly failed to comply with the court’s order and its conduct amounted to contempt of court. Penalty and costs to be determined. The defendant had a duty to comply with the judge’s decision at the point at which it was issued in open court, not only after a formal judgment had been signed. The defendant did not take any action to cease sales or deliver up goods until after the formal judgment and then it took a week to stop advertising the infringing products and a month to begin delivering up infringing materials. It also destroyed some of the materials, rather than deliver them up, contrary to the order. In order to find contempt, both physical and fault elements must be proved beyond a reasonable doubt. The defendant’s actions, or lack thereof, satisfy the physical element. The fault element, which comprises knowledge of the terms of the court order that was disobeyed, was also proven since the defendant clearly knew about all the important developments in the litigation. Evidence of any good faith efforts by the defendant to comply with the order (for example, the inability to change a web site that emanates from India on a Saturday) or subsequent acts of compliance are only relevant with respect to penalty.
1. Osmose-Pentox v. Societe Laurentide, September 5, 2003 FCTD (Blais J.) Motion to Produce Documents Motion by the plaintiff to review a decision of the prothonotary in an attempt to have the defendant submit more documents into evidence. Held: Motion dismissed. The Court found that the prothonotary's decision was neither clearly wrong, nor based on a wrong principle, nor a misapprehension of the facts. The prothonotary had ordered the defendant to file a series of documents from which the sales, profits and part of the turnover business could be established. The plaintiff was not able to persuade the Court that this disclosure would be unable to give a proper overview of the possible profits realized by the defendant or the damages of the plaintiff.
2. Ital-Press v. Giuseppina Sicoli et al., September 25, 2003 FCTD (Hugessen J.) Motion to Produce Documents Motion by the defendant to, inter alia, require the plaintiff to comply with all outstanding undertakings from an earlier discovery. Held: Motion dismissed. A party's obligation to produce documents does not extend to documents which are not (or no longer) in its possession or control, no matter how useful they may be to the opponent. Likewise, a party's obligation to answer relevant questions does not require it to give information it does not have.
3. Columbia Pictures et al. v. Centre Audio Video Langlais et al., September 25, 2003 FCTD (Blais J.) Federal Court Rule 236 Motion is an appeal from the order by the prothonotary, and alternatively the motion is asking the Court to give directions on whether the order prohibits or suspends the right to examine the plaintiffs pursuant to r. 236 of the Federal Court Rules. The prothonotary did not specify in the schedule that the examination of the plaintiffs should be held at a particular time. Held: Motion is dismissed with costs. Counsel for the defendants did not submit a complete record which could be used to conduct a thorough examination of any grounds that might justify the Court's intervention. Moreover, counsel for the defendants did not persuade the Court that the prothonotary's order deprived him of his right to proceed with the examinations of the plaintiffs.
4. IRIS, Le Group Visuel (1990) v. Trustus International Trading, October 15, 2003 FCTD (Rouleau J.) Amending Statement of Claim/Trade Mark Infringement/Personal Liability of Managers and Directors of Companies Motion to appeal decision by the prothonotary, refusing in part to allow the plaintiff to amend its statement of claim and awarding costs to the defendant in a trade mark infringement action. The amendments sought to implead three defendants/respondents, who were the managers and directors of the company, in their personal capacities. The prothonotary based his refusal on his view that the allegations in the amended statement of claim did not reveal enough essential facts to fully establish the liability of the defendants in their personal capacities. Held: The prothonotary did not err in assessing the evidence as a whole and his decision contains no flagrant error that would justify the Court's intervention. The general rule is that an amendment of a statement of claim should be allowed unless it is shown that it has absolutely no chance of success. However, the decision-maker always has some discretion in assessing the evidence as a whole when deciding whether to deny the amendment. Though the prothonotary departed from the general rule, he did rely upon another rule of precedent applied by the Federal Court of Appeal in Painblanc v. Kastner (1994), 58 C.P.R. (3d) 502, wherein no other evidence and no facts were produced which would engage the personal liability of the controlling shareholder/managing director of the company. Moreover, given the existence of a separate personality of a corporation, the courts are very cautious in arriving at conclusions of personal liability by directors of a company. For managers and directors of a company to be held personally liable for infringement the company must have been founded for the very purpose of infringing the plaintiff's rights.
5. Dimplex North America v. CFM Majestic, October 21, 2003 FCTD (Heneghan J.) Discovery Examination/Right to Refuse to Answer Question Regarding Sales Figures /Obviousness Appeal by Dimplex from an order of the prothonotary in which the opposing party did not have to answer questions relating to its sale figures for products allegedly infringing Dimplex's patent. Held: Appeal allowed. Commercial success has been recognized in Canada as a measure of obviousness. Once the issue of obviousness is raised by a defendant in its pleadings, it is a proper area for examination during discovery. The fact that there was a bifurcation order, separating the issues of liability and damages, does not restrict questions relating to commercial sales to the issue of damages since questions regarding commercial sales can be pursued with respect to issues of non-infringement and invalidity.
6. Direct Source Special Products v. Sony Music Canada and Sony Music Entertainment (Canada), October 21, 2003 FCTD (Heneghan J.) Adjournment In Discovery Examination Appeal by Direct Source from an order of the prothonotary preventing Direct Source from completing discovery after Direct Source requested an adjournment and sought directions of the Court. Held: Appeal dismissed. Where a prothonotary acts as a case management judge, the Court will interfere only in the clearest case of a misuse of judicial discretion. In this case, the prothonotary's ruling did not affect the ultimate disposition of the action, and the Court was not persuaded that the order under review was based upon a wrong principle of law or upon a misapprehension of the facts or otherwise amounted to a misuse of judicial discretion. Direct Source had control over the conduct of its discovery, and by its own actions diminished its scope by only using one hour of the full day that had been available to it.
7. Apotex v. The Wellcome Foundation and GlaxoSmithKline, October 21, 2003 FCTD (von Finckenstein J.) Motion for a Further and Better Affidavit of Documents /Standard of Review/No Requirement for Compelling Evidence Appeal by Apotex from an order of the Prothonotary dismissing Apotex's motion for a further and better affidavit of documents. Apotex commenced this action pursuant to s. 8 of the NOC Regulations, for damages allegedly incurred as a result of the "patent hold" which was in effect during prohibition proceedings. The action had been ordered as a specially-managed proceeding and affidavits of documents had been exchanged. Apotex brought a motion for an order requiring Wellcome to produce a further and better affidavit of documents. The Prothonotary dismissed the motion on the basis that Apotex had "failed to establish through compelling evidence that relevant documents exist, but have not been listed by the defendants in their affidavit of documents". Held: Appeal allowed in part. The Prothonotary applied the wrong principle when he concluded that Apotex had failed to provide "compelling evidence". The requirement of compelling evidence raises the barrier too high. An order for further production will be warranted where the requesting party produces sufficient or persuasive evidence that documents exist and have not been disclosed. A corporate relationship existed between Glaxo and Wellcome during material times and documentation relating to this relationship should be disclosed. The Court did refuse to order disclosure of other documents relating to alleged arrangements between Wellcome and Technilab and Altimed Pharmaceuticals to produce a pseudo-generic product. There was no evidence as to any corporate relationship between the defendants and the third parties, and disclosure could not be ordered on the basis of mere speculation.
8. Merck et al. v. Canada (Minister of Health) and Apotex, October 23, 2003 FCTD (Tabib P.) Motion to Strike Out Affidavits/Tests Conducted Pendente Lite/Section 7 Canada Evidence Act/Patented Medicines (Notice of Compliance) Regulations Motion by Merck to strike out all or part of Apotex's affidavits in the context of a prohibition proceeding pursuant to the NOC Regulations. Merck alleges that Apotex's affidavits introduce: (i) file wrappers of certain patent applications as evidence of prior art, (ii) evidence of the results of experiments conducted pendente lite (during the litigation) without notice or opportunity to attend being given to Merck and (iii) testimony of more than five expert witnesses without leave of the Court, contrary to s. 7 of the Canada Evidence Act. Held: Motion allowed in part. The test for striking all or parts of affidavits at a preliminary stage is whether it is obvious that the evidence is inadmissible or irrelevant, and whether it can be demonstrated that prejudice would occur by leaving the matter for disposition by the judge hearing the application on the merits. (i) Publications were not produced as additional instances of prior art but in specific response to an issue raised by Merck, therefore, the issue is properly left to the judge hearing the application. File wrappers may be admissible in certain situations to clarify the inventor's invention. (ii) There is no general rule of inadmissibility of test results conducted ex parte and pendente lite in summary proceedings, and Merck's motion on this basis is premature. (iii) The proper interpretation of s.7 of the Canada Evidence Act is that the 5 expert witness limitation applies to the entire case and not to each particular issue. Apotex is only entitled to rely on the evidence of five expert witnesses, and must file a notice electing five of the affidavits.
9. Video Box Enterprises and TVB (Overseas) v. Wei Bin Yang and 4011716 Canada, October 28, 2003 FCTD (Morneau) Motion to have Non-Solicitor Represent Corporation Motion by the defendant for an order permitting Wei Bin Yang to represent corporate defendant 4011716. Held: Motion dismissed. Rule 120 of the Federal Court Rules stipulates that a corporation, partnership, or unincorporated association shall be represented by a solicitor unless the Court in special circumstances grants leave for it to be represented by an officer, partner, or member. Evidence must be submitted by an applicant in connection with such a motion. The defendant did not produce the requisite evidence. Further, in dismissing the motion, the prothonotary noted that Mr. Yang would be a primary witness in the case since he is the principal of the corporate defendant.
10. Biovail et al. v. Canada (Minister of Health) and RhoxalPharma, October 31, 2003 FCA (Décary, Létourneau and Nadon JJ.A.) Appeal/Motion for Production of ANDS/No Evidence Demonstrating the Relevance of Documents Sought/Timeliness/Patented Medicines (Notice of Compliance) Regulations, s. 6(7) Appeal by Biovail from a decision dismissing Biovail's motion seeking production of all relevant portions of RhoxalPharma's ANDS, and the new drug application of RhoxalPharma's supplier in the United States. The Prothonotary dismissed the motion on the basis that Biovail had failed to demonstrate that the disclosure sought was "required and important", and that Biovail had not brought its motion for production in a timely manner. On appeal, the motions judge formulated a three-part test for obtaining disclosure under s. 6(7) of the NOC Regulations: (i) that the request for disclosure is timely, (ii) that the information already provided is not sufficient to enable the applicant to properly address the issues, and (iii) that the sought-after information is necessary because it is relevant to the issues before the Court. The motions judge found that Biovail had not satisfied any part of the test, and that the motion ought to have been filed prior to Biovail adducing its evidence on the merits. Biovail appealed. Held: Appeal dismissed. Biovail argued that the motions judge erred in finding that the words "at any time during a proceeding" in s.6(7) of the NOC Regulations should be interpreted as requiring it to bring its motion for production "without delay". Biovail also asserted that the evidence before the judge did meet the requirement that the documents sought be relevant to the issues before the Court. The Court disagreed, finding that Biovail failed to demonstrate the relevance of the documents sought. Biovail did not adduce any evidence to show that portions of RhoxalPharma's ANDS are relevant to the issues in the litigation. The Court concluded that the issue of the timeliness of the motion need not be decided. However, once satisfied that the documents sought are relevant, a judge may consider a number of factors in deciding whether production ought to be ordered. The timeliness of an application is a consideration which a judge may take into account in deciding whether production should be ordered under s. 6(7) of the Regulations.
11. Fournier Pharma and Laboratories Fournier v. The Minister of Health and Apotex, November 7, 2003 FCTD (Pinard J.) Dismissing Motion for Delay Appeal of a discretionary decision dismissing for delay the applicants' motion brought pursuant to s. 6(7) of the Patented Medicines (Notice of Compliance) Regulations. Held: Appeal is dismissed with costs. The Court will not conduct a de novo review of the merits of the impugned decision based on the following reasons: (1) the plaintiffs failed to demonstrate that the prothonotary's decision is "clearly wrong"; and (2) the plaintiffs manifestly failed to meet the heavy burden of demonstrating that the prothonotary's interlocutory decision represents the "clearest case of a misuse of judicial discretion." Pinard J. relies on Biovail Corporation v. Canada (Minister of National Health) (2002), 22 C.P.R. (4th) 503, affirmed by the Federal Court of Appeal (2003 F.C.A. 406), wherein the Court also dismissed for delay an appeal from a decision on the basis that the prothonotary "exercised his discretion in a rightful manner and based his decision on the evidence before him."
12. Louis Vuitton Malletier et al. v. Bags O'Fun et al., November 13, 2003 FCTD (Dawson J.) Breach of Anton Pillar Order/Contempt of Court/Trade Mark Infringement/Counterfeit Products The defendant was served with an Anton Pillar order enjoining him from offering for sale, selling, storing, or displaying counterfeit items in association with the plaintiff's trade marks. In breach of the Anton Pillar order, the defendant was subsequently served with another order, followed by a show cause order which contained the allegation of contempt. The plaintiffs seek an order that the defendant be imprisoned and ordered to pay a fine and costs with a further term of imprisonment in default of payment. The defendant did not appear in Court to respond to the allegation of contempt of order. Held: The defendant is found to have been in contempt of the order of the Federal Court, and is ordered to pay a fine in the total amount of $50,000.00, and reasonable costs on a solicitor-client basis, fixed at $35,000. The Court is satisfied that the evidence supports the inference that the defendant had actual knowledge of the order and that he willfully continued to breach it, as he continued to sell counterfeit versions of the plaintiffs’ goods, in order to secure financial gain. With regards to the appropriate penalty, though ordering a payment of a fine alone may not provide an effective remedy, there is jurisprudence to the effect that a person cannot be incarcerated for civil contempt when that person is absent from Court.
13. Apotex v. Merck et al., November 20, 2003 FCA (Strayer, Sharlow, Malone JJ.A.) Scope of Examination for Discovery Appeal by Apotex from a decision of a motions judge of the Federal Court dismissing an appeal from a decision of a prothonotary. At first instance, the prothonotary had dismissed Apotex's motion to compel answers on discovery because, in part, the prothonotary wanted to move the case forward expeditiously. Held: Appeal allowed. The primary consideration for the scope of discovery is relevance not expedience. A prothonotary or a judge may only decline to order a relevant question to be answered if: (a) it is not at all likely to advance the questioner's legal position; (b) if the answer to a question would require much time, effort and expense and its value would appear to be minimal; or, (c) where the question forms part of a "fishing expedition" of vague and far-reaching scope. Limiting the scope of questions for speed may be counterproductive at the discovery stage because one of the purposes of discovery is to simplify proof at trial and narrow the issues in dispute.
14. AB Hassle et al. v. Apotex and Canada (Minister of Health), November 24, 2003 (Tabib P.) Right to File Sur-reply Evidence/Finality of Judgment Motion by Apotex for leave to file sur-reply evidence in the context of an application by AB Hassle for a prohibition order. Held: Motion dismissed. Filing sur-reply evidence is not a right, but a discretionary relief, and Apotex had the burden of establishing that conditions existed for the relief to be granted. In an earlier motion, another prothonotary had already considered Apotex's request for leave to file additional evidence and determined that there was insufficient material before him to grant the request. In effect, the earlier order of the prothonotary had dismissed Apotex's motion to file sur-reply evidence. Leave to reapply on better evidence which was or should have been available at a first hearing goes against the principle of finality of judgment and must be exceptional and clearly stated. Parties are always free to bring motions to the Court if they so choose, however, this does not mean that they have the right for their motions to be considered on their merits if they are improper, untimely or abusive.
15. Montague Industries v. Dingwell's Machinery and Supply, December 3, 2003 FCTD (Noel J.) Extension of Time to Produce Documents Motion to set aside or vary an order by a prothonotary that the plaintiff produce certain documents in a copyright infringement dispute within 10 days under r. 206 of the Federal Court Act. Held: Motion to vary successful. The plaintiff filed additional evidence which indicated that the production of the documents would take more than 10 days. The Court, therefore, varied the order of the prothonotary granting the plaintiff additional time to produce the documents.
16. New Traditions Music v. Zeke's Distribution et al., December 12, 2003 FCTD (Pinard J.) Error by Counsel The Court applies the well-settled rule that an error by counsel must not prevent the safeguarding of the rights of the party he/she represents where it is possible to rectify the error without injustice to the opposing party. Held: Motion allowed in part; decision of the prothonotary is quashed. This is a situation where it is possible to rectify the consequences of an error by defendant's counsel without injustice to the plaintiff, since: (1) nearly all the defendant's affidavits of documents have now been given to counsel for the plaintiff; (2) costs on the motion awarded by the prothonotary in the decision at issue will have to be borne by the defendants; (3) the proceeding will now be a specially managed proceeding; and (4) no award of costs will be made to the defendants despite success on this motion opposed by the plaintiff.
17. Merck et al. v. Apotex, December 17, 2003 FCTD (Russell J.) Motion/Re-attendance at Discovery/Case Management Powers Motion by Apotex for an order to set aside the prothonotary's decision to dismiss Apotex's application to compel witness to re-attend for discovery to answer questions that were refused or taken under advisement, as well as all relevant questions arising from the responses provided. Held: Motion granted. The appropriate standard of review for determining whether the prothonotary erred is whether the decision was based upon a wrong principle or upon a misapprehension of facts. The prothonotary did apply a wrong principle of law in reaching his decision. A party has the legal right to have questions answered on examination for discovery which are relevant to the issues in the pleadings and this is not a matter of case management discretion. Based on the Federal Court of Appeal's clarification on this point in Apotex Inc. v. Merck & Co., Inc. et al., 2003 F.C.A. 438, the prothonotary must direct his mind to specific questions of relevance, and it is wrong to assume that completeness of discovery will always be an obstruction to the most expeditious proceedings. Accordingly, the matter is referred back to the prothonotary for re-determination of whether witness should re-attend for discovery.
18. AB Hassle et al. v. Apotex and Canada (Minister of Health), December 24, 2003 FCTD (von Finckenstein J.) Motion Seeking Filing of Affidavit/Sur-reply Evidence/Standard of Review of Case Management by Prothonotary/Federal Court Rule 312/Patented Medicines (Notice of Compliance) Regulations Appeal by Apotex of Tabib P.'s dismissal of Apotex's motion to file sur-reply evidence in the form of a second affidavit. As case manager, Tabib P. issued directions to the parties to submit representations as to the next steps to be taken in the proceeding. In a letter to the Court, Apotex stated that in the event that AB Hassle was granted leave to file further affidavit evidence in its pending motion, Apotex would seek the right to file reply evidence either as part of the Order granting the right to file further evidence or by way of separate motions. Upon considering Apotex's letter, Tabib P. ordered that any motion by Apotex shall be made either as a part of its motion record in response to AB Hassle's pending motion, or as a motion made returnable at the sitting of that pending motion. Upon hearing of AB Hassle's motion, AB Hassle was granted leave to file further affidavit evidence but the order made no mention of Apotex's request for leave to file the sur-reply evidence. However, the Court indicated it did not have sufficient evidence to grant leave to Apotex but that they were free to submit a subsequent motion. Apotex then sought leave to file sur-reply evidence which was dismissed without hearing arguments on the merits. Held: Appeal allowed setting aside the decision of Tabib P. and permitting Apotex to file sur-reply evidence. Although the Court is reluctant to interfere with a case managing prothonotary, the failure to deal with the motion on the merits is based on a wrong principle or amounts to a misapprehension of facts and therefore obliges the Court to review the decision. The Court has discretion, pursuant to r. 312 of the Federal Court Rules, to allow the filing of affidavits beyond those initially filed. The principles governing r. 312 are whether the additional material will (a) serve the interests of justice; (b) assist the Court in making its final determination; and (c) cause substantial or serious prejudice to the applicants. The Court held that the interest of justice will be served if the Court has all relevant information before it and since cross examination had not yet occurred, there was unlikely to be a delay by cross examining Apotex's expert on two affidavits instead on one.
II. OTHER COURT DECISIONS1. Enersul v. Milford et al., November 28, 2003 ACQB (Kent J.) Interlocutory Injunction/Confidential Information/Clear Breach of Negative Covenant Application for an interlocutory injunction to prevent the defendants from using or disclosing the plaintiff’s confidential information. Milford, as an employee of the plaintiff, had signed confidentiality agreements which said that he would not communicate or use the plaintiff’s confidential information. Held: Injunction issued. The plaintiff argued that a strict application of the tripartite test for an interlocutory injunction is not required where there is a clear breach of a negative covenant. However, the Court did not find that there was a “clear” breach because it was not clear what part of the plaintiff’s process was confidential, nor was it clear that the process which the defendants intend to sell is the same as the plaintiff’s process. The Court did find that the plaintiff had made out a strong prima facie case. Regarding irreparable harm, there are few buyers in this market and the plaintiff’s reputation, which could be harmed pending trial, is not easily compensable in damages. The balance of convenience favours the plaintiff – “to do otherwise would reward the Defendants when there is a strong prima facie case that they are acting in breach of Mr. Milford’s covenant.”
III. OPPOSITION BOARD DECISIONS 1. Gestion Univert v. Horizon Univert, August 8, 2003 (Carrière) Coexistence Without Confusion Use-based application for HORIZON UNI VERT for herbicides, pesticides and fertilizers to lawns. Opposition based, inter alia, on s.12(1)(d) due to confusion with the opponent’s registered mark LES PLANTES UNIVERT, used in the field of lawn maintenance. Held: Opposition dismissed. Based on the fact that there had been no confusion during six years of concurrent use of the marks, the Registrar held the applicant had discharged its burden of establishing there was not a reasonable risk of confusion between the marks.
2. Nicolas Suarez Lencina v. Jalite U.K., October 21, 2003 (Carrière) Section 16/Negative Inference/Section 30(b) Application for JALITE for paints, varnishes, lacquers, etc. based on use in Canada and use and registration abroad. Opposition based, inter alia, on s. 16 due to confusion with the opponent’s use of the same mark and s. 30(b). Held: Application refused. The opponent relied on the prior use by two companies. The opponent’s affiant testified during cross-examination that these two companies were licensed by the opponent but refused to produce the licences; the Hearing Officer drew the negative inference that no licence exists. Instead the evidence suggests that these two companies were the former Spanish and Canadian distributors of the Swiss owner of the trade mark, which subsequently dissolved. The s. 16 ground failed because there is no evidence of prior use that enures to the opponent’s benefit. The s. 30(b) ground succeeded because the applicant’s evidence suggests that its use of the mark in Canada commenced one year after the claimed date of first use.
3. TLV v. Tyco Flow Control, November 4, 2003 (Bradbury) Confusion Proposed-use application for TRAPMASTER for computer programs to determine sizing and type of steam traps for use in steam systems in industries such as chemical processing, etc. and the services of training others re the use of same. Opposition based, inter alia, on s.12(1)(d) due to confusion with the mark TRAP MAN Design registered for similar computer software. Held: Opposition rejected. Confusion is not likely because the overall differences between the marks outweigh their common use of the descriptive word “trap”.
4. Dans un Jardin v. Garneau, November 6, 2003 (Carrière) Confusion /Evidence Use-based application for LA JARDINIÈRE for a long list of wares and services, including a long list of toiletry and cosmetic items, and long list of services not including the manufacture or sale of the wares listed in the application. Opposition based on, inter alia, s. 12(1)(d) and 16(d) due to confusion with a number of DANS UN JARDIN marks registered for a range of toiletry and cosmetic products. Held: Opposition allowed in part, concerning toiletry and cosmetic wares in the application, and services relating to retail and wholesale business of extracts of aromatic fragrances. The applicant failed to meet its burden of showing on the balance of probabilities that there was not a risk of confusion with the DANS UN JARDIN marks. The marks were of equal distinctive character, the wares and services appeared to overlap in part, and there was some resemblance in idea suggested by both marks (JARDINIÈRE being an adjective for "relatif aux jardins"). No evidence concerning channels of trade was submitted. Also, the opponent failed to submit any admissible evidence of proof of its own marks. A catalog had been submitted unaccompanied by an affidavit, and affidavits claiming use by the opponent of its marks, made allegations of use that were unsupported by proof, such as sales or advertising figures, and all drew conclusions of law. The opponent's evidence of use of its marks was therefore inadmissible, however the applicant also failed to submit evidence of use of its mark. Therefore, length of use favoured neither party in assessing the risk of confusion.
5. Fisher Controls International v. Merak Products, November 12, 2003 (Martin) Confusion/Statement of Wares Proposed-use application for FIELDVIEW for software application and data acquisition and integration software in the natural resources industry and manuals in respect thereof. Opposition based, inter alia, on s. 12(1)(d) due to confusion with the opponent’s mark FIELDVUE registered for automatic process control systems. Held: Application refused. The applicant argued that the parties’ trades are disparate because it sells to the “upstream” component of the oil and gas industry while the opponent sells to the “downstream” component of that industry. However, the applicant failed to file evidence on this point and, in any event, the application covers the broad field of “the natural resources industry”.
6. Trovan and EID Electronic Identification Devices v. Pfizer, November 20, 2003 (Martin) Confusion/Evidence of Misdirected Mail Proposed-use applications for TROVAN I.V. and TROVADYN for pharmaceutical preparation, namely an antibiotic. Opposition based, inter alia, on s. 12(1)(d) due to confusion with the mark TROVAN registered for electrical apparatus and instruments, data processors and computers and various machinery. Held: Oppositions rejected. The opponents did sell antibiotic delivery systems for animal use a few years ago but not in association with TROVAN. The TROVAN products include tracking systems designed for use in hospitals to track supplies. Confusion is not likely because of the differences in the natures of the wares and trades of the parties and the lack of any significant reputation in the opponent’s mark. Letters from a number of individuals who contacted the opponent instead of the applicant are hearsay and, in any event, are not evidence of confusion in the marketplace.
7. Maria Clementine Martin Klosterfrau v. Melisa Medica Foundation, November 26, 2003 (Herzig) Confusion Proposed-use application for MELISA for diagnostic services relating to allergies and the treatment thereof. Opposition based, inter alia, on s. 12(1)(d) due to confusion with MELISANA registered for liquid preparations being liniments, carminatives and cosmetics, namely, skin lotions. Held: Opposition rejected. Melisa is a herb that is an ingredient in the opponent’s product. However, the applicant uses MELISA as an acronym for “MEmory Lymphocyte ImmunoStimulation Assay”. The opponent’s product has been sold for a number of years in many stores in Canada and is used in part for the relief of gas and dietary problems. The applicant’s diagnostic test is performed in a laboratory at the request of a doctor and is both lengthy and expensive; its purpose is to determine sensitivity to metals. Confusion not likely because there are differences between the parties’ wares and services, the parties deal with different classes of consumers, and the opponent has not established a significant reputation for its mark.
8. Standard Knitting v. Toyota, December 2, 2003 (Herzig) Confusion /Differences in Trade Proposed-use application for TUNDRA for trucks and structural parts thereof. Opposition based, inter alia, on s. 12(1)(d) due to confusion with various marks that include the word TUNDRA registered for clothing. Held: Opposition rejected. There was evidence that automobile manufacturers often sell clothing under automotive trade marks and that the applicant has in fact sold clothing under the mark TOYOTA TUNDRA but the Board Member was not sure that such activity was particularly relevant to his consideration of the issue of confusion between the opponent’s mark and a mark which is restricted to automotive wares. In this regard, the Board Member noted that there is no evidence that automobile manufacturers market their clothing through retail clothing outlets or that the opponent sells its clothing through automotive retail outlets. Any registration that issues for this application will not prejudice the opponent’s right to sue for infringement or passing off should the applicant begin to sell clothing in a manner that impacts on the opponent’s business.
9. Labatt Brewery v. Mark Anthony, December 12, 2003 (Martin) Confusion /Secondary Trade Marks Use-based application for GLACIER BERRY for alcoholic beverages namely cider. BERRY disclaimed. Opposition based, inter alia, on s.12(1)(d) due to confusion with GLACIER registered for alcoholic brewery beverages. Held: Opposition rejected. Confusion is not likely in view of the inherent weakness of the marks, the differences between the wares and the absence of evidence of actual confusion during a fairly lengthy period of coexistence. Despite long and significant sales, the Board Member could not conclude that the opponent’s mark was well known since the mark is generally shown in a minor, subsidiary position on labels and packaging. The Board Member was unswayed by the applicant’s evidence of pairs of identical trade marks registered by different owners for different types of beverages.
10. Zorti Investments v. Party City, January 12, 2004 (Martin) Descriptiveness /Section 14(1)/Material Date /Section 38(5) /Registrability Pleadings Proposed use application for THE DISCOUNT PARTY SUPER STORE for retail party supply store services. During examination, the applicant overcame a descriptiveness objection by relying on s. 14(1). Opposition based, inter alia, on s. 12(1)(b). The opponent did not file evidence or argument and did not participate in the oral hearing. Held: Application refused. The material date with respect to descriptiveness is the filing date of the application, according to the unreported Federal Court Trial Division’s September 4, 2003 decision in Fiesta Barbeques Limited v. General Housewares Corporation. Although the statement of opposition referred only to s.12(1)(b) and did not challenge the s. 14 reliance, the Board Member held that the s. 14 reliance was in issue for two reasons. First, the Registrar’s decision that the opposition raised a substantial issue for decision pursuant to s.38(5) indicates that he considered the registrability ground to necessarily include an allegation of non-compliance with the provisions of s. 14. Second, the applicant’s written argument makes it clear that it was aware that its compliance with s. 14 was in issue. The Board Member held that logically the material date for s. 14(1) should be the same as 12(1)(b) and that to hold otherwise would unfairly advantage a foreign applicant over a domestic applicant. The s. 14 claim was held to fail for two reasons. First, the applicant’s foreign registration had not issued prior to the filing of the Canadian application. Second, the evidence of use and advertising of the applicant’s mark did not pre-date the filing date.
1. McCarthy Tetrault v. Acer America, December 4, 2003 (Savard) Sufficiency of Evidence ALTOS registered for use in association with "computer systems, computer central processing units; computer disk drives and disks; computer software recorded on magnetic media." The s. 45 notice was restricted solely to the wares "computer software recorded on magnetic media." Held: Registration maintained. The provision of a manual bearing the trade mark and accompanying the wares constitutes notice of the association between the trade mark and the pre-installed software at the time of transfer of the wares. Although the trade mark appearing on the manual is shown as ACER ALTOS, the general public would perceive the word ALTOS as functioning as a separate trade mark from the word ACER. Invoices bearing the ALTOS trade mark which pertain to the sale of a computer system/server provided with the ALTOS software also constitutes sufficient notification under s. 4(1) to establish use in association with "software."
2. Gowling Lafleur Henderson v. Primus Telecommunications Canada, December 17, 2003 (Savard) Sufficiency of Evidence/Negative Inference /Section 50 GLOBALSERVE registered for various Internet provider and wireless communication services. Held: Registration expunged. The Senior Hearing Officer concluded that the registrant's evidence consisted of vague and ambiguous assertions which failed to evidence any actual use of the trade mark. Firstly, print advertisements submitted by the registrant were not accompanied by evidence of distribution in Canada during the relevant period. Secondly, the affiant's evidence referred to use of the GLOBALSERVE "logo". The GLOBALSERVE "logo" was merely a design that did not include the word GLOBALSERVE. Thirdly, the affiant referred to use by "Primus Telecommunications Inc.", while the registered owner is "Primus Telecommunications Canada Inc." The Senior Hearing Officer held that if any use was shown by Primus Telecommunications Inc., such use would not constitute use by the registered owner. Lastly, the registrant stated that every customer who purchased the GLOBALSERVE Internet installation package received a guide/manual bearing the trade mark. The registrant submitted that the trade mark would also be displayed on the customer's screen each time the customer connected to the Internet. The Senior Hearing Officer rejected the registrants guide/manual evidence on the basis that the registrant failed to show that the GLOB |
