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2. Hoffman-La Roche v. Minister of Health and Canada (Attorney General), November 3, 2004 FCTD (Harrington J.) Listing of Patents on Patent Register/Supplemental New Drug Submission/Patented Medicines (Notice Of Compliance) Regulations Application for judicial review of the Minister's decision to not list two patents under the Regulations because the application for listing the patents on the Register was not made in time. In 1998, Hoffman-La Roche filed a NDS for trastuzumab (HERCEPTIN) but did not submit a patent list. The '613 and '082 patents were not submitted until May 2002 when Hoffman-La Roche filed a SNDS for approval of an additional manufacturing site for HERCEPTIN. Health Canada argued that an SNDS for addition of a manufacturing site did not provide a valid opportunity for the listing of a patent on the Patent Register. Hoffman-La Roche argued that a submission for a NOC includes an SNDS and that the patent list was timely because it was submitted at the same time as an SNDS. Held: Application dismissed with costs. The standard of review applied was correctness as the issues dealt with questions of law. An SNDS for an additional manufacturing site is not related to the drug or its use and so cannot support a patent listing. Matters such as brand names and manufacturing sites are merely incidental to the drug and its purposes. In the circumstances, it is not necessary to speculate as to what the result would have been had Hoffman-La Roche's SNDS been in relation to the drug itself or to its use and if there were evidence that it could have filed a patent list years ago.
3. Janssen-Ortho et al. v. Novopharm and The Minister of Health, November 19, 2004 FCTD (Mosley J.) Prohibition Order/Notice of Allegation/Obviousness of Enantiomer/Patented Medicines (Notice of Compliance) Regulations Application by Janssen-Ortho seeking an order prohibiting the Minister of Health from issuing a NOC to Novopharm for the drug levofloxacin. Novopharm issued a NOA to Janssen-Ortho that its '080 patent was invalid primarily for obviousness and anticipation. The '080 patent covered the S(-) enantiomer of ofloxacin (levofloxacin) which Novopharm argued was unpatentable because the racemate of ofloxacin was already known at the time the patent was filed. While the S(-) enantiomer did indeed have greater potency, Novopharm argued that it would have been obvious for someone skilled in the art to isolate the enantiomers and test their efficacy. In addition, Novopharm argued that the '080 patent was invalid for anticipation because racemic ofloxacin was known at the time the patent was filed which therefore inherently disclosed the S(-) enantiomer. Held: Application dismissed. The '080 patent was obvious, and therefore invalid. The question to ask is whether the solution taught by the patent would be plain as day to the skilled technician who was searching for something novel. In regards to the patentability of an enantiomer over the racemate, there must be discovered some special advantage or quality, previously unknown, which constitutes a definite advance upon the knowledge already existing with regard to the original group. In this case, the properties of the S(-) enantiomer were the same beneficial properties found in the racemate, only to a greater degree of effectiveness. In addition, Mosley J. found that the knowledge of separating the two enantiomers was common to the ordinary chemist, and the determination of which enantiomer possessed the greater amount of the same benefits of the previously known racemic antibiotic was not inventive. With regard to the anticipation argument, Mosley J. found the patent not to be anticipated by the prior art. The prior art did not teach how to differentiate the enantiomers of the racemate, nor was there any indication from one definitive prior art source that either enantiomer will have certain improved qualities.
4. Pfizer et al. v. Novopharm and the Minister of Health, November 22, 2004 FCTD (Gibson J.) Prohibition Order/Sufficiency of Notice of Allegation/Allegation of Non-Infringement/Patented Medicines (Notice of Compliance) Regulations Application by Pfizer seeking an order prohibiting the Minister from issuing an NOC to Novopharm in connection with 250 mg tablets for oral administration of azithromycin until the expiry of the '876 patent. Pfizer disputes the allegations that Novopharm's azithromycin is “free of crystalline azithromycin dihydrate” and that it “…is stable and does not convert to azithromycin dihydrate.” Pfizer further contends that Novopharm has failed to allege and to establish that its azithromycin is not manufactured in Canada by a process, or imported in a manner, that infringes the '876 patent. Held: Application granted. Novopharm's NOA is on its face, inadequate or insufficient as it does not address the issue of infringement by Novopharm by the mere use of bulk azithromycin monohydrate that might have been produced by a process that, if it had been conducted in Canada, would have infringed the '876 patent. The bulk azithromycin monohydrate that Novopharm proposes to import and to use would be a significant or central part of Novopharm's end product. If this were allowed to happen, and if azithromycin dihydrate is formed in the intermediate steps, Pfizer would be deprived, indirectly, of the monopoly intended by the grant of the '876 patent. Further, Novopharm simply failed to meet the “evidential burden” on it to “put into play” the issue of non-infringement during the process of manufacture outside Canada of the bulk azithromycin monohydrate proposed to be utilized by it. Pfizer failed to meet the persuasive or legal burden on it to establish, on a balance of probabilities that the bulk azithromycin monohydrate contains or converts, in whole or in part to, azithromycin dihydrate. The Court declined to make a finding regarding whether Novopharm's azithromycin monohydrate will contain or will convert, during their normal shelf life, in whole or in part to azithromycin dihydrate.
5. Genpharm v. Procter and Gamble Pharmaceuticals et al. and The Minister of Health, November 22, 2004 FCA (Rothstein, Noël, Sharlow JJ.A.) Appeal of Prohibition Order/Burden of Proof/Obviousness/Sound Prediction/Patented Medicines (Notice of Compliance) Regulations Appeal of Snider J.'s decision to refuse Genpharm's request for a NOC. Genpharm issued a NOA to P&G relating to its '376 patent which covers a new way to use etidronate for the treatment of osteoporosis. Genpharm argued that Snider J. wrongly assessed Genpharm's allegation of non-infringement on a balance of probabilities, rather than on a lower standard. Genpharm argued that because a patent infringement action remains available to a patentee if it fails to obtain a prohibition order, the standard of proof for the generic is analogous to that on a motion of summary judgment. Genpharm contended that as long as the generic raises "a genuine issue for trial", it has satisfied its burden and a prohibition order cannot issue. Furthermore, Genpharm argued that the traditional test for obviousness is no longer as difficult to meet, and submitted that obviousness and sound prediction are one and the same. Held: Appeal dismissed. There is no indication that the burden of proof on a generic alleging patent invalidity in a prohibition application is reduced or is in any way affected by the availability of a patent infringement action to a patentee. The standard of proof under s. 6(2) of the Regulations is proof on a balance of probabilities. With respect to the test for obviousness, there is nothing that would make the test for obviousness less difficult to satisfy than that traditionally expressed. Sound prediction and obviousness are considerations with different perspectives. Sound prediction is relied upon by an inventor to justify patent claims whose utility is not actually demonstrated but can be soundly predicted from information and expertise that is available. Obviousness is relied upon by a potential competitor of the patentee, who argues that what is claimed in a patent is something that a skilled technician keeping up with the state of the art and common general knowledge would be able to come to directly and without difficulty in the absence of the solution taught by the patent.
6. Pfizer et al. v. Apotex and The Minister of Health, November 25, 2004 FCA (Decary, Sexton, Evans JJ.A.) Refusal to Produce Drug Samples/Patented Medicines (Notice of Compliance) Regulations Appeal by Pfizer of Snider J.'s decision to dismiss the application for an order prohibiting the Minister from issuing a NOC to Apotex in light of Pfizer's '876 patent. The '876 patent covered crystalline azithromycin dihydrate, while in its NOA, Apotex stated that its drug would contain azithromycin itself, but would not contain azithromycin dihydrate. Pfizer argued that since Apotex did not produce samples of its azithromycin for Pfizer to analyze, the trial judge should have found an adverse inference and therefore issued the prohibition order. Held: Appeal dismissed. Pfizer argued that the only pertinent evidence for this case was the samples of azithromycin, and since Apotex failed to produce them, an adverse inference should be drawn against Apotex. Evans J.A. disagreed with this assertion for a multitude of reasons including the summary nature of the prohibition proceeding and the absence of discovery; the absence of a duty on applicants making an ANDS to supply samples of the drug to the Minister; and the fact that the dismissal of the application for an order of prohibition only denies the applicant the benefit of the statutory stay on the entry onto the market of a possibly infringing product, and does not preclude a subsequent action for infringement, complete with discovery. Pfizer had the means of discovering the content of the tablets. Apotex had been required to disclose to Pfizer information contained in Apotex' ANDS: the process for making bulk IPA monohydrate, the ingredients of the tablets, and the tableting process.
7. Johnson & Johnson v. Boston Scientific, November 30, 2004 (Martineau J.) Small Entity Status Fees /Top-Up /Dutch Industries Motion for summary judgment brought by Boston Scientific in an infringement action commenced by Johnson & Johnson (J&J). An inventor, Palmaz, was the original owner of the two allegedly infringed Canadian patents, each of which had a Canadian filing date of November 6, 1986 and a US priority date of November 7, 1985. At the end of 1985, Palmaz formed a partnership (EGP), and on August 27, 1986, EGP entered into a license agreement with Ethicon, for the abovementioned US patent and any foreign equivalents. Ethicon is deemed to be a large entity under Canadian patent law. When applying for the Canadian patents, EGP paid for small entity status, even though it had licensed the patents to Ethicon. Boston Scientific brought this motion for summary judgment based primarily on the ruling in Dutch Industries, wherein patents were deemed to be abandoned if the owners had paid the wrong entity status fee. Held: Motion for summary judgment granted. Martineau J. ruled that as of the Canadian filing date, Palmaz was not entitled to claim small entity status because he was no longer a “small business concern.” Martineau J. quoted heavily from the Dutch Industries decision, wherein it was stated that the correct date for determining small entity status is the Canadian filing date. Therefore, Martineau J. ruled that Palmaz did not pay the entire application fee at the date of the Canadian filing. Martineau J. continued on to state that the applicant's failure to pay the prescribed filing fee meant that each of the patent applications was incomplete, and were thus deemed permanently abandoned twelve months after the filing of the application, pursuant to s. 30(1) of the Patent Act. J&J argued they were allowed to “top-up” their fees based on the coming into force on January 1, 2004, of s. 3.1 of the Patent Rules. Martineau J. disagreed for a multitude of reasons. First, because the patent applications were applied for before October 1, 1989, the patents are to be read in accordance with the provisions of the Patent Act as they read immediately before October 1, 1989. Second, s. 3.1 of the Patent Rules is subordinated to the Patent Act, wherein it states in s. 30 that a patent application must be completed within twelve months or risk abandonment. Finally, Martineau J. ruled that s. 3.1 of the Patent Rules is not construed to have retroactive effect to resurrect a patent already deemed to be abandoned.
8. The Minister of Health v. Pfizer et al., December 1, 2004 FCA (Rothstein, Noël, Sharlow JJ.A.) Production of Third Party Information/Federal Court Rule 371/Patented Medicines (Notice of Compliance) Regulations Appeal from an order requiring the Minister of Health to produce to Pfizer certain confidential information provided to the Minister by Teva Pharmaceuticals. This order was made in the context of an application by Pfizer for an order prohibiting the Minister from issuing an NOC to Rhoxal for azithromycin. Rhoxal proposes to have the manufacturing done by Teva pursuant to a contract. Teva provided the necessary information about the manufacturing process directly to the Minister in a drug master file which, with Teva's consent, is incorporated by reference into Rhoxal's ANDS. Consistent with current regulations and practice, Teva submitted its drug master file to the Minister on the understanding that the Minister would not disclose to anyone, even Rhoxal, anything in the "closed portion" of the drug master file. Held: Appeal allowed. Paragraph 6(7)(a) of the Regulations has a limited scope. It only permits an order directed at the second person. It is not broad enough to authorize an order directed at the Minister. Furthermore, Federal Court Rule 317 cannot apply either. If the second person uses its best efforts to obtain the third party information and its efforts are unsuccessful, then the second person should suffer no disadvantage because of its lack of success. In that case, the second person should be free to adduce such evidence as it has in support of its non-infringement allegation. The first person will of course adduce such evidence as it may have. The Judge hearing the prohibition application will consider all the evidence in disposing of the application in the ordinary course.
9. Genpharm v. AB Hassle et al. and The Minister of Health, December 2, 2004 FCA (Rothstein, Noël, Malone JJ.A.) Appeal of Prohibition Order /Allegation of Non-infringement and Invalidity/Patented Medicines (Notice of Compliance) Regulations Appeal from order prohibiting the Minister from issuing a NOC to Genpharm regarding omeprazole capsules until expiry of the '693, '377, '668 and '762 patents. Genpharm argued that the trial judge erred in finding that the claims in the '693 and '377 patent were not obvious and that the claims of the '693 patent were not anticipated. Genpharm also contended that its omeprazole would not infringe the '668 and '762 patents. These patents are directed to the use of omeprazole with or without antibiotics to treat gastritis and peptic ulcers caused by H. pylori bacteria. Held: Appeal dismissed. Genpharm did not demonstrate any palpable and overriding error in the trial judge's conclusions respecting obviousness and anticipation. With respect to infringement, Genpharm objected to the trial judge's finding in respect of the product monograph. It says there was no evidence led by the applicants to demonstrate that the product monograph would induce infringement of the '668 or '762 patents. However, the product monograph was itself in evidence and it was open to the Trial Judge to draw an adverse inference from it. Genpharm argued that the product monograph refers to the use of omeprazole for one of its old uses, eradication of gastric acid secretion. But there is no explanation as to why Genpharm would include in its product monograph a study relative to H. pylori positive patients, if it was not intending to imply that Genpharm's omeprazole could be used to eradicate gastric acid secretions in the treatment of H. pylori infections.
10. GlaxoSmithKline v. The Minister of Health and Canada (Attorney General), December 10, 2004 FCTD (von Finckenstein J.) Listing of Patents on Register/ Patented Medicines (Notice of Compliance) Regulations Application for judicial review of a decision of the Minister that two patents held by GSK were not eligible for inclusion on the Patent Register. GSK listed the '479 patent and the '393 patent with regard to PAXIL CR, a drug containing controlled release tablets of paroxetine hydrochloride. The '479 patent relates to a system for controlled rate release of active substances while the '393 patent relates to tablets with controlled rate release of active substances. Held: Application dismissed. Within the claims of either patent, there is no explicit claim to either the medicine paroxetine hydrochloride or its use. By contrast, both the patents refer to "active substances". There is no mention of paroxetine hydrochloride, the medicine in question. The line of cases referred to make it clear that patents which can be registered must have a claim involving the medicine in question in the patent. That is not the case here.
11. Fournier Pharma et al. v. Cipher Pharmaceuticals and The Minister of Health, December 14, 2004 FCTD (Layden-Stevenson J.) Prohibition Order /Claim Construction /Patented Medicines (Notice of Compliance) Regulations Application by Fournier seeking an order prohibiting the Minister of Health from issuing a NOC to Cipher for the drug fenofibrate until after the expiry of the '475 patent. The '475 patent relates to compositions of fenofibrate, specifically to an immediate release formulation, a micronized form, and a micronized form on an inert hydrosoluble carrier. Cipher issued a NOA to Fournier stating that its product would not infringe Fournier's patent, as Cipher's fenofibrate was not an immediate release formulation, was not micronized and was not on an inert carrier. Held: Application dismissed. It is common ground that the allegations of non-infringement are presumed to be true and the applicant must disprove, on a balance of probabilities, all of the allegations which, if left unchallenged, would allow the Minister to issue a NOC. Layden-Stevenson J. construed the claims in accordance with the Free World Trust and Whirlpool Corporation decisions and held that Cipher's drug formulation would not infringe Fournier's patent.
12. Biovail Pharmaceuticals et al. v. Novopharm and The Minister of Health, January 6, 2005 FCTD (Harrington J.) Prohibition Order /Allegation of Non-Infringement/Claim Construction /Patented Medicines (Notice of Compliance) Regulations Application by Biovail seeking an order prohibiting the Minister from issuing a NOC to Novopharm for bupropion hydrochloride in light of the '754 and '320 patents on the Patent Register. The '754 patent claims a controlled release composition tablet comprising bupropion hydrochloride in a solid sustained release carrier. The '320 patent claims a controlled sustained release composition tablet comprising bupropion hydrochloride and hydroproxyl methylcellulose (HPMC), which may in itself be a solid sustained release carrier. Novopharm proposes using hydroxpropyl cellulose (HPC). Held: Application dismissed. After a purposive construction of the '320 patent, the Court held that the inventors intended that HPMC was essential, and did not contemplate a variant such as HPC. A purposive construction of the '754 patent found that although it spoke of a "controlled release composition", the disclosure, including the examples, only contemplated one release mechanism, that of an osmotic pressure system. All the experts agreed that this process is quite different from a hydrogel process whether HPC or HPMC is used.
(b) Trade Marks 1. Eclipse International Fashions Canada v. Shapiro Cohen, April 26, 2004 FCTD (Tremblay-Lamer J.) Section 45 Appeal /Sufficiency of Evidence/Ordinary Course of Business Appeal from s. 45 decision that expunged the registration for ECLIPSE. Held: Appeal dismissed. Although the registrant filed new evidence, this evidence did not show use of the mark in association with the registered wares, namely ladies' sportswear. The appearance of ECLIPSE on the invoices filed refers to the registrant's name and not to the trade mark on the garments. No labels were filed. References to the sale of sportswear or of the sale of clothing to women are too vague because they do not make it clear that women's sportswear was sold. The Registrar cannot take notice of the registrant's ordinary course of business; the registrant could not expect the Registrar to know that sportswear for men and women is often the same and therefore unisex.
2. Brouillette Kosie Prince v. Andrés Wines, June 7, 2004 FCTD (Tremblay-Lamer J.) Section 45 Appeal/Honeywell Bull Appeal from s. 45 decision that maintained the registration for IN VINO VERITAS. Held: Appeal allowed. The Registrar erred in applying the test in Honeywell Bull in that the Registrar did not compare the mark as it is registered with the mark as it is used. The words IN VINO VERITAS always appear on the scroll of a coat of arms appearing on the registrant's wine labels. The Registrar was of the view that, as a matter of first impression, the public would consider this slogan to be used as a trade mark. The Court concluded that this was an unreasonable inference because “it is not possible de visu to detach the words from the coat of arms. The mark appears in small caps in the middle of a design which is decorative - not descriptive - and much larger than the mark.”
3. Wakefield Realty v. Cushman & Wakefield, December 9, 2004 FCA (Desjardins, Rothstein, Pelletier JJ.A.) Opposition Appeal/Errors of Law/Costs Appeal from Harrington J.'s decision that allowed the registration of the respondent's CUSHMAN & WAKEFIELD trade mark. The appellant had opposed the registration on the basis that CUSHMAN & WAKEFIELD is confusing with its trade mark WAKEFIELD. Held: Appeal dismissed. “[T]he judge's reasons did not approach the question of confusion as systematically as they might have. Nonetheless, one finds in them all the elements of the required analysis.” There is no palpable and overriding error in the judge's findings of fact. Nor do the “unfortunate distractions” in the judge's reasons amount to errors in law. The appellant argued that in any event it should be awarded its costs in the Federal Court and the Federal Court of Appeal because the respondent's success was the result of its putting before the Court the evidence that it ought to have put before the Opposition Board. Because both parties put significant new evidence before the Court, the Court declined to depart from the normal practice in which costs follow the event.
4. Henkel Canada v. Conros, December 17, 2004 FCTD (Hugessen J.) Summary Judgment /Trade mark Infringement/Federal Court Rule 216(3) Motion by plaintiff in a trade mark infringement action for summary judgment on those parts of its claim based on s. 19, 20 and 7 of the Trade marks Act. The plaintiff owns trade mark registrations for LEPAGE'S for various types of adhesives, but not specifically clear adhesive tape. The defendant recently began using the same mark on clear adhesive tape. Held: Motion dismissed without costs. Hugessen J. would have granted summary judgment but for the Federal Court of Appeal decisions in MacNeil Estates v. Canada (2004), 3 F.C.R. 3 and Trojan Technologies, Inc. v. Suntec Environmental Inc. [2004] F.C.J. No. 636, which he feels effectively repealed Federal Court r. 216(3) by deciding that once there is a genuine issue for trial, a judge commits an error if he grants summary judgment because no assessment of credibility may be made by the judge at this stage. In the present case, Hugessen would have found that the plaintiff's evidence is strong and compelling while that tendered by the defendant is not persuasive. Section 19 is not applicable because there is no evidence that “clear adhesive tape” is covered by the statements of wares in the plaintiff's registrations.
5. College of Chiropodists of Ontario v. Canadian Podiatric Medical Association, December 22, 2004 FCTD (Heneghan J.) Judicial Review/Section 9/Official Mark /Extending Thirty Day Time Period under Section 18.1(2) Federal Courts Act Application for judicial review of the Registrar's decision to publish PODIATRIST as an official mark pursuant to s. 9(1)(n)(iii) of the Trade marks Act. Held: Application allowed. The applicant is the regulatory body in Ontario for chiropodists and podiatrists, as defined in its governing statute, the Chiropody Act. The respondent is a private professional association that was incorporated as a non-profit corporation; it considers its role to be to represent the interests of podiatrists at the national and international level. The Court held that the respondent is not a public authority because it is not under government control. The fact that some of its members are under government control does not mean that it is under government control. There is no evidence that the government can review or intervene in the respondent's operations and the assets of the respondent are not available to the public in the event that it is wound-up. Also, it does not appear that the respondent had used the official mark - the use that it relied upon was use by another entity. The respondent argued that the applicant did not have standing to bring this action because under Ontario law the term “podiatrist” can only be used by people who qualified before 1993. However, there are still 88 podiatrists that are subject to the applicant's regulation and so it would be directly affected by the publication of the respondent's official mark. Section 18.1(2) of the Federal Courts Act assigns a time limit of 30 days for the commencement of an application for judicial review. Here, the application was filed within 30 days of the applicant learning of the publication of the official mark but almost 11 months after the publication. This is a proper case for the exercise of discretion to extend the time.
6. Tommy Hilfiger v. Produits de Qualité I.M.D. and Harold Rosen, January 7, 2005 FCTD (Beaudry J.) Trade mark Infringement/Sections 19, 20 and 22/Passing Off under Section 7(b)/Distinctiveness Action for infringement of the “Hilfiger Flag trade marks”. Quality Goods sells a variety of souvenir items in association with its EXPLORE CANADA Logo. Rosen is the President and sole shareholder of Quality Goods. The defendants counterclaim for expungement of the plaintiff's trade mark registrations. Held: Action allowed with respect to the defendant Quality Goods, which has infringed the plaintiff's registered Flag Design under s. 20 of the Trade marks Act. Beaudry J. concluded that there is confusion between the EXPLORE CANADA Logo and at least one of the Hilfiger trade marks. Moreover, he expressed the view that a finding of confusion meant that the defendant was using the EXPLORE CANADA Logo as a trade mark, relying on Tommy Hilfiger Licensing, Inc. v. International Clothiers Inc. 2004 FCA 252. This was important because “use as a trade mark” is an element to be proven under s. 20 of the Trade marks Act. Section 6(5) analysis: The Hilfiger Flag Design is an inherently strong mark that has acquired great distinctiveness. There is an overlap in the wares with respect to some clothing items. Although the Hilfiger products are typically sold in upscale retailers and the Explore Canada products are sold in low end tourist shops, the nature of the trade overlaps to the extent that both are sold in duty shops and specialty stores. Those marks of the plaintiff which include wording are clearly distinguishable from the defendant's EXPLORE CANADA Logo. However, the plaintiff's registered mark that consists simply of the flag design bears a high degree of visual resemblance to the EXPLORE CANADA Logo since the latter comprises exactly the same rectangle in terms of special arrangement and colours. “A probable consumer in a tourist shop who saw … an Explore Canada t-shirt for example, would think, as a matter of first impression, that he or she is looking at a Tommy Hilfiger t-shirt that is being sold at a good price.” Mr. Rosen is not personally liable since there is no evidence that he was deliberately, willfully and knowingly pursuing a course of conduct that would incite infringement. There is no infringement under s. 19 because the Court rejected the plaintiff's argument that the EXPLORE CANADA Logo is identical to one of the plaintiff's registered marks. The plaintiff's argument was that the defendant had simply added words and a common maple leaf design to the plaintiff's registered mark, but the Court pointed out that adding something creates something that is different. There is no infringement under s. 22. Although consumers will probably make a connection in their mind between the Explore Canada products and Hilfiger, there is no evidence that such mental connection will reduce the esteem in which consumers hold the Hilfiger trade marks. The passing off action was dismissed because there was no evidence with respect to damage caused to the plaintiff. The plaintiff's registrations are valid. The distinctiveness of the marks would not have been affected by the transfers that occurred during a corporate reorganization. “[T]he source of the wares is Tommy Hilfiger and because the transfer was made to a subsidiary of Tommy Hilfiger, [the Court] did not believe that a customer would have been confused about the origin of the wares.” Regarding licenses that were given, the Court accepted the plaintiff's position that the reference to TOMMY HILFIGER in the license agreement did not mean that only that trade mark was licensed but rather that they used the shorthand “TOMMY HILFIGER” to include all of the Tommy Hilfiger trade marks. Beaudry J. stated, “I do not believe that it would be possible for the public to be confused about the source or the origin of the wares. Obviously, THI, THLI and THC are all TH Corp. subsidiaries. The origin of the wares would not be a source of confusion through the eyes of an average customer. It does not matter which subsidiary company has the licence or has granted the licence; it is still a Tommy Hilfiger product, controlled, sold and advertised by a Tommy Hilfiger company.” He concluded that the Hilfiger marks are presumptively strong marks.
(c) Copyright 1. Pyrrha Design et al. v. 623735 Saskatchewan, December 13, 2004 FCA (Linden, Létourneau, Sharlow JJ.A.) Summary Judgment/Copyright Infringement /Jewellery Designs /Useful Articles /Section 64(2) Copyright Act Appeal from summary judgment that dismissed the appellants' claim for copyright infringement of its jewellery designs. The Trial Judge dismissed the claim on the basis that the jewellery is denied copyright protection pursuant to s. 64(1) of the Copyright Act in that it is a “useful” article because it is “to be worn” and is therefore functional. Held: Appeal allowed because it is not clear that there was no genuine issue to be tried. The Court of Appeal was swayed by the appellants' argument that if all jewellery is functional because it is worn for adornment, then any sculpture or painting that is used for adornment is also functional and not entitled to copyright (assuming that they are reproduced more than 50 times). This is a difficult issue which deserves to be tried with more evidence about the jewellery's usefulness or lack thereof, including evidence from the artistic and cultural milieu. Some items of jewellery, such as cuff links, may be useful whereas others, such as earrings, may be purely ornamental. The 1991 decision in Datafile v. DRG is not applicable since the Copyright Act was subsequently changed.
(d) Practice 1. Camoplast v. Soucy International and Kimpex, January 19, 2004 FCTD (Beaudry J.) Appeal of Prothonotary's Confidentiality Order Appeal from the decision of Morneau P. that granted Camoplast's motion to have a confidentiality order issued. The confidentiality order pertains to documents relating to the development of the invention claimed in the patent that is alleged to have been infringed. Soucy and Kimpex argue that Morneau P. failed to consider all of the factors relevant to the debate and erred in his application of the principles of law pertaining to confidentiality orders. More particularly, he failed to consider the effect that the order would have on their fundamental rights, such as the right to a full defence and a fair hearing. Camoplast argues that documents obtained from the clients of Camoplast are not only confidential, but also covered by implicit confidentiality agreements. A disclosure of the information and documents at issue poses a serious threat to the significant commercial interests of Camoplast. Held: Appeal dismissed. The confidentiality order provides that the information is to be completely accessible to counsel for Soucy and Kimpex and their independent experts - but only to these individuals. In this case, the confidentiality order outweighs its harmful effects, especially given the fact that the order provides that all information be disclosed to the parties' representatives. Thus, Morneau P. considered all the factors relevant to the litigation when he made his order. A discretionary order should not be disturbed by the Court unless it was clearly exercised improperly. The decision by Morneau P. was reasonable and ensured that the interests in play were balanced.
2. Autodata v. Autodata Solutions Company, October 4, 2004, FCTD (Tabib P.) Section 56 Trade marks Act/Undertakings under Cross-examination on Affidavit /Opportunity to Reply to Respondent's Submission In the context of an appeal under s. 56 of the Trade marks Act, orders were sought 1) to compel production of additional information in answer to undertakings allegedly given in the course of a cross-examination on affidavit, and 2) for a special procedure for filing the parties' respective records to allow the applicant the possibility of filing a memorandum of fact and law in reply to the respondent's. Held: Motions dismissed. A cross-examination on affidavit is not a discovery, and an application is not an action. An application is meant to proceed expeditiously, in summary fashion. For that reason, discoveries are not contemplated in applications. Parties cannot expect, nor demand, that the summary process mandated for applications will permit them to test every detail of every statement made in affidavits. Accordingly, counsel would be well advised to approach a cross-examination on affidavit with circumspection, lest they invite bald assertions and be left having to attack the witness' credibility, or the weight to be given to the testimony, as the sole means of countering the assertion. A party who requests an answer by way of undertaking to make up for a witness' lack of knowledge or reliance on documents not duly produced, does so at its peril. The Court saw no mechanism in the Federal Court Rules to re-open a cross-examination to seek further production or put follow-up questions to a witness. The applicant also argued that the respondent intended to raise additional issues regarding the Registrar's decision without the applicant having an opportunity to reply. This proceeding was an appeal under s. 56 of the Trade marks Act of a decision of the Registrar in a trade mark opposition proceeding. Rule 300(d) specifically provides that such appeals are to be governed by the rules applicable to all applications, with the procedural limitations built into them as to reply submissions. Section 56 of the Trade marks Act clearly contemplates an appeal, rather than a judicial review of the decision; additional evidence not before the Registrar may be adduced on that appeal; and the Court on appeal may exercise any discretion vested in the Registrar. Accordingly, it is clearly open to the respondent to raise issues other than those raised by the applicant. The mere fact that the respondent herein has chosen to raise its own issues on appeal can therefore not, in and of itself, constitute sufficient grounds to depart from the procedures contemplated by the Rules. While the applicant may not be able to divine precisely how the respondent will structure its argument, it cannot be said that it cannot anticipate the general thrust of the respondent's argument so as to include in its memorandum its own position on these issues. To the extent the respondent's memorandum of fact and law raises novel arguments that could not reasonably be anticipated, the applicant will have an opportunity to make a full reply at the hearing.
3. John Letourneau and Letourneau Life Rail v. Clearbrook Iron Works, October 14, 2004 FCTD (Hargrave P.) Motions by both Plaintiff and Defendant for Continuation of Examinations for Discovery The defendant seeks the continuation of the examination for discovery of Mr. Letourneau, so he may answer various questions (both those which were refused and those which were taken under advisement), provide further documents and give particulars of the first claim of the patent at issue. The plaintiffs seek continuation of the examination for discovery of Mr. Schellenberg of Clearbrook Iron Works to deal with undertakings and questions taken under advisement and to answer questions that were refused. Included among the matters taken under advisement was a request for particulars of the defendant's denial that Mr. Letourneau was the inventor, which raises an issue of onus on a party attacking the validity of a patent. Held: Defendant's motion: Experience and background - questions about background permitted providing the questioning party demonstrates the relevance of obtaining the background or that it is necessary in the context of the issue of credibility (Merck v. Canada, (1994), 75 F.T.R. 97 (F.C.T.D.)). In determining whether a person who claims to be the inventor is in fact the inventor, questions about the skill and knowledge of the person claiming the invention are permitted. Utility of invention - Discovery witness has no obligation to give his or her view as to comparative utilities of the invention. Invention is, like novelty and utility, a question of fact and degree exclusively for the Court. Understanding or interpretation of the patent - It is not appropriate to seek, on examination for discovery, an understanding of or an interpretation of the patent from the point of the view of the witness. However, it is appropriate to ask for facts within the knowledge of the witness (James River v. Hallmark Cards Inc. (1997) 72 C.P.R. (3d) 157 (F.C.T.D.)). Commercial success - Questions on commercial success are not appropriate (Equipments d'Erabliere CDL v. Eratube, 2001 CFPI 107). Substance of the invention - Questions on the substance of the invention are questions of fact which are permitted (Nolan v. Silex, (1997) 77 C.P.R. (3d) 212 (F.C.T.D.)). Prior disclosure - Questions on the facts surrounding prior disclosure are permitted. Privilege of communications with patent agents and lawyers - Communications with patent agents who are not lawyers are not privileged, however, communications with patents agents who are lawyers are privileged (Lumonics Research v. Gould (1983) 70 C.P.R. (2d) 11 (F.C.A.)). Canadian patent file wrapper history - File wrapper questions that do not go to the scope of the patent and do not require interpretation of the patent may, depending upon the circumstances, be proper questions, subject to whatever evidentiary weight the hearing judge might place on the answers. American patent file wrapper history - Both domestic and foreign file wrappers may be relevant, and that relevance is for the trial judge to decide; it would be premature on discovery to prevent questions being asked concerning information in the file wrapper Plaintiffs' motion: Documents from Workers Compensation Board - Names and addresses of witnesses, who provided specific factual information and material to the defendant, must be provided as sought. Validity of the patent - Common general knowledge is usually determined by experts and parties to a litigation need not provide an opinion as to the state of common general knowledge. Privilege - Litigation privilege attaches to communication conveyed to and by a lawyer for the purposes of litigation, but does not apply to relevant facts that are within the knowledge of a witness, regardless of the source of information.
4. Pfizer et al. v. Rhoxalpharma and The Minister of Health, October 28, 2004 FCTD (Aronovitch P.) Supplementary Evidence /Patented Medicines (Notice of Compliance) Regulations Pfizer brought a motion to file supplementary evidence in reply to new issues that could not have been anticipated from the cross-examination of one of Rhoxalpharma's experts. Rhoxalpharma argued that the evidence at issue could have been submitted previously. Held: Motion allowed. An issue is not anticipated merely because it arises in the course of the proceeding. The notion of what is known or can be anticipated does not place a positive burden on a party to conduct experiments to support its theories. The fact that Pfizer did not conduct its own experiments would not preclude a right of reply to matters that genuinely could not have been anticipated arising from Rhoxalpharma's experiments. The right of reply would otherwise be meaningless.
5. AB Hassle et al. v. Apotex and The Minister of Health, November 10, 2004 FCTD (Lemieux J.) Federal Court Rules 400, 403, 407/Motion for Lump Sum Solicitor-Client Fees /Patented Medicines (Notice of Compliance) Regulations Motion by Apotex under Part 11 of the Federal Court Rules, for an order awarding it lump sum costs on a solicitor-client scale following the dismissal of AstraZeneca's prohibition application “with costs” under the Patented Medicines (Notice of Compliance) Regulations. The Court addressed the following issues: 1) jurisdiction in awarding solicitor-client costs; 2) whether solicitor-client costs would be justified and 3) whether the applicants should be sanctioned with solicitor-client costs because of their attack on Dr. Sherman's credibility and on the truthfulness of Apotex' NOA. Held: Motion dismissed with costs. Apotex did not satisfy the Court that any increase above Tariff B, whether it sought full or partial solicitor-client costs, was justified. However, the Court held that Apotex' costs be taxed at the upper level of column III in Tariff B. Rule 400(1) makes it clear that the first principle in the adjudication of costs is that the Court has “full discretionary power” as to the amount of costs. In exercising its discretion, the Court may fix the costs by reference to Tariff B or may depart from it. In examining the factors enumerated in Rule 400, the Court held that the only two issues to be determined in this case were not complex. Apotex did not emphasize the amount of work performed as a factor militating for increased costs. Apotex failed to satisfy the Court that it could enter the marketplace given other prohibition orders. The applicants did not accuse Apotex of putting forward a fraudulent NOA. Its case was one related to third party infringement and, while it attempted to link patient infringement to actions which Apotex might potentially take in influencing the marketplace such as through its product monograph, such intentions or actions cannot be said to reach the level of an accusation or fraud aimed at Apotex or Dr. Sherman. In the context of this case, the applicants had the right to test Apotex' and Dr. Sherman's credibility without fear of a cost sanction. Court also indicated that it would have been prepared to make a lump sum award on a party-party basis had Apotex provided the Court with a draft bill of costs.
6. Letourneau Life Rail Ltd v. Clearbrook Iron Works Ltd., November 19, 2004 FCTD (Hargrave P.) Federal Court Rule 401/Costs/Costs in the Cause These reasons arose out of a case management conference regarding costs for two motions dealing with discoveries and an order. The Court had to decide whether to exercise its discretion to order costs, or order costs in the cause. Held: Costs of both motions will be costs in the cause. Hargrave P. reviewed the FCRs and case law pre and post the 1998 amendments to the Rules. Up to 1998, the accepted principle as to costs on interlocutory motions was that costs should be costs in the cause. Immediately following the amendments to the Rules, which introduced discretion into the decision via r. 401, costs were seen as a means to expedite the litigation and focus the minds of the litigants on the cost of litigation. Hargrave P. concluded that the case law and Rules did not require that costs be allocated, but allow that they be awarded in the cause as long as the exercise of discretion is on a proper basis.
7. Michael J. Culhane v. ATP Aero Training Products and Reilly James Burke, November 26, 2004, FCTD (Harrington J.) Motion to Review Damage Assessment Awarded by Assessment Officer Motion by Culhane for review of assessment. Culhane's action against the defendants was dismissed by O'Keefe J. “with costs to the defendants”. The costs were presented at $81,897.85 and allowed by the Assessment Officer, at $61,285.49. In reaching that amount, he doubled costs in accordance with Federal Court Rule 420 on the basis that the defendants made a written offer to settle which was not revoked and which, if accepted, would have achieved a better result for the plaintiff than the trial did. The unrevoked offer was that each of the two defendants pay the plaintiff $5.00, but that the plaintiff pay the defendants' costs (which would have left the plaintiff out of pocket). The offer was criticized as not representing a compromise. Held: Motion dismissed. The rule does not specifically state that compromise is a necessary element. In any event, the forbearance of future costs in this case did represent a considerable compromise. A “slackening of costs” is in itself “an ingredient of compromise” as noted by Blais J. in Kirgan Holding S.A. v. Ship Panamax Leader (2003), 227 F.T.R. 200. It is well established that, even if a judge has a different view, he or she should not interfere with the decision of an assessment officer unless there has been an error in principle, which shows in the reasoning or is implied because the result is so unreasonable.
8. Pfizer v. Roxalpharma, December 1, 2004 FCTD (Finckenstein J.) Federal Court Rule 84(2)/Federal Court Rule 312/Introduction of Further Evidence After Cross-Examination Motion by Rhoxalpharma to set aside the order by Aronovitch P. that allowed Pfizer to introduce further evidence after completion of cross-examination. The issue at trail was whether Rhoxalpharma's azithromycin product contained dihydrate or monohydrate. In response to Rhoxalpharma's Notice of Allegation (NOA), Pfizer commenced prohibition proceedings in which it supplied two affidavits containing its assertions. This evidence contained no test results, even though Pfizer had been supplied with sample product months in advance. In support of its NOA, Rhoxalpharma supplied a competing expert's affidavit, including test results. Rhoxalpharma's expert was vigorously cross-examined and several discrepancies and conflict over the method of testing emerged. Pfizer sought to correct those problems with new further affidavit evidence, including results from a different type of test. Held: Motion allowed. The Court clarified that, in accordance with Salton Appliances (1985) Corp. v. Salton Inc. (2000) 4 C.P.R. (4th) 491, the interpretation of the evidentiary rules of r. 84(2) and r. 312 should be similar and yield similar results. Regard must be given by the Court to the relevancy of the proposed affidavit, the absence of prejudice to the opposing party, its assistance to the Court, and the overall interest of justice. The Court refuted the Prothonotary's findings that the affidavits to be introduced did not contain new information that could have been submitted previously, and that the new evidence did not amount to allowing Pfizer to split its evidence. The Court concluded that Pfizer had ample opportunity to advance test evidence on the subject azithromycin, and that its ultimate use of a different test constituted entirely new evidence. Allowing Pfizer to introduce such evidence also had the effect of allowing it to split its evidence, i.e. first rejecting the allegations on the basis of scientific augmentation and then after cross-examination introducing its own experimental laboratory evidence. Pfizer cannot be allowed to try to fix its evidence after cross-examination to the detriment of Rhoxalpharma.
9. Merck and Astrazeneca v. Apotex, December 9, 2004 FCTD (Morneau P.) Implied Undertaking Rule/Protective Order/Patented Medicines (Notice of Compliance) Regulations This was a motion by Apotex for an order relieving it from the implied undertaking rule and to vary the Protective Order issued on July 24, 2000. Apotex wanted to use Canadian Patent Application number 518,336 (the '336 application) and its file history for its Notice of Allegation (NOA) under the Patented Medicines (Notice of Compliance) Regulations in respect of a patent on the Patent Register for the medicine lisinopril/hydrochlorothiazide. In particular, Apotex wished to assert that the application that begot the subject patent was for the same invention as the '336 application, which was abandoned, and therefore the registered patent was null, void or of no effect. Held: Motion allowed. Apotex is allowed to use the '336 application for its NOA, and the Protective Order is varied. When weighing the competing interests of the parties, there were considerations that militated against granting Apotex relief. Nonetheless, the Court was satisfied that Apotex would be seriously impeded in its efforts to advance a full and complete argument of invalidity if it was not allowed to use the '336 application. The Court concluded that this prejudice outweighed the prejudice to Merck and Astrazeneca.
10. CCH Canada and Thomson Canada and Canada Law Book v. The Law Society of Upper Canada, December 24, 2004 FCTD (Gibson J.) Motion for Increased Costs Motion by the Law Society for increased costs with respect to the trial proceedings. The proceedings were successfully appealed by the Law Society to the Supreme Court of Canada where it was awarded “costs throughout”. The Federal Court of Appeal first addressed the issue of its discretion to award increased costs. The Court of Appeal held that when the Supreme Court makes an award of “costs throughout” the direction to the Court of Appeal is neutral, leaving the Court of Appeal to decide on the appropriate amount of costs. The Court of Appeal stated the factors for awarding increased costs to be: financial resources of the parties, cost of counsel, complexity of the issues, length of record, written and oral arguments and judgment, which party initiated the litigation, and which party was successful. Based on these factors, the Court of Appeal awarded increased costs. Held: The Trial Court awarded the Law Society party-and-party costs in the amount of $190,000 including fees, disbursements (including an amount in respect of the expert fees and travel expense and attendance fees), and GST. The Trial Court held that the factors mentioned by the Court of Appeal are all equally applicable in this Court. All the issues that were before the Court of Appeal were also before this Court. The Trial Court held that the disbursement amounts in respect of the experts were reasonable and that it was reasonable for counsel for the Law Society to increase the base amount of the disbursements to account for the costs.
11. Smithkline Beecham v. Pierre Fabre Medicament, December 30, 2004 FCA (Pelletier J.A.) Extension of Time Motion by Smithkline Beecham for a fourth 30-day extension to file a Notice of Appeal from a decision on June 4, 2004. The purpose of this extension, like the others, was to allow the parties to concluded negotiations regarding settlement. Held: The Court suspended consideration of the motion so the parties could file timetables for concluding the settlement negotiations. While the parties might see some benefit to maintaining a sense of urgency by requesting only short time extensions, it is a burden on Court resources. The Court was willing to defer to the parties to determine the process for negotiation, but the Court required that a detailed listing of all outstanding matters be compiled, including the dates for their completion. The extension would then be set by these timetables, and it would be the last one allowed.
II. OTHER COURT DECISIONS1. Furniture Gallery Lloydminister v. Murphy et al., December 6, 2004 ACQB (Erb J.) Passing Off/Injunction Application for an injunction to prevent the defendant from using the trade name FURNITURE GALLERY. Since 2001, the applicant has been operating a furniture store under the name Furniture Gallery Lloydminister and the slogan WHERE QUALITY IS THE DIFFERENCE. In 2003, the defendant changed the name of its store to Cold Lake Furniture Gallery and began use of the slogan WHERE QUALITY IS AFFORDABLE Held: Injunction granted. The cities where the two businesses operate are in the same trading area and receive the same radio and newspaper advertisements. The differences between the parties' names are subtle and would not be picked up by the average consumer, who would be confused into thinking that the stores were all associated. The respondent is benefiting from the applicant's ads and the applicant will be negatively impacted if consumers attend the respondent's stores expecting to purchase wares advertised by the applicant.
2. Spiderplow Canada v. Lyons et al., December 9, 2004 ACQB (Coutu J.) Passing Off/Interim Injunction Cross-applications for an interim injunction to prevent the other from using the name Spiderplow. The parties originally worked together, the plaintiff in Canada and the defendant in the U.S. After the relationship fell apart, the defendant entered the Canadian market Held: Interim injunction granted to the plaintiff. Both parties satisfied the Court that there was a serious issue to be tried and that there was irreparable harm, but the balance of convenience favoured the plaintiff because it had invested much more in the market than had the defendant who was a relative newcomer. The injunction will preserve the status quo and does not prevent the defendant from selling the plows under a different name.
3. Hermes v. Park, December 17, 2004 BCSC (Boyd J.) Passing Off/Trade Dress /Interim Injunction Plaintiffs seek an interim injunction to prevent the defendant from selling “knock-off” Hermes style handbags. The defendant has a store that carries a complete line of knock-off Hermes products. None of the defendant's wares display the words “Hermes Paris Made in France” that appear on every genuine Hermes article (instead they read “Henry High Class Kelly”) but otherwise they copy the unique and distinguishing features of Hermes products. Held: Injunction granted. The plaintiff has satisfied the three prerequisites to getting an injunction. It is no defence for the defendant to say that others are also selling “knock-offs”. Nor does it matter that the plaintiffs do not own a trade mark or industrial design registration because the plaintiffs may rely on common law rights. The plaintiff has established that it has a strong case with respect to the name, reputation and handbags style in issue. Although the defendants are not using the name HERMES, the plaintiff argued that the defendant's target clientele may very well think that their store is the plaintiff's “second line” of products since it is not uncommon in the industry for business to establish a “second line” under a different trade mark at a lower price. The Court found that the plaintiff's case was weakest with respect to the issue of misrepresentation but still found that there was a case to be tried since the defendant was clearly trying to either convince its customers that its products were associated with the plaintiff or were trying to produce a product that would enable its customers to convince others that they owned one of the plaintiff's products. Irreparable harm exists in the form of damage to the plaintiff's reputation. The balance of convenience favours the plaintiff; the defendant has only been in operation for two months. The defendant's refusal to name the manufacturers or the suppliers of its goods suggests that the defendant is not the key player, and its argument that an injunction will cause it to become bankrupt indicates that it would be unable to compensate the plaintiff should the plaintiff succeed at trial. The defendant's offer to post a sign indicating that its goods are not in any way associated with Hermes is unacceptable.
III. OPPOSITION BOARD DECISIONS 1. H-D Michigan v. MPH Group, June 1, 2004 (Carrière) Confusion Proposed-use application for HARLEYWOOD for operation of a night club and clothing. Opposition based, inter alia, on s. 12(1)(d) due to confusion with various HARLEY-DAVIDSON marks registered for motorcycles, various wares, and restaurant and bar services and HARLEY registered for motorcycles, and restaurant and bar services. Held: Opposition rejected. Bald statements of use should not be accepted just because they have not been challenged by the other side. The opponent's evidence only enabled the Board Member to conclude that the HARLEY-DAVIDSON mark has acquired reputation in association with motorcycles. The evidence regarding use of the opponent's marks in association with restaurant and bar services was not shown to enure to the opponent's benefit pursuant to s. 50, with the result that the opponent's marks are non-distinctive with respect to such services. When viewed as a whole, HARLEYWOOD is visually and orally different from the HARLEY-DAVIDSON marks and so confusion is not likely with respect to the wares. If the Board Member had not found the opponent's HARLEY mark to be non-distinctive with respect to restaurant services, then he would have refused the application with respect to its services on the basis that there exists enough similarity between HARLEYWOOD and HARLEY to make confusion likely.
2. Bojangles' International and Bojangles' Restaurant v. Bojangles Café, June 9, 2004 (Herzig) Section 30(i)/Section 7(b)/Distinctiveness Application for BOJANGLES CAF_ based on use for bakery goods, clothing, and restaurant services and on proposed use for household utensils. Opposition based on s. 30(i) because the applicant's use is in violation of s. 7(b) and non-distinctiveness due to confusion with the opponents' mark BOJANGLES', which has been made known in Canada. Held: Opposition rejected. The opponents operate numerous BOJANGLES' restaurants in the United States and the evidence demonstrates that Canadians have visited such restaurants but does not quantify the extent to which Canadians have become familiar with the opponents' BOJANGLES' mark. The s. 30(i) ground failed because there is not a likelihood of confusion and therefore no deception of the public due to a misrepresentation. One instance of actual confusion is not determinative of the issue. The distinctiveness ground failed because the opponents did not show that its mark had become known sufficiently to negate the distinctiveness of the applicant's mark. Although the facts here are similar to those in Motel 6 in that there is a concentration of BOJANGLES' restaurants and advertising along major highways that are used by Canadians traveling from Canada into the States, in the present case “there is scant information about the opponents' restaurants being disseminated in Canada, or about the percentage of visitors to the opponents' restaurants who were Canadian, or contacts from Canada regarding the opponents' services…, or confusion by persons with some experience in the restaurant trade, or the reputation of the opponents' restaurants being spread in Canada by word of mouth.” The opponents have not shown that its mark has become well known in at least one area of Canada and that is the test set by the case law in order to succeed on a distinctiveness ground of opposition.
3. Sports Odyssée v. Odyssey Sports, June 15, 2004 (Carrière) Use of Trade-name Proposed-use application for ODYSSEY & Design for clothing. Opposition based, inter alia, on s. 16 due to confusion with the opponent's previously used trade-name Sports Odyssée Inc. Held: Opposition rejected because the opponent failed to evidence prior use of its trade-name. Documentation concerning amendment of the opponent's corporate name or relating to the opponent's CA number is not evidence of use of the trade-name. The appearance of the trade-name on catalogues is not evidence of use in association with wares (since the appearance of a trade mark on catalogues is not evidence of use with wares). Nor are the catalogues evidence of use of the trade-name with services because there is no evidence that they circulated in Canada prior to the material date.
4. Cluett, Peabody v. Effigi, June 15, 2004 (Carrière) Confusion Proposed-use application for AEROPEAK BY DE UNGAVA for clothing and accessories. Opposition based, inter alia, on s. 12(1)(d) due to confusion with ARROW registered for clothing. Held: Opposition rejected because of the lack of resemblance between the marks.
5. BCE v. Nexx Online, June 17, 2004 (Bradbury) Section 30(b) Use-based application for NEXX for web hosting services, electronic commerce services, namely development of web sites that enable buying and selling of wares and services through a global computer network. i.e. the Internet, consulting services regarding development and operation of web sites. Opposition based, inter alia, on s. 30(b). Held: Opposition rejected. The opponent has not filed any evidence in support of its s. 30(b) ground of opposition and the applicant's evidence is not clearly inconsistent with the claims set out in the application.
6. Taxwide v. Softron Computers, June 21, 2004 (Bradbury) Section 30(b) /Distinctiveness Use-based application for TAXWIDE Design for preparing and electronic filing income tax returns, providing income tax courses, bookkeeping and accounting services and providing tax preparation services over the Internet. Opposition based, inter alia, on non-compliance with s. 30(b) because the applicant has not used the mark since the date claimed and non-distinctiveness because the opponent has been using the same mark for the same services. Held: Application refused. The s. 30(b) ground succeeded because the opponent met its initial burden by filing evidence from a former employee of the applicant attesting that he never saw any use of the mark. The applicant's evidence did not contain a clear statement of use of the mark since the date claimed. The distinctiveness ground also succeeded - the applicant argued that the opponent could not rely on its infringing use but there is no evidence that the applicant has any rights that the opponent could infringe.
7. Green Cuisine v. Nestlé, June 28, 2004 (Bradbury) Confusion Proposed-use application for GREEN CUISINE for frozen, chilled or dehydrated prepared foods. Opposition based, inter alia, on s. 16(3) due to confusion with GREEN CUISINE previously used by the opponent for bread and restaurant and catering services. The applicant did not file any evidence. Held: Application refused. The parties' wares and services are closely related and the opponent subsequently expanded its use to prepared foods.
8. Medical Developments Australia v. Kabushiki Kaisha Tanita, June 28, 2004 (Bradbury) Confusion/Descriptiveness Proposed-use application for BREATH ALERT for analyzers for measuring the quantity of chemicals causing bad breath for medical purposes and analyzers for measuring the quantity of chemicals causing body odors for medical reasons. Opposition based, inter alia, on s. 12(1)(d) due to confusion with BREATH-ALERT registered for peak flow respiratory meters and on s. 12(1)(b). Held: Application refused based on s. 12(1)(d). Confusion likely because the marks are identical and are both associated with “breath” related measuring devices. BREATH ALERT is not clearly descriptive of the applicant's wares because it is not self-evident upon first impression what character or quality the mark is referring to.
9. Royal Bank v. Johnson, June 28, 2004 (Bradbury) Descriptiveness Use-based application for PREFERRED OPTION PLAN for insurance services. Opposition based, inter alia, on s. 12(1)(b). Held: Opposition rejected. The opponent's evidence of third party use of PREFERRED OPTION PLAN postdated the material date and did not show use in Canada. In addition, evidence of use as a trade mark, as opposed to in a descriptive sense, does not support a s. 12(1)(b) ground. It is unclear what a consumer would understand PREFERRED OPTION PLAN to describe.
10. UL Canada v. Queenswood National Real Estate, June 29, 2004 (Martin) Confusion/Admission Against Interest Use-based application for Q TIPS for services of a real estate brokerage business. Opposition based, inter alia, on s. 12(1)(d) due to confusion with Q TIPS registered for cotton-tipped swabs. Held: Opposition rejected because of the wide differences between the wares, services and trades of the parties and notwithstanding the fame of the opponent's mark. Although the opponent argued that the applicant had made an admission against interest by filing a statement of opposition against the |
