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2. Pfizer Canada and Warner-Lambert v. The Minister of Health and Novopharm, December 7, 2006 FCTD (von Finckenstein J.) Prohibition Order/Sufficiency of NOA/Selection Patents/Patented Medicines (Notice of Compliance) Regulations Application by Pfizer for an order prohibiting the Minister from issuing an NOC to Novopharm with respect to certain formulations of atorvastatin calcium, the active ingredient in the drug LIPITOR™, until after the expiry of the '546 patent ("Patent"). Novopharm alleged that the Patent was invalid for reasons of anticipation, obviousness and double patenting. Pfizer asserted that the Patent is a selection patent that identifies specific forms of atorvastatin and discloses both the unexpected advantage of a 10-fold increase in activity (in lieu of the expected two-fold increase) and 'preferred physical properties'. The Patent did not specifically disclose the 'preferred physical properties', however Pfizer alleged that it would be understood by a person skilled in the art that a salt identified in the Patent is the 'most preferred embodiment' of the invention. Although Novopharm's NOA made no reference to selection patents or inutility, they argued that they could lead evidence impugning the data supporting the 10-fold increase of activity disclosed in the Patent as: 1) the issue was implicitly 'in play' through the other allegations; 2) they did not know about the issue until they received the affidavits from Pfizer and cross-examined on them; and 3) Pfizer was in no way confused or complained about the specificity of the NOA. Held: Application granted. The Patent is a valid selection patent claiming the unexpected 10-fold advantage of atorvastatin calcium (the R-trans enantiomer) over the racemate. Novopharm’s NOA was insufficient as it made no reference to selection patents or inutility nor did it challenge that the data used to support the selection patent was questionable, unreliable or unsupported. If the Patent is a valid selection patent, this is a complete answer to Novopharm's allegations of anticipation, obviousness and double patenting. None of Novopharm’s witnesses asserted or led evidence showing that the 10-fold advantage was anticipated or obvious. The Patent is novel and unexpected and cannot be invalid on the basis of double patenting. The mere assertion in the Patent that a particular salt of atorvastatin is the 'most preferred embodiment' does not meet the requirement of a valid selection patent in terms of a salt selection. The case therefore depends on whether the Patent is a valid selection patent and specifically the reported 10-fold increase in activity of one of the enantiomers. Both parties’ experts agreed that the Patent on its face is a selection patent. Although a generic does not need to anticipate every possible defense a brand name manufacturer may raise, it must mention in its NOA the legal and factual basis of its allegation. Since the allegedly flawed data evidencing the 10-fold advantage was not challenged in the NOA, it does not form part of the 'cause of action'; the Court will not consider any evidence or submissions that question the veracity, reliability or soundness of that data. Finckenstein J. nevertheless went on to review the evidence presented on the data underlying the 10-fold increase in activity, and held that even if the NOA was found to be sufficient, the Patent is still a valid selection patent, as the allegations by Novopharm questioning the data of the 10-fold advantage cannot be sustained.
1. Canadian Tire v. Accessories d’autos Nordiques, November 27, 2006 FCTD (Blais J.) Opposition Appeal/Confusion Appeal from an opposition decision that refused the appellant’s proposed use application to register NORDIC & Snowflake Design for tires. The respondent owns the trade-mark NORDIQUES registered for, inter alia, wheel covers and the Registrar found that confusion between the two marks was likely. The appellant filed new evidence on appeal. Held: Appeal allowed. Trade mark register evidence showed that NORDIC/NORDIQUE marks are often associated with winter and as such are not inherently distinctive (the evidence did not show that such marks are common in the automotive parts/accessories field). As of the material date, there was evidence of significant use of the appellant’s mark and no evidence of use of the respondent’s mark. The Court found the Registrar to have erred with respect to the consideration of s. 6(5)(e) for two reasons: 1) the Registrar should have considered the marks as a whole rather than finding that the dominant portion of the appellant’s mark was the word NORDIC; 2) new evidence filed on appeal (including a survey) bolstered the appellant’s expert evidence that the primary idea associated with NORDIQUES is the former hockey team of that name. The Court concluded that the two marks “are not only dissimilar in appearance, but also bring to mind different ideas, which would likely limit the possibility of confusion on the part of consumers.” The Court noted that there was no evidence of confusion despite several years’ coexistence.
2. Tint King of California v. Reg. TMs, November 28, 2006 FCTD (Russell J.) Section 45 Appeal/Adjournment to File Additional Evidence/Federal Court Rules 312 and 313 Appeal from Registrar’s decision to expunge the appellant’s registration for TINT KING. The s. 45 notice was sent to the home of the appellant’s sole officer and director, who had recently died of cancer. His widow did not open any business correspondence during a period of bereavement and so did not become aware of the s. 45 proceedings until after the expungement decision issued. The widow filed evidence concerning use of the mark on appeal, in her position as her husband’s executor. Held: Appeal allowed in part; the registration will be maintained for the services. The wares were deleted because the invoices filed showed the mark at the top followed by an address, which did not qualify as use under s. 4(1). The Court held that the widow should be allowed to file evidence in support of the registration. However, when it was noted at the hearing that the evidence of use seemed slim, the appellant’s counsel requested an adjournment to allow him time to provide clarification on use of the mark. The adjournment was granted on condition that authority be provided for the request to file supplemental materials. The Court allowed the additional evidence and submissions supporting their admission pursuant to Federal Court Rules 312 and 313. The additional evidence was admitted because “the sympathetic circumstances of the [appellant] merit some leniency, the Court requires more evidence to effectively evaluate whether the Mark has been in use, and it is difficult to see how the submission of additional evidence could prejudice the other side when the respondent has not participated in the appeal and has not submitted any material.” The Court dealt with the fact that the evidence could have been made available at an earlier date by noting that this is not a case where it appears that the appellant was trying to split its case, nor would there be any advantage to it in so doing.
3. International Taekwon-do Federation et al. v. Choi et al., December 5, 2006 FCTD (O’Reilly J.) Section 57 Expungement/Agent-Principal Relationship Application to expunge certain trade mark registrations on the basis of invalidity. The respondents did not appear at the hearing. Held: Application allowed. The respondents were officers of the applicant, they had a fiduciary duty towards it and any use by them should be interpreted as use by the applicant.
4. Omega Engineering v. Omega SA, December 8, 2006 FCTD (Blais J.) Section 57 Expungement/Amendment of Preamble to Statement of Wares/Abandonment Application to expunge the respondent’s registration for OMEGA & Design. The statement of wares reads “appareils techniques et scientifiques… nommément…”. The applicant asks the Court to either remove these wares or replace them with “appareils sportifs nommément…” because it submits that the general classification that precedes the statement of wares is not descriptive of the wares that follow that statement. Alternatively, the applicant seeks expungement on the basis of abandonment. Held: Application dismissed. The Court’s ability to amend a statement of wares under s. 57 is only to be exercised where the trade mark is otherwise open to expungement, i.e. an amendment may be made if it saves an otherwise invalid mark. While the applicant’s objection could have been raised as a ground of opposition, it cannot be raised under s. 57. The proposed amendment could negatively impact the rights of third parties who have not been given notice of the proposed change. In s. 45 proceedings, the respondent satisfied both the Registrar and the Court of Appeal that it was using its mark in association with the specific wares listed in its registration. Thus the applicant did not meet its burden to show abandonment in respect of the general classification; an applicant is entitled to identify broadly the general class of wares associated with its mark.
5. Hyundai v. Cross Canada Auto Body Supply, December 18, 2006 FCTD (Strayer J.) Interlocutory Injunction/Irreparable Harm Motion for an interlocutory injunction to prevent the defendant from using HYUNDAI on automobile parts. The plaintiff owns the registration for HYUNDAI. The defendant says that the wares it sells are genuine parts acquired from the same company that supplies the plaintiff. Held: Motion dismissed. The plaintiff claims that its goodwill will be damaged because the defendant’s parts 1) do not have warranty protection and 2) may not conform to safety standards. The defendant has provided evidence to the contrary re 1) and the plaintiff has not produced any evidence to support its speculation that the defendant’s wares may be inferior. The plaintiff therefore failed to demonstrate irreparable harm. The Court rejected the plaintiff’s submission that this was a case of blatant infringement of a registered trade mark in which an injunction could be granted without proof of irreparable harm.
6. Smart & Biggar v. AG Canada, December 21, 2006 FCTD (Strayer J.) Section 45 Appeal/Special Circumstances Appeal from Registrar’s decision to maintain a registration for VANITY. The Registrar found that the mark had not been used for 13 years but maintained the registration on the basis that the registrant evidenced that it had plans to relaunch the product 6 months before the issuance of the s. 45 notice, which the Registrar classified as special circumstances that excused the absence of use. Held: Appeal allowed. The Registrar erred in finding that a 13 year period of non-use due to a deliberate decision of the registrant could be “excused” under s. 45(3) by reason of the registrant’s intention to use it in the near future.
II. OTHER COURT DECISIONS1. Onkea Interactive v. Smith and Chan, November 20, 2006 BCCA (Smith J.A.) Interlocutory Injunction/Irreparable Harm/ Internet Appeal by Smith and Chan from an interlocutory injunction that enjoined them from using peer-to-peer file sharing to direct Internet users from their website to adult entertainment subscription-based sites. Onkea claimed it was the first in its industry to use peer-to-peer file sharing for such a purpose. The subscription-based sites paid finders' fees to Onkea when users passed through Onkea’s website and purchased subscriptions. Smith and Chan entered a joint venture agreement with Onkea to develop Onkea's own subscription-based site, but when the joint venture failed Smith and Chan began using peer-to-peer file sharing in their business. Onkea commenced an action, claiming they were using its proprietary method and confidential information to lure its customers away, and obtained an interlocutory injunction. Held: Appeal allowed. Onkea's claim was neither frivolous nor vexatious. However, the Judge erred in concluding Onkea would suffer irreparable harm. Onkea had no market share to lose because no commercial exchange took place between Onkea and users passing through its website. Onkea's potential loss of finders' fees was purely monetary and could be fully compensated by a monetary award.
2. Xerox v. MPI, November 30, 2006 OSCJ (Campbell J.) Copyright/Confidential Information/Jurisdiction of Panel Constituted under the International Commercial Arbitration Act Application by Xerox for an order to quash an award made against it in favour of MPI in proceedings before a panel constituted under the International Commercial Arbitration Act. MPI entered into an arbitration agreement with Xerox to deal with claims against Xerox resulting from a dispute under a software and hardware development and licensing agreement. MPI was awarded unpaid royalties of $50 million US and damages of $36 million US for unauthorized use of confidential information or for breach of copyright. Xerox attacked the award on jurisdictional grounds, claiming that the panel exceeded its jurisdiction by misconstruing its powers and duties under the Model Law, by improperly conducting the hearing and by allowing the misuse of knowledge gained by one member of the panel who had a technical background. Held: Application dismissed. The Court is required to give deference to and strong support to the award as it commenced as a consensual process. The Court does not have the power under the Model Law to set aside an arbitral award for an error of fact or even for an error of law and it was unable to conclude that the jurisdictional errors raised by Xerox were made out.
III. OPPOSITION BOARD DECISIONS 1. Nerds On-Site v. Iverson, September 1, 2006 (Tremblay) Section 30(b)/Section 30(i)/Conflicting Evidence Use-based application for WE KNOW STUFF for various computer services. Opposition based, inter alia, on s. 30(b) and (i). Held: Application refused. The s. 30(b) ground succeeded because the applicant claimed use since January 1, 2000. As that date was a statutory holiday, the opponent’s initial burden was satisfied and the applicant failed to lead evidence to the contrary. The s. 30(i) ground succeeded because the applicant was a former employee of the opponent and was aware of the opponent’s activities with respect to the trade mark WE KNOW STUFF. Both the applicant and a principal of the opponent attested that she/he developed the mark but the Registrar preferred the evidence of the opponent because it was more detailed and was better corroborated by exhibits.
2. Brandbrew v. Big Rock Brewery, September 1, 2006 (Bradbury) Confusion Proposed-use applications for BOSS and BOSS LIGHT for beer. Opposition based, inter alia, on s. 12(1)(d) due to confusion with BASS registered by the opponent for beer. Held: Applications refused. The applicant failed to satisfy its onus given that the opponent’s mark had been used in Canada for over a century, there was no use of the applicant’s marks, the wares and channels of trade are identical and the differences between the marks are insufficient on their own to make confusion unlikely.
3. Maya Overseas Foods v. Multicuisine Foods, September 7, 2006 (Bradbury) Confusion Proposed-use application for MAYA’S CREATION for food products comprising: sauce, samosa, roti, croquette. Opposition based, inter alia, on s. 12(1)(d) due to confusion with MAYA registered by the opponent for a variety of food items, including sauces. Held: Application refused. The applicant failed to satisfy its onus given the high degree of resemblance between the marks, the fact that they are both used in association with food products, and the absence of evidence from the applicant.
4. Forbes Medi-Tech v. Heel Canada, September 7, 2006 (Bradbury) Confusion Proposed-use application for REDUCHOL for pharmaceutical preparations, namely, natural health products comprised primarily of orange zest and used in the management of hypercholesterolemia. Opposition based, inter alia, on s. 16(3)(b) due to confusion with REDUCOL & Design in respect of which an application had previously been filed by the opponent for, inter alia, dietetic substances adapted for medical use, namely, mineral and/or vitamin preparations. Held: Application refused. Confusion likely because there is an extremely high degree of resemblance between the marks and the wares associated with each are intended to help reduce cholesterol.
5. Boy Scouts of Canada v. Michael Aleksiuk, September 7, 2006 (Bradbury) Confusion/Official Mark Proposed-use application for BILLY BEAVER for prerecorded videos, films and television programs, children’s books, etc. Opposition based, inter alia, on s. 12(1)(e) in view of the opponent’s official mark BEAVERS and s. 16(3)(a) due to confusion with BEAVER previously used by the opponent with youth programs and activities and a variety of wares. Held: Opposition rejected. The s. 12(1)(e) ground failed because the marks are sufficiently different to prevent a Canadian consumer from mistaking one for the other. The s. 16(3)(a) ground failed because the opponent only evidenced use of its mark with services, any wares sold by the opponent are restricted to its own outlets or outlets that are duly authorized by the opponent, and there is not a great degree of resemblance between the marks (the applicant’s mark suggests a character whereas the opponent’s mark suggests the animal).
6. S & S Productions v. Andre M. Messier, September 11, 2006 (Bradbury) Confusion Proposed-use application for POSSUM LODGES for sale and rental of recreational lodging… Opposition based, inter alia, on s. 12(1)(d) due to confusion with POSSUM LODGE registered by the opponent for clothing, printed materials and the production and distribution of programs, films and videos for television, etc. Held: Application refused. The opponent’s mark has been extensively used since 1991 whereas there is no evidence of use of the applicant’s mark. Although the parties’ businesses and trade are quite different and their services do not overlap, there is a connection between them in that the characters in the opponent’s television show regularly meet in and around POSSUM LODGE and satirize the stereotypical outdoorsman/sportsman. Accordingly, the applicant did not satisfy its onus.
7. TCG International v. Autosock, September 11, 2006 (Bradbury) Confusion Proposed-use application for AUTOSOCK for non-skid devices for vehicle tires. Opposition based, inter alia, on s. 12(1)(d) due to confusion with AUTOSTOCK registered by the opponent for operation of a business for the sale of automobile windshields, upholstery… and accessories for cars and vehicles. Held: Application refused. The applicant failed to satisfy its onus given the high degree of resemblance between the marks, the fact that they are both used in the automotive products/accessories industry, and the absence of use of the applicant’s mark in Canada, contrasted to the opponent’s use for a number of years. (An appeal has been filed.)
8. Campbell Soup v. Fancy Pokket, September 11, 2006 (Carrière) Confusion/Evidence by Employee of Law Firm Proposed-use application for PACO for tortillas. Opposition based, inter alia, on s. 12(1)(d) due to confusion with PACE registered for Mexican style hot sauce. Held: Application refused. Confusion is likely because the opponent’s mark is inherently distinctive, has been used and become known, there exists an association between the wares and there is some resemblance between the marks. The opponent filed evidence by an articling student employed by its law firm on the issue of the overlap between tortillas and salsa sauce. As this was a contested issue, the Registrar disregarded the student’s evidence. Nevertheless, he found that there was a connection between the two food items based on advertisements filed by another affiant that read “serve Pace Chunky Salsa with tortilla chips for dipping…”
9. Starving Students v. Starving Students Moving, September 18, 2006 (Martin) Differences Between Mark Applied For and Mark Used Use-based application for STARVING STUDENTS MOVING LTD. for residential and commercial moving and cartage services and courier and light delivery services. Opposition based, inter alia, on s. 30(b). Held: Application refused. The evidence showed that the applicant had used STARVING STUDENTS with a heart design in between the words. The Registrar held that it had not used the mark applied for since the date claimed since the addition of the words MOVING LTD. and the removal of the heart design comprise more than minor changes.
10. Betonel v. Permatex, September 22, 2006 (Carrière) Confusion/Evidence from Prosecution File Proposed-use application for BETONOL for industrial and commercial use epoxid and polyurethane coatings for cement based surfaces. Opposition based, inter alia, on s. 12(1)(d) due to confusion with the opponent’s mark BETONEL registered for “peinture, pour usage sur murs, plafonds, portes et boiseries; solvent, ciment à joint, décapants, vernis, colle et pinceaux.” Held: Application refused. The average hurried consumer having an imperfect recollection of the opponent’s BETONEL mark is likely to be confused upon encountering the applicant’s BETONOL mark in the marketplace. Both parties’ wares are hardware merchandise used to cover surfaces. Béton is the French word for concrete but the use of five marks including “beton” is insufficient to conclude that “beton” is a common term in the trade. The Registrar refused to consider statements filed by the applicant during the examination stage of its application, because such documents were not introduced into evidence by way of affidavit or certified copy.
11. 88766 Canada v. Ego Sport Hungaria, September 27, 2006 (Carrière) Confusion/Unpleaded Grounds Proposed-use application for EGO & Design for bags, clothing and sports shoes. Opposition based, inter alia, on s. 12(1)(d) due to confusion with EGO registered by a third party for deodorant, perfume and body spray. Held: Opposition rejected. Confusion is unlikely given the differences in the nature of the wares and the absence of evidence that their channels of trade would overlap. The Registrar refused to consider an unpleaded s. 30(a) ground on the basis that a general reference to s. 30 in the statement of opposition was insufficient to consider such ground to have been pleaded. To consider such an unpleaded ground would be highly prejudicial to the applicant.
12. Changepoint v. Chequepoint Franchise, September 28, 2006 (Bradbury) Confusion Proposed-use application for CHANGEPOINT for providing international money transfer services to the general public through concession outlets, specifically excluding services related to computer systems and computer software and specifically excluding services related to management of information technology…. Opposition based, inter alia, on s. 12(1)(d) due to confusion with CHANGEPOINT registered by the opponent for computer software in the fields of project and resource management, work management and workgroup collaboration, and related services. Held: Opposition rejected. Confusion is not likely given the differences between the parties’ wares, services, businesses, channels of trade and clientele. “It does not seem reasonable to conclude that an end user who has an imperfect recollection of the opponent’s CHANGEPOINT mark, as associated with business management computer software and consulting services, would be likely to think that a concession performing currency exchange services under the mark CHANGEPOINT shares the same source as the business management computer wares and services.” The opponent’s evidence fell far short of entitling it to that broad a scope of protection.
13. Stone v. CI Investments, October 2, 2006 (Tremblay) Confusion Proposed-use application for PURE STYLE for mutual fund services and the like. Opposition based, inter alia, on s. 12(1)(d) due to confusion with the opponent’s mark PURE GROWTH registered for financial and investment services. Held: Application refused. The applicant did not make any argument and the evidence that it filed was returned. Accordingly, it did not discharge its burden.
PENINSULA FARM registered for yogurt. Held: Registration maintained. The Registrar was prepared to accept that a page showing how the mark had been displayed on yogurt sold by the registrant over the years, showed how the mark was used during the relevant period. In addition, the Registrar accepted that the display of PENINSULA FARM at the top of invoices would be perceived as use of the mark in association with the wares being sold since the registrant is the manufacturer and no other trade mark appears on the invoices. The Registrar also accepted that the invoices would accompany the wares at the time of delivery since the registrant made the deliveries.
2. 88766 Canada v. Pierre Fabre Médicament, September 27, 2006 (Savard) Special Circumstances ITAX registered for hair products. Held: Registration expunged. The registrant’s evidence was that the mark is used in various countries but not Canada and that certain studies would have to be conducted before it could be marketed in Canada. Since the registrant did not indicate why it had not commenced these studies, it appeared that it was voluntarily choosing to not use the mark.
3. 88766 Canada v. Monte Carlo Restaurant, September 27, 2006 (Savard) Use on Coupons MONTE CARLO registered for pizza and spaghetti, operation of a restaurant, food take-out, a tavern, a banquet hall and food catering. Held: Registration amended to delete “a tavern and a banquet hall”. Representative flyers dated within the relevant period demonstrated use in association with the remaining services. The appearance of the mark on flyers having coupons with expiry dates within the relevant period supported the maintenance of the wares since they provided the required association between the mark and the wares both at the time of ordering of the wares and at the time of delivery of the wares.
4. Sterling & Affiliates v. Mattel, September 28, 2006 (Savard) Differences between Mark as Registered and Mark as Used DINKY TOYS registered for toy models. Held: Registration maintained. The evidence showed use of DINKY and an affiant attested to the fact that customers use DINKY and DINKY TOYS interchangeably and that no confusion occurs because DINKY and DINKY TOYS create the same commercial impression for customers. In view of this and the argument that the key component of the mark has been retained, the Registrar concluded that the differences between the mark as registered and as used is not so significant as to warrant expungement.
5. Deeth William Wall v. Upbeat Systems, September 29, 2006 (Carrière) Special Circumstances UPBEAT registered for computer software. Held: Registration expunged on the basis that the registrant did not establish special circumstances beyond its control that excused the non-use. There was no evidence of use since 1996. The registrant said that it never intended to abandon the mark and that it had hired two individuals to rewrite the program to make it more compatible with present day requirements, that initial testing of the new version will be completed shortly and that it intends to begin marketing the new version within the next year. However, there was no evidence that the individuals were hired before the s. 45 notice was issued and the intention to resume use was not substantiated by factual elements such as purchase orders or a specific date of resumption.
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