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2. Abbott Laboratories v. Apotex and Minister of Health, November 19, 2007, 2007 FCA 368 (Richard, Sharlow, Ryer JJ.A.) Motion to Dismiss/ Mootness/ Prohibition Application/ Section 6(5)(b)/ Patented Medicines (Notice of Compliance) Regulations Motion by Apotex for an order dismissing Abbott's appeal on the basis of mootness. O’Reilly J. dismissed Abbott’s prohibition application and the Minister issued a NOC. Abbott appealed and argued that the decision could have a collateral consequence that justified continuation of the appeal. This consequence arose from another application commenced by Abbott ("Sandoz"), where Sandoz had relied on O'Reilly J.'s decision to move under s. 6(5)(b) to dismiss Abbott's application as an abuse of process. Abbott asserted that it would be unfairly prejudiced in Sandoz if the present appeal were not permitted to continue because dismissal of its application in Sandoz might succeed even though the decision in the present case is arguably wrong in law. Abbott relied on Sanofi-Aventis v. Novopharm 2007 FCA 163 to argue that generic companies have an advantage with respect to motions under s. 6(5) and that innovator companies should have a corresponding advantage in the exercise of the court to hear moot appeals. Apotex countered that since Apotex had no interest in Sandoz it would be unfair to give the possible outcome of that case any weight in determining whether the present appeal should have been heard. Held: Motion granted. The possibility of a successful s. 6(5)(b) motion in another proceeding should bear no weight in the exercise of discretion to hear a moot appeal from a judgment dismissing a prohibition application. It would be unfair to Apotex to give the outcome of Sandoz any weight in determining the present motion. The only remedy Abbott could have obtained was a prohibition order, however the case became moot once the Minister issued the NOC. Due to judicial economy, the Court will not exercise its discretion to hear an appeal in most cases involving a moot appeal. A prohibition application does not end the substantive dispute of a patent since the applicant retains the right to pursue a claim for infringement.
3. McKay v. Weatherford Canada, November 23, 2007, 2007 FC 1233 (Campbell J.) Infringement/Obviousness/Evidence/Claim Construction Action for infringement of a patent claiming a method of removing a worn rubber sleeve (elastomer) from a pump by the use of a certain refrigeration technique which caused the elastomer to shrink and pull away from the metal pipe (stator housing) making up the pump. The defendant claimed that its process involved a different temperature and a mechanical shattering process rather than the shrinking process claimed in the patent. In addition to denying the infringement, the defendant alleged that the patent was invalid for obviousness. Held: The patent is not infringed, and the patent is not invalid for obviousness. Construing the claim, the Court concluded that there were three essential features to Claim 1: (1) subjecting a stator housing having an interior surface to which a worn elastomer is adhered by adhesive to cryogenic refrigeration until the elastomer shrinks and pulls away from the interior surface of the stator housing, and to avoid thermal shock, (2) the temperature of the stator housing being gradually lowered to cryogenic levels, and (3) then gradually raised to ambient temperature. In short, Claim 1 specified that the stator housing is to be subjected to “cryogenic refrigeration until” an event occurs; the event being that the elastomer shrinks and pulls away from the stator housing. Claim 2 was a dependent claim which limited the protection of the temperature to which the stator housing is to be subjected to between -150°C to -200°C. The defendant claimed that its process for removing an elastomer from stator housing did not depend on having the elastomer shrink and pull away from the stator housing. Instead, the defendant maintained that its process depends on subjecting a stator housing to a temperature cold enough to have the elastomer reach its glass transition temperature, and once this has been achieved, the elastomer becomes brittle and can be broken away from the stator housing by mechanical means. It is agreed that the glass transition temperature of the elastomers in question is - 21.8 C. As a result, the defendant argued that, since its process depended on a different principle for removal of a stator than that protected by the Patent, it did not offend the Patent. The Court concluded that there was no evidence that the defendant's process cooled the stator until the elastomer pulled away from the stator housing, or that the temperature was gradually raised to ambient temperature. Since the Court found that the defendant did not take any of the essentials of Claim 1, and Claim 2 was dependent on Claim 1, the defendant's process was found to be non-infringing. With respect to the allegation that the patent was invalid for being obvious, the Court concluded that the prior art was based on the idea that an elastomer will become brittle when it is cooled to below its glass transition temperature and can then be removed by exerting force. Prior art did not teach that, in order to avoid thermal shock, the elastomer should have its temperature gradually lowered and then gradually raised. As a result, Campbell J. held that the prior art did not teach the patent, and the patent was therefore not invalid for obviousness.
4. Dow Chemical v. Canada (AG) and Commissioner of Patents, November 26, 2007, 2007 FC 1236 (Barnes J.) Judicial Review/Clerical Error/Section 8 Patent Act Application for judicial review brought by Dow from a decision by the Commissioner of Patents pursuant to s. 8 of the Patent Act, seeking an order directing the Commissioner to correct a patent application by adding nine missing pages of text. Held: Application for judicial review dismissed. Dow's application was filed on September 1, 2000 and laid open for public inspection on March 15, 2001. Only on April 17, 2002 did Dow first ask the Commissioner to insert the missing pages. That request offered no explanation for the mistake beyond the bare assertion: "Due to an inadvertent clerical error, several pages were omitted from the PCT application text." Dow's request for a s. 8 correction was declined by the Commissioner in a letter dated July 22, 2003, in part, because Dow had failed to provide an explanation for the alleged clerical error. On May 9, 2005 Dow asked the Commissioner to reconsider his decision, and supported its request with a 5-page letter from its Canadian solicitors and an accompanying affidavit sworn by Dow’s U.S. patent attorney. On November 9, 2005, the Commissioner denied Dow's request for relief, because: "[t]he Commissioner does not consider that it is an appropriate exercise of his discretion to enter the requested correction… [the request pursuant to] Section 8 of the Patent Act was made on April 17, 2002. This is more than a year after the application was opened to public inspection... The accuracy and reliability of the information of the document as opened to public inspection is an essential part of the procedure. Following the opening of the patent application to public inspection, third parties may have relied on the information appearing in the application as available and could be prejudiced by the addition of new subject matter." In the judicial review, Dow argued that the Commissioner had erred in considering only third party prejudice; the Court disagreed, noting that both prejudice and delay had factored into the decision. The Court accepted the validity of the Commissioner’s position as expressed in his supplementary written argument to the Court, that the fact that the priority application documents were available, and that reference to those documents could have revealed that certain pages were not included in the Canadian application did not address the concern that third parties may never have been alerted to the fact that material was missing from the Canadian application at all, nor did it address the inherent concerns relating to prejudice associated with the delayed manner by which the requests for correction were made. The Court also noted that the Commissioner was not satisfied by the evidence presented that a clerical error had occurred and he expressed doubt that an error of this scope would be the likely result of the types of clerical slips for which s. 8 relief would ordinarily be available. In the result the Court concluded that the Commissioner's view of the evidence was not unreasonable.
5. Minister of Health and AG Canada v. Canadian Generic Pharmaceutical Association, November 27, 2007, 2007 FCA 375 (Noël, Sexton, Trudel JJ.A.) Appeal/Motion to Strike/Judicial Review/Standing/New Data Protection Regulations/Section C.08.044.1 of Food and Drug Regulations Appeal by the Minister and AG Canada from an order dismissing the appellants' motion to strike out the respondent's notice of application without prejudice to the appellants taking the same position when the application for judicial review is heard on its merits. Canadian Generic Pharmaceutical Association ("CGPA") was seeking judicial determination of the vires of a recently enacted amendment to s. C.08.044.1 of the Food and Drug Regulations (the "New Data Protection Regulations"). Held: Appeal dismissed. The decision to grant or refuse a motion to strike is discretionary. The Motions Judge did not proceed on a wrong principle of law in finding that the application should not be struck as it was not plain and obvious that CGPA did not have public interest standing. The Motions Judge made no overriding or palpable error using the test for public interest standing in concluding that it was not plain and obvious that there was another reasonable and effective manner in which to bring this issue to court. The Motions Judge also did not err in dismissing the appellants' motion without prejudice to raise the issue again when the application was heard on the merits. It is a matter of judicial discretion whether to determine the question of standing with final effect as a preliminary matter or to reserve it for consideration on the merits.
6. Apotex v. Governor in Council, Minister of Health and AG Canada, November 27, 2007, 2007 FCA 374 (Noël, Sexton, Trudel JJ.A.) Appeal/Motion to Strike/ Judicial Review/ Standing/ Section 18.1(1) of Federal Courts Act/New Data Protection Regulations/ Section C.08.044.1 of Food and Drug Regulations Appeal by Apotex from an order of the Motions Judge allowing the respondents' motion to strike out Apotex's notice of application and dismissing the proceeding on the basis that Apotex had no standing to bring the application for judicial review. Apotex was seeking judicial determination of the vires of a recently enacted amendment to s. C.08.044.1 of the Food and Drug Regulations ("New Data Protection Regulations"). The Motions Judge concluded that Apotex was not directly affected by the new regulations, and did not have public interest standing. The Motions Judge first analyzed whether Apotex had standing, and then addressed whether the application should be struck. The respondents argued that the application was premature as the regulations did not affect Apotex at the time. The main issue in an appeal of a motion to strike is whether it is plain and obvious that the application for judicial review is bereft of success. Other issues addressed included when courts should decide preliminary issues in a motion to strike and relevant considerations regarding the issue of standing in judicial review based primarily on vires grounds. Held: Appeal allowed. It was not plain and obvious that Apotex’s application for judicial review was bereft of success. Apotex has a strong argument with regard to being 'directly affected' by the New Data Protection Regulations. Section 18.1(1) of the Federal Courts Act limits the right of judicial review to individuals 'directly affected' by the matter. Since the present proceeding was based on a vires challenge, a factual context was not needed since it concerned the enactment of regulations pursuant to an enabling provision. A motion to strike an application for judicial review should be used in very exceptional cases and should only succeed if the application is so clearly improper as to be bereft of any chance of success. The Motions Judge erred in concluding that Apotex did not have standing and erred in determining that at the instant moment Apotex was not directly affected by the regulations. It is not always appropriate for motions to strike to be the context to make a binding decision on a question of standing especially in judicial review. A judge should exercise discretion as to whether it would be appropriate to render a decision on standing or whether a final disposition of the question should be heard with the merits of the case. The Motions Judge erred by commencing his analysis with a preliminary determination on the question of standing and failed to explicitly exercise his discretion to make a preliminary determination. If a judge does not exercise discretion to consider a preliminary question of law at the outset, then all legal issues considered in a motion to strike must be included within the legal test for a motion to strike. It is not correct to make a final decision on standing and then decide on the motion unless there is a clear exercise of judicial discretion.
7. Abbott Laboratories and TAP Pharmaceuticals v. Minister of Health, Novopharm and Takeda Pharmaceutical, December 7, 2007, 2007 FC 1291 (Phelan J.) Reverse Order/ Filing of Evidence/ Federal Courts Rule 55/ Patented Medicines (Notice of Compliance) Regulations Motion to require Novopharm to serve its evidence prior to service of Abbott's evidence in relation to an application under the Regulations. As this was the second NOC in respect of the same patent and issue between the parties, which was previously decided against Novopharm, Abbott argued that it is a re-litigation of the infringement issue and therefore Novopharm must have "better evidence" and an explanation for not putting forward its best case initially. Novopharm argued that the Court has no jurisdiction to make the proposed order because the rules require an applicant to file its evidence first and that this is not an appropriate case for a reversal. Held: Motion dismissed. Rule 55 provides the Court with sufficient authority "in special circumstances" to make an order dispensing with the usual rules under which an applicant files its evidence first. However, this is not an appropriate case to do so. The Court has recognized that multiple NOC proceedings as to the infringement issue may be permissible where there are significant differences in formulations between the respective NOCs. Since infringement claims may be the subject of subsequent NOC proceedings after a court decision on the same patent, there are no "special circumstances" which justify a departure from the usual order. The applicant is in the best position to know how the new formulation infringes the patent. The applicant did not advance arguments to strike the NOC on grounds of abuse, res judicata or issue estoppel. Matters relating to whether the new formulation is a significant change, as well as issues relating to discoverability, due diligence and explanations regarding "best foot forward" are more appropriate for the judge hearing the NOC proceeding.
8. Abbott Laboratories, TAP et al. v. AG Canada and Minister of Health, December 14, 2007, 2007 FC 1318 (Hughes J.) Patent Register/Section 5(1) and 5(2) of Patented Medicines (Notice of Compliance) Regulations Application by Abbott seeking to prohibit the Minister from issuing a NOC to any person in respect of, or in reference to, a formulation of PREVACID, unless such person complies with s. 5(1) or 5(2) of the Regulations in relation to two particular patents. The applicants had received a number of NOCs. The patents at issue were listed against one of the NOCs one day after it had issued. In support of its application, the applicants put forth as evidence an instance where one generic company, Novopharm, communicated with the Minister inquiring as to whether it needed to address the patents at issue and was informed by the Minister that it need not. Held: Application dismissed without prejudice to the applicants to seek an appropriate order when an appropriate real situation arises in which the relevant party is given an opportunity to appear. It would be inappropriate for the Court to grant an order of prohibition or a declaration to the effect that the Minister must require all persons to address the two patents at issue in respect of any application that they make for a NOC since matters are fact specific and the jurisprudence is evolving. It is equally inappropriate to grant such an order respecting a specific fact situation in the absence of the party engaged in that situation. The two patents at issue could have been listed much earlier and the applicants provided no evidence or explanation as to why they were not. The evidence put forth by the applicants occurred after these proceedings were initiated.
9. Pfizer et al. v. Minister of Health and Ratiopharm, December 18, 2007, 2007 FCA 407 (Létourneau J.A.) Set Aside Judgment/ Federal Courts Rule 399(2)(a)/ Patented Medicines (Notice of Compliance) Regulations Application by Ratiopharm invoking r. 399(2)(a) and inherent jurisdiction of the court to set aside a judgment which allowed Pfizer’s appeal and prohibited the Minister from issuing a NOC with respect to amlodipine besylate. Ratiopharm argued that the order which issued on appeal prohibiting the Minister from issuing a NOC based on the validity Pfizer's '393 patent being upheld, should be set aside on the basis that had the '493 patent not been improperly listed, its NOC would have issued since the '493 patent was listed on the register after its ANDS application was filed. Pfizer submitted that this argument is purely hypothetical since there was no evidence that the appeal regarding the '393 patent would have been moot but for the improperly listed '493 patent. Pfizer also argued that the fact that the '493 patent was later found to be improperly listed does not qualify as "new matter" according to r. 399(2)(a) and that the finality of decisions militates against setting aside the judgment. Held: Application dismissed. Since a court on appeal is empowered to "give the decision which should have been given", the validity of the '393 patent would have been upheld and the NOC would not have issued. Further, the course of events proposed by Ratiopharm is too speculative to give rise to new matter within the meaning of r. 399(2)(a) or to justify invocation of the Court's inherent jurisdiction. Ratiopharm's argument assumes that if the '493 patent had not been improperly listed, the Minister would have issued a NOC prior to the time when Pfizer's appeal was to be heard and before the Court rendered its decision, with the result that the Court would have exercised its discretion against disposing of the appeal and a prohibition would not have been issued. There is an infinite number of intervening events which could have altered this scenario and it is impossible to assume that the events would have unfolded as Ratiopharm suggests or to give the scenario the certainty that would be required in order to justify setting aside the earlier decision.
10. Pfizer Canada and Parke, Davis & Company v. Minister of Health and Novopharm, January 2, 2008, 2008 FC 11 (Hughes J.) Claims Broader Than Invention/ Sound Prediction/Patented Medicines (Notice of Compliance) Regulations Applications by Pfizer to prohibit the Minister from issuing a NOC to Novopharm. Novopharm argued that Pfizer's patent was invalid on the basis of the claims being broader than the invention and lack of sound prediction. In previous proceedings involving a different generic, the appeal court construed Pfizer's invention as claimed to include all 8 possible stereoisomers and overturned the lower court's finding that the claims were overly broad and also found a basis to make a sound prediction. The main issue is whether there was any “additional evidence” or “more appropriate legal argument” that would permit this court to depart from the previous decision. With respect to the "claims broader" issue, Novopharm argued that two things raised in the present proceedings were not raised earlier: firstly, that the appeal court erred in referring to other patents for the purpose of construing the patent, and secondly, that there is now better evidence, namely, the cross-examination of one of the inventors which Novopharm asserted indicates that the invention worked only with compounds in the S,S,S configuration and would not work with all possible stereoisomers. Pfizer argued that the inventor’s evidence must be read in its entirety, and that even though work proceeded with the S,S,S compounds, more than just that was conceived by the inventors. Regarding sound prediction, Novopharm argued that the appeal court erred in law in asking the wrong question, namely in considering whether a "skilled person" would have had a sound basis to predict the utility of all stereoisomers. Novopharm asserted that the proper question is whether the inventors themselves had a sound basis to make such a prediction. Held: Applications allowed. Novopharm failed to show better evidence or more appropriate argument. There is no better evidence warranting the Court to re-visit the appeal court's finding regarding the claims broader issue. While it is not entirely clear how the appeal court treated the other patents, it is sufficient in the context of NOC proceedings to conclude that a higher court did consider the issue of construction and made a reasoned determination. The inventor’s evidence is not conclusive as to what the inventors had invented. Novopharm did not examine the other named inventor. There is no error of law warranting the Court to not follow the appeal court’s conclusion regarding sound prediction. The wrong question was not addressed. The question is one of mixed fact and law. The appeal court considered the inventors' knowledge "regarding certain other compounds" as well as the knowledge that would have been possessed of persons of ordinary skill.
11. Pfizer Canada and Warner-Lambert v. Minister of Health and Apotex, January 4, 2008, 2008 FC 13 (Barnes J.) Sufficiency of NOA/Selection Patent/ Experimental Data/ Adverse Inference/ Federal Courts Rule 81(2)/ Patented Medicines (Notice of Compliance) Regulations Application for an order to prohibit the Minister from issuing a NOC to Apotex. Apotex argued that the '546 Patent is not a valid selection patent. The '893 Patent is a genus patent that claims both individual enantiomers as well as racemic mixtures. The '546 Patent claimed a narrow subclass of these compounds based on the claimed unexpected advantage that the enantiomers were more efficacious than the racemate, which was purported to be supported by empirical data showing that the enantiomer had a ten-fold lower IC50 value over the racemate. Pfizer also argued that a second inventive selection involved the choice of calcium as the preferred salt for its medicinal formulation. Apotex took issue with the reliability of Pfizer's data and also argued that there is nothing in the '546 Patent which supports a claim to an inventive selection of calcium over the other salt formulations tested. Pfizer argued that Apotex's NOA was insufficient to support an attack on the reliability of the research data in the '546 Patent. Held: Application dismissed. Apotex's NOA was sufficient as it did not mislead or prejudice Pfizer. Pfizer did not produce any evidence that it was caught off-guard by the allegations and it was well aware that the adequacy of its research data had been questioned repeatedly in litigation involving this patent. Pfizer addressed this issue and having put the issue in play cannot later argue that Apotex is precluded from challenging the research data which ostensibly supported the selection promise. The '546 Patent is not a valid selection patent. The assay data relied upon by Pfizer are wholly unreliable and failed to establish any level of activity for the patented compound beyond what a person skilled in the art would have expected to see, which is no more than double that of the racemic mixture. It was implicit that the '893 Patent included the expected two-fold advantage of the enantiomer over the racemic compound. The in vitro data showing a ten-fold advantage for the enantiomer is scientifically invalid. There is evidence that Pfizer's assay practices lacked quality control and that its testing protocols were driven by commercial motivations. Pfizer's failure to put forward an affidavit from the laboratory technician leads to an adverse inference under r. 81(2). There is also concern that the investigator was analyzing and selecting data after-the-fact to prove inventiveness. A finding which post-dates the priority date of a patent cannot be the basis of an assertion of earlier inventiveness. Although the choice of a salt in the preparation of a medicinal formulation may be inventive to constitute a patentable selection, Pfizer failed to meet the standard of disclosure that requires a clear description of the special advantage or characteristic supporting the choice made over the other members of the class. Statement of a simple preference is not selection.
12. Distrimedic v. Richards Packaging, January 8, 2008, 2008 FCA 4 (Létourneau J.A.) Disclaimer/ Section 48(1) Patent Act/Inquiry into Disclaimers The respondent filed an alleged disclaimer with CIPO pursuant to s. 48(1) of the Patent Act. The Commissioner of Patents refused to record the alleged disclaimer on the basis that it was not a disclaimer because it attempted to broaden, rather than narrow, the scope of at least one claim of the patent. The respondent successfully sought judicial review before the Federal Court. Relying on the FCA's decision in Monsanto Co. v. Canada (Commissioner of Patents), [1976] 2 F.C. 476 (F.C.A.), Martineau J. ruled that the Commissioner or an examiner possesses no discretion under s. 48 of the Act to make any inquiry or to take any decision with respect to a disclaimer submitted by a patentee in the prescribed form and manner. The Court set aside the decision of the Commissioner and ordered the “disclaimer filed and effective as of its filing date of November 8, 2005, subject to its propriety or validity being questioned before a court of competent jurisdiction in an action or proceeding under the Act respecting the patent in issue”. It was this decision that was under appeal. Held: Appeal dismissed. The appellant’s position was that the Commissioner has a duty under s. 48 of the Act to accept only those disclaimers which are, in actual fact, disclaiming part of the invention. In other words, implicit by necessary implication in the obligation to verify that a disclaimer is in the proper form is the power to refuse to record a disclaimer. The Court of Appeal noted that not only is there no mention of such power in the provision, the Act, and more specifically s. 48, as well as the Rules, provide no administrative and procedural framework to properly and effectively allow a substantive consideration of the contents of a disclaimer. The Court of Appeal also noted that in the 32 years since the Monsanto decision, Parliament had not seen fit to legislate the power claimed by the appellant. Finally, the Court concluded that if the Commissioner does not possess the power to refuse to record a disclaimer (as is presently the case), the appellant recognized that it suffered no loss of rights and no prejudice other than having the trouble and bearing the cost of litigating the effect of the disclaimer. Once the possibility of recording a disclaimer is given to a patentee, possible litigation as to the effect of the disclaimer is something inherent to the very fact that a disclaimer is made and sought to be recorded.
13. Mayne Pharma v. Aventis Pharma et al., January 15, 2008, 2008 FCA 21 (Pelletier J.) Appeal/ Prohibition Order/ Patent Register/De-Listing/Patented Medicines (Notice of Compliance) Regulations Motion by the appellant to reinstate its motion for an order setting aside a prohibition order on the ground that there is no longer a substrate for that order since the relevant patent had been de-listed. The respondent argued that the basis for the prohibition order is the infringement of the patent which, notwithstanding the de-listing, remains valid and in force. Held: Appeal allowed. The prohibition order granted will be set aside and the application for a prohibition order will be dismissed. A prohibition order is a remedy only available to a patent holder in the context of the Regulations. The respondent cannot invoke the Regulations in order to obtain a prohibition order and then argue that the Regulations are irrelevant to that order. Remedy is by way of an infringement action.
1. 88766 Canada v. Monte Carlo Restaurant, November 15, 2007, 2007 FC 1174 (Pinard J.) Section 45 Appeal/Sufficiency of Evidence Appeal from Registrar’s decision that maintained the registration for MONTE CARLO for pizza and spaghetti and the operation of a restaurant, food take-out and food catering under s. 45. Held: Appeal allowed; the registration will be expunged. “It was unreasonable for the Registrar to assume that because a circular contained an offer that expired on July 31, 2005, that circular had necessarily been distributed during the relevant time period [i.e. between February 10, 2002 and February 10, 2005].” The Registrar decided that there was use in association with the wares because the circulars that offered the pizza and spaghetti and bore the mark had probably been used by the customers who ordered the wares. However, the Registrar did not conduct an analysis to determine whether the customers used the circulars at the time of the transfer of the property in or possession of the wares in question. There was no evidence on this point. The Court noted that the registrant had not taken the opportunity to file better evidence on appeal.
2. Accessories d’Auto Nordiques v. Canadian Tire, November 19, 2007, 2007 FCA 367 (Richard, Nadon, Pelletier JJ.A.) Opposition Appeal/Confusion/Survey Evidence Appeal from the Trial Judge’s decision that held that NORDIC & Design tires would not be likely to be confused with NORDIQUES automobile parts and accessories. The Trial Judge had overturned the Registrar’s decision on the basis of new evidence filed, namely survey evidence that showed that the word NORDIQUES, when read aloud, evoked the NORDIQUES hockey team rather than the Appellant’s NORDIQUES trade mark. Held: Appeal dismissed. The Trial Judge did not commit any reviewable error; he considered the whole trade mark and all of the criteria of s. 6(5).
3. Bereskin & Parr v. Fairweather, November 26, 2007, 2007 FCA 376 (Linden, Sharlow, Ryer JJ.A.) Section 45 Appeal Appeal from Trial Judge’s decision that maintained the registration for TARGET APPAREL under s. 45 on the basis of special circumstances justifying non-use. Held: Appeal dismissed. The appellant failed to establish that the Judge’s application of the law to the undisputed facts discloses either a palpable and overriding error on a question of mixed fact and law or a readily extricable error on a question of legal principle.
4. Sociedad Agricolas Santa Teresa and Vincent Izquierdo Menéndez v. Vina Leyda, December 12, 2007, 2007 FC 1301 (Harrington J.) Opposition Appeal/Descriptive of Place of Origin/Section 12(1)(b) Appeal from the Registrar’s decision that refused the appellant’s opposition to an application for LEYDA for wine. There was evidence before the Registrar that wine is produced in a region of Chile called Leyda but he held that the mark would only be unregistrable if there was evidence that the mark was “clearly” descriptive of the place of origin, i.e. if there was evidence that Canadians know that Leyda is a source of wine. Held: Appeal allowed. The word “clearly” in s. 12(1)(b) only applies when one is considering if a mark is descriptive of the character or quality of wares. “Once the Registrar found as a fact, as he did, that Leyda is a wine producing region in Chile, as a matter of law he was required to conclude on the record before him that the opposition was well founded.” LEYDA is a word that others in trade require in order to be able to properly describe their wine.
5. Brouillette Kosie Prince v. Orange Cove-Sanger Citrus, December 18, 2007, 2007 FC 1229 (Martineau J.) Section 45 Appeal Appeal from Registrar’s decision that maintained the registration for POM-POM for fresh citrus fruits under s. 45 Held: Appeal dismissed. The Registrar did not commit any reviewable errors. The requesting party argued that additional evidence should have been filed but the Court found that the evidence filed before the Registrar was sufficient.
6. CMAC Mortgages and OMAC v. Canadian Mortgage Expert Centres, January 4, 2008, 2008 FC 6 (Lemieux J.) Interlocutory Injunction/Irreparable Harm/Balance of Convenience/Impecuniosity Motion by plaintiffs for an interlocutory injunction to restrain the use of CMEC, or any word confusingly similar to CMAC or OMAC, but not the use of the defendant’s corporate name, Canadian Mortgage Expert Centres. Held: Motion dismissed. The plaintiffs’ evidence re irreparable harm was mostly stale and in many instances speculative. The Court also held that the balance of convenience favours the defendants because the plaintiffs’ case is weak, in part due to the weakness of marks comprised of initials and the care taken when purchasing a mortgage. The plaintiffs attempted unsuccessfully to show that the defendants are impecunious and would not be able to shoulder a damage award.
7. Hyundai v. Cross Canada Auto Supply, January 10, 2008, 2008 FCA 12 (Desjardins, Sexton, Pelletier JJ.A.) Interlocutory Injunction/Irreparable Harm/Delay Appeal from Strayer J.’s dismissal of Hyundai’s motion for an interlocutory injunction to prevent Cross Canada from using the HYUNDAI trade mark. Cross Canada is selling HYUNDAI automobile parts, which they acquire from an undisclosed source. There is no evidence that the parts are not genuine or that they are inferior. An interlocutory injunction was refused due to the lack of evidence of irreparable harm. Held: Appeal dismissed. There was no error in the Motions Judge’s finding that the evidence regarding irreparable harm was essentially speculative. The appellant failed in its attempt to convince the Court that the test in RJR – Macdonald should be redefined. In addition, the appeal was dismissed because the appellant waited over 2 years after learning of Cross Canada’s use before seeking an interlocutory injunction (it only applied after Cross Canada commenced expungement actions against its trade mark registrations).
8. Louis Vuitton v. Lin Pi-Chu Yang, January 14, 2008, 2008 FC 45 (Snider J.) Defence Worthy of Investigation Motion by Lin Pi-Chu Yang to set aside default judgment in a trade mark and copyright infringement action based on the sale of counterfeit goods. The applicant claims that she has no interest in the infringing party, but is merely the landlord of the premises. Held: Motion dismissed. Although the threshold for finding that the applicant has a prima facie defence on the merits is very low, the applicant has not satisfied it. It is possible that a landlord might not always know what is taking place in leased premises, but here the applicant’s evidence to the contrary lacked credibility and there was evidence that she was sometimes the only person working in the store.
1. Canadian Wireless Telecommunications et al. v. SOCAN, January 9, 2008, 2008 FCA 6 (Sexton, Sharlow, Ryer JJ.A.) Copyright Tariff/Judicial Review/Ringtones/Section 3(1)(f) Copyright Act/Communication to the Public/Transmission Made Openly Application for judicial review of a decision of the Copyright Board that authorized SOCAN to collect royalties on the wireless transmission of ringtones from wireless carriers to cellphones at the request of cellphone owners. The applicants’ position is that the tariff is not authorized by the Copyright Act because 1) the transmission of a ringtone to a cellphone by the methods used is not a “communication” and alternatively 2) it is not a “communication to the public”. Held: Application dismissed. Re 1): The applicants argued that a transmission is not the same thing as a communication, that the word “communication” must be understood to include only a transmission that is intended to be heard or perceived by the recipient simultaneously with or immediately upon the transmission. The Court held that this meaning of “communication” is too narrow. “Communication” connotes the passing of information from one person to another; in the context of a wireless transmission, it is the receipt of the transmission that completes the communication, not the hearing of the music. Re 2): “In determining whether s. 3(1)(f) applies to the transmission of a musical work in the form of a digital audio file, it is not enough to ask whether there is a one-to-one communication … because a series of transmissions of the same musical work to numerous different recipients may be a communication to the public if the recipients comprise the public, or a significant segment of the public. In the present case, no one except the wireless carrier and the recipient normally would be aware of a particular transmission of a ringtone to a cellphone, and in that sense the transmission is not made ‘openly’. However … the fact that the ringtones are offered to the public, or to a significant segment of the public, supplies the requisite degree of ‘openness’.”
2. Apple Canada et al. v. CPCC, January 10, 2008, 2008 FCA 9 (Richard, Sharlow, Ryer JJ.A.) Copyright Tariff/Judicial Review/Digital Audio Recorders Apple et al. moved unsuccessfully for an order from the Copyright Board to prevent the consideration of a tariff on digital audio recorders which had been proposed by CCPC pursuant to s. 83(8) of the Copyright Act. This is an application for judicial review of the Board’s dismissal of that motion. Held: Application allowed. The Board erred in law. Canadian Private Copying Collective v. Canadian Storage Media Alliance (C.A.), [2005] 2 F.C.R. 654 is dispositive. It held that the Copyright Board has no legal authority to certify a tariff on digital audio recorders or on the memory permanently embedded in digital audio recorders.
1. Purdue Pharma v. Pharmascience and Minister of Health, November 15, 2007, 2007 FC 1196 (Tabib P.) Patented Medicines (Notice of Compliance) Regulations/Case Management/Federal Courts Rule 385 In an application for a prohibition order pursuant to the Patented Medicines (Notice of Compliance) Regulations, Purdue Pharma moves to have the application specially managed and to have Pharmascience (the respondent) scheduled to file its evidence before Purdue Pharma (the applicant). Held: Motion allowed in part. The Court has, in the context of case management, the discretion to vary the order in which evidence of the parties on an application is to be served and filed if it is satisfied that it is necessary for the just, most expeditious and least expensive determination of the proceedings on its merits. This discretion is based on r. 385(1)(a) and 55. Such a reversal should only be made where it would not affect the substantive rights or the parties or the fairness of their procedural rights. The tactical advantages to be gained by the party filing its evidence second are neither substantive nor procedural. In this case, if Pharmascience were to file its evidence with respect to the invalidity issues first, it would substantially narrow the issues to be litigated and make it likely that fewer expert witnesses would be needed. For the full benefit of the time- and cost-savings to be realized, however, there would need to be exemplary cooperation between the parties. Because Pharmascience vigorously objected to the reversal, and because reversing the order of evidence in NOC proceedings is still novel, Tabib P. decided not to exercise her discretion so as to set a schedule in which the Respondent's evidence would be filed first. The proceeding was continued as a specially managed proceeding.
2. Pharmascience v. Glaxosmithkline et al., November 29, 2007, 2007 FC 1261 (Mandamin J.) Federal Courts Rule 223 and 227/Affidavit of Documents/Relevance Application for an order setting aside a Production Order by Milczynski P. requiring the plaintiff to produce an accurate or complete affidavit of documents. Pharmascience submitted that Milczynski P. erred in making the Production Order based on a wrong principle and misapprehension of the facts, in particular: the evidence adduced by Glaxosmithkline did not show that certain documents in the challenged subparagraphs of the affidavit of documents existed; certain documents listed in the challenged paragraphs were irrelevant to the proceedings; and there was no evidence that the documents in the challenged subparagraphs were in the possession of Pharmascience. Held: Appeal dismissed. The Federal Courts Rules 223(2)(a) and (e) require that documents identified in an affidavit of documents must be relevant, and in the possession, power or control of the party producing the affidavit of documents. The threshold for relevance in the discovery process is low and the parties in the discovery process have a right to access documents which may fairly lead them to a train of inquiry which may directly or indirectly advance their case or damage their opponent's case. Furthermore, under r. 227, where a court is satisfied that an affidavit of documents is inaccurate or deficient, the court may inspect any document that may be relevant. The party seeking further production must offer persuasive evidence that the documents are available but have not been produced. In this case, the Court found that the requested documents would indeed be relevant. With respect to Prothonotary Milczynski’s Order for Pharmascience to produce documents "to the extent that they exist", the Court rejected Pharmascience's argument that such wording did not establish the existence of the documents, noting that such language merely reflected the reality that courts have previously recognized, namely, that only documents that exist need to be produced. With respect to whether the documents were in possession of Pharmascience, the Court noted that the affidavits and the cross-examination of affidavits of the Glaxosmithkline affiants provided the rationale that such documents would necessarily be in the possession of Pharmascience and Milczynski P. was entitled to assess the whole of the evidence.
3. Novopharm v. Sanofi-Aventis and Minister of Health, December 6, 2007, 2007 FCA 384 (Nadon, Sharlow, Ryer JJ.A.) Motion for Increased Costs/Federal Courts Rule 403/Lump Sum Award/Column IV/Prohibition Application/Patented Medicines (Notice of Compliance) Regulations Motion by Novopharm for increased costs under r. 403 of the Federal Courts Rules or for an order directing the Assessment Officer to tax its costs at the high end of Column IV of Tariff B. With regard to increased costs, Novopharm argued for costs on a solicitor and client basis plus disbursements, or a lump sum payment for a lesser amount. Relying on two recent appeal court decisions, Novopharm argued that Sanofi’s application was destined to fail and that the Regulations were only used to delay market entry of its product. Novopharm also asserted that it was forced to spend a considerable sum of money to defend Sanofi’s application. Sanofi countered that prior to the hearing of the appeal, the jurisprudence relied on by Novopharm was unsettled since the two decisions had pending leave applications to the Supreme Court. Regarding the Tariff Column, Sanofi argued that there was no reason to depart from the usual rule that costs should be awarded at the mid-range of Column IV and that they should only relate to the two patents that were the subject of both the decision below and on appeal. Sanofi also asserted that: (i) a lump sum should not be awarded where the Bill of Costs and disbursements are contentious; (ii) since Novopharm withdrew its allegations with respect to two of the four patents, each party should bear its costs in relation to the withdrawn patents; and (iii) Novopharm's evidence with regard to its disbursements was incomplete and insufficient. Held: Motion allowed in part. Considering the result of the proceedings, the importance and complexity of the issues, and the amount of work involved, the Court awarded party-party costs. The Court also directed the Assessment Officer to assess Novopharm’s costs. Nadon J.A. agreed with Sanofi that costs on a solicitor-client basis were not justified since it could not be said that Sanofi’s application was doomed to fail given that leave applications were pending. An award of increased costs was justified. Novopharm had succeeded on its appeal and Sanofi’s application was dismissed. There was no doubt that considerable effort was required by counsel for Novopharm in regards to preparing the NOA and responding to the application. By the time the appeal was heard, the bulk of the work required for a hearing on the merits had been completed. The Court has full discretion in respect of the amount and the allocation of costs and may consider the factors set out in r. 400(3).
4. Colbalt Pharmaceuticals et al. v. Pfizer et al., January 10, 2008, 2008 FCA 15 (Desjardins J.A.) Section 6(1) and 6(4) of Patented Medicines (Notice of Compliance) Regulations/Joinder Appeals from the order of Hughes J. granting the motion of the respondents Pfizer Canada and Pfizer Inc. to add Pfizer Limited as a party to the proceedings. The appellants, Cobalt Pharmaceuticals and Pharmascience (in related files), opposed the motion. They both brought a motion to strike the proceedings in respect of one of the patents at issue on the basis that since Pfizer Limited, the owner of the patent, had not been included as one of the applicants, the proceedings were a nullity. The Motions Judge dismissed both appellants’ motions. Held: Appeals dismissed. Under s. 6(1) of the NOC Regulations, it is not fatal to an application that the owner of the patent who is not a “first person” was not initially made a party to the proceedings, provided that the owner is joined at “an appropriate subsequent time”. The Motions Judge found that s. 6(1) of the NOC Regulations is a mandatory provision requiring that a “first person” commence an application within the 45-day time limit but that this time limit did not apply to the owner of the patent under s. 6(4) of the NOC Regulations. While s. 6(4) mandates the addition of the patentee as a party, the timing for doing so is governed not by s. 6(1) but by the Federal Courts Rules. Rule 303 requiring joinder of certain parties and r. 103 and 104 provide that a claim shall not be defeated by reasons of misjoinder or nonjoinder of a party and allow the Court to order joinder at any time. Section 6(4) of the NOC Regulations does not give any time limit for the patentee to be added as a party. The Motions Judge was correct in supplementing the provision with the assistance of the Federal Courts Rules. In Pfizer Canada Inc. v. Canada (Minister of Health), 2007 FC 205; aff’d 207 FCA 244, the Federal Court explained that the Federal Courts Rules apply to proceedings initiated under the Regulations to the extent that the Rules do not conflict with the Regulations themselves. There was therefore no inconsistency between the NOC Regulations and the Rules.
5. Simpson Strong-Tie v. Peak Innovations, January 15, 2008, 2008 FC 52 (Lafrenière P.) Notice of Application/Federal Courts Rule 301/Documentary Evidence Motion to strike a Notice of Application on the grounds that the pleading is not in the form required by r. 301(f) of the Federal Courts Rules because it does not contain a list of the documentary evidence to be used in the hearing of the application. Held: Motion dismissed. Rule 301(f) does not require an applicant to list each and every document that will be relied upon at the hearing of the appeal or the names of the deponents who will be providing affidavit evidence. Such an interpretation would be at odds with the general scheme of Part 5 of the Rules, which provides that the applicant has 30 days from the issuance of the notice of application to marshal its evidence and to finalize its affidavit evidence. In this case, the applicant had listed its supporting documents as a certified copy of the file history of the relevant trade mark application, the affidavits of the applicant, and "such other affidavit and other material as counsel shall advise" that is permitted by the Court. This was substantially in compliance with r. 301(f) - no deficiency was established that would justify striking the pleading.
II. OTHER COURT DECISIONS1. Lauren International v. Reichert et al., October 22, 2007, [2007] O.J. No. 4044 (O.S.C.J.) (Smith J.) Interpretation of Patent Licence Agreement/Ordinary Meaning/Waiver of Rights Lauren seeks the interpretation of an agreement to determine whether it is required to continue to pay a royalty for those jurisdictions where Reichert’s patent has expired. The respondent argues that royalties continue to be payable so long as any of the listed patents remain valid in any jurisdiction, as well as until the expiry of any improvement or extension of any of the listed patents. Held: Based on the plain and ordinary meaning of the words of the agreement, once the patent expired in a jurisdiction, royalties were no longer payable with respect to that jurisdiction. It would not be commercially reasonable for the parties to have intended otherwise. The new patents registered for improvements while Reichert was employed by Lauren are not extensions of the patents and are not subject to royalty payments. The fact that for 17 years Lauren inadvertently paid royalties with respect to jurisdictions where patent protection no longer existed did not constitute a waiver of Lauren’s rights.
2. 3058354 Nova Scotia (on its own behalf and on behalf of On Site Equipment Partnership) v. On Site Equipment Ltd., November 16, 2007, [2007] A.J. No. 1338 (A.B.Q.B.) (Hawco J.) Interlocutory Injunction/ Breach of Covenant/Fiduciary Duty/Irreparable Harm Application for an injunction to prevent On Site Equipment Ltd. from passing off another business as part of On Site Equipment Partnership. On Site Equipment Ltd. was originally the appointed manager of the partnership. Subsequently the partnership discovered that the principles of On Site Ltd. had incorporated a new company that was carrying on a similar business under the name On Site Equipment. As a result, On Site Equipment Ltd. was removed as manager and its interest in the partnership was terminated for cause. As of the date of the application, the defendants had ceased using the name ON SITE and had accounted for monies improperly diverted. However, they still operated a similar business in Edmonton. The plaintiff argues that the defendants ought not to be allowed to continue on a business that was acquired through a breach of fiduciary duty. Held: Interlocutory injunction granted to prevent the defendants from carrying on a business of this nature within 100 kms. of Edmonton, and from using ON SITE in any manner. (The partnership agreement provided that a competing business would not be pursued in certain areas for 2 years.) A plaintiff is not required to show irreparable harm if it can show a clear breach of a covenant or a breach of a fiduciary duty. The defendants unsuccessfully argued that the injunction ought not to be granted because it will destroy their livelihood.
3. XY v. IND LifeTech, November 16, 2007, 2007 BCSC 1666 (B.C.S.C.) (Slade J.) Confidential Information/ Interlocutory Injunction/Licence Agreement Application for an interlocutory injunction to prevent the sale of technology to a third party. The defendant licensed access to the plaintiff's technology for the commercial use of specified licensed products within a specified territory, for specified uses. The defendant intended to acquire bull semen, for chromosome separation, from a third party, and, due to under-utilization, contracted to sell two of its cytometer SX models to a different third party in China. The plaintiff claimed that the sale of the cytometers would put the defendant in breach of the licence agreement. Held: Injunction granted. The recitals to the agreement asserted that XY, the licensor, "owns, controls, or has an interest in Technology useful with respect to the separation of spermatozoa into X chromosome bearing and Y chromosome bearing populations ...". It recited that IND Lifetech, the licensee, "desires to obtain access to licensor's Technology in order to manufacture, use, offer for sale, sell, or otherwise commercialize certain Licensed Product(s) in the Territory in the Field Of Use utilizing the Technology". The terms of the Grant of License, set out in s. 2 of the agreement, conferred: a) a non-exclusive license to manufacture Licensed Products in the United States and Canada in the Field Of Use; b) a non-exclusive license to use, offer for sale, or sell Licensed Product(s) in the People's Republic of China in the Field Of Use; ... In the agreement, "Licensed Product(s)" is defined to include "any apparatus, product, process, ... manufactured, used, offered for sale, sold, or otherwise developed or commercialized utilizing or resulting from the Technology ...", and "Field Of Use" is defined to include the collection and preparation of cattle semen, and the separation of spermatozoa into sex-selected subpopulations of cattle spermatozoa based upon the presences of an X chromosome or a Y chromosome, and the use of the same for in-vitro fertilization of cattle oocytes. The plaintiff took the position that: i) the cytometer SX is a licensed product within the meaning of that term in the agreement. As it is not in the field of use, licensed by the agreement, the agreement does not confer on the defendant a contractual right to sell this equipment; and ii) whether or not the cytometer SX is a licensed product, it contains information encompassed by the definition of the term "technology", and thus must, on the terms of the agreement, be kept confidential. Slade J. took the view that the disposition of the application did not require a determination whether the cytometer SX came within the definition of "licensed product" set out in the agreement. If it were a licensed product, the restriction imposed by the term "Field Of Use" would, arguably, limit the defendant's license in a way that the sale in China of the cytometer SX would not be permitted. If it was not a licensed product, the plaintiff must rely on the confidentiality provisions to seek the remedy of an interlocutory injunction. As for the question whether the confidentiality provisions of the agreement precluded the defendant from selling the two cytometer SX models to an entity or person that is not a licensee of the plaintiff, there was plainly a serious question to be tried. Here, the question was whether the sale of this equipment would, in the language of s. 6.1.2 of the License: "... assist or cause any other third party in taking any action, which Licensor reasonably believes might impair or diminish the Technology or the Proprietary Rights". The Court gave only cursory consideration to the question of irreparable harm, and held that, to the extent that consideration of irreparable harm is a factor in determining the balance of convenience, it favoured the plaintiff. When all was considered, the judge was satisfied that the balance of convenience favoured the plaintiff, and a limited injunction should issue.
4. Boart Longyear v. 897173 Ontario (c.o.b.a. J.N. Precise), Sandvik et al., December 10, 2007, [2007] O.J. No. 4834 (O.S.C.J.) (Conway J.) Confidential information/ Trade Secrets/ Interlocutory Injunction/Irreparable Harm Application by the plaintiffs seeking an interlocutory injunction to: (a) restrain the sale of assets of J.N. Precise ("JNP") to Sandvik; (b) compel JNP to continue supplying Boart with products until of the expiry of the master supply agreement between the parties on April 30, 2008; (c) restrain the disclosure of Boart trade secrets and confidential information to Sandvik for any purpose other than the supply of products to Boart; and (d) prevent Messrs. Guido, Perrin, Cappadocia and Boesche from accepting employment with Sandvik. JNP entered into an agreement to sell substantially all of its assets to Sandvik. The transaction was scheduled to close on January 1, 2008. Pursuant to the transaction, most of the employees of JNP would be transferred to Sandvik, including Messrs. Perrin and Cappadocia; Mr. Boesche had already commenced his employment with Sandvik. All three employees had been previous long-standing employees of Boart. Mr. Guido, President of JNP, was not transferring to Sandvik. Boart argued that completion of the transaction would result in an immediate breach of JNP's supply and non-competition obligations under the Supply Agreement and the inevitable disclosure of Boart's confidential information to Sandvik. The cumulative effect of these breaches would render Boart unable to maintain adequate supply to its customers just as Sandvik is able to enter the mining exploration market and, using Boart's confidential information, capture a significant share of that market. Held: The motion for an interlocutory injunction restraining the sale of the JNP assets to Sandvik and the employment of the JNP Employees by Sandvik is dismissed. The motion for a mandatory order compelling JNP to continue supplying Boart under the Supply Agreement until its expiry date was dismissed. Applying the three part test for granting an injunction, Conway J. was prepared to accept that if the sale of assets put JNP in a position of being unable to supply Boart after January 1, 2008, it raised a serious issue for trial. The knowledge and intention of the defendants with respect to this interruption of supply capacity was also a serious issue for trial. The affidavit evidence raised numerous areas of dispute with respect to confidential information. Boart’s case fell down, however, on the issue of irreparable harm. First, the Supply Agreement did not provide for a minimum supply commitment from JNP or even a mandatory commitment. It only offered JNP the right to quote on new supply business for Boart. The Court found it difficult to see how there can be irreparable harm when Boart could not require JNP to supply products under the agreement; Boart was always in the position of potentially having to find other suppliers. Second, regardless of what Boart claimed was the amount of time it required to re-establish its supply sources, the Supply Agreement only gave it 90 days' notice of non-renewal of the initial term or any renewal term. Finally, the record showed that JNP offered to provide transition assistance to Boart immediately upon announcing the asset sale. The Court concluded that there was no evidence that irreparable harm would result from the disruption to supply as a result of the proposed transaction. Boart had not demonstrated what its supply alternatives were, what efforts had been made, what its projected requirements were, what its customer delivery expectations were or what the cost of replacement supplies would be, all critical evidence required to support a claim for irreparable harm. There was also no evidence that any confidential information had been disclosed, or that if some information had been disclosed, such disclosure would lead to irreparable harm that could not be compensated for by way of damages. The Court also noted that in the case of manufacturing processes, so long as such information is not a trade secret, an employee may continue to use such acquired knowledge in his or her new employment. The evidence of Messrs. Perrin and Cappadocia is that during the period of their employment with Boart no one ever identified any of the Boart processes or products as being the subject-matter of a trade secret or claimed that any particular technology, project or process was proprietary. In the absence of evidence that Boart had identified these processes as trade secrets, the Court concluded that there was no reason at the interlocutory stage to prevent the JNP Employees from using their acquired knowledge in working for Sandvik.
5. Bluefoot Ventures v. Ticketmaster, December 17, 2007, [2007] O.J. No. 4569 (O.S.C.J.) (Lederer J.) Trade Mark Licence Agreement/Fiduciary Duty Issue is whether a fiduciary relationship exists pursuant to a trade mark licence agreement. Held: There may be a breach of contract, but not a breach of fiduciary duty since no such duty exists. A fiduciary duty requires the fiduciary to set aside its personal interest in preference to the interests of the party to whom the duty is owed. Typically, by its nature, a contractual agreement has an adversarial component. The present parties have a purely commercial relationship; their relationship is not one of principal and agent. The Trade-marks Act does not in and of itself create a fiduciary relationship between the owner of a registered trade mark owner and its licensee.
III. OPPOSITION BOARD DECISIONS 1. Weetabix v. Robert Bender Consulting, September 5, 2007 (Bradbury) Confusion Use-based application for SEBASTIAN WEETABIX for services of providing printed materials and works of art to raise funds for food banks and other social welfare organizations. Opposition based, inter alia, on s. 12(1)(d) due to confusion with the opponent’s mark WEETABIX registered for toasted whole wheat. Only the opponent filed evidence. Held: Application refused because the applicant did not satisfy its legal onus. The applicant’s mark incorporates the opponent’s unique mark in its entirety and there is no evidence that anyone else uses any word similar to WEETABIX in any field. The evidence shows that there has been significant use of the opponent’s mark for decades. There are connections between the parties’ fields in that the applicant is somehow associated with food banks and the opponent also uses its mark in association with charitable or community projects. In this context, SEBASTIAN WEETABIX almost sounds like a character or mascot associated with WEETABIX cereal.
2. Guang Dong Kelon Electrical Holdings and Kelon USA v. Kelon Canada, September 10, 2007 (Bradbury) Section 30(b)/ Date of First Use Use-based application for KELON for clothes washers and dryers; dishwashers; air conditioners; refrigerators; rice cookers… home appliance repair. Opposition based, inter alia, on s. 30(b) because the applicant’s claimed date of first use is December 25, which is a statutory holiday. Held: Application refused. The opponent evidenced that December 25 is a statutory holiday on which day most retail stores are not open. The applicant did not file any evidence that showed that it nevertheless did commence use of its mark on that day, or that it had used its mark prior to that date. An appeal has been filed.
3. International Academy of Design and Technology, Toronto v. TFC Group Canada, September 10, 2007 (Bradbury) Section 30(b)/Distinctiveness/Use with Services Use-based application for TORONTO FILM COLLEGE & Design for provision of education workshops and classes related to film directing and producing as well as the artistry and history of film. Opposition based, inter alia, on s. 30(b) and distinctiveness. Held: Application refused on both grounds. The applicant’s evidence contradicted its claimed date of first use (use with services does not occur prior to the trade mark owner being in a position to perform the services). The opponent’s prior use of the mark TORONTO FILM SCHOOL for similar services rendered the applicant’s mark non-distinctive.
4. Jurak Holdings v. Matol Biotech Laboratories, September 14, 2007 (Carrière) Section 12(1)(a) Use-based application for KARL JURAK for minerals and vitamins preparations for therapeutical uses. Opposition based, inter alia, on s. 12(1)(a) because the mark is primarily merely the name of an individual who has died during the preceding 30 years. Held: Application refused. The evidence was insufficient to conclude that the individual Karl Jurak was a famous person known to the average Canadian consumer but, in the absence of evidence that JURAK has any meaning other than as a surname, the applicant has not met its burden to show that KARL JURAK would have any other meaning than the name of an individual in the minds of the average Canadian consumer. An appeal has been filed.
5. Jurak Holdings v. Matol Biotech Laboratories, September 14, 2007 (Carrière) Section 12(1)(a) Use-based application for KARL JURAK 1904-1993 for minerals and vitamins preparations for therapeutical uses. Opposition based, inter alia, on s. 12(1)(a) because the mark is primarily merely the name of an individual who has died during the preceding 30 years. Held: Opposition rejected. The numerical portion of the mark prevents it from being primarily merely the name of an individual. An appeal has been filed.
6. Molson Canada 2005 v. Leonor Cardoso, September 19, 2007 (Martin) Confusion/Section 30(e) Proposed-use application for CANADIAN ADVENTURE BEER KIT for beer making kits. Opposition based, inter alia, on s. 12(1)(d) due to confusion with the opponent’s mark CANADIAN registered for brewed alcoholic beverages and on s. 30(e). Held: Application refused on both grounds. Re s. 12(1)(d): The opponent’s extensive reputation and the existence of at least some connection between the parties’ wares and trades resulted in the probabilities regarding a likelihood of confusion being equally balanced. Since the onus is on the applicant, the opponent succeeded. Re s. 30(e): The applicant’s evidence showed use of CANADIAN ADVENTURE with the words “beer kit” being used separately and descriptive |
