Recent Decisions June 2002
I. FEDERAL COURT DECISIONS
(a) Patents
1. Bristol-Myers Squibb v. Canada (Attorney General) and Biolyse Pharma, February 26, 2002, FCTD (Pelletier J.) Civil Procedure/Direction to Attend/Production of Documents/Disclosure Required Despite Minister’s Certificate Refusing Disclosure/Canada Evidence Act, s. 37/ Patented Medicines (Notice of Compliance) Regulations
Motion by the applicant Bristol-Myers for an order requiring the production of documents by the Minister. Biolyse Pharma filed a new drug submission for its medicine paclitaxel. The Minister issued a NOC without requiring Biolyse to prepare and serve a notice of allegation with respect to Bristol-Myers’ paclitaxel patent. Bristol-Myers commenced an application for judicial review of the Minister’s decision. In its Notice of Application, Bristol-Myers sought production of Biolyse’s new drug submission for paclitaxel solution. Subsequently, Bristol-Myers issued a direction to attend to the Minister’s representative for cross-examination on her affidavit, directing her to have the new drug submission and certain other documents in her possession when she attended. In response, the Minister’s representative issued a certificate under s. 37 of the Canada Evidence Act claiming the right to withhold production of the records on the basis that no protective order was in place and Biolyse had not consented to the release of the information. Bristol-Myers brought this motion for production of the documents.
Held: Motion granted in part. Bristol-Myers is entitled to production of Biolyse Pharma’s new drug submission, but not the other documents sought, once a suitable protective order is in place. The application is for judicial review of a decision to issue a NOC. Rule 317 of the Federal Court Rules governs production of documents in the tribunal’s possession in the course of an application for judicial review. The Minister asserted his right to exempt the material in his possession from production in order to protect Biolyse’s proprietary confidential information. However, disclosure is also in the public interest, to ensure that the full record is before the Court when hearing the application for judicial review, and to satisfy Bristol-Myers’ legitimate interest in having access to the record. The lawful administration of the NOC Regulations and the requirements of the administration of justice justify an encroachment upon the interests identified in the Minister’s certificate. The other documents sought in the Direction to Attend pursuant to r. 91 need not be produced. It is not appropriate to use a general rule applicable to all proceedings (r. 91) to expand the scope of the demand for production beyond what was demanded under the rule of narrower application that governs production of documents by a tribunal (r. 317).
2. AB Hassle v. Apotex, February 28, 2002, FCTD (Blanchard J.) Evidence/Hearsay/Principled Approach /Admissibility of Affidavit Evidence/Relevance and Principle of Res Judicata/Patented Medicines (Notice of Compliance) Regulations
Motion by the respondent Apotex for an order striking three affidavits adduced by AB Hassle. Apotex provided a notice of allegation to AB Hassle in respect of Apo-omeprazole tablets. The applicants sought an order prohibiting the Minister from issuing a NOC to Apotex until after expiration of its omeprazole patents. A motion by Apotex to dismiss the application on the grounds that it was frivolous, vexatious and an abuse of process was initially granted by the prothonotary, but set aside by Blais J. on appeal. Blais J. made certain observations in his reasons regarding the procedural complaints of the parties. Subsequently, the applicants sought to adduce affidavits that were previously used on the motion for dismissal as part of their evidence in the main application. One of these affidavits attached as exhibits the affidavits and transcripts from cross-examinations put forward by the opposing party, Apotex, on the motion for dismissal. Apotex moved to strike the applicants’ affidavits on the basis that they were either irrelevant because the issues had already been dealt with by Blais J. and therefore res judicata, or because they were inadmissible hearsay.
Held: Motion dismissed. Two of the affidavits, which adduced evidence on the issues dealt with by Blais J., should not be struck on the principle of res judicata or issue estoppel. The observations of Blais J. were not necessary for his decision and could not form part of the ratio of his decision. The third affidavit provided a chronology of events and attached affidavits of the opposing party, Apotex, from the motion for dismissal. The third affidavit is not hearsay evidence. The exhibits attached to that affidavit are either affidavit evidence or arguments properly tendered in interlocutory motions to the proceeding, and are therefore properly before the court. In any event, the affidavit would still be admissible as an exception to the hearsay rule. The evidence is both necessary and reliable, as there is no other way for the applicants to ensure that the statements will find their way into the evidence, and it is difficult for Apotex to assert that the evidence of its own witnesses is not reliable or lacks credibility.
3. M.T. Beauty and Mosler v. Classic Furs, March 13, 2002, FCTD (Kelen J.) Summary Judgment/ Reissue of Patents
Motion for summary judgment dismissing patent infringement action by the plaintiffs, on the basis that the claims of plaintiffs’ reissued patent are not identical to the claims in the original patent prior to reissue, thus abating any cause of action existing at the time of reissue according to s. 47(2) of the Patent Act. In the reissued patent, the word “substantially” was added to the claims, and the words “bearing portion” were deleted from the claims.
Held: Motion for summary judgment dismissed. Following the judgment of the Federal Court of Appeal in Urea Casale v. Stamicarbon (2002), F.C.A. 10, the trial judge held that if the change in the claim language did not work a substantive change in the scope of the claims, the original claims are to be viewed as “identical” to the reissued claims, even though the language has been changed. The patent claims will need expert evidence to determine whether the scope of the claims in the reissued patent has been changed in this case.
4. Norac Systems International v. Prairie Systems and Equipment, March 25, 2002, FCTD (Pelletier J.) Claim Construction/ Utility/ Patent Infringement
Action for a declaration that the claims of a patent relating to weighing cells for mobile weighing systems are valid and infringed. The claims at issue referred to the use of a lifting mechanism that applies a lifting force to a “tension load cell pivotally attached to a load support frame”, for suspending and measuring the weight of a load. The defendant argued that the patent is invalid for ambiguity, that the invention cannot function as described in the patent, and that the invention was anticipated or obvious.
Held: The patent is invalid and not infringed. While the claims are not ambiguous and are not anticipated or obvious based on the prior art considered, the invention lacks utility. The trial judge accepted evidence by the defendant’s expert that the invention described in the patent does not deal with lateral forces acting on the tension load cell which, according to the theory underlying the invention, introduces error into the measured weight of a load. Therefore, the invention in the patent lacks utility because if it is constructed in accordance with the patent, it will not work, or will only work under certain operating conditions that are not described in the patent. The trial judge also determined that the patent is not infringed as the load cell of the defendant’s device is not a “tension” load cell and is not “pivotally attached” to a linkage assembly, both elements being essential to the invention claimed.
5. Lammli v. Cousins, April 17, 2002, FCTD (Hansen J.) Patents/Declaration of Non-Infringement
Motion for a declaration that the defendant’s patent relating to gear protection devices for boat motors is not infringed. Section 60(2) of the Patent Act allows a person who has reasonable cause to believe that an article made, used or sold by him, or proposed to be made, used or sold by him might be alleged to constitute infringement of a patent, to bring an action for a declaration that the article does not infringe the patent. The plaintiff submits that the issue of infringement can be resolved by comparing the device described in his application for patent with the device described in the defendant’s patent. The defendant submits that it is necessary to adduce evidence with respect to a specific article that is, or that is proposed to be made, used, or sold, before the issue of infringement can be determined.
Held: Motion dismissed. The plaintiff has failed to put forward the necessary evidentiary foundation for the relief being sought. At best, one can only infer from the evidence adduced by the plaintiff that he intends to produce a product incorporating the invention described in his patent application. However, in the absence of putting forward an article that the plaintiff has produced, or intends to produce, or at a minimum the drawings for the article he proposes to make, use or sell, the plaintiff is asking the Court to rule in a vacuum.
6. RhoxalPharma v. AB Hassle et al., April 23, 2002, FCA (Décary J.A., Noël J.A., Nadon J.A.) Appeal/Application for Prohibition/Factual and Legal Issues Not Relied upon in Notice of Allegation and Detailed Statement Cannot be Raised in Prohibition Proceeding/Patented Medicines (Notice of Compliance) Regulations
Appeal by RhoxalPharma from an order prohibiting the Minister of Health from issuing a NOC to RhoxalPharma in respect of omeprazole tablets until after expiry of Canadian patents owned by AB Hassle. RhoxalPharma served a notice of allegation and detailed statement alleging that its omeprazole tablets would not contain an inert subcoating as required by the AB Hassle patents. In responding to an application for prohibition commenced by AB Hassle, RhoxalPharma raised for the first time a number of issues concerning the construction and validity of the patents.
Held: Appeal dismissed. The motions judge properly concluded that the notice of allegation was based on a pure assertion of fact, namely that the appellant’s proposed product did not contain an inert subcoating. After this assertion was disproved, the appellant attempted to recast its notice of allegation in terms that raised the construction of the two patents in issue. The motions judge properly applied the decision of the Federal Court of Appeal in AB Hassle v. Canada (Minister of National Health and Welfare) (2000), 256 N.R. 172, when she held that the appellant could not, in effect, rewrite its notice of allegation after realizing that it was unable to establish the facts asserted in support of it.
7. Canwell Enviro-Industries et al. v. Baker Petrolite et al., April 29, 2002, FCA (Strayer J.A., Rothstein J.A., Evans J.A.) Effect of Transitional Provisions/ Anticipation/Effect of Public Use or Sale
Appeal from a decision of the Trial Division in which the appellants (Canwell) were found to have infringed a patent for “Composition and Method for Sweetening Hydrocarbon”. The patent, filed in December 1989 and issued in February 1995, relates generally to the use of compositions to remove hydrogen sulfide (“scavengers”) from natural gas streams. The main issue on appeal is whether the patent is invalid by reason of anticipation. Sales of a mixture which would produce a reaction product, triazine, as covered by the patent, were made more than one year before filing of the patent application in Canada. The sales were unconditional in that the sales were not subject to any confidentiality agreement. The trial judge had held that the appellants had failed to discharge its burden of proving that the sales amounted to a making available to the public of the subject matter of the patent. On appeal, the appellants argued that accurate reverse engineering of the mixture would have led a person skilled in the art to the invention, thereby rendering the patent invalid. The respondents argued that the invention was not made available to the public, as the sales were not commercial sales, and were to customers on their private property. The respondents also argued that any reverse engineering would be kept confidential by anyone performing it and would not be made public.
Held: Appeal allowed, decision of the Trial Judge is set aside. The patent is invalid by reason of anticipation.
The Court of Appeal confirmed the Trial Judge’s finding that the provisions of the 1996 Act apply in this case, with regard to the transitional provisions of section 78.4 of that Act, a section that has retroactive effect.
The Court stated that guidance may be sought from U.K. and European authorities to give content to the analysis of anticipation by prior use or sale, to the extent that they do not contradict Canadian jurisprudence. The Court states that the principles in Beloit v. Valmet Oy (1968), 8 C.P.R (3d) 289 (F.C.A.) and Free World Trust v. Électro Santé, [2000] 2 S.C.R. 1024 relating to anticipation by prior publication are also applicable to anticipation by prior use or sale, although some of those principles may need to be tailored to fit the particular characteristics of anticipation by prior use or sale.
The Court deduced the following principles applicable to the appeal, from U.K. and European jurisprudence:
1. Sale to the public or use by the public alone is insufficient to prove anticipation.
2. For a prior sale or use to anticipate an invention, it must amount to “enabling disclosure”.
3. The prior sale or use of a chemical product will constitute enabling disclosure to the public if its composition can be discovered through analysis of the product.
4. The analysis must be able to be performed by a person skilled in the art in accordance with known analytical techniques available at the relevant time.
5. In the context of anticipation under s. 28.2(1)(a) of the Patent Act, when reverse engineering is necessary and capable of discovering the invention, an invention becomes available to the public if a product containing the invention is sold to any member of the public who is free to use it as he or she pleases.
6. It is not necessary to demonstrate that a member of the public actually analyzed the product that was sold.
7. The amount of time and work involved in conducting the analysis is not determinative of whether a skilled person could discover the invention. The relevant consideration, in this respect, is only whether inventive skill was required.
8. It is not necessary that the product that is the subject of the analysis be capable of exact reproduction. It is the subject matter of the patent claims (the invention) that must be disclosed through the analysis. Novelty of the claimed invention is destroyed if there is disclosure of an embodiment which falls within the claim.
The Court held that the appropriate standard of review in this case is correctness. The Court held that the Trial Judge erred in law in requiring that reconstruction of the mixture was necessary to find anticipation. A defendant relying on the defence of anticipation by prior use or sale of a product does not have to prove that the product can be reproduced. The defendant need only prove that the invention has been disclosed. In cases where the product is the invention, analysis might well have to show an ability to reproduce the product. In this case, however, the invention is a method of contacting natural gas streams with triazine (or its starting components) to reduce levels of hydrogen sulphide in the streams, and reproduction is not the proper test. The evidence shows that a person skilled in the art, without the benefit of a priori knowledge and without taking inventive steps, would be led to the invention upon correctly employing techniques and data available at the relevant time.
The purchaser of the sold mixture is a member of the public, as the sales were made unconditionally. To prove anticipation, it is not necessary to demonstrate that a particular purchaser did or would have conducted an analysis (i.e. reverse engineering) of the product. It is sufficient that the purchaser could have done so. Whether a purchaser would choose to treat such analysis as confidential is not a relevant consideration.
8. Pfizer Canada v. Apotex, May 3, 2002, FCTD (O’Keefe J.) Production of Samples of Medicine and Documents/Patented Medicines (Notice of Compliance) Regulations, s. 6(7)
Motion by the applicant Pfizer for an order pursuant to s. 6(7) of the NOC Regulations requiring Apotex to produce samples of bulk azithromycin and azithromycin tablets, as well as portions of the abbreviated new drug submission (ANDS) made by Apotex in respect of azithromycin. Pfizer owns a Canadian patent for crystalline azithromycin dihydrate, methods for its preparation, and compositions containing it. Apotex served Pfizer with a notice of allegation pursuant to the NOC Regulations alleging that its tablets will contain azithromycin but will not contain the dihydrate. Apotex also filed its own patent application disclosing a method for preparing azithromycin isopropanolate monohydrate. Pfizer alleged that azithromycin prepared using the Apotex method contains a substantial proportion of the dihydrate, and sought production of the Apotex product and documents to test that claim.
Held: Motion granted. Whether samples of a medicine are compellable under s. 6(7) of the NOC Regulations depends upon whether the samples were provided to the Minister as part of the submission for a NOC. This information is exclusively known to Apotex and the Minister. In the event samples were not provided to the Minister, Apotex will not be required to produce samples for Pfizer. Production of the requested bulk medicine and tablets is clearly relevant to the issues in this proceeding, and is required to enable the applicants to analyze the tablets so the Court will have access to relevant information in determining whether the notice of allegation is justified. Therefore, production of samples of the bulk medicine and tablets and portions of the ANDS is ordered, subject to a protective order to be agreed upon by the parties. Pfizer will be granted an extension of time of 60 days to file evidence in this proceeding following the production of material by Apotex.
9. Astrazeneca Canada v. Canada (Attorney General), May 7, 2002, FCA (Stone J.A., Noël J.A., Sexton J.A.) Appeal/Motion for Leave to Intervene and Joinder/Rules 104 and 109/Judicial Review Proceeding/Patented Medicines (Notice of Compliance) Regulations
Appeal by Astrazeneca of an order dismissing a motion to be joined as a party or for leave to intervene. In the main proceeding, Reddy-Cheminor sought judicial review of a decision of the Minister of Health refusing to accept Reddy-Cheminor’s abbreviated new drug submission in respect of omeprazole capsules as pharmaceutically equivalent with Astrazeneca’s omeprazole magnesium tablets. Astrazeneca brought two prohibition proceedings pursuant to s. 6 of the NOC Regulations which it sought to have joined with the judicial review proceeding commenced by Reddy-Cheminor.
Held: Appeal dismissed. The decision of the motions judge was discretionary in nature and should not be interfered with by the Court of Appeal unless the Court was satisfied that the motions judge failed to give sufficient weight to all relevant considerations: see Reza v. Canada, [1994] 2 S.C.R. 394. All of the arguments raised before this Court were rejected by the motions judge, and he did not err in rejecting the motion for joinder and to intervene.
10. Quadco Equipment v. Timberjack, May 8, 2002, FCTD (Heneghan J.) Patent Infringement/ Summary Judgment
Motion for a declaration that the plaintiff’s patent is invalid and not infringed. The patent relates to a detachable saw tooth for circular saws used in the lumber industry for felling trees. The defendant submits that the patent is invalid because of a prior disclosure and publication made by the defendant. The defendant also submits that its saw teeth do not have “straight” edges, an essential element of each of the claims of the plaintiff’s patent. In support of these submissions, the defendant refers to various “admissions” made by the plaintiff in discovery examination.
Held: Motion dismissed. The evidence presented by the defendant is inconclusive to show that there are not genuine issues for trial on the issues of prior disclosure and the effect of s. 28.3 of the Patent Act, and concerning the physical characteristics of the saw tooth. The evidence submitted by the defendant on the issue of prior publication was given, albeit under oath in legal proceedings, without the benefit of cross-examination and represents a one-sided view. In this case, there are questions as to the sufficiency and reliability of this evidence, and such issues would be better tested following a trial in which the credibility of witnesses would be assessed by a trial judge. Furthermore, the condition of the edge of the saw tooth is a matter of fact, which must be established by evidence. The evidence presented by the defendant, which did not include any opinion evidence, does not meet the test of showing that there is no genuine issue for trial.
11. G.D. Searle et al. v. Merck et al., May 9, 2002, FCTD (Heneghan J.) Summary Judgment/ Patent Infringement/ Dedication of Claims to the Public/ Segregation of Trial/ Stay of Proceedings
Motion for a declaration that Claim 42 of the plaintiff’s patent is infringed, and that defendant’s counterclaim in respect of other claims of the patent be dismissed or stayed. The plaintiff’s patent relates generally to compounds used in anti-inflammatory drugs. The plaintiff’s patent issued, after a voluntary amendment made in 1998 and a subsequent appeal to the Patent Appeal Board, with 200 claims. These include claims that allegedly cover furanones, a compound sold and distributed by the defendant. The application upon which the plaintiff’s patent is based was co-pending with an application of the defendant that also covered furanones. The defendant’s application has also issued to patent.
On September 18, 2000, the plaintiff executed a formal Dedication to the Public of 136 claims (“the Dedicated Claims”) of the patent. The plaintiff alleges that the defendant infringes the remaining claims (“the Asserted Claims”). In its defence, the defendant argues that the compounds defined in the Asserted Claims are included in the Dedicated claims, and therefore, the Asserted Claims were also dedicated to the public. The plaintiffs amended the order sought to include only Asserted Claim 42, and submit that the defendant’s own witness has already admitted that Asserted Claim 42 is infringed. The defendants counterclaim as to the validity of 140 claims of the patent, which include Asserted Claim 42.
Held: Motion granted in part, denied in part. Summary judgment granted in respect of claim 42 only, held to be infringed. The trial of the action with respect to the validity of claim 42 will not be segregated from the trial of the remaining issues, and a stay of the trial of the balance of the action is denied. The dedication of certain claims to the public terminates a patentee’s rights to a monopoly on the subject matter described in those claims; however, such dedication does not affect the rights conferred by the remaining claims in the patent. Upon dedication of the claims, the patent is to be read as if those claims had never issued, subject to any claim for past infringement. Claim 42 is undisturbed by the Dedication to the Public, and in light of the evidence and the submissions made, Claim 42 is held to be infringed.
Segregating the proceedings to allow determination of the validity of claim 42 before proceeding to trial on the remaining claims would likely result in the duplication of evidence. Accordingly, the plaintiff’s motion to segregate the proceedings is denied. Similarly, determination of the issues raised in the counterclaim will necessarily involve determinations of issues raised in the Statement of Claim, and there will be an overlap of evidence. There is no overriding justification for granting an order staying the trial of the counterclaim. Accordingly, the plaintiff’s motion for a stay of the balance of the action is denied.
(b) Trade Marks
1. Supershuttle International v. Reg. TMs, April 12, 2002, FCTD (McKeown J.) Appeal of Examiner's Refusal/Section 14 Trade-marks Act
Appeal from Registrar's decision that refused to register SUPERSHUTTLE on the basis that the mark is clearly descriptive and that the applicant had not discharged its onus under s. 14(1)(b) of the Trade-marks Act. On appeal, the applicant filed additional evidence concerning spillover advertising (before the Registrar it disputed the need for proof of substantial spillover advertising).
Held: Appeal allowed. The Registrar argued that the proper approach would have been for the applicant to file the additional evidence before the Registrar in accordance with the Registrar's request. The Court agreed but said that the failure to do so was not fatal and that substantial spillover advertising is not required in every case, this being one of those cases. The Court did not make any findings as to whether the Registrar erred in holding that the mark was clearly descriptive.
2. Swabey Ogilvy Renault v. Golden Brand Clothing (Canada), April 23, 2002, FCTD (Martineau J.) Section 45 Appeal/Use of Composite Mark
Appeal from Registrar's decision that maintained the registration for LE COLLEZIONI (TRADIZIONI) DI SUCCESSO for men's suits and pants and men's shirts and jackets. New evidence filed on appeal.
Held: Appeal dismissed. The Registrar's decision is neither unreasonable nor clearly wrong. Although the mark was accompanied by the words "par/by Moores", such words are in a different font and outside the design in which the registered mark is displayed; as a result, a reasonable argument can be made that such words are not part of the mark that is being used.
3. Rolls-Royce et al. v. Ian D. Fitzwilliam et al., May 24, 2002, FCTD (O'Keefe J.) Summary Judgment/Trade Mark Infringement
Application for summary judgment in an action alleging infringement of a number of registrations for trade marks owned by the plaintiffs, including ROLLS-ROYCE and BENTLEY.
Held: Summary judgment granted - the trade mark registrations are valid and infringed. In addition to an injunction and damages being awarded, the defendants were ordered to change some corporate names, relinquish to the plaintiffs certain domain names, and deliver up or destroy offending materials. This is an appropriate case to grant summary judgment because the defendants' case is so doubtful that it does not deserve consideration by the trier of fact at a trial. The defendants' main argument was that their use of the plaintiffs' marks was justified because they own some shares of the plaintiff companies.
(c) Copyright
1. Diamant Toys et al. v. Jouets Bo-Jeux Toys, April 5, 2002, FCTD (Nadon J.) Section 38(1)(b) Copyright Act/Copyright Infringement
The plaintiffs seek an order under s. 38(1)(b) of the Copyright Act authorizing them to seize before judgment products that they claim infringe their copyrighted works. The owner of the copyright in various artistic works stored on a number of CD-Roms ceased operations and its assets were liquidated. The defendant purchased some inventory from the liquidator while the plaintiff purchased the intellectual property rights. The plaintiff discovered that one of the CD-Roms was missing and alleges that the defendant is using it to sell products in packaging that incorporates many of the liquidated company's artistic works. The defendant argues that the plaintiffs have not established that they own the copyrights and that the copyrights were not owned by the company that assigned its rights to the plaintiffs.
Held: The plaintiffs have established a prima facie case of copyright infringement and therefore are entitled to seize all infringing copies of the works pursuant to s. 38(1)(a) and (b) of the Copyright Act and r. 377(1) of the Federal Court Rules. The company that the defendant alleged owned the copyright was fully aware of the agreement that transferred the intellectual property to the plaintiffs.
(d) Practice
1. The Chase Manhattan Corporation v. 3133559 Canada, August 15, 2001, (Hugessen J.) Default Judgment
Motion for default judgment pursuant to r. 210 of the Federal Court Rules,1998. The plaintiff had obtained an order from Prothonotary Aronovitch striking out the statement of defence and counterclaim, and that order had become final.
Held: Motion adjourned sine die with leave to the plaintiff to file further affidavit evidence and bring the matter on again on request. Hugessen J. found that on a motion for default judgment in the Federal Court, the Court has two questions before it. First, is the defendant in default and second, is there evidence to support the plaintiff’s claim. In the affidavit filed by the plaintiff, there is no evidence on the merits of the case. The Order striking out the statement of defence and counterclaim did not go to the merits because, pursuant to r. 184 of the Federal Court Rules, 1998, allegations of facts in a pleading that are not admitted are deemed to be denied. This is unlike some other systems of procedure (including the Ontario Court).
2. James W. Halford et al. v. Seed Hawk, October 24, 2001, (Pelletier J.) Admissibility of Expert Evidence – Construction of the Patent
At trial, the defendant objected to the admissibility of a number of paragraphs in an expert affidavit on the basis that (1) they contained opinion evidence on the construction the patent, (2) they contained evidence of a test or experiment conducted in the absence of the defendant’s representatives.
Held: Objection sustained, with respect to those paragraphs from the affidavit in which the expert construed the patents or referred to the tests. (1) Pelletier J. reviewed each of the authorities that Walsh J. had relied upon in Rucker v. Gavel’s Vulcanizing (1985) 7 C.P.R. (3d) 294 in support of the conclusion that expert evidence was admissible on “ultimate issues” in a patent case, such as to the meaning and construction of the patent in suit. Pelletier J. concluded that the authorities Walsh J. had relied upon did not go so far as to permit evidence on the construction of the patent. Pelletier J. highlighted a passage from the decision of the Federal Court of Appeal in Nekoosa Packaging v. United Dominion Industries (1994) 56 C.P.R. (3d) 470 that provides: “The general rule is that extrinsic evidence is inadmissible for the purpose of construing a patent specification and this must necessarily extend to the testimony of the inventor pertaining to the proper construction of the specification.” Pelletier J. saw no basis for distinguishing between the evidence of the inventor as to the meaning of the patent and the evidence of an expert. He concluded that the authorities dealing with the admissibility of opinion evidence on the “ultimate issue” are of limited assistance in dealing with the issue of the admissibility of expert evidence on the construction of the patent because that is a question of law. (2) The decision in Omark Industries v. Gouger Saw Chain (1964) 45 C.P.R. 169 made it clear that tests conducted without notice to the opposite party and an opportunity to attend should not be considered.
3. James W. Halford et al. v. Seed Hawk, October 25, 2001, (Pelletier J.) Admissibility of Expert Evidence – Splitting the Case
The defendant objected to the plaintiff calling a witness during their case in chief to give the evidence set-out in a responding expert affidavit - that amounted to further evidence in chief. By splitting its case when delivering the expert affidavits, the plaintiff had effectively deprived the defendant of an opportunity to respond to that evidence in its reply affidavits.
Held: Objection overruled. To remedy the prejudice to the defendant, the defendant was permitted to call evidence in rebuttal that was not set-out in the expert affidavits that it had served prior to trial provided a written summary of that evidence was given to the plaintiff’s counsel one day before the witness was called to give evidence.
4. James W. Halford et al. v. Seed Hawk, November 2, 2001, (Pelletier J.) Admissibility of Evidence – Late Production
The plaintiff objected to the admission of photographs taken by a witness for the defence. The photographs had been produced only shortly before trial and no supplemental affidavit of documents had been served. The witness, who resided outside the country, could not be compelled to attend a non-party examination prior to trial. Once he had come to Canada to give his evidence, he refused to meet with the plaintiff’s counsel to be interviewed other than in the presence of the defendant’s counsel.
Held: Objection overruled. The appropriate remedy in the case of late production of documents is an adjournment to permit the remedies available under the Rules, in this case the discovery of a non-party. The fact that the witness would not agree to an interview was a matter that would go to the weight of the evidence. The failure to serve a further affidavit of documents was a matter of form rather than substance.
5. Desnoes & Geddes v. Hart Breweries, January 31, 2002, (Dawson J.) Contempt of Court
The plaintiff had served its Statement of Claim for trade mark infringement at the principal place of business of the defendant, a brewery. No defence having been filed, it obtained default judgment enjoining the defendant from using the beer labels displaying the offending trade marks and requiring the defendant to deliver up any infringing product. When the Judgment was served, the individuals apparently operating the brewery at the time advised the process server that the defendant was no longer operating the brewery, and that the new corporation would not obey the injunction. The new corporation was apparently closely associated with the defendant corporation that had been enjoined. The new corporation failed to deliver up the offending product and continued to ship beer displaying the offending labels to the LCBO and Beer Store in the face of the injunction.
Held: The new corporation and one of the individuals operating the brewery were held to be in contempt of court. Dawson J. found that “While only parties to an action are, in a strict sense, able to breach an injunction, any non-party with knowledge of the substance or nature of an injunction who disobeys or interferes with its purpose may be found to have interfered with the orderly administration of justice and thus be found guilty of contempt of court.” Having proven beyond a reasonable doubt that the new corporation had continued to use the offending trade marks and failed to deliver up infringing product, and that one of the individuals who was alleged to be in contempt had aided and abetted the corporation to do so, both the corporation and individual were held to be in contempt of court.
II. OTHER COURT DECISIONS
1. Dana Canada v. Lubrizol, December 27, 2001 OSCJ (LaForme J.) Summary Judgment/Patent Infringement/Claim Construction/Substitutability of Claim Elements
Motion to dismiss defendant’s counterclaim alleging infringement of the defendant’s patents by the plaintiff. The patents relate to “hot-melt” compounds used to coat automobile parts to inhibit corrosion and rusting. The compounds as claimed in the patents refer to the use of magnesium complexes as the active ingredient. The issue considered by the Court was whether products in which calcium and barium were used as a substitute for magnesium would infringe the patents.
Held: Counterclaim dismissed and motion for summary judgment granted. Applying the decision of the Supreme Court of Canada in Free World Trust v. Electro Santé Inc. [2000] 2 S.C.R. 1024, the Court primarily considered the question of whether a skilled worker at the date of publication of the patent would have answered “yes” to the question of “whether calcium and barium would perform substantially the same function in substantially the same way to obtain substantially the same result” as magnesium would in the working of the invention. The Court considered evidence from the defendant’s expert who stated: “it is not apparent to me that the substitution of calcium and barium for magnesium would have a material effect on the way the invention works… [n]or it is clear to me that the inventor intended to exclude the use of calcium and barium as an alternative to magnesium”. The Court found that this evidence was insufficient to answer the question in the affirmative, and that it was not clear that the inventor intended to include anything other than magnesium in the claims. Accordingly, the Court held that magnesium was an essential component of the invention, and that compounds using calcium and barium would not infringe the Defendant’s patents. The Court also assumed that the defendant has presented all the evidence that it would present at trial, and found that there was no genuine issue for trial. Accordingly, summary judgment was granted to the plaintiff.
2. Re Song Corp., January 7, 2002 OSCJ (Spence J.) Section 83 Bankruptcy and Insolvency Act/Copyright/Musical Works/Sound Recordings
The companies that are now bankrupt were in the business of owning or administering certain copyrights. On an application by the trustee in bankruptcy, who wishes to complete a sale of the copyrights, the Court issued orders declaring that s. 83 of the Bankruptcy and Insolvency Act does not apply to copyrights in "sound recordings" held by any of the bankrupt companies as the "maker" of the sound recording, but does apply to copyrights or copyright interests in musical works (and sound recordings, if applicable) held by any of the bankrupt companies as the assignee thereof.
3. Tai Foong International v. Maison Sami T.A. Fruits, February 5, 2002 QSCB (Mongeon J.) Trade Mark Infringement/Passing Off/Québec Interlocutory Injunction Test
The plaintiff seeks an interlocutory injunction to prevent the defendant from infringing its trade mark for rice. It also claims that the defendant's rice bag is so similar to its bag that it constitutes passing off. The plaintiff has already obtained an order that allowed it to seize a large number of the defendant's bags of rice and the defendant moves for an order to quash the seizure.
Held: Interlocutory injunction refused; motion to quash the seizure granted. The defendant presented uncontradicted and credible evidence of the absence of confusion between the two rice-bags, while the plaintiff argued that a likelihood of confusion may be inferred by merely looking at the two bags. The relevant principles of article 752 C.C.P. applicable to the issuance of an interlocutory injunction are adequately summarized in Société de développement de la Baie James v. Kanatewat [1975] C.A. 166. There is a certain reticence by Québec's appellate courts to apply the "Cyanamid" test to matters involving the private interest of commercial litigants. Mongeon J. questioned if the "Cyanamid" test really differs from the "Kanatewat" test, concluding that if it does, the difference seems to be relatively subtle. The Court followed the "Kanatewat" approach and applied, in sequence, the two tests (and three steps) which are therein enumerated. The defendant has not met the first test, i.e. a prima facie appearance of right, because it has not rebutted the defendant's direct evidence of the absence of confusion. "Both parties have used the conflicting marks in the same area and the preponderance of the evidence is that there is no confusion or likelihood of confusion at the level of the purchasing public. How can the Court ignore this and hold that, because of a subjective possibility of likelihood of confusion (not demonstrated), an interlocutory injunction should nevertheless issue?" The seizure was quashed because the plaintiff's affidavit appeared to be insufficient and untrue to support a seizure of both the rice bags and their contents.
4. T.C. Restaurants v. Villa Karouzos Steak House, February 8, 2002 ACQB (Murray J.) Trade Mark/Passing Off/Interim Injunction/Serious Issue/Delay
Application for an interim injunction prohibiting the use by the respondent of the names Villa Caruso's, Villa Karouzos, Caruso's or Karouzos or a derivative thereof. The respondent operated a restaurant under the name Villa Karouzo for a number of years but then granted a lease to the applicant to operate a restaurant on the premises where Villa Karouzo had been. One of the terms of the lease was that the applicant not use a business name that was similar to Villa Karouzo; the applicant used Villa Caruso, with no complaint from the respondent. When the lease expired, the applicant was obliged to relocate and the respondent opened a restaurant at the old location under the name Karouzo's Steakhouse. The principles of the respondent have the surname Karouzo. The present motion was commenced 18 months after the applicant filed its statement of claim and it is now 3_ years since the action was commenced.
Held: Application dismissed. The applicant's case is not a strong one. Although "Caruso" and "Karouzo" are phonetically similar, the parties' restaurants are known by two quite different names, "Villa Caruso" and "Karouzo's Steakhouse". The business premises are also quite different - the applicant has a very upscale restaurant with an elaborate design while the respondent operates a relatively simple steakhouse and pizza parlour. Also, the respondent used the name "Karouzos" well before the applicant chose its name. To establish its passing off claim, the applicant will have to show that the respondent abandoned its "Karouzos" trade name when it permitted the applicant to use the name "Caruso". Even if the applicant is successful in its passing off action against the respondent, the applicant may be denied injunctive relief due to its delay in these court actions.
5. Universal Showcase v. Alliance Store Fixtures et al., February 27, 2002 OSCJ (Nordheimer J.) Confidential Information/ Interlocutory Injunction/Irreparable Harm /Balance of Convenience
Motion by the plaintiff for an interlocutory injunction to restrain the defendants from, inter alia, using the plaintiff's confidential information, and an order requiring the defendants to deliver up certain laptop computers for inspection by the plaintiff in order to determine if there is confidential information of the plaintiff stored on those computers. Former employees of the plaintiff incorporated a company that then pursued one of the plaintiff's major clients.
Held: Injunction denied - irreparable harm not shown as the plaintiff ought to be able to quantify the amount of business that it has lost with respect to the targeted client. Also, the balance of convenience favours the defendants since they are a start-up company while the plaintiff is part of a conglomerate. Defendants ordered to produce the laptop computers for inspection by the plaintiff. Regardless of who owns the laptops, they were used for purposes related to the business of the plaintiff while the individual defendants were employees of the plaintiff and there is therefore a reasonable basis for the plaintiff to believe that information belonging to it may have been on these computers when the individual defendants resigned.
6. Delrina v. Triolet Systems and Brian Duncombe, March 1, 2002 OCA (Morden, Carthy and MacPherson JJ.A.) Copyright in Computer Programs/Infringement/Appeal/U.S. versus Canadian Law/ Abstraction - Filtration - Comparison Method
Appeal from the dismissal of an action that alleged that the respondents' computer software program infringed the copyright in the appellant's program.
Held: Appeal dismissed. This case is largely fact-driven and no palpable or overriding error has been shown with respect to the trial judge's factual conclusions. The appellant submitted that the trial judge, in applying U.S. authorities, erred in applying the doctrine of merger and the "abstraction - filtration - comparison" method of determining whether certain portions of a work are entitled to copyright protection. The Court of Appeal however found that the trial judge did not necessarily apply the abstraction - filtration - comparison method and that there was nothing wrong with the trial judge's statement that "some method must be found to weed out or remove from copyright protection those portions which, for …various reasons…, cannot be protected by copyright". If there is only one or a very limited number of ways to achieve a particular result in a computer program, to hold that that way or ways are protectable by copyright could give the copyright holder a monopoly on the idea or function itself.
7. Maple Leaf Foods v. Butler et al., March 12, 2002 MCQB (Schulman J.) Confidential Information/Interim Injunction/ Employment Duties/Irreparable Harm/Balance of Convenience
Motion for an interim injunction restraining the defendants from using or disclosing certain confidential information with respect to a technology that was developed while Butler was employed as one of Maple Leaf's chief engineers. Butler has gone into business for himself, attempted to market the technology and filed a patent application relating to the technology.
Held: Injunction granted. "There appears to be some strength to the position that, although Butler conceived an idea on his private time when perhaps his job function had not expanded to reach that point, his job function did expand, and the work that effectively designed and developed the technology was done by him pursuant to direction from his employer and within his job description. " There is therefore a serious issue as to whether Butler's acts constituted part of his employment duties and whether his acts since leaving the company constituted a breach of his employment contract. Re irreparable harm: there is no way to measure the loss attributable to the loss of Maple Leaf's competitive advantage. Also, there is no reason to think that the defendants are capable of paying a damage award of the magnitude equivalent to the likely loss to be suffered by Maple Leaf. Re the balance of convenience: the contested technology is not the sole business of Butler's company and he would not suffer irreparable harm through a delay in his marketing of the technology.
8. Molson Canada v. Oland Breweries, May 8, 2002 OCA (Carthy, Cronk and Gillese JJ.A.) Passing Off/Effect of Trade Mark Registration
Appeal from decision that held that the appellant had not made out the ingredients of passing off. The appellant sought an injunction and damages arising from the sale by the respondent of beer under the name and get-up of “Oland Export Ale” red, gold, and white label. The appellant relies on its use of MOLSON EXPORT for beer.
Held: Appeal dismissed. It is unnecessary to analyze the appellant's arguments because the respondent's label is a registered trade mark. The trial judge erred in failing to conclude that the respondent’s trade mark registration was a complete answer to the appellant’s claim. The owner of a registered trade mark is entitled to use its mark throughout Canada. "If a competitor takes exception to that use its sole recourse is to attack the validity of the registration. If it were otherwise, a plaintiff complaining of confusion caused by a competitor’s registered mark would himself be infringing on the mark by establishing that confusion."
III. OPPOSITION BOARD DECISIONS
1. CBS Broadcasting v. Paul R. Raymond, March 1, 2002 (Bradbury) Confusion/Section 30(b) Onus
Use-based application for CBS Design for consulting on the selection, installation, configuration and use of personal computers and networks of personal computers, on-site sales and service, maintenance, training in the setup and use of personal computers and networks of personal computers, and custom programming with respect to personal computers and networking of personal computers and retail sales services with respect to personal computers and with respect to the selection, installation, configuration and use of networks of personal computers. Opposition based, inter alia, on s.12(1)(d) due to confusion with the mark CBS registered for, inter alia, computer programs and instructions, stored in any form, and printed material that will be used in conjunction with computers of any type and video tapes and on s. 30(b). The applicant did not file any evidence.
Held: Application refused based on the s.12(1)(d) ground. The applicant did not meet its legal onus. There is a nexus between the parties' wares/services that is sufficient to result in a reasonable likelihood of confusion given the high degree of resemblance between the marks and the reputation that the opponent has acquired in its mark. The s. 30(b) ground did not succeed because the opponent did not meet its evidential burden - the applicant's decision to not file evidence does not result in an adverse inference being drawn.
2. Sears Canada v. A.O. Dangerous, March 4, 2002 (Folz) Confusion
Use-based application for ATTITOAD for clothing. Opposition based, inter alia, on s.12(1)(d) due to confusion with the mark ATTITUDE registered for clothing.
Held: Application refused. Confusion likely given the inherent distinctiveness of the marks, the reputation associated with the opponent's mark, the overlap in the wares, the potential overlap of the channels of trade, and the visual and phonetic resemblance between the marks.
3. Mattel U.S.A. v. 3894207 Canada, March 5, 2002 (Herzig) Confusion/Famous Marks
Use-based application for BARBIE'S Design for restaurant services, take-out services, catering and banquet services. Opposition based, inter alia, on s. 12(1)(d) due to confusion with the mark BARBIE registered for, inter alia, dolls, personal care items, school items and toys.
Held: Opposition rejected. Although the opponent's mark may be famous with respect to dolls, the connections between the opponent's wares and the applicant's services are too tenuous (BARBIE figurines were available for sale in McDONALD'S restaurants and there was some limited use of BARBIE in association with candy and the like).
4. Beiersdorf v. Future International Diversified, March 13, 2002 (Partington) Confusion/Rule 45(1)/Admissibility of Unsigned Exhibits
Use-based application for OLIVEA for soaps, shampoo. Opposition based, inter alia, on s. 12(1)(d) due to confusion with the mark NIVEA registered for, inter alia, soap.
Held: Application refused because there is some degree of resemblance between the marks, the marks are applied to wares that overlap and could travel the same channels of trade, and the opponent has shown that its mark is relatively well known. The opponent objected early on to the fact that the applicant's affiant's exhibits were not identified and endorsed by the Commissioner for Oaths. The applicant argued that r. 45(1) simply requires that every exhibit be filed with the affidavit. The Board held the exhibits to be inadmissible because the Registrar ought to apply a similar standard to that applied by the Federal Court, at least in those instances where a party has been notified in a timely manner that the other party is objecting to the filing of unnotarized exhibits.
5. 9013-0501 Québec v. Bluedot Jeanswear, March 19, 2002 (Herzig) Confusion/Anglophone versus Francophone Consumers
Proposed use application for RAGE JEANS for clothing. JEANS disclaimed. Opposition based, inter alia, on s. 12(1)(d) due to confusion with the mark ORAGE registered for clothing.
Held: Application refused. An Anglophone would perceive the opponent's mark as RAGE prefixed by the letter O and would sound the two marks in a similar fashion; a Francophone or bilingual Canadian would understand ORAGE to mean "thunderstorm" and would sound the marks differently. The Board Member was left in a state of doubt as to the likelihood of confusion because of the relatively inherent distinctiveness of the applicant's mark, the greater acquired distinctiveness of the opponent's mark, the resemblance between the marks to an Anglophone consumer, and the similarity between the wares. In view of the onus, the doubt was resolved against the applicant.
6. General Mills v. Weetabix of Canada, March 27, 2002 (Folz) Descriptiveness
Proposed-use application for FRUIT SHAPES for breakfast cereal. FRUIT disclaimed. Opposition based, inter alia, on s. 12(1)(b). The applicant filed neither evidence nor argument.
Held: Application refused. The opponent met its evidential burden by filing evidence of its use of "fruit shapes" to describe cereal that it has manufactured in the form of "fruit shapes".
7. Laurentian Bank v. Van-tel Credit Union, April 10, 2002 (Partington) Confusion
Proposed-use application for NETLINK for financial services, namely providing internet banking. Opposition based, inter alia, on s. 12(1)(d) due to confusion with the mark NATLINK registered for banking services, the electronic provision of business and financial information. The applicant did not file evidence or argument.
Held: Application refused - confusion likely.
8. Hudson's Bay v. Iris Hosiery, April 10, 2002 (Partington) Confusion
Proposed-use application for FRIDAY EXPRESSIONS for socks. Opposition based, inter alia, on s. 12(1)(d) due to confusion with the mark EXPRESSION registered for a variety of clothing but not socks.
Held: Application refused. The applicant did not meet the onus on it given the similarity in appearance between the marks and the similarity in their wares and the potential overlap in the channels of trade, and also bearing in mind that the opponent has shown some use of its mark in association with socks.
9. Flora Manufacturing and Distributing v. Jacques Vernin, April 10, 2002 (Partington) Descriptiveness/Confusion
Proposed-use application for FLORA MEDICA for plant extracts formulated under medical control for dietetic and pharmaceutical use in the form of gelcaps or capsules. Opposition based, inter alia, on s. 12(1)(b) and s. 16 due to confusion with the mark FLOR*ESSENCE previously used for herbal teas.
Held: Opposition rejected. Although the dictionary definitions of FLORA and MEDICA show meanings that are highly suggestive of the character of the applicant's wares, the Hearing Officer was not convinced that the average consumer would be aware of the dictionary definitions - the s. 12(1)(b) ground therefore failed. The s. 16 ground failed because the wares differ and there is a limited degree of resemblance between the marks.
10. Three Dog Bakery v. Larry A. Ehrenholz, April 21, 2002 (Martin) Confusion
Use-based application for BONE-APPETIT A BAKERY FOR DOGS for specialty dog cookies and biscuits and dog vitamins, the operation of a retail store and a wholesale business selling same. Opposition based, inter alia, on s. 16 due to confusion with the mark THREE DOG BAKERY/THE BAKERY FOR DOGS & Design for which an application had been previously filed by the opponent for dog food, dog treats and snacks. The applicant filed neither evidence nor argument.
Held: Application refused because there is some similarity between the wares/services, there is at least some resemblance between the marks, and the applicant has taken no active steps since filing its counter statement.
11. Mister Coffee & Services v. Sunbeam Products, April 23, 2002 (Bradbury) Confusion/Lawful Use
Proposed-use application for MR. COFFEE for kitchen appliances, namely water filters, toasters, juicers, mug and carafe warmers, carbonators and hand-held blenders. COFFEE disclaimed. Opposition based, inter alia, on s. 16 due to confusion with the mark MISTER COFFEE previously used for coffee makers, including carafe warmers, supplied to customers in association with the services of office and business coffee supply.
Held: Application refused. The parties agreed that the marks are confusing but the applicant argued that the use relied upon by the opponent could not support the opposition because it was unlawful in view of the applicant's prior registration for MR. COFFEE for coffee brewers, decanters and disposable coffee filters. The applicant's court action claiming that the opponent's use infringes its registration is not relevant since it was commenced after the s. 16 ground's material date. In any event, the Board concluded that it did not have jurisdiction to state that the opponent could not rely on its use in this case because there is not clear evidence that the opponent's use is unlawful given that there has not been a decision in the infringement action and the opponent has counterclaimed that the applicant's registration is invalid due to acquiescence.
12. Family Funeralhome v. Service Corporation International (Canada); Associated Independent Family Funeral Homes v. Service Corporation International (Canada), April 23, 2002 (Bradbury) Descriptiveness/Distinctiveness
Proposed-use application for FAMILY FUNERAL CARE for funeral, cremation, and burial services, as well as financial and insurance services in connection with the funding of pre-paid funeral and cemetery expenses. FUNERAL CARE disclaimed. Opposition based, inter alia, on s. 12(1)(b) and non-distinctiveness.
Held: Application refused on both grounds. The mark is not adapted to distinguish the applicant's services as none of the words, FAMILY, FUNERAL or CARE, is inherently distinctive with respect to the services and the combination of the three is also not distinctive as it is not an unusual or creative phrase. There is evidence of the common use of FAMILY by others in association with funeral care services and the applicant has disclaimed FUNERAL CARE. The phrase FAMILY FUNERAL CARE is indicative of the character of the services being offered rather than of a particular source. The mark is clearly descriptive because the everyday user of the services would likely respond to the mark as a whole as indicating that the funeral care services are either provided by a family or are for the use of families. The Board refused to grant the opponent leave for the very late filing of a copy of a television documentary wherein the applicant's vice-president attributed a certain meaning to the applicant's mark - such statement is not particularly relevant to the issue of whether the Canadian public will respond to the mark as clearly descriptive.
13. Flora Manufacturing and Distributing v. Wilson Laboratories, April 23, 2002 (Bradbury) Distinctiveness
Proposed-use application for FLORAGUARD for insecticides, fungicides and pesticides. Opposition based, inter alia, on non-distinctiveness because FLORAGUARD is not adapted to distinguish the applicant's wares from the wares previously sold by the opponent in association with the mark FLORAGUARD, namely an herbal extract in the form of a tincture.
Held: Application refused. Although the parties' wares are significantly different, the marks are identical, the full range of wares sold by the parties overlap (the applicant also sells natural and organic gardening products while the opponent also sells insect control products, albeit under different marks), there is the possibility of some overlap in the channels of trade, and the products are both sold as a liquid in similar size bottles, at a similar price and with the depiction of one or more flowers.
14. Key Publishers v. Discovery Publications, April 23, 2002 (Bradbury) Confusion
Proposed-use application for KEY TO VICTORIA for publications and printed materials, namely, guide books. Opposition based, inter alia, on s. 12(1)(d) due to confusion with the mark KEY TO VANCOUVER registered for magazines, magazine columns or special inserts and publications. The applicant did not file any evidence or argument.
Held: Application refused because of the similarity between both the marks and their wares.
15. Decamps v. Helene des Champs, April 29, 2002 (Partington) Confusion
Use-based application for HELENE DES CHAMPS for corselettes, brassieres, lingerie, women's and girl's underwear, bathing fashions and casual wear. Opposition based, inter alia, on s. 12(1)(d) due to confusion with the mark DESCAMPS registered for bedding, linen and water absorbent bathrobes.
Held: Application refused with respect to bathing fashions because the applicant failed to meet the onus on it with respect to the likelihood of confusion with the opponent's water absorbent bathrobes. Opposition rejected with respect to the remaining wares because there is a limited degree of similarity between the marks and these wares differ from the opponent's registered wares and would travel through different channels of trade.
16. Bata Industries v. William T. Wilkinson, April 29, 2002 (Folz) Confusion
Application for POWER GEAR for exercise and athletic clothing based on proposed use and use and registration abroad. Opposition based, inter alia, on s. 12(1)(d) due to confusion with the mark POWER registered for sports shoes and sports boots.
Held: Opposition rejected because of the common use of POWER marks in the relevant marketplace.
17. Société Nationale des Chemins de Fer Français v. Orient Express Hotels, April 29, 2002 (Folz) Confusion
Proposed-use application for ORIENT-EXPRESS for hotel services, hotel management services, hotel reservation services… travel reservation services, the arrangement of travel itineraries for others and travel agency services. Opposition based, inter alia, on s. 16 due to confusion with the mark ORIENT-EXPRESS previously used and made known by the opponent for travel agency services, namely railway passenger ticketing services and the sale of railway passenger travel.
Held: Opposition rejected. The opponent did not meet its initial burden of showing that it had previously used or made known its mark in Canada. At best, the evidence shows that the reputation associated with the words ORIENT EXPRESS in Canada is primarily in relation to a historical luxurious passenger train service that operated in Europe in the 1920's and 30's.
18. Advance Magazines v. 412233 Ontario, April 30, 2002 (Herzig) Confusion/Section 30(b)
Use-based application for VOGUE DISPLAY for store fixtures, furniture, decorating accessories and designing, manufacturing, distributing, selling and installing store fixtures, furniture and decorating accessories. Opposition based, inter alia, on s. 12(1)(d) due to confusion with the mark VOGUE registered for a fashion magazine and s. 30(b).
Held: Application refused with respect to the services based on s. 30(b) because the applicant has not used its mark for the services continuously in the normal course of trade since the date claimed. Opposition rejected with respect to store fixtures because there is not a reasonable likelihood of confusion. The applicant's evidence established that the term VOGUE has been brought to the attention of the Canadian public as a component of various business names and trade-marks. The evidence of the absence of actual confusion despite significant sales of the applicant's VOGUE DISPLAY products is a factor in favour of the applicant. The fact that the applicant's target market is commercial buyers who are required to make careful deliberations before purchasing a product also favours the applicant.
19. Universal City Studios v. Brad Brickner, April 30, 2002 (Martin) Confusion
Proposed-use application for UNIVERSAL CONCERTS for promoting the attendance of people at all types of concerts. Opposition based, inter alia, on s. 16 due to confusion with the mark UNIVERSAL CONCERTS previously used by the opponent for the same services. The applicant did not file evidence or argument.
Held: Application refused given the very high degree of resemblance between the marks, services and trades of the parties.
IV. SECTION 45 DECISIONS
1. Canadian Council of Professional Engineers v. AEC, March 27, 2002 (Savard) Inadmissible Hearsay Evidence/Information and Belief
APPLICATION ENGINEERING AN AEC COMPANY & Design registered for industrial and commercial units and systems for cooling, heating water and other process fluids … installation, repair and maintenance services in the field of water cooling, water chilling, and process water recovery apparatus….
Held: Registration expunged. The registrant's evidence was an affidavit from an employee of the registrant's trade-mark agent firm completely based on "information and belief"; no explanation was given as to why an affidavit could not be provided from an officer of the registrant. The Hearing Officer rejected the registrant's argument that the higher standard of the Courts regarding hearsay does not apply to s. 45 proceedings; the fact that cross-examination is not permitted in s. 45 proceedings and that the requesting party cannot file evidence of its own, places a special duty on the Registrar to insure that reliable evidence is received.
2. Davis & Company v. Oasis, March 27, 2002 (Savard) Use of Trade Mark on Invoices/Section 4(1)
AQUARIUS registered for electrically refrigerated water coolers, electrically actuated dehumidifiers for removing moisture from the air by condensation.
Held: Registration expunged because the affidavit does not clearly indicate that the invoices bearing the trade mark accompanied the wares at the time of transfer.
3. Aramark Canada v. 637870 Ontario, March 27, 2002 (Savard) Illegible Commissioner's Signature/Admissibility/Effect of “
BUBI'S AWESOME EATS registered for restaurant services.
Held: Registration maintained. The requesting party challenged the admissibility of the evidence on the basis that the Commissioner's signature was not legible and his/her name was not properly identified. The Hearing Officer was prepared to infer that the Commissioner who signed the affidavit was a commissioner authorized to administer the oath. The placement of “ after BUBI'S in BUBI'S AWESOME EATS does not mean that BUBI'S AWESOME EATS isn't being used but merely provides the message that BUBI'S is also a trade mark.
4. Xentel DM v. Office of the Commissioner of Baseball, March 27, 2002 (Savard) Section 4(2)/Sufficiency of Evidence/Special Circumstances
ALL-STAR GAME registered for entertainment services in the nature of the presentation and promotion of baseball games and exhibitions rendered live and through the media of radio and television broadcasts….
Held: Registration maintained. The promotion of baseball games was done in Canada by the distribution of ballots that permitted fans to participate in the selection of the ALL-STAR GAME players, as well as by the sale of souvenir posters and programs. The mark was used in the presentation of baseball games through the promotion and presentation of games on radio and television stations in Canada. The evidence showed that there had not been presentation of the game rendered live in Canada for eight years. However, there were special circumstances justifying this length of non-use, namely that the ALL-STAR GAME is only held once a year and its location is rotated among the 30 clubs, only 2 of which are in Canada. The registrant is willing to present the game in Canada again if an appropriate application is submitted by a Canadian club.
5. Gowling Lafleur Henderson v. Direct Trading, March 28, 2002 (Savard) Ambiguities/Section 50
CANDY registered for ballpens, mechanical pencils, stamp pads, white board/carton markers, colour pencils, erasers.
Held: Registration restricted to ballpens. Although the affiants stated that the registrant manufactured the pens, the catalogue submitted identified its exporter (DTCI) as the manufacturer. Ambiguities are to be resolved against the interest of the registrant and therefore the Hearing Officer concluded that the public would perceive DTCI as the source of the wares. However, DTCI's use was found to enure to the registrant's benefit under s. 50; because the registrant and the exporter are related companies with the same address and the affiants are directors of both companies, the Hearing Officer was prepared to infer that DTCI used the mark under an oral license or under an arrangement that was tantamount to an oral license under the control of the registrant.
6. Sports Network v. Abalene Sales and Promotions, March 28, 2002 (Savard) Sufficiency of Evidence/Broad Interpretation of Registered Wares
FOR THE RECORD registered for sports related products, namely; cards, photographs, posters, pre-recorded videos, cassette tapes, compact disks; and printed matter namely; magazines, newsletters and newspapers; certificates of achievement awarded to individuals for accomplishments.
Held: Registration amended to delete newsletters, pre-recorded videos, cassette tapes, magazines, and newspapers, the latter three because the evidence filed did not refer to them. The Hearing Officer had some doubt as to whether the newsletters were being sold in the registrant's normal course of trade and had to interpret the ambiguity on this point against the interest of the registrant. The sale of postcards supported the registration for "cards". Although the certificates sold appear at first glance to be merely informative in nature, the Hearing Officer concluded that they could be considered to be "certificates of achievement awarded to individuals for accomplishments" to the extent that it is possible that purchasers, such as coaches, would give them only to individuals who had achieved some goal or outcome; the certificate need not bear the name of the recipient.
7. Riches, McKenzie & Herbert v. Rematech Div. Bremo, March 28, 2002 (Savard) Use on Invoices/Hearsay
MULTIMAT registered for rubber carpets.
Held: Registration maintained. The mark appeared in the body of invoices. Although the affiant did not state that the invoices accompanied the wares, the Hearing Officer was prepared to infer this on the basis that the invoices showed "cash" sales. Although it would have been preferable for the affiant to state his position with the company, the Hearing Officer declined to disregard his evidence on the basis of hearsay (the affiant identified himself as "mandataire dûment autorisé" of the registrant).
8. Sim & McBurney v. Disques Vogue, March 28, 2002 (Savard) Use with Related Wares/Special Circumstances
VOGUE registered for phonograph records.
Held: Registration expunged. The evidence concerned use with compact discs, with no reference being made to phonograph records. The registrant's agent argued unsuccessfully that the registration should be maintained because both compact discs and phonograph records are sound recording media and phonograph records have evolved into compact discs as a result of technical development in this field. The Hearing Officer indicated that the affiant could have provided information about the evolution of technology in the sound recording field in support of an argument that these were special circumstances justifying non-use with respect to phonograph records.
9. Dimock Stratton Clarizio v. Noveltech, April 25, 2002 (Savard) Section 50/Sufficiency of Evidence
TWISTER registered for frozen confection.
Held: Registration maintained. The affiant's evidence was that the present user of the mark assumed the rights and obligations under the licensing agreement between the registrant and its former licensee; under the license agreement, the registrant had direct/indirect control of the character/quality of the wares. Accordingly, the use accrued to the registrant's benefit under s. 50(1). The benefit of s. 50(2) also arose through the use of the following notice on the packaging: "Mfd, under license from Noveltech, Inc., Northvale, NJ, 07647 owner of the trade-marks TWISTER and spiral-shaped confection design for Popsicle Industries Ltd., Burlington, Ontario, L7R 3Y5" (Popsicle Industries Ltd. being the original licensee).
10. Canadian Council of Professional Engineers v. Society of Automotive Engineers, April 25, 2002 (Savard) Normal Course of Trade
AEROSPACE ENGINEERING Design registered for magazines.
Held: Registration maintained. The transfer of the magazine is in the normal course of trade because the registrant's normal course of trade is to include the price of the subscription of the publication in the annual membership fee.
