Recent Decisions June 2004
I. FEDERAL COURT DECISIONS
(a) Patents
1. Astrazeneca et al. v. Apotex and Canada (Minister of Health), January 14, 2004 FCTD (Russell, J.) Prohibition Order/NOA Deficient/NOA Abuse of Process/Patented Medicines (Notice of Compliance) Regulations
Application by Astra for a prohibition order in respect of Apo-Omeprazole tablets for oral administration claimed in Astra's patent. The patent claims magnesium omeprazole having a degree of crystallinity of not less than, and higher than, 70%. Apotex, in their NOA, asserted that they would not infringe the patent, their tablets will contain only amorphous magnesium omeprazole. Astra asserted that the NOA was deficient as did it not address the crystallinity of the omeprazole to be used by Apotex. Astra further asserted that Apotex should not be permitted to rely upon the evidence filed by it which establishes beyond doubt that the raw material to be used by Apotex is non-infringing amorphous magnesium omeprazole. On cross-examination, it was revealed that Apotex had not tested their tablets for crystallinity. Astra asserted that because they had been refused production of the Apotex tablets and had therefore been unable to test the tablets, the Court should find the NOA deficient. Astra's final assertion was that the NOA is an abuse of process as the NOA is not separate and distinct from prior proceedings brought by Apotex. In the prior proceedings Apotex alleged non-infringement of the patent by asserting that Apotex would use only omeprazole magnesium having a degree of crystallinity lower than 70%. Astra asserts that the present NOA encompasses the previous NOA and is therefore not a separate and distinct allegation.
Held: Application dismissed. Whether the NOA is ambiguous in the absence of a specific statement regarding the crytallinity of the magnesium omeprazole depends upon the total context in which the statement is made, including the teachings in the patent and what Astra actually knows, or is legally obliged to ascertain, about whether amorphous magnesium omeprazole tablets can be made from greater than 70% crystalline material. There was no teaching in the patent that material with a degree of crystallinity higher than 70% could be use to make amorphous tablets and there was no substantial evidence submitted by Astra asserting such and no record of Astra attempting to obtain relevant information on the crystallinity of Apotex's raw material or to compel its production. Russell J. concluded that Astra's approach was to float a vague theoretical doubt that could be used to attack the sufficiency of the NOA rather than voice a real concern. Astra was aware that it could establish infringement by proving that the magnesium omeprazole utilized to make the tablets was within the scope of the patent, that is having a degree of crystallinity greater than 70%. Astra's assertion that the NOA should be found deficient because Apotex refused production of their tablets was characterized by Russell J. as an allegation tantamount to fraud. The notion that Apotex would obtain an NOC by reference to a specific process and circumvent the Regulations by thereafter going to market with a product produced by another process was not substantiated. The facts of the NOA are presumed to be true and Astra produced no convincing evidence to the contrary. The NOA was not an abuse of process. The prior NOA alleged that the patent would not be infringed because the omeprazole magnesium used by Apotex although crystalline, would have a degree of crystallinity of 70% whereas in the present NOA Apotex' tablets would contain only "amorphous magnesium omeprazole".
2. Biovail and Galephar v. Rhozalpharma and Canada (Minister of Health) February 20, 2004 (Gauthier J.) FCTD Sufficiency of NOA/Infringement/ Corresponding U.S. Proceedings/Patented Medicines (Notice of Compliance) Regulations
Biovail sought a prohibition order for Diltiazem Hydrochlroide capsules of strengths ranging from 120mg to 360 mg, claimed under Biovail's patent. The patent discloses a once daily extended-release formulation of the drug Diltiazem. Rhoxals NOA stated that its proposed product would not infringe the '085 patent. The patent claimed a bead comprising Diltiazem salts and a wetting agent "to maintain the solubility of the Diltiazem in each bead, ensuring that the solubility of the Diltiazem is unaffected by the pH of the gastrointestinal tract.." and a microporous membrane. Rhoxal asserted that there was no infringement of Biovail's patent because although Rhoxal's capsule contained all of the elements of the claims, in Rhoxal's capsule the salt was not in admixture with the wetting agent. That is, the Rhoxal capsule contained a solid sugar core coated with multiple layers of a mixture of Diltiazem salt and common adjuvants. Therefore the sugar in the Rhoxal capsule did not play the role of a wetting agent but rather the role of a solid support. Biovail asserts that the Rhoxal formulation infringes 4 claims of the patent and that the NOA is insufficient. Biovail further referenced American proceedings which considered the corresponding patent in the U.S.
Held: Application dismissed. Gauthier J. refused to consider the American proceedings as they were "made on the basis of claims in a corresponding patent in the U.S….that did not read exactly like claims 34 to 37 [the allegedly infringed claims]". Further, American courts refer to and apply concepts that have no equivalent in Canadian law, such as the prosecution history estoppel doctrine. Rhoxal's NOA met the requirement of paragraph 5(3)(a) of the Regulations and was therefore sufficient. Biovail was made fully aware of the grounds on which Rhoxal sought an NOC. It was sufficient for Rhoxal to state that it would not infringe the dependent claims because it would not infringe the independent claim. Gauthier J. accepted the evidence of Rhoxal's expert that claim 34 included the essential element of a wetting agent. Therefore unless Rhoxal capsule also included a wetting agent there would be no infringement of the patent. Gauthier J. was less than impressed with the affiants offered by Biovail. One affiant was the Manager of Legal and Regulatory Affairs and the other an articling student at Biovail. The student’s evidence was not discussed and the manager was not an expert and had not performed any test to support her assertions. Her evidence was given no weight. There was no evidence to support Biovail's assertion that Rhoxal's capsule contained a wetting agent.
3. Apotex v. Syntex Pharmaceuticals et al. and Canada (AG) (third party), March 11, 2004 FCTD (Hugessen J.) Transitional Provisions/New & Old Section 8/Patented Medicines (Notice of Compliance) Regulations
Summary judgment motion dismissed. Case involves the construction of the new and old s.8 of the Regulations. The case involves problems relating to the transitional provisions, a text which is far from being simple and which in the particular facts of this case is very problematic. Evidence is required at trial to give a proper contextual and purposive construction to the relevant texts. Because this disposition is dependent upon very recent jurisprudential developments, all having taken place within the last couple of months (Apotex Inc. v. Canada, 2003 FCT 414, [2003] F.C.J. No. 593; Apotex Inc. v. Merck & Co. Inc. and Merck-Frost Canada & Co., 2004 FC 314; Apotex Inc. v. Bristol-Myers Squibb Co., 2004 FCA 43, [2004] F.C.J. No. 164) an order for costs was made to follow the event.
4. AB Hassle et al. v. Apotex and Canada (Minister of Health), March 16, 2004 FCTD (Lemieux J.) Prohibition Order /Allegation of Non-Infringement/Infringement by Patient Use/Patented Medicines (Notice of Compliance) Regulations
Application by Ab Hassle et al. seeking an order prohibiting the Minister from issuing an NOC to Apotex until the expiry of the '668 and '762 patents for use of omeprazole for the treatment of Campylobacter (H.pylori) infections. Apotex alleges non-infringement in its NOA. The main issue is whether Apotex's Apo-Omeprazole tablets will be used by patients for the treatment of H.pylori infections resulting in infringement of the patents.
Held: Application dismissed. This case continues the recent jurisprudence on the scope and circumstances where indirect infringement by pharmacists or patients may be sufficient to lead to a finding that an allegation of non-infringement by a generic drug manufacturer is not justified with the result that a prohibition order would issue prohibiting the Minister of Health from issuing an NOC to that generic drug manufacturer (including Procter & Gamble Pharmaceuticals Canada, Inc. v. Canada (Minister of Health), 2002 FCA 290 (the Genpharm case) and AB Hassle v. Canada (Minister of National Health & Welfare), 2002 FCA 421). Review of the evidence in this case led to the conclusion that the applicants had led insufficient evidence to show, on a balance of probabilities, that either use patents will be infringed by patients should Apotex receive from the Minister an NOC for its Apo-Omeprazole tablets. The evidence led before the Court is similar in nature to the AB Hassle case. In this case, the applicants did not lead any evidence from a doctor and, as a result, there was no evidence on what factors drive Canadian doctors' prescribing behaviour. This gap in the evidence is significant because, according to the applicants' theory, the operation of the prescription drug market and findings of indirect patient infringement through use is dependent on how doctors prescribe drugs. In addition, Apotex confirmed that there are no documents that have been distributed or are intended for distribution to the public that touch on the treatment of H.pylori or Campylobacter or that relate to peptic ulcers. Also, Apotex confirmed there were no internal Apotex documents, memos or anything of that nature that touch in any way on the marketing plans or strategies with respect to Apo-Omeprazole.
5. Halford v. Seed Hawk, March 25, 2004 FCTD (Pelletier J.) Reconsideration of Judgment/Amendment of Pleadings/Federal Court Rules 397 and 75
Motion for reconsideration by the defendant following a judgment dismissing the plaintiff’s claim for infringement and defendant’s counterclaim for a declaration of invalidity. Defendant seeks reconsideration based on two issues. The defendant alleges that Pelletier J. erred in not dealing with a ground of invalidity (the zero till issue) and erred in finding that another ground of invalidity was not pleaded (the critical spacing issue). The defendant also alleges that it should be allowed to amend its pleadings to conform to the evidence – largely because it alleges it was misled by the bench as to whether its pleadings needed amending or not.
Held: Motion dismissed. With respect to the allegedly misleading comments by the bench, these comments were not reasonably misleading. Should counsel have seen a need for amended pleadings, they should have done so. It is their role to advance their client’s interests. The doctrine of functus officio (that a judge has exhausted their jurisdiction over a matter upon signing a final judgment) operates to generally preclude motions for reconsideration. Federal Court r. 397(2) provides an exception to this doctrine, however it allows correction of slips and oversights and not correction of reasons for judgment (see Chandler v. Alberta Association of Architects, [1989] 2 S.C.R. 848 and Sawridge Band of Indians v. Canada (1987), 12 F.T.R. 136). Rule 75 (amendment of documents) does not allow amending of pleadings after judgment has been issued; the doctrine of functus officio precludes such a liberal interpretation of the rule.
6. Novartis Pharmaceuticals Canada et al. v. Rhoxalpharma and The Minister of Health, March 29, 2004 FCTD (Lemieux J.) Prohibition Order/Allegation of Non-infringement/Claim Construction/Doctrine of Equivalents/Patented Medicines (Notice of Compliance) Regulations
Application by Novartis seeking an order prohibiting the Minister of Health from issuing to RhoxalPharma an NOC in connection with its 25 and 50 mg capsules of cyclosporine. The principal issue relates to the scope of the claim 2(a), particularly whether it can be construed to cover a hydrosol formed in situ (i.e. in human stomach) since the Rhoxal capsule, before ingestion, does not contain the described hydrosol, however, once ingested the hydrosol will necessarily be formed in the human stomach. Novartis also raises the issue whether the variant Rhoxal has substituted is in respect of a non-essential limitation and thus within the patent under the doctrine of equivalents. Rhoxal raised as a preliminary issue whether the doctrine of res judicata applied because of a previous court proceeding involving the same parties, the same patent and the same Rhoxal cyclosporine capsules but with a different dosage form of 100 mg. Novartis appealed the previous proceeding which found that Rhoxal's NOA was justified. Rhoxal brought a motion to have the appeal dismissed on the basis that it was moot because the NOC had already issued. Rhoxal addressed Novartis' contention about future NOCs in different dosage forms, stating that different dosage forms would involve new evidence and that if further NOC proceedings were filed, they would be decided on the evidence before the Court at the time they are filed.
Held: Application granted. With respect to the preliminary issue, taking into account the representations made by Rhoxal before the Federal Court of Appeal when mootness was argued as a ground to dismiss the appeal, applying either forms of estoppel would be a clear injustice to Novartis. After reviewing the expert evidence, the Court held that Rhoxal's capsule, after ingestion, forms a hydrosol after contact with water and the gastric juices in the human stomach. Construing claim 2(a) of the patent in a purposive way by considering the whole of the disclosure and the claims and being instructed as to the meaning of its terms by experts skilled in the art of formulation of pharmaceutical preparations, the Court reached the conclusion that a hydrosol formed in situ is within the claims as a pharmaceutical preparation consisting of a hydrosol. The inventors did not create a limitation in the claims which would exclude a hydrosol formed in situ after ingestion. The doctrine of equivalents has been endorsed for use in NOC proceedings and Binnie J. in Free World Trust v. Electro Santé, [2000] 2 S.C.R. 1024, settled this point by integrating the doctrine of equivalents into the mainstream of the inquiry into infringement. Based on expert evidence, there is equivalency between a hydrosol of cyclosporine particles within the specified size range formed in situ and a hydrosol of cyclosporine particles with the same specifications formed outside the body.
7. Hoechst v. Canada (AG General) and Patented Medicines Prices Review Board (as Intervener), March 31, 2004 FCTD (Russell J.) Rules 317 & 318/Patented Medicines Prices Review Board/Allegation of Bias/Production of Staff Report
Appeal from a decision dismissing a request for an order compelling the production of material sought pursuant to r. 317 and 318. Hoechst sells nicotine patches, the subject of an excessive pricing investigation by the Patented Medicines Prices Review Board. The results of the investigation were reported to the Chairperson and Hoechst was invited to submit a Voluntary Compliance Undertaking (VCU). The Chairperson, upon review of the Staff Report, rejected the VCU and a Notice of Hearing was issued. Hoechst brought a jurisdiction motion before the Board asking the Board to rescind the Notice of Hearing. The Board declined. Hoechst argued during the motion that the review of the Staff Report by the Chairperson prior to issuing the Notice of Hearing made it inappropriate for him to sit on the hearing panel. Despite this argument Hoechst did not request production of the Staff Report during the jurisdiction motion, however, when Hoechst brought an application for judicial review it requested the Staff Report. The prothonotary dismissed the judicial review motion as the Staff Report was not before the Board and therefore did not fall within r. 317. Further, Hoechst should have attempted to compel the production of the Staff Report before the Board.
Held: Appeal dismissed. Hoechst’s attempt to broaden the scope of its application to include the Chairperson’s opinion leading to the issuance of the Notice of Hearing failed. The decision under appeal was the objections to the Board’s jurisdiction, at which the Staff Report was not part of the record. The Chairperson’s decision to issue a Notice of Hearing was not within the scope of the Board’s decision and was therefore not within the scope of the prothonotary’s decision or the appeal to the Court. The critical error of Hoechst was its failure to seek to place the Staff Report on the record before the Board. To allow the Staff Report to now be placed upon the record would allow Hoechst to argue a different case on review to the one that was argued before the Board in a situation where no new issues of bias had arisen. Hoechst further argued that although the Staff Report was not part of the formal record it should still be considered to have been before the Board because the Chairperson presided over the process before the Board. Russell J. found this argument lacked credibility, knowledge of the Report by the Chairperson did not place the Report before the Board.
8. Suntec Environmental v. Trojan Technologies, April 5, 2004 FCA (Pelletier, Rothstein, Sexton JJ.A.) Summary Judgment /Patent Validity/Patent Construction /Patent Infringement
Appeal by Suntec from an order under Federal Court r. 216 granting summary judgment to Trojan in a patent infringement action. Trojan held a patent relating to a device that purifies fluids using ultraviolet light. Trojan’s patent covered an array of ultraviolet lamps mounted on a frame, controlled by a ballast, with the frames being immersed in a stream of water. The water is purified as it flows over and around the frames and is exposed to ultraviolet light. Suntec’s system used a submersible ballast for each tube in the frame, eliminating the need for lead wires going to the lamps. The motions judge ruled on multiple issues: construction of the patent (construing the patent to include submersible ballasts that eliminate the need for lead wires), infringement of the patent, as well as the defenses of anticipation, obviousness and ownership as they relate to the validity of the patent. On each of these issues, the motions judge found for Trojan. Citing various cases, the motions judge stated that he was required to determine whether Suntec had established that there was a “genuine issue for trial” when taking a “a hard look” at the merits and context of the case as a whole. The motions judge also suggested that if there are serious issues of credibility the matter should go to trial.
Held: Appeal allowed, costs awarded to appellant in current proceeding and in motion. MacNeil Estate v. Canada, 2004 F.C.A. 50 outlines the scope of summary judgment decisions under the Federal Court Rules. However, in the present case, there are issues of credibility that remove the case from the ambit of MacNeil and preclude the motions judge from granting the summary judgment. The motions judge made determinations of obviousness, construed the term “lead wire”, and assessed overall infringement of the patent based on finding one witness more credible than the other. It is not proper for a motions judge to make such credibility assessments as they are multi-faceted and require viva-voce evidence to make a proper determination (as outlined in Faryna v. Chorny, [1952] 2 D.L.R. 354 (B.C.C.A.) and accepted herein).
9. Pfizer et al. v. Apotex, April 16, 2004 FCTD (Gibson J.) Four NOAs Responded to in One Application/Motion to Sever the Application/Patented Medicines (Notice of Compliance) Regulations
Apotex served four distinct NOAs on Pfizer all relating to Apotex’s Apo-Quinapril tablets. Each NOA referred to a different Pfizer patent. Pfizer then commenced one application under the Regulations in response to all four of the NOAs. Apotex brought a motion to sever the application in respect of each NOA. The motion was dismissed. Apotex appealed. Apotex argued that it would be severely prejudiced if severance was not granted, that it would suffer prejudice from its inability to seek summary dismissal, further prejudice by reason of inevitable protraction and complication, and thus delay. Pfizer argued that the motion should be heard orally, that the test for severance had not been met, that the motion has already been argued and dismissed and that Apotex’s evidence is entirely speculative.
Held: Divided success. Pfizer’s application was severed in two; two patents per application. The motion for severance had not already been argued, rather it was premature. Although the affidavit by Apotex may contain extensive speculation and argument, given the nature of the motion it is of some utility and is attested to by one of a very limited number of persons with knowledge of all the relevant factual background. There are common issues of law and fact on the four NOAs, however in two of the NOAs there are more important issues which are likely to occupy a far greater proportion of hearing time. Further, separate proceedings in respect of two of the NOAs may be amenable to summary disposition; however if combined with the other two NOAs, summary disposition would not be available in respect of either.
10. Abbott Laboratories et al. v. Canada (Minister of Health) and Pharmascience et al., April 19, 2004 FCA (Richard C.J., Rothstein J.A. and Sharlow J.A.) Support for Patent Listing/Sufficiency of SNDS/Jurisdiction for Appeal Pursuant to Section 6(5)(a) of Regulations/Section 27.1 of the Federal Courts Act/Patented Medicines (Notice of Compliance) Regulations
Appeal by Abbott from Motions Judge's decision that its SNDS lacked substance and could not support the listing of the '732 patent for the direct isolation of clarithromycin (Biaxin). Abbott held various NOCs for the use of Biaxin in the treatment of respiratory illness. Abbott sought an SNDS and was granted an NOC for the use of Biaxin in a dual drug therapy for treatment of gastrointestinal illness used in combination with a proton pump inhibitor (PPI) called omeprazole. Abbott further filed another SNDS and was granted an NOC for a triple drug therapy adding a second antibiotic, amoxicillin. TAP Pharmaceuticals, owned by Abbott and a third party, produces another PPI called lansoprazole which can be used in place of omeprazole in triple therapy. Abbott, acting on behalf of TAP, filed an SNDS and was granted an NOC for this triple therapy combination. Abbott, again acting for TAP, subsequently filed an NDS for a prepackaged drug regiment for that triple therapy. The disputed SNDS was filed to allow Abbott to amend its product monograph to incorporate TAP's product monograph by reference and allow Abbott to sell and market the triple therapy containing lansoprazole. Within 30 days of issuance of the NOC, Abbott submitted the '732 patent for listing. In addition, Pharmascience suggested that the Court had no jurisdiction since the NOC Regulations do not provide for an appeal from an Order dismissing an application pursuant to s.6(5)(a).
Held: Appeal allowed. For the purposes of filing an SNDS, an indication does not have to be new or novel, in the sense that this term is used in patent law. However, if a manufacturer proposes to use its pharmaceutical product for a purpose for which it has no prior approval, an SNDS is required. The fact that TAP had previously obtained approval for this combination is immaterial, as TAP is a different manufacturer. Moreover, in filing the SNDS, Abbott was complying with a regulatory requirement. This was not an attempt by Abbott to circumvent the time limitations set out in the NOC Regulations. It is not for this Court to alter the patent benefits to which a manufacturer is entitled after validly complying with the various requirements set out in the Regulations. Section 27.1 of the Federal Courts Act expressly provides for an appeal to this Court from a final or interlocutory judgment of the Federal Court. Emphatic statutory language would be required to preclude the right of appeal set out in this Act.
11. Janssen-Ortho v. Canada (Minister of Health & Attorney General), April 27, 2004 FCA (Rothstein J.A.) Application for Stay Pending Appeal/Judicial Review/Removal of Patent from Patent Register/ Patented Medicines (Notice of Compliance) Regulations
Application by Janssen seeking a stay to preclude the Minister of Health from removing a patent from the Patent Register until the Supreme Court has dealt with Janssen's leave application and appeal, if leave is granted.
Held: Application dismissed. The Court followed the Bristol-Myers Squibb Canada Inc. v. Canada (Attorney General), [2001] F.C.J. No. 16 (C.A.) decision where it was decided that when an action for patent infringement is available, the inability of a patent holder to access the automatic stay provisions in the NOC Regulations did not constitute irreparable harm. In the event of infringement by a competitor, Janssen could bring an action for patent infringement. There is, therefore, no irreparable harm if the stay is dismissed and Janssen is ultimately successful in its appeal to the Supreme Court. The Court rejected Janssen's further argument that the automatic stay provision was a quid pro quo for the loss patent holders suffered now that generic manufacturers are able to work-up their NOC submissions before a patent expires, and if it is unable to invoke the automatic stay provision, it will suffer irreparable harm that cannot be quantified in damages.
12. P.E. Fusion v. Canada (Attorney General), April 29, 2004 FCTD (Mosley J.) Application for Judicial Review/Patent Act Section 8/Inherent Jurisdiction of Commissioner of Patents
Motion for judicial review of a decision of the Commissioner of Patents. Applicant’s patent lapsed after failure to pay the 10th maintenance fee and failure to reinstate the patent within the one year period for reinstatement. The original patent owner transferred ownership to the applicant. The applicant received notice to pay the 9th maintenance fee. Applicant sent this maintenance fee to the American law firm responsible, who neglected to pay the fee. However, the American firm’s Canadian agent paid the fee. Applicant received another bill it erroneously thought was for the 10th maintenance fee and paid the American firm. The American firm believed they were to have removed the patent from the docket, and instructed their Canadian agent to do the same. The patent thus lapsed while the Applicant was under the impression that the 10th maintenance fee had been paid. Applicant sought application of s. 8 of the Patent Act to fix the ‘clerical error’ that occurred, or alternatively, a determination that the Commissioner of Patents should have used the Commissioner's inherent jurisdiction to fix this ‘genuine’ mistake.
Held: Application dismissed. Section 8 of the Patent Act has been repeatedly correctly interpreted to provide means to correct errors that occur as a result of clerical errors at the Patent Office and not clerical errors that arise from applicants’ actions. The Commissioner of Patents does not have the inherent jurisdiction to correct this mistake for several reasons: s.46(2) of the Act states that a patent shall be deemed to have expired if the fees are not paid, precedents (including Pfizer Inc. v. Canada (Commissioner of Patents), [2000] F.C.J. No. 1801 (C.A.)) indicate that the Commissioner does not have the inherent jurisdiction to extend payment deadlines. Common law has not and should not allow for direct contradictions of statutory requirements. The determination of genuine mistake is fraught with difficulty the Court is not willing to enter into.
13. Apotex v. Canada (Minister of Health) and AstraZeneca Canada, April 30, 2004 FCTD (O'Keefe J.) Declaratory Relief/Eligibility for Listing on Patent Register/Timing of Patent Listing/Subject matter of Patent Listing/ Patented Medicines (Notice of Compliance) Regulations
Application by Apotex seeking two declarations. Firstly, that if the '762 patent for omeprazole owned by AstraZeneca is eligible for listing, it is only eligible for listing with respect to the 1999 drug submission. Secondly, that Apotex is not required to address the '762 patent. Apotex argued that the '762 patent was ineligible for listing because of timing requirements and because the subject matter was not relevant to the 1993 SNDS filings. Apotex also argued that because Apotex never made comparison to Losec capsules that were marketed pursuant to an NOC for the new uses of the '762 patent, s.5(1) requirements were not triggered. Furthermore, s. 5(1) was not engaged because Losec was not marketed at the material time. The Minister submitted that all of Apotex's arguments should have been dealt with in the context of previous prohibition proceedings pursuant to paragraph 6(5)(a) and not by way of an application for judicial review.
Held: Application dismissed. The issues raised by Apotex should have been dealt with as part of prohibition proceedings pursuant to paragraph 6(5)(a) of the NOC Regulations, which provide a complete scheme for dealing with whether or not a patent should be on the patent register so as to have required Apotex to file an NOA. With respect to timing requirements, as AstraZeneca did not cease marketing Losec in Canada until 1996, AstraZeneca did market Losec in Canada pursuant to NOCs associated with the patent list, namely NOCs issued in 1993 and 1994. Therefore, s. 5(1) was triggered, obliging Apotex to address the '762 patent in an NOA. Furthermore, s. 5(1) of the NOC Regulations simply refers to "drug" and does not deal with uses of drug. As such, s. 5(1) refers to a physical product, not the uses or new uses of a product.
14. Torpham v. Commissioner of Patents and Canada (AG), May 7, 2004 FCTD (MacKay J.) Abuse of Exclusive Rights/Section 65 of the Patent Act/Compulsory Licence /Request to Supply Bulk Lisinopril for Production of Tablets in Canada for Export to the U.S.
Appeal from the Commissioner of Patents refusal for relief based on alleged abuse of exclusive rights under a patent, pursuant to s.65 of the Patent Act. Torpham sought a compulsory licence that would enable it to acquire a bulk chemical, lisinopril, then subject to a patent owned by Merck, for the purpose of manufacturing tablets in Canada for export. The Commissioner was not satisfied that Torpham had made a case for relief as required by s. 68(2) of the Act and rejected the application. Merck’s Canadian patent for lisinopril expires in 2007, whereas the corresponding U.S. patent expired in 2001. In 1999, Torpham requested a voluntary licence from Merck limited to production of lisinopril tablets for export. Merck refused the licence. Torpham brought an application before the Commissioner alleging that Merck had abused its patent rights in that Merck’s present licencees did not adequately supply the U.S. market. The Commissioner held that a demand for bulk lisinopril for use in manufacturing tablets solely for export from Canada was not a demand in Canada for lisinopril in bulk form and the demand for lisinoprol in Canada was being met. The Commissioner further held that Merck had not refused to supply the patented article to Torpham, rather the terms proposed by Torpham were not reasonable.
Held: Appeal allowed. The decision of the Commissioner is a preliminary determination that the application has some merit and it should be permitted to proceed to the next stage, as directed by the wording of the Patent Act. The absence of a specific request is unnecessary, Torpham specifically requested that the patentee supply bulk lisinopril and a demand for bulk product for use in manufacturing tablets in Canada, which requires a licence from the patentee, is a demand in Canada for the patented bulk product. The Commissioner further erred in concluding that there was no demand in Canada for the bulk lisinoprol, by ignoring certain of the evidence before him, and by concluding that serving export markets abroad by manufacturing tablets in Canada could not constitute a demand for bulk lisinopril in Canada as the raw product for use in manufacture. The Commissioner’s decision did not consider the effects of a refusal to grant a licence upon the trade or industry of Canada. The conclusion that the terms proposed by Torpham were not reasonable was not based on any evidence. The terms considered related only to the royalty proposed. The Commissioner further erred in concluding that the grounds of abuse under s. 65 are limited. Patents are to be understood so that so far as possible they are to be worked on a commercial scale in Canada without undue delay. Remitted to the Commissioner for reconsideration on the basis that the application of Torpharm warrants a preliminary finding that a case for relief is made, and that the application be dealt with in accord with s.68(2) and related provisions of the Patent Act.
(b) Trade Marks
1. Uvex Toko Canada v. Performance Apparel, March 25, 2004 FCTD (Russell J.) Section 45 Appeal/Sufficiency of Evidence
Appeal from a s. 45 decision that expunged the registration for HOT CHILLY’S for various items of clothing. New evidence filed on appeal stated that the mark was used with certain of the wares and provided “typical and representative” packaging, advertising, labeling and invoice examples. The affiant was cross-examined on his affidavit.
Held: Registration maintained for certain of the wares. Although the affiant clearly stated that the mark was used in association with more of the wares, it appeared that the affiant considered long underwear to be both “underwear” and “pants”, a balaclava to be both a “hat”, a “neckwarmer” and a “scarf”, and a woolen hat to be the same as a woven hat. Therefore the registration was only maintained for those wares for which there was appropriate physical evidence, i.e. a single item was not accepted as evidence for more than one item of clothing.
2. House of Kwong Sang Hong v. Borden Ladner Gervais and Reg. TMs, April 13, 2004 FCTD (Noël J.) Section 45 Appeal/Deviation From Registered Mark /Section 50
Appeal from s. 45 decision that expunged a registration because the evidence showed use by an entity other than the trade mark owner and the mark in use was not the mark as registered. New evidence filed on appeal.
Held: Appeal allowed in part – the registration will be maintained for skin moisturizers only. The remaining wares will be expunged either because the registrant did not claim to have used its mark with them or because the mark used with them is not the registered mark. The differences between the mark as registered and the mark as used is substantial; the registered mark consists of a series of Chinese characters and the words TWO GIRLS but these two components do not appear together on the wares that are to be expunged. It is unlikely that any unaware purchaser would recognize that both the registered mark and the mark used indicated goods from the same origin. The new evidence satisfied the Court that the registrant controlled the use of the mark through an oral licence and a close corporate relationship. The Court emphasized that s. 45 proceedings are intended to be summary and their object is to clear the register of entries of trade marks that are not bona fide claimed by their owners as active marks.
3. Canadian Council of Professional Engineers v. John Brooks, April 21, 2004 FCTD (O’Reilly J.) Opposition Appeal /Deceptively Misdescriptive
Appeal from decision that rejected an opposition to an application for BROOKS BROOKS SPRAY ENGINEERING & Design for the distribution of spray equipment. The applicant is not registered or licensed as a professional engineering firm but, where appropriate, its duly licensed professional engineers serve clients’ needs for those kinds of services.
Held: Appeal allowed. The mark is unregistrable because BROOKS BROOKS SPRAY ENGINEERING is deceptively misdescriptive of the applicant’s services and the persons providing them. The words SPRAY ENGINEERING had already been found to be either deceptively misdescriptive or clearly descriptive in an earlier opposition. “While ‘spray engineering’ may not be a recognized field of specialty in the engineering profession, those words connote a range of sophisticated technical services related to fluid handling and distribution and, therefore, a connection with the kinds of services one might expect professional engineers to provide.” Because the deceptively misdescriptive words SPRAY ENGINEERING dominant the mark, the mark as a whole is unregistrable.
4. Footlocker Group Canada v. R. Steinberg and Reg. TMs, May 18, 2004 FCTD (Russell J.) Section 45 Appeal/Use by Whom
Appeal from a s. 45 decision that expunged the registration for WOOLWORTH. New evidence filed on appeal.
Held: Appeal dismissed. Although the new evidence might have materially affected the Registrar’s decision, the decision was unreasonable because no nexus was established between the use of the trade mark and the trade mark owner, in either the original or supplemental evidence. The Court was concerned that the omission in the evidence to indicate who was using the mark looks suspicious and should not be treated as a mere technicality because “[t]o do so would be to encourage fudging in the most basic of evidentiary requirements under s. 45.”
(c) Copyright
1. Canadian Private Copying Collective v. Amico Imaging Services and Computer Direct Depot, March 26, 2004 FCTD (Blais J.) Motion to Set Aside Anton Piller Order /Copyright Levy re Blank Audio Recording Material
Motion by Amico to set aside an Anton Piller Order. The Order was obtained on the basis of allegations that Amico had failed to comply with Part VIII of the Copyright Act by not reporting its importation and sale of blank audio recording material and not remitting the levies owed to the plaintiff.
Held: Motion denied. The plaintiff’s fear of destruction was justified. Given the elaborate deception that was organized to avoid paying the levy, it was appropriate not to warn Amico ahead of time. Amico’s claim that the plaintiff did not make full and frank disclosure when it obtained the Order was based on minor points that the Court did not believe would have affected the decision to grant the Order. In a motion to set aside an Anton Piller Order, the Court is entitled to consider both the evidence available at the time the order was made and any new evidence that has surfaced since then. From cross-examination and from materials obtained pursuant to the Order, it is clear that Amico never paid a levy and that they knew at a certain point of time that a levy was to be paid. This avoidance of the law was the basis for the plaintiff’s fear that evidence would be destroyed if notice were given of an impending action. The strong prima facie case arises from the fact that there had been no remittance of the levy.
2. Video Box Enterprises and TVBO Production v. Zhen Kun Peng, March 30, 2004 FCTD (Layden-Stevenson J.) Summary Judgment/Copyright Infringement/Damages
Motion for summary judgment seeking an injunction and damages for copyright infringement. The plaintiffs executed an Anton Piller order and removed videocassette tape recordings from the defendant’s premises that infringed their copyright. The defendant admits infringement and the only triable issue is the quantum of compensable damages. The plaintiff proposed $37,790; the defendant proposed less than $4000.
Held: $13,850 awarded in compensable damages. The plaintiff provided a comparable licence that the defendant accepted. The defendant however asked that a pro-rated approach be applied and the Court was willing to do this but not to the extent proposed by the defendant because it recognized that “a pirate cherry picks the cream of the crop for reproduction purposes”.
3. BMG Canada et al. v. John Doe, Jane Doe, March 31, 2004, FCTD (von Finckenstein J.) Motion for Information Disclosure/Copyright Infringement/File Sharing/Privacy
Numerous record companies, through their association, Canadian Recording Industry Association ("CRIA"), launched an action against 29 individuals who had numerous downloaded recordings on computer file sharing directories, facilitated through peer-to-peer services, such as Morpheus and iMesh. The individuals had only been identified by their Internet addresses and CRIA sought a court order to compel their Internet service providers to disclose their names and addresses.
Held: Order denied. File sharing did not infringe Canadian copyright laws. Downloading a song for personal use is not an infringement because private copying sections of the Copyright Act expressly permit the making of such copies. Furthermore, the Court found that simply placing those copies onto shared directories, which other computer users could access through a P2P service, did not amount to authorizing infringement. There was no evidence that these individuals took any positive step to facilitate further distribution of the copies, such as sending out further copies or advertising that the files were available for copying. Relying on the recent Supreme Court of Canada decision in CCH v. The Law Society of Upper Canada, 2004 SCC 13, the Court found that merely providing facilities for copying (i.e. the shared directories) did not amount to an authorization to make infringing copies any more than providing a photocopier, which could be used to make illegal copies, was an authorization to infringe in the Law Society case.
The Court further noted that the Canadian Act did not yet give copyright owners an exclusive right to control the distribution or "making available" of their works. Such a new right is required under an international treaty called The WIPO Copyright Treaty, which Canada has signed, but not ratified. If a distribution and/or "making available right" is added to our Act in future, to comply with Treaty requirements, it would then be an infringement to place music files on shared directories, since that would amount to "making available" the works, without the copyright owner's consent.
The decision also reviews requirements to protect Internet users' personal information under privacy laws, including the recent Federal legislation "Personal Information Protection and Electronic Documents Act".
4. Kraft Canada et al. v. Euro Excellence, May 3, 2004 FCTD (Harrington J.) Gray Marketing/Parallel Importation/Copyright Infringement /Copyright Subject Matter Copyright Ownership/Conflict of Laws
Copyright infringement action wherein Kraft seeks injunctive relief and damages. Euro, the former exclusive Canadian distributor of TOBLERONE and CÔTE D’OR chocolate bars, has been importing them into Canada for sale from an undisclosed European source. Kraft, the manufacturer of the bars in Europe and the owner of the TOBLERONE and CÔTE D’OR trade marks in Canada, seeks to enjoin Euro from distributing the copyrighted artwork on the bars’ wrappers.
Held: Injunction and damages awarded. Euro argued that the Elephant Design on the Côte d’Or packaging was not copyrightable because it was an updated version of a design that has been used for over a century. The Court held that it was entitled to copyright protection. “Although the elephant is not novel or unique, it results… from an exercise of skill and judgment. Different possible options obviously had to be considered and that involved intellectual effort. The exercise of skill and judgment was not trivial.” However, the Court agreed that the current Côte d’Or script and the red shield that appear on the packaging, in each of which Kraft also claimed copyright, were not entitled to protection because the new script was merely a change in font and there is nothing original about a “streak of red”. The Court also held that the Bear within a Mountain Design that appears on the TOBLERONE packaging is an original artistic work that is entitled to copyright.
Euro argued that Kraft is not entitled to the equitable remedy of an injunction because it does not come to the Court with clean hands. The Court rejected this argument because if Euro believes that Kraft has breached a contract, its remedy is to take an action in damages, not to breach Kraft’s copyright.
Euro also argued that s. 27(2)(e) of the Copyright Act has to be interpreted restrictively to take into account that property and civil rights are matters of provincial jurisdiction. However the importation of copyrighted goods against the will of the owner does not impinge upon property and civil rights. Furthermore, s.27.1 does not cut back the rights created under s. 27.
Euro argued that copyright ought not to be used to prevent competitive distribution of goods, at least not where the copyright work is merely ancillary to the main product. The Court rejected this free trade argument saying that the Copyright Act is clear and there is nothing to prevent Euro from replacing the wrappers.
The Court also considered the conflict between copyright law in France, where the design was created, and Canadian copyright law, so far as it relates to the ownership of copyright in subject matter created during employment.
(d) Practice
1. Canadian Business School v. Sunrise Academy, March 30, 2004 FCTD (Stinson, Assessment Officer) Assessment of Costs/Role and Jurisdiction of Assessment Officer/Awarding of Interlocutory Costs
In a passing off action that was dismissed, the Assessment Officer had to assess the quantification of the costs awarded to the defendant. The plaintiff, a corporation represented by a non-lawyer, failed to make any relevant representations that undermined the defendant's bill of costs. This left several contentious cost items essentially unopposed, including costs for preparation of the defendant’s motion that was never called.
Held: Minor adjustments to the bill of costs. In assessing a bill of costs, even if essentially unopposed, an Assessment Officer must not certify unlawful items, i.e. those items outside the authority of the judgment and tariff. For example, interlocutory costs that arise independently from the judgment, such as the cost associated with preparing a motion for discovery that was never called, will generally not be certified by the Assessment Officer unless the judgment expressly orders otherwise. Accordingly, costs for preparation of the defendant’s motion that was never brought were not awarded.
2. Volkswagen Canada v. Access International Automotive et al., April 2, 2004 FCTD (Hugessen J.) Failure to Produce Evidence/Contempt of Court
Motion by defendant seeking: (i) dismissal of the principle action; (ii) costs for failure to produce documents in compliance with Court orders; and, (iii) contempt order against the plaintiff for failing to produce documents.
Held: Motion granted in part. The plaintiff had a long and serious history of failing to respect obligations regarding documentary production. In addition, it engaged in obstructive and delaying tactics. Accordingly, the Court dismissed the plaintiff's principle action with prejudice and awarded the defendant costs in the global amount of $110,000. The Court, however, refrained from issuing a contempt order. The Court held that it should exercise caution and prudence in exercising coercive powers. On the facts, the misconduct was adequately sanctioned by the dismissal of the action and by the costs awarded.
3. Merck et al. v. Apotex et al. April 14, 2004 FCTD (Harrington J.) Protective Order /"Counsel's Eyes Only" Order
Appeal by Apotex from an order protecting the confidentiality of certain Merck documents. The order by the Prothonotary was, inter alia, a "counsel's eyes only" order. The order required Apotex to identify its experts and obtain Merck's approval, or a Court order, before disclosure of the protected documents and information to any person other than Apotex's counsel.
Held: Appeal allowed in part and the protective order modified. The onus is on the party seeking to restrict ordinary disclosure to justify the need. Merck did not meet its burden justifying the "counsel's eyes only" order since it merely made "bald statements" in support of the protective order. Merck's meager evidence did not justify interference with the solicitor-client relationship nor interference with the right of a party to consult outside experts. In regards to experts, Merck provided no reason to support the proposition that an expert on notice of the protective order would, in contempt of Court, disclose the information to the public or to Merck's competitors.
4. Aventis Pharma v. Apotex et al., April 15, 2004 FCTD (Gauthier J.) Federal Court Rule 303/Patentee Entitlement to Participate Fully
Aventis held a license for a Schering patent. Apotex was, inter alia, challenging the validity of the patent. Apotex appealed a decision which dismissed its motion to strike the evidence filed by Schering. The motion was dismissed on the basis that Aventis had the right to name Schering as a responding party and that Apotex had failed to establish sufficient evidence of abuse to justify striking Schering's affidavits.
Held: Appeal dismissed. Pursuant to r. 303 of the Federal Court Rules, Aventis was entitled to include Schering as a respondent. As a party to the proceedings, Schering was at liberty to participate fully and had the right to file evidence supporting its view that the patent in question was valid and the NOA not justified. Schering did not duplicate the evidence of Aventis and, hence, Apotex did not have to respond to the same issues more than once.
5. Apotex et al. v. The Wellcome Foundation, April 15, 2004 FCTD (Tremblay-Lamer J.) Motion to Strike Portions of Order /Affidavit of Documents/Federal Court Rules 223 and 47(2)/Case Management Powers
Motion by Apotex seeking to strike several paragraphs of the Prothonotary's order compelling Apotex to include specified categories of documents in its affidavit of documents. The order was made before the statement of issues had been filed and before the parties' affidavits of documents were to be delivered.
Held: Motion granted. Rule 223 of the Federal Court Rules clearly states that the party serving the affidavit of documents determines the content thereof. It is presumed that an affidavit of documents includes a complete list of the relevant documents and only once the affidavit of documents has been submitted can a receiving party seek to demonstrate that it is incomplete. As such, the Prothonotary's order was premature and disregarded the appropriate procedure to be followed. Furthermore, the Prothonotary erred in law in granting the plaintiff's request in the absence of any formal motion by the plaintiff. Rule 47(2) provides that "the powers of the Court are to be exercised on motion, they may be exercised only on the bringing of a motion". (emphasis added)
6. Infonet Services v. Matrox Electronic Systems et al., April 21, 2004 FCA (Stone J.A.) Discretion of Court to Dismiss for Delay
Infonet's action was dismissed for delay. No reasons were given by the Motions Judge. Infonet appealed the dismissal.
Held: Appeal granted. In considering whether an action should be dismissed for delay, the Court should focus on two questions: 1) do the reasons why the case has not moved forward faster justify the delay that has occurred?; and 2) what steps is the plaintiff now proposing to move the matter forward? With respect to the first question, the delay primarily resulted from the parties being engaged in good faith negotiations with a view to settling the dispute as obliged under the Federal Court Rules. In regards to the second question, Infonet's plan to move the matter forward, while somewhat vague, showed sincere commitment to the action and, therefore, was sufficient.
7. The Wellcome Foundation et al. v. Apotex, April 21, 2004, FCA (Sharlow J.A.) Stay/Production of Further Documents
The appellants sought stay of an order pending appeal. The order required the appellants to produce a further and better affidavit of documents. The appellants argued, inter alia, that they would suffer irreparable harm if the stay was not granted.
Held: Motion denied. The appellants produced no evidence that indicated they would suffer irreparable harm by having to provide further documents. The appellants did not provide any evidence that the loss could not be remedied monetarily after a successful appeal.
8. Ulextra v. Pronto Luce, April 21, 2004 FCTD (Layden-Stevenson J.) Summary Judgment/Ineffective Pleadings
Motion by defendant for summary judgment.
Held: Motion granted with costs on a solicitor-and-client basis. The action was dismissed because the statement of claim is without foundation. It refers to confusion and passing off without alleging that the defendant has used a trade-mark of the plaintiff. It alleges copyright infringement of the plaintiff’s artistic works through the distribution of a brochure containing photographs of the defendant’s products. It seeks relief pursuant to the Copyright Act, with no indication that that it has applied for or obtained the rights conferred under that Act. It claims industrial design infringement but based on actions that occurred prior to the registration of its industrial design. The plaintiff may have a cause of action but the present action was premature and the plaintiff ought to start a fresh action rather than try to amend the various deficiencies in the present action.
9. CHUM et al. v. David Stempowicz et al., April 23, 2004, FCTD (Blais J.) Contempt of Court
The defendant signed a consent order which, inter alia, provided that it would not sell any more pirate satellite equipment. Upon obtaining evidence that the defendant was in breach of this order, the plaintiffs brought a motion for contempt.
Held: The defendant was found to be in contempt. The evidence clearly indicated that the defendant knowingly breached the court order by continuing to sell pirate satellite equipment. With respect to determining the quantum of the fine, the Court held that the main principle when imposing a fine for contempt of court should be deterrence. As such, the Court fined the defendant $25,000 and awarded costs to the plaintiff on a solicitor-and-client basis.
II. OPPOSITION BOARD DECISIONS
1. Desjardins Sécuritaire Financière v. Bank of Nova Scotia, February 23, 2004 (Carrière) Confusion/Judicial Notice
Proposed-use application for SOLO for various printed material, banking services, securities investment services and trust company services. Opposition based, inter alia, on s. 16 due to confusion with SOLO previously used by the opponent for insurance services.
Held: Opposition rejected because of the differences between the parties’ channels of trade. There was no evidence that there is a relationship between banking and insurance services and the Board Member stated that he could not take judicial notice of the existence of such a relationship.
2. Essilor v. Rampage Clothing, February 23, 2004 (Carrière) Confusion /Phonetic Resemblance/Judicial Notice of Pronunciation/Improper Reply Evidence
Proposed-use application for R-WEAR for various items including eyewear. Opposition based, inter alia, on s. 16 due to confusion with AIRWEAR, which was the subject of a previously filed application by the opponent for eyewear. The opponent did not object to the registration for the non-eyewear items.
Held: Application refused with respect to eyewear. The central issue was whether there is a phonetic resemblance between the marks. The applicant argued that the pronunciation of the words must be established by an expert but the Board Member concluded that, in the absence of evidence on the pronunciation in the French language of the letter R and the word AIR, he could use his own knowledge of his mother tongue to determine their pronunciation. The Board Member took judicial notice of the fact that a Francophone would pronounce the words RWEAR and AIRWEAR in the same way. As there is a risk of confusion in one of Canada’s two official languages, the mark cannot be registered. The reply evidence of the opponent (dictionaries to show the pronunciation of the components of the marks) was disregarded as improper because, if the opponent wanted to establish that the marks are phonetically identical, it should have done so by way of its evidence in chief.
3. Wyeth v. Fempro, March 4, 2004 (Carrière) Confusion
Proposed-use application for FEMPRO & Design for feminine hygienic products. Opposition based, inter alia, on s. 16 due to confusion with PREMPRO , which was the subject of a previously filed application by the opponent for pharmaceutical preparations for use in hormonal replacement therapy.
Held: Opposition rejected. Confusion is not likely because of the differences between the nature of the wares as well as between the marks themselves.
4. Timberland v. Wrangler Apparel, March 5, 2004 (Martin) Confusion/Peaceful Co-existence
Proposed-use applications for TIMBER CREEK BY WRANGLER for footwear and casual slacks, jeans and shorts for men, women and children. Opposition based, inter alia, on s.12(1)(d) due to confusion with TIMBERLAND registered by the opponent for footwear and clothing.
Held: Opposition rejected with respect to clothing; application refused with respect to footwear. There have been several years of co-existence of the applicant’s mark on clothing and the opponent’s mark on clothing and footwear, without any evidence of confusion. In addition, there was evidence of third party use of TIMBER BAY for clothing and TIMBERLINE for footwear. There is no reputation associated with the applicant’s mark for footwear because it has not yet commenced selling such wares. Furthermore, the opponent’s mark is better known for footwear than for clothing.
5. Proctor & Gamble v. Max Mara Fashion, March 9, 2004 (Herzig) Confusion
Application for MAX & CO. for various cosmetic products and wearing apparel based on use and registration abroad. Opposition based, inter alia, on s. 16 due to confusion with MAX FACTOR previously used by the opponent for cosmetics.
Held: Application refused with respect to cosmetic and personal care items; opposition rejected with respect to remaining wares. The extent to which each mark has become known in Canada favours the opponent, as does the length of time each has been used.
6. Myriad Innovative Designs v. Juravsky & Associates, March 16, 2004 (Carrière) Confusion
Proposed-use application for MINDCHARGER for educational services namely conducting conferences, workshops, skills upgrading courses….; programming services; and computer consulting services and mentoring. Opposition based, inter alia, on s. 16 due to confusion with MIND previously used by the opponent for the services of selling computers and related equipment.
Held: Application refused. Confusion likely because there is clearly an overlap between the parties’ wares, businesses and services and the applicant’s mark incorporates the opponent’s mark in its entirety.
7. Rogers Cablesystems v. Elysium Technology Investments, March 22, 2004 (Herzig) Descriptiveness/Disclaimers
Proposed-use application for @TV for various communication wares and services. TV disclaimed. Opposition based, inter alia, on s.12(1)(b).
Held: Opposition rejected. “[T]he mark in its entirety is certainly suggestive that the applicant’s wares and services are associated with the Internet and TV, or have something to do with combining or interfacing Internet and TV capabilities…[but] the term @TV connotes two all encompassing and multifaceted technologies and is therefore too imprecise to clearly describe or deceptively misdescribe the applicant’s specific sets of wares and services.”
The opponent asked that the Board require the applicant to disclaim @. The Board Member did not believe that a disclaimer was required; in any event, he has not been delegated authority to decide issues arising under s. 35 of the Trade-marks Act.
8. Caplan Industries v. Unicorn Abrasives, April 1, 2004 (Herzig) Descriptiveness /Section 14
Use-based application for SUPER-CUT for liquid coolants… liquid cleaners for grinding wheels; machine tools; abrasive wheels…; drills, seamers; parts and fittings for all the aforesaid goods. Section 14 relied upon. Opposition based, inter alia, on s. 12(1)(b) and non-distinctiveness.
Held: Application refused. As of the filing date of the application, the applicant did not own a foreign registration for the mark, as required by s. 14. Moreover, the evidence did not show that the applicant’s mark was not without distinctive character in Canada. If the applicant’s s. 14 claim had succeeded, it would then have had to prove that its mark is distinctive in answer to the second ground of opposition.
III. SECTION 45 DECISIONS
1. Lapointe Rosenstein v. The Big Apple, March 11, 2004 (Savard) Sufficiency of Evidence
THE BIG APPLE registered for apple, apple-based non-alcoholic beverages, fruit preserves, conserves and jellies.
Held: Registration maintained. The requesting party’s only argument was that the evidence was insufficient to demonstrate use in association with apple-based non-alcoholic beverages because use of the mark on a beverage cup in a restaurant might be use with services but not with wares. The Registrar disagreed because displaying the mark on a cup is one way to associate the mark with beverages that are sold from bulk. “The average consumer would probably associate, on first impression, such wares with the registrant’s trade mark. Consequently, taking into consideration the nature of the business of the registrant and the fact that it sells apples and apple-related wares namely pies, fruit preserves, conserves, jellies etc., in association with the trade mark THE BIG APPLE,… the use of the trade mark on the cup would be perceived by the public as use of the trade mark in association with apple juice or cider.”
2. Riches, McKenzie & Herbert v. Nefab, March 31, 2004 (Savard) Use with Each Ware
EXPAK registered for cases, containers and boxes for packing, storage and/or transportation; loading pallets; fittings and hinges for cases.
Held: Registration maintained. The cases/boxes/containers are sold with the parts required to assemble them (the fittings and hinges) and the wares used for loading them (the pallets). Therefore the purchaser of the wares would associate the trade mark appearing on the box/container/case with the fittings, hinges and pallets.
3. Oyen Wiggs Green & Mutala v. Aamir Quraishi, March 31, 2004 (Savard) Special Circumstances/Sufficiency of Evidence
ARCANA registered for board games and clothing.
Held: Registration expunged. The owner stated that the mark had been in use with board games during the relevant time period but did not provide any evidence to support this bald assertion. He also claimed that he had not made recent use of the mark in association with clothing due to “a slow market for my game and lack of funds”. Economic slow-downs are not special circumstances that justify non-use. Moreover, the registrant did not indicate when he last used the mark on clothing and did not provide any evidence to demonstrate his intention to resume use shortly.
