Recent Decisions June 2005
I. FEDERAL COURT DECISIONS
(a) Patents
1. Aventis v. Pharmascience and The Minister of Health, March 11, 2005 FCTD (Snider J.) Double Patenting/Adequacy of NOA /Prohibition Order/Patented Medicines (Notice of Compliance) Regulations
Application by Aventis seeking an order prohibiting the Minister of Health from issuing a NOC to Pharmascience for the drug ramipril until after the expiry of the '206 patent (which is an "Old Act" patent). There were three relevant patents: Aventis-owned '087 patent for the use of ramipril for the treatment of hypertension, which expired November 4, 2002; Aventis owned '457 patent for the use of ramipril for cardiac insufficiency, which expires December 2005; and Schering-owned '206 patent for the genus patent that includes ramipril, which was filed in October 1981, but did not issue until March 20, 2001. Pharmascience alleged non-infringement and invalidity due to double-patenting. Pharmascience argued that through the licence agreement between Aventis and Schering, Aventis was extending its expired patent for ramipril. Aventis argued that the words of Binnie J. in Camco, "the inventor is only entitled to 'a' patent for each invention", are a clear indication that the concept of double patenting can only arise where you have the same inventor.
Held: Application granted. Pharmascience merely stated that it is not seeking approval for treatment of cardiac insufficiency but failed to mention in its NOA how it would achieve that assertion. This amounts to a bald assertion of non-infringement and thus is not an adequate NOA. With respect to the double patenting issue, the focus must be the claims that form the invention and not the persons or parties that advance them. If the claims of one patent are not patentably distinct over those in another patent, an allegation of invalidity may have merit. Based on the record, the date of invention of the '206 genus patent was before the date of invention of the other two patents. Ramipril had a significant advantage over the whole class, and thus was a legitimate selection patent. Furthermore, rights under a licence agreement are limited and in no way can be compared to the range of protection afforded by a patent and the provisions of the patent legislative scheme.
2. Sanofi-Synthelabo Canada et al. v. Apotex and The Minister of Health, March 21, 2005 FCTD (Shore J.) Anticipation /Obviousness /Double Patenting /Prohibition Order/ Patented Medicines (Notice of Compliance) Regulations
Application by Sanofi seeking an order prohibiting the Minister of Health from issuing a NOC to Apotex for the drug clopidogrel until after the expiry of the '777 patent (which is an "Old Act" patent). Apotex alleged non-infringement and invalidity on the basis of anticipation, obviousness and double patenting mainly in relation to a previous genus patent ('875) also held by Sanofi.
Held: Application granted with costs. Apotex' proposed marketing of clopidogrel would infringe the '777 patent. The '777 patent describes the invention of the bisulfate salt and the specific (d)-isomer of clopidogrel, which exhibited a number of desirable properties over the (l)-isomer, or racemate of the compound. Apotex need not show that the Commissioner of Patents erred in allowing the '777 patent, rather the Court must decide whether an order prohibiting the Minister of Health from issuing a NOC should be granted. Patent '875 disclosed a large class of compounds including the racemate of clopidogrel, and specified that the invention also concerns each of the isomers or a mixture (racemate) of the clopidogrel. The '875 patent did not teach the separation of the (d) and (l)-isomers, nor the specific beneficial properties of the bisulfate salt or the (d)-isomer. References in the claims of the '875 patent to each of the enantiomers and if desired, their separation, were not sufficient to anticipate the '777 claims as it would require experimentation and contains an element of incertitude, fatal to the anticipation test. A person skilled in the art would not have been led directly and without difficulty to the beneficial properties of the (d)-isomer or its bisulfate salt by the '875 patent without further testing. There was no 'same invention' double patenting as the claims in the '875 and '777 patents were not identical or coterminous. Furthermore, there was no 'obviousness-type' double patenting as the '777 patent claims exhibited novelty and ingenuity over the '875 patent claims.
(b) Trade Marks
1. Foot Locker v. R. Steinberg and Reg. TMs, March 16, 2005 FCA (Desjardins, Rothstein, Sexton JJ.A.) Section 45 Appeal /Standard of Review
Appeal from a s. 45 decision. The Registrar decided that the registration for WOOLWORTH should be expunged because there was insufficient evidence to determine when the mark was used. New evidence was filed concerning the timing of the use but the Trial Division held that the registration should be expunged because it was not satisfied that the registrant was using the mark.
Held: Registration maintained. The Trial Judge erred in not applying the reasonableness standard to his review of the Registrar's decision. There was no new evidence before the Trial Judge on the issue of who was using the mark and, given the Registrar's acceptance that it was the registrant who was using the mark, the Trial Judge ought to have deferred to the Registrar on this issue.
2. A & W Food Services of Canada v. McDonald's Restaurants of Canada, March 23, 2005 FCTD (O'Reilly J.) Reverse Confusion/ Survey Evidence /Linguistic Evidence/Section 18 Expungement
A&W claims that McDonald's is infringing its registration for CHICKEN GRILL sandwich by using CHICKEN MCGRILL and that McDonald's use is causing reverse confusion in that A&W customers believe that the CHICKEN GRILL sandwich comes from McDonald's. McDonald's claims that A&W's registration is invalid because its trade mark is not distinctive.
Held: Claim and counter claim dismissed. The use of CHICKEN MCGRILL does not cause confusion with A&W's CHICKEN GRILL contrary to s. 20(1) of the Trade-marks Act. The Act is broad enough to cover both forward and reverse confusion; the same criteria apply to both. A & W's evidence of actual confusion is very weak (1 customer enquiring if A&W had made an arrangement with McDonald's about the name CHICKEN GRILL). Both parties presented survey evidence, which the Court concluded did not show confusion but did show a very low brand awareness of A&W's CHICKEN GRILL. Both parties also presented linguistic evidence from which the Court concluded that the “Mc” prefix in McDonald's mark is meaningful and significantly reduces the likelihood of confusion. The Court found that the nature of the fast food industry (including its high level of competitiveness) supported a conclusion that the average consumer of fast-food would know the difference between McDonald's and A&W and would be unlikely to assume a connection between them unless there was a strong indication otherwise. The Court was willing to consider McDonald's attitude as a further surrounding circumstance under s. 6(5), namely that it decided to proceed with full knowledge of A&W's mark and “did not accord A&W's trade-mark the degree of respect A&W would have liked”. However, the Court commented that this did not assist it in deciding the issue of confusion.
The registration is valid. Although McDonald's did show that CHICKEN GRILL is not widely known or readily associated with A&W, this is not sufficient for the purposes of s. 18(1)(b). It has not been shown that CHICKEN GRILL is so devoid of distinctiveness that it fails to distinguish A&W's product from the wares of others.
3. Express File v. HRB Royalty, April 21, 2005 FCTD (Beaudry J.) Opposition Appeal /Section 4(2)
Appeal from decisions that rejected oppositions to applications for EXPRESS FILE H&R BLOCK and EXPRESS FILE. The oppositions were based on the prior use of EXPRESS FILE by the opponent and the issue was whether the opponent's mark was “used” within the meaning of s. 4(2).
Held: Appeals dismissed. The Court concluded that there was no evidence that the opponent had promoted its services in association with its mark in Canada and that even if it had this was not sufficient to qualify as use under s. 4(2) because the evidence showed that the opponent's services were not available in Canada.
4. Telus v. Orange Personal Communications Service, April 29, 2005 FCTD (Mactavish J.) Opposition Appeal /Confusion/Evidentiary Burden on Applicant /Material Date re Section 12(1)(d)
Appeal from a decision that rejected an opposition to an application for THE FUTURE'S BRIGHT, THE FUTURE'S ORANGE. The opposition was based on the prior registration of THE FUTURE IS FRIENDLY for similar services.
Held: Appeal dismissed. The Board's conclusion with respect to confusion was one that was reasonably open to it and not clearly wrong. The Court rejected the opponent's argument that the Board erred in stating that the applicant had “to establish on a balance of probabilities that there would be no reasonable likelihood of confusion between the marks in issue” (the opponent argued that the applicant had to establish that there is no likelihood of confusion). The Registrar properly applied the test set out in the Federal Court of Appeal's decision in Dion Neckware. The Court rejected the opponent's argument that confusion should be assessed as of the date of the hearing of the appeal, rather than as of the date of the Board's decision.
5. Vivat Holdings v. Levi Strauss, May 19, 2005 FCTD (Layden-Stevenson J.) Opposition Appeal/Confusion/Effect of Refusal to Answer Questions during Cross-examination /Coexistence Abroad/First Impression
Appeal from opposition decisions that refused applications for Double Arcuate Stitching Designs for jeans. The opposition was based on the prior registration of a Double Arcuate Stitching Design for jeans.
Held: Appeals dismissed. New evidence filed on appeal was “'merely repetitive' of the evidence that was before the TMOB 'without enhancing its cogency'”; therefore the proper standard of review is reasonableness. The Board was right to limit its consideration to jeans bearing a double arch-double stitching design, as opposed to any decorative stitching. Although the Court agreed that the Board should have accorded less weight to certain evidence in response to a refusal or inability to answer questions on cross-examination, the Court did not agree that an adverse inference should therefore be drawn. The Court agreed that "evidence of mere coexistence of the marks on foreign registers is not relevant and evidence of foreign opposition on unproven records under foreign law is not probative.” The applicant argued that the average consumer is brand-conscious when purchasing items of fashion but the Court responded that the “'first impression' of a consumer cannot be stretched so far as to encompass the impression left after a garment has been handled, closely inspected, and tried on for size and appearance.”
6. Wrangler Apparel v. Timberland, May 19, 2005 FCTD (Snider J.) Opposition Appeal /Still in Doubt/Dissection of Marks/Considering How Used in Marketplace
Appeal from an opposition decision that refused an application for TIMBER CREEK BY WRANGLER for footwear. The opposition was based on the prior registration of TIMBERLAND for footwear.
Held: Appeal dismissed. Although the Registrar referred to “being in doubt” in his analysis of the issue of confusion, he nevertheless applied the correct test since he was not applying a stricter “still in doubt” test, but rather was correctly describing his state of mind after reviewing all of the evidence and determining that the probabilities were equal This approach accords with the Dion decision. Marks must not be dissected for minute examination, but the Registrar did not err when he considered the individual features of the mark for comparison purposes. The Registrar did not err in considering the way the words in the trade mark would appear in the marketplace; this is different from considering what colours might be used or where the mark might appear on the wares.
(c) Copyright
1. Society of Composers, Authors and Music Publishers of Canada v. Kicks Roadhouse and Czarnogorski, April 19, 2005 FCTD (O'Keefe J.) Copyright Infringement /Director's Liability
Action for copyright infringement. Plaintiff claims that Kicks Roadhouse failed to obtain a licence to play recorded music to the public for dancing and that its owner, Czarnogorski, authorized the playing of the recorded music.
Held: Only Kicks Roadhouse is liable for copyright infringement. There was evidence that Czarnogorski did not play a role in the day-to-day management of the business and that he believed that his general manager had taken care of the copyright licence. He should not be held personally liable as a director - the company was set up to make money as a dance bar, not to embark on a course of conduct that would cause copyright infringement.
2. BMG Canada et al. v. John Doe et al., May 19, 2005 FCA (Richard, Noël, Sexton JJ.A.) Right to Privacy/Copyright Infringement /Equitable Bills of Discovery/ Rule 238
Appeal from decision that refused to order Internet service providers to disclose the names and addresses behind the Internet addresses of individuals who possessed numerous downloaded recordings.
Held: Appeal dismissed without prejudice to the plaintiffs' right to commence a further application for disclosure of the identity of the “users”. The issue at hand is whether the right to privacy of these individuals can be violated. The Court of Appeal felt that this proceeding could be brought under r. 238 and agreed that the criteria for determining whether an equitable bill of discovery should be issued would apply. The proper test is whether the plaintiff has a bona fide claim against the defendants. The Motions Judge should not have made any statements concerning what would or would not constitute copyright infringement.
Sexton J.A. stated, “Although privacy concerns must also be considered, it seems to me that they must yield to public concerns for the protection of intellectual property rights in situations where infringement threatens to erode those rights.” He then went on to set out precautions that should be taken: since IP addresses may not be associated with the same individual for long, the greatest care must be taken to avoid delay between the investigation and the request for information; the acquisition of information should be limited to the copyright infringement issues; and, if a disclosure order is granted, specific directions should be given as to the type of information disclosed and the manner in which it can be used, with privacy concerns being met by a confidentiality order or an order that users only be identified by initials.
(d) Practice
1. McInnes Natural Fertilizers v. Bio-Lawncare Services and MRL Horticultural Services and Mitchell Levine, July 22, 2004 FCTD (Martineau J.) Rule 210/Default Proceedings/Motion for Default Judgment
Motion by the plaintiffs for default judgment. Under r. 210, there are two stages: (1) the plaintiff must establish that the defendant is "in default"; and (2) then it is necessary to determine whether the evidence in support of the motion makes it possible to grant the judgment sought.
Held: Injunction granted, costs awarded to the plaintiff on a solicitor-client basis. The first condition in r. 210 has been met, as the defendants failed to file a defence within the deadline specified in r. 204 following the service of the pleadings. Secondly, according to the evidence in record, the use of the mark BIO-LAWN and logo by the defendants without the plaintiff's consent causes confusion with the plaintiff's registered mark. There is an ongoing and deliberate infringement of the plaintiff's right in the mark BIO-LAWN, and the issuing of an injunction would seem to be indicated in the circumstances. However, there is no evidence of damages or loss of profits in the record, and the plaintiffs did not establish that customers ceased doing business with it because of the confusion between the trade marks. Further, this is not a case in which the imposition of punitive damages appears to be necessary. Thus, the Court is inclined to award costs to the plaintiff on a solicitor-client basis.
2. Les Installations Sportives Defargo v. FieldTurf, October 19, 2004 FCTD (Morneau P.) Patent Infringement/Declarations of Non-Infringement under Section 60(2) Patent Act/Infringement of Theoretical or Proposed Products/ Declarations for Non-Infringement Concurrent to Infringements Actions
Motion by defendant to strike the plaintiff's claim for a declaration that its products do not infringe the defendant's patents. Defendant asserted that the plaintiff's claim covers theoretical products, as each product is customized and not finalized until fully installed. The defendant argued that the facts needed to form the basis of a declaration are missing, and the Court would be deciding the case in a legal vacuum. The defendant also submitted that any judgment would serve no purpose, as arguments about whether specific future installations infringe would still remain. The defendant asked for the claim to be struck or the action stayed to avoid contradictory judgments with other Courts currently considering infringement of specific installations.
Held: Motion dismissed. The plaintiff's products are specific enough to allow for a declaration under s. 60(2) of the Patent Act. The plaintiff has established that the defendant has installed products, and may do so again, in accordance with very specific characteristics. Furthermore, s. 60(2) explicitly refers to articles proposed to be made, conflicting with the defendant's desired interpretation. Arguments about a specific future installation can be dealt with by comparing that installation to the outcome of the decision on the plaintiff's claim. The presence of other existing cases that may consider this issue does not make either striking the statement of claim or staying the action an appropriate remedy.
3. Zambon Group v. Teva Pharmaceutical Industries; Teva Pharmaceuticals Industries v. Zambon Group, Zambon Corporation, Apotex and Torpharm, January 18, 2005, FCTD (Phelan J.) Patent Infringement/Inducement/Acting in Concert
Appeal from a prothonotary's decision denying a motion to strike the respondent's counterclaim, and denying a request for particulars. The Zambon Group had initially sought a declaration that it did not infringe the respondent's patent. The respondent's counterclaim alleged that the appellants offered for sale and sold infringing products, caused Apotex/Torpharm to import infringing products, induced infringement, knowingly influenced infringement, and acted in concert with Apotex/Torpharm to import an infringing product. Appellants argued that a mere sale or offer for sale is not sufficient to support a claim for inducement, and objected to the claims for having "caused" and "acted in concert" to infringe, arguing there are no such causes of action. Alternatively, the appellant sought particulars of the allegations in the counterclaim.
Held: Appeal dismissed. A sale alone is enough to support a claim for selling and offering to sell infringing products, although respondent alleges more than mere sale occurred. "Caused to import" is a statement of fact, not a plea of a separate cause of action. Inducing or influencing infringement depends on a party doing something to lead another to infringe, and the knowing sale, offer for sale, importation and the influence over Apotex/Torpharm is sufficient to allow the claim. There is no basis to strike because the infringement would not have occurred but for the appellants. Regarding "acting in concert", all necessary facts are pleaded as the companies were acting together offering the product for sale knowing its intended use. Regarding the request for particulars, there must be an error in principle or misunderstanding of facts before the Court will interfere with the prothonotary's discretionary decision. It is clear that the prothonotary understood the facts, and there is no reason to disturb the exercise of her discretion.
4. Bojangles' International et al. v. Bojangles Café, February 21, 2005 FCTD (Hargrave P.) Challenging Affidavits Sworn by Partners, Associates, and Employees of the Applicant's Solicitors of Record/Removal of Solicitors
Motion by the respondent, Bojangles Café, challenging some of the affidavits tendered on behalf of the applicants on the basis that they have been sworn by partners, associates, and employees of the applicants' solicitors of record.
Held: At issue is the propriety of the affidavits. The affidavits are not to be struck out as they are not particularly prejudicial to the respondent, but rather are an embarrassment in a general sense. In the present instance, the affidavit evidence at issue will be used at trial. On an interlocutory motion, a court ought not to make premature orders preventing solicitors of record from continuing to act, an approach approved by the Court in Imperial Oil Ltd. v. Lubrizoil Corporation (1998), 86 C.P.R. (3d) 331. As such, Smart & Biggar are to remain solicitors of record, as it is inappropriate to remove them by reason of the expense of doing so at an interlocutory stage and the confusion it would cost. In accordance with Shipdock v. Amsterdam B.V. v. Cast Group Inc., should a solicitor in a firm depose to facts in an affidavit which is filed for use on a motion, another member of the firm should not argue the motion. Thus, it is most appropriate that the applicants appoint alternate counsel to prepare written argument and to make oral argument at the eventual hearing of the case.
5. Anchor Brewing v. Sleeman Brewing & Malting, March 14, 2005 FCTD (von Finckenstein J.) Refusals/Discovery/Rule 204
Appeal by Sleeman from Aronovitch P.'s order reaffirming her previous order requiring Sleeman to answer a number of questions arising out of discovery. Sleeman argued that Aronovitch P. misinterpreted or incorrectly applied r. 240. Sleeman alleged that all questions had been answered and could be found in the discovery record. Their obligation was to answer questions related to any unadmitted allegations of fact set out in their pleadings, but not to provide specific reference where the answers can be found in the discovery record.
Held: Appeal dismissed. First, Sleeman's allegations take issue with the original order. If Sleeman found fault with that decision, they should have appealed that order. Second, Merck & Co., Inc. v. Apotex Inc., [2003] F.C.J. No 1925 established that orders of prothonotaries ought not be disturbed on appeal unless the question raised is vital to the final issue of the case or the orders were clearly wrong. Aronovitch P. committed no error when she reaffirmed her previous order and this is not a question vital to the final issue of the case. Thus, the Merck test is not met.
6. Apotex v. Syntex Pharmaceuticals International and Hoffman-LaRoche, April 12, 2005 FCTD (von Finckenstein J.) Patented Medicines (Notice of Compliance) Regulations /Parties Entitled to Section 8 Damages/Liability of the Minister of Health
Appeal by the Crown from Aronovitch P.'s refusal to strike out third party claims made by the defendants against the Minister of Health for part of the damages for which they may be liable to Apotex pursuant to s. 8(2) of the Regulations. The defendants claimed that if they are found liable to Apotex, then the Minister is in turn liable to them (for the period between the date the defendants' patent was declared invalid and the date on which the Minister issues NOC) for breaching her duty in refusing “without lawful justification” to issue an NOC to Apotex immediately. Aronovitch P. concluded that there was no foundation for an action based on s. 8, but refused to strike out the pleadings on the basis that they may be sufficient to support an action for negligent breach of statute.
Held: Appeal allowed. Aronovitch P. did not err in concluding that there is no foundation for the action based on s. 8 of the Regulations. Section 8 does not create a right of action for anyone other than a "second person". A second person is defined in s. 1 as one that seeks approval to market a new drug on the basis of a comparison to a first person's drug. In this case, Apotex is the "second person" and thus the only one that has a right of action under s. 8. However, Aronovitch P. erred when she found that the pleadings may be sufficient to support an action for negligent breach of statute. The breach of duty alleged, the failure to issue a NOC on time, is a statutory duty. A statutory duty, unless the legislature has provided otherwise, does not automatically give rise to an action in tort. Thus, neither s. 3(b) of the Crown Liability and Proceedings Act or s. 1 of the Negligence Act of Ontario can be engaged.
7. Apotex v. Bayer and The Minister of Health, April 12, 2005 FCA (Decary, Evans, Malone JJ.A.) Patented Medicines Notice of Compliance Regulations/Costs/Rule 403 /Whether Functus Officio
Appeal by Apotex from Campbell J.'s decision to decline to hear a motion by Apotex for directions as to costs under r. 403 of the Federal Courts Rules. Apotex had been successful in a NOC prohibition application filed by Bayer and costs were awarded in its favour. Apotex then brought a motion under r.403 requesting an order that its costs be assessed on a solicitor client basis or on an elevated scale. Campbell J. declined to hear the motion on the ground that he considered himself functus, and made an order to this effect.
Held: Appeal allowed. A motion under r. 403 is to be considered a statutorily sanctioned procedure for the amendment or variation of a judgment. Since a party is at liberty under r. 403 to seek to obtain or to vary an order of the Court, the concepts of res judicata or functus officio are simply not applicable. The judge seized with such a motion must hear the motion before he/she can dispose of it.
8. Netbored v. Avery Holdings et al., April 12, 2005 FCTD (Gibson J.) Copyright Act/Infringement/Matters Incidental to Infringement/Jurisdiction of Federal Court
Plaintiff Netbored appeals from the order of a prothonotary striking a number of provisions from its claim for damages and injunctive relief for copyright infringement, breach of contractual rights, breach of confidence and fiduciary duty, conversion, intentional interference with economic relations and theft. The plaintiff asserted that these claims are so closely associated with the copyright infringement as to be inextricably caught up in the jurisdiction of the Federal Court. The defendants argued that the central copyright elements of the plaintiff's claim do not shelter those portions not related to the claim for copyright infringement, and thus those portions are beyond the jurisdiction of the Federal Court to decide.
Held: Appeal dismissed in part, allowed in part. The allegations of breach of contract, breach of fiduciary duty and the like were not incidental to the claim for copyright infringement, but rather were advanced for the purpose of obtaining relief in respect of those breaches themselves. The Court therefore held that it lacked jurisdiction to hear these claims, and left those portions struck out. However, those parts directly relevant as supportive of the claim for aggravated, exemplary and punitive damages with respect to copyright infringement were essential to the plaintiff's claim and were reinstated. Striking those parts relating to the alleged use of the plaintiff's confidential information and enforcement of the employment contract prejudged the outcome of the review motion and of the motion to strike, and were reinstated to be dealt with by the judge who considers the outstanding motions.
9. Pfizer v. Apotex and The Minister of Health, April 21, 2005 FCTD (LaFrenière P.) Patented Medicines (Notice of Compliance) Regulations/ Federal Courts Rules/Extensions of Time/Factors to Consider When Exercising Discretion
Request by respondent Apotex for additional time in which to serve and file affidavits and documentary evidence. The respondent requested an additional 6-month extension of time arguing it was justified given the size and complexity of applicant Pfizer's evidence, and the schedules of its experts. Applicant opposed on the grounds that it would be prejudiced by any delay in the proceedings, that respondent had failed to provide a reasonable explanation for the request and ought not to be entitled to resile from an earlier position on the amount of time required to respond.
Held: Motion granted in part. The respondent failed to adequately explain why such an extension is required, as it had been given fair notice of the approximate number of expert affidavits it would receive, and had already received a 15-day extension. Further, respondent failed to show that the applicant would not be prejudiced by the extension, given the length of the delay requested and its impact on the ability to have a timely hearing under s. 7(1)(e) of the Patented Medicines (Notice of Compliance) Regulations and the applicant's possible exposure to additional damages under s. 8. The fact that the applicant had previously received a similar extension is not relevant. However, the Court held that denying the respondent the ability to file evidence would be too draconian, and that a procedural default should not negate the opportunity to respond to proceedings unless there is prejudice to the other party that cannot be corrected. The Court granted a limited extension of 46 days, but awarded Pfizer its costs. The Court also extended the statutory stay period as prescribed under s. 7(1)(e), and barred Apotex from any possible damage claims under s. 8, for the same 46-day period.
10. Quality Goods IMD v. Tommy Hilfiger Licensing et al., April 21, 2005 FCA (LéTourneau J.A.) Federal Court Rule 54 /Federal Court Rule 343/Agreement re Appeal Book
The Trial Judge held that the appellant, Quality Goods IMD, had infringed the trade-mark Hilfiger Flag Logo, contrary to s. 20 of the Trade-marks Act. The appellant makes a motion pursuant to r. 54 and 343 of the Federal Court Rules to have the Court determine the content of the appeal book. In particular, an order is sought requiring the respondents to pay for the costs of the appeal book on a pro rata basis to its requirements for insertion of material in that appeal book. Alternatively, the appellant wants an order that each party produce its own appeal book and bear the costs of same.
Held: There is no specific provision in the Rules addressing the appellant's specific request for sharing the costs of preparing the appeal book. However, r. 400(6)(a) of the Federal Court Rules gives the Court the power to award costs in respect of a particular issue or step in a proceeding. The Court directs the respondents to have another look at the material with a view to discarding, if possible, what is not required to dispose of the issues on the appeal and the cross-appeal. The respondents shall report in writing to the Court, within 20 days of the Order, the result of their review, at which time the Court will finalize the content of the appeal books and dispose of the appellant's motion.
11. Mark Doe and (Omitted) v. Her Majesty the Queen, April 26, 2005 FCTD (Hargrave P.) Security for Costs
Motion by the defendant for security for costs, pursuant to r. 416(1)(f).
Held: Motion granted. The rights and obligations of a litigant with respect to security for costs are encompassed as a complete code in Federal Court Rules 416, 417 and the surrounding common law. The test for avoiding giving security for costs is impecuniosity and merit. Merit for the action was considered in a previous motion, and was rejected. Based on the plaintiff's income of $22,500, his membership in an athletic club, and his entertainment budget, Hargrave P. found the plaintiff was not impecunious. The plaintiff was barred from taking further steps in the Court, save as to appeals and responses to steps taken by the defendant, until the required security for costs was paid into the Court.
12. Brilliant Trading v. Tung Wai Wong and Zhen Hing Enterprise, April 28, 2005 FCTD (Gibson J.) Default Judgment
Application by the defendant seeking an order to set aside the default judgment granted against him.
Held: Application denied. Gibson J. applied a three part test to determine whether a default judgment should be set aside. First, the defendant's allegation that neither he, nor any of his employees speaks or reads English was not permitted as a "reasonable explanation", "substantial reason" or "satisfactory excuse" which would overturn a default judgment. He received lawyer's letters, he had Court documents served on him and he had a telephone conversation with a representative of the plaintiff: he chose to be willfully blind to the action before him. Second, he did not act promptly to have the action set aside. He took no action on the matter until over one month after the first seizure of his goods had taken place. Finally, the defendant's affiants applied the wrong test in determining whether a mark was confusing. This led Gibson J. to the conclusion there was no prima facie defense. The defendant failed at all three stages of the test and therefore the default judgment must stand.
II. OTHER COURT DECISIONS
1. Entral Group International v. 1438762 Ontario, May 20, 2005 (Hawkins M.) Section 36 Copyright Act/Adding Parties/Estoppel
The plaintiff alleges that it holds an exclusive license for Canada from seven Hong Kong-based record companies (the "Record Companies") respecting the distribution, reproduction, performance and other commercial exploitation by third parties of the karaoke version of hundreds of music videos. It alleges that the defendants have infringed the copyright in these recordings. The defendants move for the Record Companies to be added as parties.
Held: Motion granted. Although s. 36(1) of the Copyright Act gives a licensee the right to bring an infringement action, s. 36(2)(c) requires that the copyright owner be made a party to the action unless the Court is of the opinion that the interests of justice do not require the copyright owner to be made a party. The defendants were concerned that if this action proceeded without the Record Companies being made parties, the defendants could be exposed to further litigation for alleged copyright infringement of some or all of the works that are the subject of this action brought by one or more of the Record Companies. The plaintiff responded that this would not occur because the Record Companies would be bound by the judgment and issue estoppel would apply. However, the Court found that this was not a certainty. Taking into consideration the elements of uncertainty and discretion surrounding the application of the doctrines of issue estoppel and cause of action estoppel and the lack of hardship, the Court held that the plaintiffs have not discharged the onus of showing that it is in the interests of justice that the Record Companies not be added as parties.
III. OPPOSITION BOARD DECISIONS
1. Parmalat v. Groupe Lactalis, February 3, 2005 (Bradbury) Confusion
Application for LACTALIS for milk and various dairy products based on use and registration abroad. Opposition based, inter alia, on s.12(1)(d) due to confusion with LACTANTIA registered for milk and various dairy products. Only the opponent filed an argument and made submissions at an oral hearing.
Held: Application refused. The applicant did not meet its burden to show that there was not a reasonable likelihood of confusion. There is significant evidence of the use and promotion of the opponent's mark and no evidence of any other party, including the applicant, using a LACT- prefix mark in association with dairy products in Canada.
2. Advance Magazine Publishers v. Vög Fashion Design Accessories, February 3, 2005 (Bradbury) Confusion
Proposed-use application for VÖG & Design for jewellery, clothing and accessories and cosmetics. Opposition based, inter alia, on s.16 due to confusion with the mark VOGUE previously used with fashion magazines and sewing patterns.
Held: Application refused. The applicant did not meet its burden to show that there was not a reasonable likelihood of confusion. There was no evidence to enable the Registrar to conclude how a Canadian would pronounce VÖG (i.e. similarly or differently from VOGUE), no evidence of use of the applicant's mark (as contrasted with lengthy and extensive use of the opponent's mark) and a nexus between the parties' wares (the opponent's magazine is devoted to articles and advertisements concerning the wares covered by the applicant's application).
3. Créations Méandres v. Xentel DM, February 3, 2005 (Tremblay) Confusion /Distinctiveness/Section 30(e)
Proposed-use application for CIRQUE D'ETOILES & Design for clothing, novelty and souvenir items, printed publications, toys and games and audio-visual materials, organizing, producing, staging, and presenting a circus, supplying entertainment events, amusement parks including rides and games, and exhibitions to the general public and operating food service locations. Opposition based, inter alia, on non-distinctiveness due to the use of the mark in association with a circus by a third party, s. 12(1)(d) due to confusion with the mark CIRQUE DU SOLEIL registered for wearing apparel and accessories, novelty and souvenir items, sound recording or reproducing media, toys and games, and operation of a business dealing in presentation, production, management, licensing and sponsoring of entertaining shows and s. 30(e).
Held: Application refused in part under the distinctiveness ground of opposition, that is with respect to organizing, producing, staging, and presenting a circus. Although the applicant may have had a contractual agreement with the company that performed the circus, there is no evidence that the applicant controlled the character or quality of such services. Therefore the mark is not distinctive of the applicant with respect to such services. Opposition otherwise rejected.
Re s. 12(1)(d): The marks are not confusing. While the opponent's mark has become widely known, the opponent failed to evidence that the use enures to its benefit. In addition, there are differences between the marks when viewed and sounded and in idea suggested. When considering entertainment services, the word ETOILES is as likely, if not more likely, to convey the idea of outstandingly talented performers rather than a celestial body.
Re s. 30(e): The fact that the applicant has not yet used its mark or has used it through a party whose use does not invoke the benefit of s. 50, does not mean that the applicant's statement under s. 30(e) was false.
4. Éditions CEC v. Jacob Friesen, February 3, 2005 (Tremblay) Confusion
Proposed-use application for CEC CANADA & Design for Evangelical Christian educational material, namely; textbooks, manuscripts, study manuals, examination papers, books, educational films, videos, audio cassettes; clothing; office supplies; educational services in the field of Evangelical Christianity and charitable services. CANADA disclaimed. Opposition based, inter alia, on s. 16 due to confusion with the mark CEC previously used by the opponent for publications, including school books on all topics, including religion.
Held: Application refused only with respect to textbooks, manuscripts, study manuals, examination papers, and books. The fact that the applicant's printed publications are qualified as “Evangelical Christian educational materials” is not sufficient to distinguish them from the wares of the opponent.
5. Boutique La Vie en Rose v. Unilever Canada, February 3, 2005 (Tremblay) Confusion
Proposed-use application for LA VIE EN ROSE DANS CHAQUE TASSE for tea and tea-based beverages, promoting tea and tea-based beverages, etc. Opposition based, inter alia, on s. 12(1)(d) due to confusion with the mark LA VIE EN ROSE registered for lingerie and retail services for lingerie.
Held: Opposition rejected. Confusion is not likely primarily as a result of the differences in the nature of the wares, services and trade.
6. ClicNet Télécommunications v. CLIC Import Export, February 3, 2005 (Tremblay) Evidence
Use-based application for CLIC for various food products. Opposition based, inter alia, on s. 30(b).
Held: Opposition rejected. The opponent's evidence consisted of a solemn declaration that attached a copy of an affidavit filed by the applicant's President in the applicant's opposition to a trade mark application by the opponent. This is merely evidence that such an affidavit exists and does not satisfy the opponent's evidential burden.
7. CLIC Import Export v. ClicNet Télécommunications, February 8, 2005 (Tremblay) Confusion
Use-based application for CLIC for e-commerce, web site design and integration, etc. Opposition based, inter alia, on s. 12(1)(d) due to confusion with CLIC & Design registered for various food products.
Held: Opposition rejected. Confusion not likely given the differences between the nature of the wares and trades.
8. Colgate-Palmolive v. Makram H. Abdel Shaheed, February 8, 2005 (Herzig) Confusion/House Mark
Proposed-use application for TWISTNBRUSH Design for toothbrush with a built in toothpaste dispenser. Opposition based on s. 16 due to confusion with the mark COLGATE TWISTER which is the subject of a previously filed application for toothbrushes.
Held: Application refused. The parties agreed that COLGATE is a well known house mark. The Registrar therefore concluded that TWISTER is the prominent feature of the opponent's mark. Confusion is likely because a consumer would assume that the applicant's wares are approved, licensed or sponsored by the owner of the COLGATE house mark.
9. France-Canada Éditions et Publications v. Mari-Elle Sportswear Designs, February 15, 2005 (Carrière) Confusion
Use-based application for MARI-ELLE & Design for golf wear. Opposition based, inter alia, on s. 12(1)(d) due to confusion with the mark ELLE registered for magazines and wearing apparel.
Held: Opposition rejected. Confusion is not likely primarily because the differences in the marks are greater than their similarities. “Marielle” is a first name. Although the mark ELLE is well known in association with magazines in Canada, there is no evidence of its use in Canada in association with clothing.
10. Interlink Realty v. InterLink Business Management, February 16, 2005 (Folz) Confusion
Use-based application for INTERLINK & Design for providing environmental business development and marketing consultancy services to high-tech environmental manufacturers etc. BUSINESS and MANAGEMENT disclaimed. Opposition based, inter alia, on s. 12(1)(d) due to confusion with the mark INTERLINK registered for all activities pertaining to real estate, financial planning, consulting and investment management, and related publications.
Held: Opposition rejected. The applicant's services are highly specialized and aimed at a sophisticated and distinct business sector. Although the opponent performs waste removal, this is done under the umbrella of its real estate services. The parties' services are therefore different, despite the fact that they both relate to the environment.
11. Primo Bedding v. DF Albums, February 24, 2005 (Tremblay) Confusion/Use of Mark in Catalogues/Legal Basis Under Section 38(2)
Proposed use application for PRIMO for photograph albums. Opposition based, inter alia, on s. 12(1)(d) due to confusion with the mark PRIMO INTERNATIONAL registered for furniture.
Held: Opposition rejected. Confusion is not likely given the major differences between both the wares and the nature of the trades. The Registrar was prepared to accept that the opponent's mark was in use in accordance with s. 4 based on a catalogue that displayed PRIMO INTERNATIONAL at the top of each page, plus invoices that displayed such mark (as a watermark or in front of an address) and indicated that the delivery date and address were the same as that of the invoices. The Registrar rejected several grounds of opposition on the basis that they referred to the wrong paragraph of s. 38(2).
IV. SECTION 45 DECISIONS
1. Bereskin & Parr v. Fairweather, February 16, 2005 (Savard) Special Circumstances
TARGET APPAREL registered for men's clothing.
Held: Registration expunged. Six months is not an unreasonable length of time for a company that bought the registration from a receiver-in-bankruptcy to have not used the mark. However, the evidence failed to provide sufficient details of the steps the new owner had taken after the issuance of the s. 45 notice. The registrant therefore did not establish that the registrant had established a serious intention to start using the mark in the near future.
2. Sterling & Affiliates v. Videovisions, February 14, 2005 (Bradbury) Sufficiency of Evidence/Section 50/Normal Course of Trade
WHOL-HEALTH registered for health and nutritional products, namely bread, cookies, cereals, soups, soft drinks, diet supplement formulas, vitamins and vitamin containers, and herbs, various therapeutic health care products, operation of wholesale and retail outlets specializing in health and nutritional products and operation of a health center.
Held: Registration restricted to health products, namely vitamin containers, and operation of wholesale and retail outlets specializing in health products. The registrant evidenced invoices showing sales from it to its sister company, copies of the sister company's catalogues for several years advertising vitamin containers in association with the mark, and packaging for such wares displaying the mark. Although sales to a related company would not normally be considered to be in the normal course of trade, in this instance the Registrar concluded that the evidence was just barely sufficient to conclude that the mark was in use in the normal course of trade. This was in part because there was evidence of more than one sale to the sister company over the years, which supported a conclusion that the sister company had in the meantime sold the wares. For the purposes of s. 45, the fact that the company using the mark has the same president and chief operating mind as the registrant is sufficient to invoke s. 50(1). Evidence of warranties dated within the material time period supported the maintenance of the services.
3. Marks & Clerk v. SC Prodal 94, February 25, 2005 (Bradbury) Special Circumstances/Sufficiency of Evidence /Issuance of New Notice
STALINSKAYA registered for alcoholic distilled beverages, particularly vodka.
Held: Registration maintained but new s. 45 notice issued simultaneously. The registrant's affiant said that sales had not taken place primarily because the registrant, a Romanian company, had to obtain ISO certification before selling in Canada. She set out various steps that the registrant had taken over the past 5 years to make its product acceptable to the Canadian market, and provided documentary evidence concerning same. She further attested that sales were expected to begin in Canada in the next year and predicted that these sales would exceed $50,000 annually. The requesting party argued that there was no evidence that ISO certification is required and furthermore, if such is accepted as an excuse for non-use that then there was no excuse for the more than 1 year lack of use following the obtaining of the certification. The Registrar did not consider 14 months to be an inexcusably long delay in the circumstances of the case but issued a new s. 45 notice because the affiant had not explained in detail the basis on which she predicted extensive upcoming sales.
4. Molson Canada v. Kaiserdom-Privatbrauverei Bamber Wörner, March 8, 2005 (Bradbury) Definition of Registered Wares
KAISERDOM registered for beer.
Held: Registration maintained. The KAISERDOM mark has been used with a non-alcoholic malt beverage, which the requesting party argues is not “beer”. Although the requesting party submitted that the accepted meaning of “beer” is a brewed alcoholic beverage, dictionary definitions show that “beer” need not be alcoholic. Under s. 45, a statement of wares should be granted a generous interpretation as opposed to a restrictive one.
5. Novopharm v. Novo Nordisk, March 10, 2005 (Savard) Use with Registered Wares
LA COMMODITÉ DU SYSTÈME INTÉGRÉ NOVOLIN-PEN 3 À VOTRE PORTÉE registered for hypodermic needles and syringes including syringes designed as pens.
Held: Registration expunged. The affiant evidenced that the mark appeared on anti-diabetic preparations, delivery devices and surgical syringes sold together as a package, but the invoices provided evidenced sales of the individual items, not the items sold together as a package. There was no evidence that the mark appeared in association with the individual registered wares, as opposed to the package.
6. Novopharm v. Novo Nordisk, March 10, 2005 (Savard) Use of Registered Mark
NOVOLIN-10/90 registered for antidiabetic preparations.
Held: Registration expunged. The packaging bore the following: NOVOLIN®ge 10/90 PENFILL®. The Registrar concluded that the public would perceive the mark being used as NOVOLIN, not NOVOLIN-10/90.
7. Novopharm v. Novo Nordisk, March 10, 2005 (Savard) Use of Mark on Invoices
NOVOLIN-LENTE registered for antidiabetic preparations.
Held: Registration maintained. The packaging bore the following: NOVOLIN®ge LENTE. The Registrar concluded that the public would perceive that as use of NOVOLIN, not NOVOLIN LENTE. However, the registration was maintained because the invoices displayed the mark as registered and the Registrar accepted that the purchaser would have been thereby provided with notice of the association between the registered trade mark and the wares.
8. Novopharm v. Novo Nordisk, March 10, 2005 (Savard) Sufficiency of Evidence
NOVOLINCARE registered for health care advisory, consulting and educational services relating to diabetes and other medical conditions and the medicines and medical auxiliaries used in the treatment of such condition through the operation of medical centres, the distribution of informational materials and through conducting classes and seminars.
Held: Registration restricted to educational services relating to diabetes and other medical conditions and the medicines and medical auxiliaries used in the treatment of such condition through the distribution of informational materials. The distribution of posters and other printed materials to hospitals in Canada, which use the materials as a means to educate the public, supported the maintenance of these services.
9. Novopharm v. Novo Nordisk, March 10, 2005 (Savard) Sales of Registered Wares in Combination with Other Wares
NOVOLIN-PEN registered for medical and surgical syringes for injection including syringes designed as pencils.
Held: Registration maintained. The registrant's anti-diabetic preparations are sold with their delivery device, namely syringes designed as pencils. The affiant stated that it is the normal course of trade in this industry to include the cost of the delivery device in the cost of the anti-diabetic preparation. The Registrar concluded that the sale of the anti-diabetic preparation, accompanied by a syringe that was in packaging bearing the trade mark, qualified as the transfer of not only the preparation but also of the registered ware in association with the trade mark.
10. Shapiro Cohen v. Aramis, March 29, 2005 (Tremblay) Special Circumstances
TATTOO registered for various cosmetics.
Held: Registration expunged. The mark has not been used. The mark was assigned to a sister company and evidence was provided of steps being taken towards developing a product but it was stated that this could take up to 4 years to complete. The majority of the evidence referred to countries other than Canada and the evidence with respect to Canada was sparse and postdated the s. 45 notice. The Registrar concluded that the absence of use by the registrant was the result of a deliberate decision and that the registrant had failed to show a serious intent to use the mark in Canada in the near future.
11. Linda J. Taylor v. Consorzio Italiano Oleifici, April 28, 2005 (Carrière) Section 50
OLIVETA registered for edible oils and fats.
Held: Registration expunged. The Italian registrant's evidence was that the mark was the subject of a lease agreement and the Registrar was prepared to assume that this was similar to a licence agreement. However, the agreement did not contain any provisions for the control of the character or quality of the wares, so any use pursuant to this agreement would not satisfy s. 50. In any event, there was no evidence that the mark was associated with the one shipment of samples sent to Canada during the relevant time period.
12. Lapointe Rosenstein v. Elegance Rolf Offergelt, April 28, 2005 (Tremblay) Use with Wares Sold by Catalogue/Use on Packing Tape and Shopping Bags
AE ELÉGANCE Design registered for perfume, articles for personal hygiene and beauty care, jewellery, printed publications, articles made of leather and clothing.
Held: Registration restricted to those wares for which sales were evidenced. Customers order the wares by using a catalogue that displays the trade mark in proximity to the wares. Notice of the association of the mark with the wares was thereby provided to the customers and such notice was continued when the wares were delivered and the invoices received (even though the invoices only bore item numbers and abbreviated descriptions, not the mark). Wares which were being offered for sale, but for which no orders were received during the relevant time period, were deleted from the registration because the registrant had not provided any reason to excuse the absence of use. Although in some cases, displaying a mark on packing tape and shopping bags amounts to use of the mark in association with the enclosed wares, the Registrar held that it did not amount to use in the present case because some of the wares distributed by the registrant are associated with other marks. The Registrar therefore concluded that the use of the mark on tape and bags was at most use of the mark in association with the registrant's business.
13. Automobility Distribution v. Jiangsu Electronics, April 29, 2005 (Savard) Section 50
XTREME registered for various electronic wares.
Held: Registration expunged because the use does not accrue to the registrant's benefit. The registrant is the sole shareholder of the company that is using the mark but that alone does not enable the Registrar to conclude that there is a licence pursuant to which the registrant controls the character and quality of the wares. The Registrar distinguished this situation from one where one individual is the president or a director/officer of both the registrant and the user.
14. Novopharm v. Novo Nordisk, April 29, 2005 (Savard) Deviation from Registered Mark/Significance of Colour Claim
NOVO NORDISK & Design registered for various pharmaceutical preparations, and medical instruments and apparatus. Colour claimed as a feature of the mark.
Held: Registration restricted to insulin. The affiant stated that “many of the registrant's products were sold bearing the trade-mark”. The Registrar therefore reviewed the packaging and invoices to determine which wares were sold in association with the mark. Although the mark that appeared on the insulin packaging was not identical to the registered mark, the Registrar concluded that the dominant and essential elements had been retained and considered the fact that the mark was not used in the colour claimed was of minor importance in this case.
15. Distillerie Stock U.S.A. v. Vincor International, April 29, 2005 (Savard) Use of Composite Mark/Evidence re Trading Style
BRIGHTS PRIVATE STOCK registered for wine.
Held: Registration maintained. The word BRIGHTS appears on the label in different lettering and separated form the words PRIVATE STOCK by a border and the words CANADIAN-CANADIEN. The Registrar agreed that the public is likely to perceive the mark BRIGHTS (probably as a house mark) and the mark PRIVATE STOCK (probably as the product's specific mark) as being used, but was not convinced that the public would not perceive the composite mark BRIGHTS PRIVATE STOCK as also being used. Although the label states “produced and bottled by Brights Wines”, the Registrar accepted that the use shown was use by the registrant because “there is nothing in the evidence to indicate that 'Brights Wines' is more than a trade-name or trading style of the registrant.”
16. Molson Canada. v. OYJ Hartwell, April 29, 2005 (Savard) Ambiguous Evidence
LAPIN KULTA & Design registered for beer.
Held: Registration expunged. The affiant referred to the registered mark as “LAPIN KULTA in Design” but then stated its beer was marked with the mark LAPIN KULTA & Design. The Registrar was not willing to accept that this was merely a typographical error given that the evidence contained other ambiguities. The affiant provided labels that he said were the ones used but they referred to the beer being “brewed and bottled” whereas the only evidence of sale to Canada was of beer in cans. These ambiguities were interpreted against the interest of the affiant, with the result that the Registrar was unable to tell what mark was used in association with the wares sold during the relevant time period.
