Recent Decisions October 2005
I. FEDERAL COURT DECISIONS
(a) Patents
1. Novopharm v. Pfizer et al., August 9, 2005 FCA (Rothstein, Evans, Malone JJ.A.) Evidential and Legal Burden/Adequacy of NOA/Patented Medicines (Notice of Compliance) Regulations
Appeal by Novopharm from the order prohibiting the Minister from granting an NOC to Novopharm with respect to its azithromycin monohydrate product on the basis that the NOA was defective. Novopharm alleged that the Applications Judge made three legal errors: (1) he erred in finding that its NOA was insufficient because the NOA did not anticipate an issue raised in Pfizer's prohibition application, that being whether Pfizer's patented product, the dihydrate, was formed as an intermediate during the manufacture of the bulk monohydrate; (2) he erred in finding that it had a burden to lead evidence on this issue; and (3) he erred in declining to decide the issue of whether its tablets contain, or are likely to convert to, the dihydrate.
Held: Appeal allowed. The legal test of adequacy does not require Novopharm to anticipate all possible grounds of infringement, including Pfizer's speculative theory that the dihydrate could be used in the process of manufacturing Novopharm's bulk monohydrate. Where the NOA is found to be adequate, the legal burden remains on Pfizer to prove, on a balance of probabilities, that the allegations in the NOA are unjustified. Novopharm has no evidential burden to support the allegations in its NOA and detailed statement. In order to satisfy the legal burden placed on it under s. 6 proceedings, it is insufficient for Pfizer to merely raise the possibility of infringement.
2. Abbott Laboratories et al. v. The Minister of Health and Ratiopharm, August 10, 2005 FCTD (von Finckenstein J.) Prohibition Order/Anticipation/Obviousness/ Intermediate Products/Patented Medicines (Notice of Compliance) Regulations
Application by Abbott for an order prohibiting the Minister from issuing an NOC to Ratiopharm for Clarithromycin on the basis of infringement of the '606 patent, the '274 patent and the '361 patent. Ratiopharm alleged that the '606 patent was invalid on the basis of anticipation and obviousness. Ratiopharm made four allegations in respect of the '274 patent: (1) the claims are for Form O used as an intermediate in the manufacture of Clarithromycin Form II, and are not a claim for the medicine itself, nor for the use of the medicine and are therefore not eligible under the Regulations; (2) if the claims in issue for Form O are eligible under the Regulations, they cannot be asserted against an intermediate under the Regulations and can only be asserted against the final product made by the second person; (3) its manufacturing process (called “CLX”) does not involve the use, complex or suspension of Clarithromycin Form O as claimed; (4) Clarithromycin Form O was obvious. With respect to the '361 patent, Ratiopharm alleged that its manufacturing process did not infringe.
Held: Application dismissed. The '606 patent was anticipated by an earlier publication. The '274 patent is eligible to be listed under the Regulations as the claims are for a medicine and are not restricted to claims as intermediates. Although the Court noted that there could be infringement of the product resulting from stage 5 of Ratiopharm's CLX, the product resulting from this stage is not Ratiopharm's final product but is instead an intermediate. Since the intermediate is not made, constructed, used or sold as a medicine, Ratiopharm's intermediate product does not infringe the claims of the '274 patent for the medicine itself and/or the use of the medicine as required by the Regulations. Ratiopharm's process does not infringe claim 1 of the '361 patent as its temperature range does not overlap with the '361 patent. The key was drying at “a temperature of between about 70°C and 110°C”. The term “about” carries a dictionary definition of “near” or “close”.
3. Abbott Laboratories et al. v. The Minister of Health and Ratiopharm, August 10, 2005 (von Finckenstein J.) Prohibition Order/Anticipation/Obviousness/ Intermediate Products/Patented Medicines (Notice of Compliance) Regulations
Abbott applied for a prohibition order after Ratiopharm issued an NOA in relation to the '732 patent, which is a product by process patent which claims the active medicinal ingredient 6-O-methylerythromycin A Form II (also referred to as Clarithromycin Form II). Ratiopharm made several allegations against the '732 patent: 1) claim 15 is a Markush claim and is invalid on the basis of inutility because the use of 5 of the 17 solvents claimed will not result in Clarithromycin Form II; 2) invalidity on the basis of prior sale and anticipation; 3) non-infringement as Clarithromycin Form II is not produced at stage 4 of its process; 4) no proof that Clarithromycin Form II is used in Stage 4 of Ratiopharm's process and even if used, it is only used as an intermediary product and not a final product and the Regulations do not apply to intermediate products; and 5) the fifth and final step of its manufacturing process does not produce Clarithromycin Form II from solvent A, but instead uses solvent X, which is not claimed in the '732 patent .
Held: Application dismissed. Claim 15 is invalid for lack of utility because it was interpreted as a Markush claim and had no utility with respect to 3 of the 17 solvents claimed. With respect to whether the Regulations apply to intermediates, the Court cited s. 5(1)(b)(iv) of the Regulations which states that “no claim for the medicine itself and no claim for the use of the medicine would be infringed by the making, constructing, using or selling…”. If Stage 4 of Ratiopharm's process results in the production of Clarithromycin Form II, it appears to be "made" within the meaning of the Regulations. However, because Abbott did not present enough evidence to demonstrate that Clarithromycin Form II was produced at Stage 4 of Ratiopharm's process, the Court did not make a ruling on this point.
4. Biovail v. Canada (Minister of Health and Welfare), August 22, 2005 FCTD (O'Reilly J.) Eligibility for Listing on the Patent Register/Devices not Eligible/Patented Medicines (Notice of Compliance) Regulations
Application by Biovail for judicial review of the Minister's refusal to list its patent on the patent register. Biovail sought to have its '684 patent for "Controlled Release Formulations Using Intelligent Polymers" placed on the patent register in respect of two drugs. The test for whether a patent is eligible for listing was enunciated in GlaxoSmithKline Inc. v. Canada (Attorney General), 2005 FCA 197 at para 43. The question at issue is: “Does the patent protect the delivery system or does it protect the payload?”
Held: Application dismissed. The Minister was correct in determining that Biovail's patent was ineligible for listing under the Regulations. To be eligible for listing, a patent must contain a claim for "the medicine itself or a claim for the use of the medicine" (s. 4(2)(b)). A patent that involves a combination of an active ingredient with a device, which administers the ingredient to the patient is ineligible. Biovail's patent protects a delivery system that can be used with many different active ingredients. The fact that the patent relates to a formulation is not sufficient to make it eligible for listing under the Regulations. Also the fact that the patent claims active ingredients is not sufficient to bring it within the Regulations when the active ingredients are clearly incidental to the patent's main thrust.
5. Aventis Pharma v. Mayne Pharma (Canada) et al., August 31, 2005 FCTD (Beaudry J.) Application for Prohibition/Sufficiency of NOA/Allegations of Patent Invalidity and Non-infringement/Double patenting/Patented Medicines (Notice of Compliance) Regulations
Application by Aventis Pharma seeking an order prohibiting the Minister of Health from issuing an NOC to Mayne Pharma in respect of the drug cefotaxime sodium, until after the expiry of the '682 patent. Mayne contended that: 1) its process to make the product differed from the '682 patented process; and 2) all claims for the substance cefotaxime per se were invalid for double patenting. Mayne alleged that cefotaxime sodium was in the public domain with the expiration of the '343 patent. Aventis alleged that Mayne's NOA was insufficient and alternatively that cefotaxime sodium falls within the scope of its '682 patent.
Held: Application allowed. The '682 patent was valid. The claims were construed to comprise cefotaxime and its derivatives including cefotaxime sodium. The '343 patent was not a patent for the medicine itself since the patent issued in 1982 when it was not possible to obtain a patent on the medicine per se. Since Mayne wanted to use the process described in its NOA to produce a product covered by '682, the NOC could not be issued. However, the allegation that the NOA was insufficient was not justified because Aventis knew that Mayne would argue invalidity for double patenting.
6. AXCAN Pharma v Pharmascience and Canada (Minister of Health), September 12, 2005 FCTD (Beaudry J.) Allegation of Non-Infringement/Old Use/ Off-label Use/Burden of Proof NOA not Justified/Indirect infringement/Patented Medicines (Notice of Compliance) Regulations/Food and Drug Regulations
Application by AXCAN to prohibit the Minister from issuing an NOC to Pharmascience for the drug ursodiol, until after the expiry of the '590 patent. Pharmascience sought an NOC for its ursodiol product for use in the dissolution of gallstones and treatment of associated symptoms. AXCAN's ursodiol product is not currently listed for the treatment of gallstones. Its '590 patent does not contain any claims for the compound itself but does claim the use of ursodiol for cholestatic liver diseases (such as PBC). The use of ursodiol for the dissolution of gallstones is an old use (as was recognized by the '590 patent). AXCAN alleges that the ursodiol market for the dissolution of gallstones is small and declining. Physicians will inevitably prescribe Pharmascience's product for a use that is protected by AXCAN's patent even if the product is only approved for the treatment of gallstones (“off label” use). Pharmascience counters that it is seeking approval for a use not within the scope of AXCAN's patent and that it will take measures to ensure that its product does not infringe AXCAN's patent. Its product monograph will clearly indicate that the product is not approved for the treatment of PBC and its product will only be marketed as a treatment for gallstones. Further, Pharmascience argues that a generic manufacturer should not be kept off the market based on a mere theoretical future possibility of infringement.
Held: Application dismissed. Although it is trite law that infringement of a use patent, under the Regulations, is not limited to the act of the generic company, the mere selling of the product by a generic company without more is not sufficient to establish infringement. The patent rights holder must establish on a balance of probabilities that future infringement will occur. The affidavit evidence that off-label use would occur was not accepted as credible. Prescribing a medicine that is not approved for the treatment of a life threatening disease (as is PBC) would expose doctors to criticism and legal problems should a complication arise making such use unlikely.
(b) Trade Marks
1. Alticor and Quixtar v. Nutravite Pharmaceuticals, August 9, 2005 FCA (Linden, Rothstein, Sharlow JJ.A.) Relevant Date re Infringement/Infringement versus Opposition
Appeal from FCTD's decision that dismissed an infringement action.
Held: Appeal dismissed. The Trial Judge was correct in finding that the relevant date for considering infringement in this case was the trial date. Normally, the material date will be the time of the hearing but there will be cases where another date may be more appropriate, depending on the facts of the case and the remedies being sought. As the determination of confusion is essentially a question of fact, considerable deference must be accorded to trial judges in their determinations about confusion. The Trial Judge did not err in reaching a different decision concerning confusion from that reached by the Opposition Board - different evidence and burdens applied. The many criticisms made of the linguistics employed by the Trial Judge do not amount to sufficient error to warrant appellate intrusion - reasons are not normally examined microscopically.
2. Guccio Gucci et al. v. Shalom Levi, August 30, 2005 FCTD (Hughes J.) Draft Orders in Unopposed and Consent Matters
In an undefended motion for summary judgment for trade mark infringement, the Court asked plaintiff's counsel to prepare a draft order. Because the draft was very lengthy and went far beyond what could have been contemplated as a reasonable order, the Court set out the following principles to be used as a guide when counsel drafts an order: the relief granted is limited to that which is within the jurisdiction of the Federal Court; the relief granted is limited to the rights pleaded and the relief claimed in the Statement of Claim; the relief claimed is further limited to that claimed in the motion for summary judgment; and the relief given is further limited to that proven in a motion for summary judgment.
3. Cross-Canada Auto Body Supply et al. v. Hyundai Auto Canada, September 13, 2005 FCTD (von Finckenstein J.) Removal Of Counsel/Evidence from Members of Counsel's Firm
In an application for expungement of certain trade marks, all of the evidence was in the form of affidavits of members of the firm representing the applicants. The respondents move to have the applicants' firm removed as the solicitors of record or in the alternative to require them to retain counsel to prepare written submissions for, and present oral argument at, the application.
Held: Motion granted, in the form of the alternate remedy. Although the applicant's solicitors argued that the Federal Court Rules only preclude counsel from arguing on his/her own evidence, the Court considered it improper that the entire evidence on the main issue is based on affidavits from members of the applicants' law firm. In this situation, there is “a risk and a possible perception that counsel may be inappropriately influenced by that relationship to the detriment of counsel's duties to the court and the client”.
4. Omega v. Ridout & Maybee, September 20, 2005 FCA (Desjardins, Létourneau, Noël JJ.A.) Section 45 versus Section 57
Appeal from a decision of the Federal Court that overturned the Registrar's decision in a s. 45 proceeding and ordered that certain wares and the general class containing them be expunged.
Held: Appeal allowed. The Federal Court judge undertook an analysis of the wording of the registration but jurisdiction to do that exists only under s. 57, not under s. 45. The Registrar's decision to maintain the wares was upheld.
(c) Practice
1. Abbott Laboratories and Tap Pharmaceuticals v. The Minister of Health, Novopharm and Takeda Pharmaceutical, July 15, 2005 FCTD (Russell J.) PMNOC Reg. Section 6(7)/Section 6(8)/Protective Order/Test for Confidentiality/Sierra Club Test/Appeal from Order of a Prothonotary
Appeals by Abbott and Novopharm from protective orders made pursuant to Federal Court r. 151. Novopharm claimed that the grounds for the order are clearly wrong, resulting in an order too narrow in scope. Novopharm also argued that documents produced pursuant to PMNOC Reg. s. 6(7) should be subject to a blanket confidentiality order based on s. 6(8). Abbott claimed that the Prothonotary erred in protecting certain documents.
Held: Appeals dismissed. Mandatory wording of s. 6(8) of the regulations applies to documents produced under s. 6(7) and imposes confidentiality "between the parties" but does not deem materials produced pursuant to s. 6(7) to be confidential at all stages of the proceeding. When a document is produced under s. 6(7), it is treated as confidential until such time as the confidentiality is established, in accordance with r. 151, either as a matter of legislative fiat or Court order.
The appropriate test for confidentiality is the Supreme Court's test in Sierra Club of Canada v. Canada (Minister of Finance), [2002] 2 S.C.R. 522. The onus is on the party seeking the protective order to show that it is necessary to prevent a serious risk to an important interest and that the salutary effects of the Order outweigh the deleterious effects.
Novopharm's argument that there is a public interest in protecting the property and commercially sensitive information of generic drug manufacturers did not give rise to a blanket confidentiality order. More evidence than an assertion that all of the material in an ANDS submission is confidential was required.
The Prothonotary was correct in finding that Novopharm had discharged the onus in limited exceptions.
2. Henkel Canada v. Conros, August 23, 2005 FCTD (von Finckenstein J.) Confidentiality Order/Appeal from Order of a Prothonotary
Appeal by defendant from an order of a prothonotary refusing to alter a confidentiality order. Defendant sought to add or substitute the president of the corporation as an authorized recipient of confidential information.
Held: Appeal denied. The prothonotary did not misapprehend the facts. There was no error in the application of the principle that the standard for issuing change orders was whether the facts establish some change in circumstances or compelling reasons to vary. The proceedings of this case were merely progressing to the next stage, which did not qualify as a change in circumstances.
3. Microsoft v. 9038-3746 Quebec, 9014-5731 Quebec, Maria Pellizzi Cerrelli, Adam Cerrelli et al., August 23, 2005 FCTD (Kelen J.) Order for Examination for Discovery/Appeal from Order of a Prothonotary
Appeal by defendants from an order of a prothonotary requiring that the defendants answer questions refused on examination for discovery, that Adam Cerrelli re-attend for examination for discovery and an award of costs to the plaintiff. The order was based in part on a finding that the defendants had acted in an obstructive fashion and had added substantially to the length and expense of the proceedings.
Held: Appeal denied. The questions raised in the motion are not vital to the final issue of the case. The prothonotary relied correctly on the test of relevancy on the issue of the propriety of a question on discovery. It was up to the prothonotary's discretion to require "affiliated" parties to produce information. The prothonotary was not wrong in exercising discretion to award costs based on a finding of obstructive behaviour.
4. Sun Pac Foods v. A. Lassonde, August 23, 2005 FCTD (Morneau P.) Motions to Add a Party and for Rulings on Objections at Discovery
First motion by the plaintiff asks to add Industries Lassonde (Industries), the parent corporation of A. Lassonde (Lassonde), as defendant by counterclaim. Second motion by the plaintiff is for rulings on the objections that were raised at examination for discovery of Lassonde's representative, Mr. Gattuso. Second motion also seeks to obtain the right to examine Mr. Gattuso further concerning documents that were produced immediately before the continuation of the examination for discovery. Finally, the motion seeks to have the trial of the counterclaim and the hearing of any future motion held in Toronto. The main action over a disputed trade mark is now abandoned by Lassonde; the motions are in the context of Sun Pac's counterclaim.
Held: First motion dismissed. The addition of Industries is not necessary to the complete resolution of Sun Pac's counterclaim. There was no ambiguity that Industries was not the true owner of the mark FRUITÉ. The deed of assignment and the licensing agreement preserved the right of litigation in Lassonde's hands. There was no reason to suspect that Lassonde would elude any potential judgment by the Court. The practical utility of adding Industries to the litigation is limited because Industries has clearly undertaken to recognize any decision of the Court in relation to the disputed mark. Further, Sun Pac did not bring the motion to add Industries at the earliest time.
Second motion dismissed, save for the fact that objection 52, concerning royalties, will have to be answered in writing. All other objections need not be answered based on the principles set out in Reading & Bates Construction Co. et al. v. Baker Energy Resources Corp. et al. (1988), 24 C.P.R. (3rd) 66. Thus, there is no reason to provide for the continuation of Mr. Gattuso's examination. Further, the only document Sun Pac was caught on short notice with was the deed of assignment, which was one paragraph in length. There is no reason further motions should not continue to be managed from Montreal or by conference call. The location of trial is a matter for the pretrial conference.
5. Canadian Private Copying Collective v. Amico Imaging Services et al., September 9, 2005 FCTD (Hugessen J.) Motion to Add Parties
Motion by the plaintiff to add two principal directors and officers and the Director of Sales of the defendant Amico. The action itself is for the recovery of private copying levies imposed under the Copyright Act. The motion was brought, virtually contemporaneously, with the bankruptcy of Amico.
Held: Motion dismissed. The proper principle to apply is not the question of whether or not these parties are necessary. Rather, the question is whether the statement of claim should be amended to include allegations of personal liability of the directors and officers. Generally, amendments should be allowed unless they would result in a prejudice to the opposing party, which cannot be compensated by an award of costs. Specifically, an amendment to add parties should not be allowed if it would appear that the claim against the proposed new party is spurious. On both counts the motion fails. The evidence upon which the plaintiff relies was produced at an earlier stage in the proceedings at a time when they were not parties to the action. The result was that there was very unsatisfactory cross-examination. Further, the evidence does not show actual knowledge and participation in the illegal scheme. The case against the directors and officers involves different issues of law and fact from the issue of liability for the payment of levies. At such an advanced stage in the proceedings, the inconvenience cannot be properly compensated by costs. Leave is granted to the plaintiff to serve and reapply to add proposed defendant Young because he was not served with this motion.
6. Cross-Canada Auto Body Supply (Windsor) et al. v. Hyundai Auto Canada, September 14, 2005 FCTD (von Finckenstein J.) Appeal of Prothonotary's Extension of Time and Failure to Award Costs
Appeal by the applicant from an order of wherein the Prothonotary granted an extension of time to file a Notice of Appearance, and did not award costs to the applicants. Applicants argue the Prothonotary failed to establish that the extension of time had merit. Further, the applicant argued that the delay occurred because of inadvertence, which is not a reasonable explanation.
Held: Appeal dismissed, except for costs. The Court disagreed that the affidavit filed by the respondent was not sufficient to meet the "merit" test. It was certainly sufficient because it provided that there had been a mix-up and that it was "a matter of internal housekeeping". Further, the Court agreed that inadvertence is not enough to explain the delay. However, the delay was due to more than mere inadvertence. The delay occurred because a mix-up of two actions between the respondent and the applicants. There was correspondence between the solicitors at the time. The Court held that prejudice had not been made out because the application for leave to file the appearance was filed within one month of when the appearance should have been filed. Counsel for the applicants was fully aware that there had been a mix-up and tried to take advantage of it.
The Prothonotary deviated from r. 410(2). The party applying for an extension of time should normally bear the costs of the motion. The fact that the applicants brought a motion for default judgment does not disentitle them from costs.
II. OTHER COURT DECISIONS
1. Poppa Corn v. Collins, April 13, 2005 OSCJ (MacKenzie J.) Motion for Interlocutory Injunction to Restrain Use or Disclosure of Confidential Information by Departing Employee
Motion by Poppa Corn for an interlocutory injunction to prevent Collins from using or disclosing Poppa Corn's confidential business information, and from soliciting the business of customers of Poppa Corn. Poppa Corn sells food and equipment to food concession operators, and has about 80% of the food concession business in Ontario. Collins has worked his entire life in the food concession business. For several years, he worked for the plaintiff and its predecessor, but did not enter into any written employment contract or non-competition agreement. Poppa Corn terminated Collins for cause, and he joined the workforce of a competitor in the concession foods and equipment business. In his new position, Collins had business dealings with customers he previously served as a sales representative of Poppa Corn.
Held: Motion dismissed. No evidence was put forward from which it could be inferred that any of the customer accounts serviced by Collins on behalf of the competitor were obtained through the use of confidential information obtained in the course of Collins' employment with Poppa Corn. There was evidence that Collins knew most of the seasonal vendors who were customers of Poppa Corn even before his employment with Poppa Corn. Poppa Corn sought to effectively restrain Collins from soliciting sales from about 80% of the food concession equipment market. This injunctive relief is a restraint of trade and Poppa Corn did not establish a strong prima facie case. Evidence that Collins was a senior employee who stood in a fiduciary relationship to his employer and who utilized confidential information relating to Poppa Corn's customers was tenuous at best.
2. Pivotal Partners v. Jackson et al., May 19, 2005 BCSC (Melnick J.) Motion for Interlocutory Injunction to Restrain Use or Disclosure of Confidential Information by Departing Employee
Motion by Pivotal for an interlocutory injunction to prevent the defendants from using or disclosing Pivotal's confidential information and for an order for delivery up of documents containing confidential information. Pivotal operates a mail order pharmacy website selling beauty and other products. It added medical devices to its product lines and hired a team of telemarketers to solicit doctors. Jackson was hired as a sales manager for the team. He signed a non-competition/non-disclosure agreement. After about 3 months, Jackson left Pivotal without notice. Before leaving, he sent email messages to his wife containing company information. Subsequently, Jackson established a competing business selling medical devices. He incorporated two companies before leaving Pivotal, and later used them to sell devices and other medical products, which were the same or similar to those sold by Pivotal, using Pivotal's main Canadian competitor to fill the orders.
Held: Motion dismissed. The balance of convenience favours the defendants. Damages will be an adequate remedy for Pivotal. The medical devices business is a profitable but minor part of its overall business. The negative consequences of an injunction to the defendants could well be very significant in comparison. Furthermore, the case of Pivotal is far from a strong one. There are real issues as to enforceability of the non-competition/non-disclosure contract, and Pivotal may have difficulty overcoming the issue of restraint of trade.
3. 1259695 Ontario (c.o.b. Upper Canada Office Systems) v. Guinchard et al., May 20, 2005 OSCJ (Blishen J.) Motion for Interlocutory Injunction to Restrain Use or Disclosure of Confidential Information by Departing Employee
Motion by Upper Canada for an interlocutory injunction to prevent the defendants from using or disclosing Upper Canada's confidential customer list and other confidential information, and from soliciting clients listed therein. Guinchard was a sales representative for Upper Canada. His employment was subject to conditions, in particular that confidential information including customer lists and pricing information was not to be transferred to another company. While still employed with Upper Canada, he entered into discussions with a competitor, Dye & Durham, concerning employment opportunities. After receiving a written offer of employment from Dye & Durham, Guinchard emailed to Dye & Durham a customer list with information concerning 59 Upper Canada office furniture customers. A Dye & Durham sales director set up accounts for 56 of the customers on the list, and completed credit checks on some of them. Subsequently, Guinchard forwarded at least one request for proposal from an Upper Canada customer to Dye & Durham. During his last week of work at Upper Canada, Guinchard obtained orders from previous Upper Canada customers for Dye & Durham.
Held: Motion granted. Guinchard was a senior employee. He was under a duty not to exploit confidential information unfairly to his own advantage at the expense of his former employer. The defendants had a duty not to act unfairly and not to solicit Upper Canada's customers for a reasonable period. Instead, while working for Upper Canada, Guinchard was actively diverting business away from Upper Canada to Dye & Durham. Upper Canada lost sales as a result of Guinchard's use of confidential information. In cases involving restrictive covenants and employment contracts, the higher threshold of a strong prima facie case is applied. Upper Canada established a strong prima facie case for a breach of confidence action. There would be irreparable harm suffered by the plaintiff from the potential loss of market share and customers which would not be compensable in damages.
III. OPPOSITION BOARD DECISIONS
1. Color Your Carpet v. ICI Canada, March 8, 2005 (Bradbury) Confusion/Confidentiality
Proposed-use application for COLOR YOUR CARPET for carpets and a retail store selling carpets. Opposition based, inter alia, on s. 16 due to confusion with COLOR YOUR CARPET previously used by the opponent for carpets.
Held: Opposition rejected because the opponent's evidence did not satisfy its evidential burden.
Although the opponent had submitted portions of the cross-examination in a sealed envelope and requested that these portions be treated as confidential, there is no procedure for maintaining confidentiality in opposition proceedings; all evidence filed in an opposition is open to public inspection.
2. Axa Assurances v. Charles Schwab, March 10, 2005 (Tremblay) Section 30(b)/Confusion/Distinctiveness/Section 50
Use-based application for TELEBROKER for automated investment brokerage services, providing automated access to stock quotes, and providing automated access to account information. Opposition based, inter alia, on s. 30(b) (because the applicant has not used its services as claimed), non-distinctiveness (because the mark is used outside the scope of the licensed use provided by s. 50) and s. 12(1)(d) (due to confusion with TÉLÉCOURTIER registered for réseau de courtage en matière de télétraitement de l'assurance et de communication interactive à partir de micro-ordinateurs).
Held: Application refused pursuant to s. 30(b) because the applicant's evidence showed use as of the claimed date of first use by Charles Schwab (Canada) without any evidence that would invoke the benefit of s. 50. The distinctiveness ground of opposition also succeeded. The s. 12(1)(d) ground failed - although the average bilingual Canadian would readily translate TELEBROKER as TÉLÉCOURTIER, confusion is not likely as a result of the differences in the parties' services and channels of trade and the lack of evidence of continuous and extensive use of the opponent's mark.
3. Natrel v. Hunt Wesson, March 15, 2005 (Carrière) Confusion
Proposed-use application for HUNT'S TOURBILLON for food product, namely puddings and gelatine. Opposition based, inter alia, on s. 12(1)(d) due to confusion with TOURBILLON registered by the opponent for ice cream.
Held: Application refused. Confusion likely given the resemblance between the marks and the nature of their respective wares and trades.
4. Accessories d'autos Nordiques v. Canadian Tire, March 21, 2005 (Carrière) Confusion
Proposed-use application for NORDIC & Snowflake Design for tires. Opposition based, inter alia, on s. 12(1)(d) due to confusion with NORDIQUES registered by the opponent for automobile tooling and accessories.
Held: Application refused. Confusion is likely because the marks are phonetically identical to a monolingual French speaking person, and there is an overlap between the parties' wares and a similarity in their businesses.
5. Fédération de l'industrie horlogère suisse v. Maytronics, March 22, 2005 (Tremblay) Section 30(b)/Section 12(1)(a)
Use-based application for CALVIN HILL for watch for men and women. Opposition based, inter alia, on s. 30(b) and 12(1)(a).
Held: Application refused on both grounds. Re s. 30(b): The applicant's evidence established that it was merely the Canadian distributor of the wares, with the result that the use that it relied upon did not accrue to its benefit. Re s. 12(1)(a): There was evidence of Canadian telephone listings for individuals named Calvin Hill and the Canadian public is likely to think that CALVIN HILL is primarily the name of an individual who is alive or who has died in the 30 preceding years.
6. R.C. Purdy Chocolates v. Eli A. Gershkovitch, March 22, 2005 (Martin) Confusion
Proposed-use application for HEDGEHOG for flour products namely pies and cakes. Opposition based, inter alia, on s. 16(3) due to confusion with HEDGEHOG previously used in Canada in association with chocolate by the opponent and its licensees.
Held: Opposition rejected. The opponent merely stated that certain parties use its mark under licence; its failure to indicate that it controls the use pursuant to the licence results in s. 50 not being satisfied. Confusion not likely “in view of the differences between the wares and trades of the parties, the non-distinctive uses of its marks by the opponent and the third party use of the same mark or designation for chocolates by Dynamic [its licensee], and notwithstanding the high degree of resemblance between the marks at issue”.
7. Accupro Trademark Services v. Robert H. Barrigar, April 6, 2005 (Herzig) Confusion
Proposed-use application for ACCULEX for legal services and patent and trademark agency services. Opposition based, inter alia, on s. 16 due to confusion with ACCUPRO TRADEMARK SERVCIES previously used in respect of all aspects of trade mark agency services.
Held: Opposition rejected. Confusion not likely because weak marks are not entitled to a broad scope of protection, consumers have been inundated with marks that commence with ACU or ACCU, and the parties' services are highly specialized and costly so prospective clients may be expected to investigate carefully when choosing their services.
8. Timberland v. Wrangler Apparel, April 8, 2005 (Martin) Confusion
Proposed-use application for TIMBER CREEK BY WRANGLER for wallets, carrying bags, purses…travel pouches and bags for carrying toiletries, plastic travel bottles and toothbrushes. Opposition based, inter alia, on s. 12(1)(d) due to confusion with TIMBERLAND registered for leather goods and accessories, footwear, clothing, handbags, duffle bags, school bags, knap sacks and lunch boxes.
Held: Opposition rejected primarily because there have been several years of significant coextensive use without any evidence of confusion.
9. Vitality Foodservice v. Oakrun Farm Bakery, April 22, 2005 (Martin) Confusion
Proposed-use application for THE VITALITY BAR for food products namely, energy bars. BAR disclaimed. Opposition based, inter alia, on s. 12(1)(d) due to confusion with VITALITY registered by the opponent for non-carbonated beverages.
Held: Opposition rejected. Confusion not likely. There appears to have been about 4 years' extensive non-use of the opponent's mark which has severely diminished the distinctiveness of the mark in the hands of the opponent. The opponent's wares are sold to restaurants and institutional users where they are used to dispense beverages from a machine whereas the applicant's wares are sold to individual consumers.
10. Homeocan v. Boiron Canada, April 25, 2005 (Carrière) Section 30(b)/Descriptiveness
Use-based application for CASSE-GRIPPE for homeopathic pharmaceutique for the treatment of flu. Opposition based, inter alia, on s. 30(b) and s. 12(1)(b).
Held: Application refused under both grounds. S. 30(b): CASSE-GRIPPE has been used as part of an advertising slogan on the packaging, not for the purpose of indicating the origin of the wares; as the “use” has not been to distinguish the applicant's wares from those of others, it has not been used as a trade mark. S. 12(1)(b): The average French-speaking consumer would immediately understand CASSE-GRIPPE to mean that the medicine halts the flu, making the mark clearly descriptive.
11. Cloud 9 (The Tribe) v. Pierre Ouellette, April 29, 2005 (Herzig) Confusion
Application for TRIBE 8 for various printed matter (based on use) and large scale sculpts and miniatures, interactive software programs to play electronic role-playing games…, toys, lapel pins and the production of feature and television films and series (based on proposed use). Opposition based, inter alia, on s. 16(3) due to confusion with THE TRIBE which is the subject of previously filed applications for television and film entertainment services and computer software.
Held: Opposition rejected. Confusion is not likely because the marks in issue do not have a high degree of inherent distinctiveness, the opponent's mark did not have a reputation in Canada as of the material date and the parties intend to use their marks for specific product lines and for different target consumers (the applicant's wares/services relate to its role playing game whereas the opponent's wares/services relate to its television series).
12. Unilever Canada v. Red Rose Canada, May 3, 2005 (Folz) Confusion/Admissibility of Thomson and Thomson Search
Use-based application for RED ROSE for operation of a retail bakery. Opposition based, inter alia, on s. 12(1)(d) due to confusion with RED ROSE registered for tea.
Held: Application refused. The applicant's evidence showed that it sells tea at its bakery for consumption on and off the premises so the parties' wares and services are related and their channels of trade could overlap. The opponent's mark is entitled to a broad scope of protection because it is very well known in Canada. The absence of evidence of confusion is not surprising given that the applicant has only promoted its mark to a specialized group of consumers (the Persian and Iranian communities) to date.
A Thomson and Thomson search of its computerized version of the Canadian Trade-marks Office records is admissible because the Trade-marks Office provides the information for the database and there is no evidence of any inaccuracies in the database. A Thomson and Thomson common law search was also held to be admissible.
13. Novopharm and Apotex v. Purdue Pharma, May 6, 2005 (Bradbury) Distinctiveness
Use-based application for Red Coloured Elongate Shaped Tablet Design for pharmaceutical preparations, namely 200 mg dosage units of sustained release morphine. Opposition based, inter alia, on distinctiveness because red tablets are common to the pharmaceutical tablet trade.
Held: Application refused. The evidence showed that 5 similarly shaped red tablets were in the marketplace as of the material date, as well as more than 20 red, circular or oval tablets. Health professionals rely on the markings that appear on the opponent's tablets to identify them. The applicant's position was that its trade mark distinguishes its product from other sustained release morphine but the test is whether it distinguishes the applicant's product from all other pharmaceutical preparations and even the applicant's own affiant appeared to agree that this was not the case.
14. Novopharm and Apotex v. Purdue Pharma, May 6, 2005 (Bradbury) Distinctiveness/Section 30(b)/Section 4
Use-based application for Grey Coloured Circular Shaped Tablet Design for pharmaceutical preparations, namely 100 mg dosage units of sustained release morphine. Opposition based, inter alia, on distinctiveness because grey tablets are common to the pharmaceutical tablet trade and non-compliance with s. 30(b).
Held: Application refused. The distinctiveness ground succeeded because the evidence showed that 7 other grey, circular tablets were in the marketplace as of the material date. (Although the applicant's tablets are a medium shade of grey and some of the other tablets are very light grey, all grey tablets are relevant since the application is not restricted to any particular shade of grey.) The applicant's position was that its trade mark distinguishes its product from other sustained release morphine but the test is whether it distinguishes the applicant's product from all other pharmaceutical preparations. Health professionals rely on the markings that appear on the opponent's tablets to identify them.
The s. 30(b) ground also succeeded because it appeared that the alleged trade mark would not have been seen at the time of transfer as required by s. 4 as of the claimed date of first use. Pharmacists do not see the tablets when they are delivered to them in opaque containers and there is no evidence that pharmacists show the tablets to patients when they are given to them in amber-coloured vials. Although the applicant also sells the tablets in blister packs which might enable the receiver to see the tablets, it appeared that blister packs were not introduced until after the date of first use claimed by the applicant.
15. Novopharm and Apotex v. Purdue Pharma, May 6, 2005 (Bradbury) Distinctiveness/Section 30(b)/Section 4
Use-based application for Purple Coloured Circular Shaped Tablet Design for pharmaceutical preparations, namely 30 mg dosage units of sustained release morphine. Opposition based, inter alia, on distinctiveness because purple tablets are common to the pharmaceutical tablet trade and non-compliance with s. 30(b).
Held: Application refused. The distinctiveness ground succeeded because the evidence showed that 7 other purple, circular tablets were in the marketplace as of the material date, as well as a number of purple tablets that are not circular. (Violet tablets were treated as being a type of purple tablet.) Health professionals rely on the markings that appear on the opponent's tablets to identify them. The applicant's position was that its trade mark distinguishes its product from other sustained release morphine but the test is whether it distinguishes the applicant's product from all other pharmaceutical preparations and even the applicant's own affiant appeared to agree that this was not the case.
The s. 30(b) ground also succeeded because it appeared that the alleged trade mark would not have been seen at the time of transfer as required by s. 4 as of the claimed date of first use. Pharmacists do not see the tablets when they are delivered to them in opaque containers and there is no evidence that pharmacists show the tablets to patients when they are given to them in amber-coloured vials. Although the applicant also sells the tablets in blister packs which might enable the receiver to see the tablets, it appeared that blister packs were not introduced until after the date of first use claimed by the applicant.
16. Novopharm and Apotex v. Purdue Pharma, May 6, 2005 (Bradbury) Distinctiveness/Section 30(b)/Section 4
Use-based application for Green Coloured Circular Shaped Tablet Design for pharmaceutical preparations, namely 15 mg dosage units of sustained release morphine. Opposition based, inter alia, on distinctiveness because green tablets are common to the pharmaceutical tablet trade and non-compliance with s. 30(b).
Held: Application refused. The distinctiveness ground succeeded because the evidence showed that more than 20 other green, circular tablets were in the marketplace as of the material date. Health professionals rely on the markings that appear on the opponent's tablets to identify them. The applicant's position was that its trade mark distinguishes its product from other sustained release morphine but the test is whether it distinguishes the applicant's product from all other pharmaceutical preparations and even the applicant's own affiant appeared to agree that this was not the case.
The s. 30(b) ground also succeeded because it appeared that the alleged trade mark would not have been seen at the time of transfer as required by s. 4 as of the claimed date of first use. Pharmacists do not see the tablets when they are delivered to them in opaque containers and there is no evidence that pharmacists show the tablets to patients when they are given to them in amber-coloured vials. Although the applicant also sells the tablets in blister packs which might enable the receiver to see the tablets, it appeared that blister packs were not introduced until after the date of first use claimed by the applicant.
17. Convectair-NMT v. Salton Appliances, May 10, 2005 (Tremblay) Confusion
Proposed-use application for CONVECTAIR for toaster ovens with convection cooking. Opposition based, inter alia, on s. 12(1)(d) due to confusion with CONVECTAIR registered by the opponent for appareils de chauffage à convection.
Held: Application refused. Confusion is likely because both parties' wares involve convection heating technology and the opponent's mark has been used longer and to a greater extent. The opponent's electrical convection heating units are installed in various living areas of houses, including kitchens, by electricians but its target market is ordinary consumers.
18. Novopharm and Apotex v. Purdue Pharma, May 13, 2005 (Bradbury) Distinctiveness
Use-based application for Orange Coloured Circular Shaped Tablet Design for pharmaceutical preparations, namely 60 mg dosage units of sustained release morphine. Opposition based, inter alia, on distinctiveness because orange tablets are common to the pharmaceutical tablet trade.
Held: Application refused. The evidence showed that 23 other circular, orange tablets were in the marketplace as of the material date. Health professionals rely on the markings that appear on the opponent's tablets to identify them.
19. Unifeed v. MexAmeriCan Trading, May 20, 2005 (Bradbury) Confusion/Descriptiveness
Proposed-use application for EQUI-SI for bioavailable silicon for horses and the like. Opposition based, inter alia, on s. 12 due to confusion with EQUISINE registered by the opponent for horse feed and s. 12(1)(b).
Held: Opposition rejected. Confusion not likely since the evidence shows use of the opponent's mark by an unexplained third party and the differences between the two marks are sufficient to make confusion unlikely. Although EQUI is similar to the word EQUINE (which means “related to a horse”) and SI is an abbreviation for silicon, this does not make the mark clearly descriptive as a matter of immediate impression.
20. 3222381 Canada v. Baraka' Spa, May 24, 2005 (Folz) Section 30(b)/Confusion
Use-based application for BARAKA' for precious metals and jewellery. Opposition based, inter alia, on s. 30(b) because the mark has not been used continuously since the date claimed and s. 12(1)(d) due to confusion with EL BARAKA registered for selling clothing and accessories.
Held: Application refused. The s. 30(b) ground succeeded because the applicant's evidence showed use of the mark by a company whose use was not shown to accrue to the applicant's benefit; this evidence was held to be clearly inconsistent with the applicant's claim of continuous use. The s. 12(1)(d) ground succeeded because the opponent's accessories include jewellery, there is a considerable degree of resemblance between the marks and a potential for overlap between their channels of trade.
21. Matériaux à bas prix v. Rona, May 25, 2005 (Carrière) Section 30(b)
Use-based application for SI CE N'EST PAS JAUNE, CE N'EST PAS RONA L'ENTREPÔT for operation and management of commercial undertakings for the sale of a long list of wares. L'ENTREPÔT disclaimed. Opposition based, inter alia, on s. 30(b).
Held: Application refused with respect to operating and managing commercial undertakings involved in the sale and services of selling sporting goods and recreational articles, fishing and hunting gear, articles and accessories for babies, and articles and accessories for cars and trucks. The applicant's affiant described its business as operating warehouse stores, renovation and/or construction materials centres, hardware stores or garden centres or nurseries supplying horticultural products. The lack of evidence with respect to certain services raised serious doubts concerning the applicant's use of the mark in association with such services, resulting in them being refused.
22. Rona v. Matériaux à bas prix, May 25, 2005 (Carrière) Proving Admission Against Interest/Section 30(b)/Confusion
Use-based applications for LA COMPÉTITION RIT JAUNE and WOW! C'EST JAUNE ET C'EST BEAUCOUP MOINS CHER! for operating a business for the wholesale distribution and retail sales of construction materials. Opposition based, inter alia, on s. 30(b) and s. 16 due to confusion with SI CE N'EST PAS JAUNE, CE N'EST PAS RONA L'ENTREPÔT previously used for the operation and management of commercial undertakings for the sale of a long list of wares.
Held: The application for the first mark was refused under s. 30(b) because the evidence showed use of the words as part of the slogan LA COMPÉTITION RIT JAUNE COMPAREZ NOS PRIX, which was held not to constitute use of the applied for mark.
The opposition was rejected with respect to the second mark. The s. 16 ground failed primarily because the marks, when considered as a whole, have no resemblance, except for the simple presence of the word “jaune”.
The opponent argued that the applicant's claim in the statement of opposition that the applicant filed against the opponent's application, to the effect that the marks are confusing, should result in the present opposition being successful based on evidence that the opponent used its mark first. However, the statement of opposition from that other proceeding had not been introduced as evidence in the present proceedings and so the Board Member would not treat it as an admission against interest, even though the oral hearings for the 2 proceedings had been joined.
23. Distillery Stock U.S.A. v. Maple Leaf Distillers, June 1, 2005 (Bradbury) Confusion/Section 9(1)(d)
Proposed-use application for ROYAL STOCK CANADIAN CELLARS for rye whiskey. CANADIAN disclaimed. Opposition based, inter alia, on s. 12(1)(d) due to confusion with the mark STOCK registered by the opponent for wines, brandy, cordials and liqueurs and s. 12(1)(e) based on s. 9(1)(d).
Held: Opposition rejected. Confusion is not likely. The opponent's evidence showed use of STOCK by another party, whose relationship to the opponent was not explained. Although the applicant's mark incorporates the opponent's mark in its entirety, “stock” is not a dominant component of the applicant's mark. Section 9(1)(d) does not prohibit the registration of the mark because the word “royal” does not of itself lead to the belief that the wares are produced under royal approval (as shown by the numerous other marks incorporating that word and the multiple dictionary meanings for “royal”).
24. R. Griggs Group et al. v. Yellow Group, June 6, 2005 (Tremblay) Confusion
Use-based application for DOC'S for footwear. Opposition based, inter alia, on s. 12(1)(d) due to confusion with the marks DR. MARTENS and DOX & Design registered for footwear.
Held: Application refused based on the likelihood of confusion with DOX & Design, even though there was no evidence of any use of that mark. Confusion with DR. MARTENS not likely because of the differences between the marks; the opponent did not succeed in showing that the footwear associated with the DR. MARTENS mark are known as DOC MARTENS footwear or DOCS footwear in Canada.
25. R. Griggs Group et al. v. 359603 Canada, June 9, 2005 (Tremblay) Section 30(e)/Section 4(1)/Use in Catalogues/Confusion
Proposed-use application for DOC MARVEL'S for footwear, etc. Opposition based, inter alia, on s. 30(e) because the applicant was already using the mark when it filed the application and s. 12(1)(d) due to confusion with the mark DR. MARTENS registered for footwear.
Held: Application refused.
The s. 30(e) ground succeeded. The applicant had advertised the wares in association with the trade mark in catalogues but said that the mark did not appear on the wares themselves or on their packaging. Citing case law that found that use in accordance with s. 4(1) might occur where the mark appears in catalogues as well as on invoices, the Board Member held that the opponent had met its initial light burden and that the applicant's ambiguous evidence meant that it had not satisfied its burden.
The s. 12(1)(d) ground also succeeded.
26. CPSA Sales Institute v. Groupe Conseil Parisella, Vincelli, June 13, 2005 (Carrière) Section 30(b)/Effect of Amalgamation/Unregistered Certification Mark
Use-based application for PVA for management consulting services and management training services by means of consultations and courses. Opposition based, inter alia, on s. 30(b) because the mark is not a trade mark and because it has not been used since the date claimed and non-distinctiveness because it cannot distinguish the applicant's services from those rendered by the opponent in association with the certification mark PVA.
Held: Opposition rejected. The distinctiveness ground failed because the opponent has not registered PVA and there is no such thing as a certification mark at common law. Regarding s. 30(a), the fact that PVA is an acronym does not prevent it from being a trade mark. The applicant's evidence of use of PVA in a design form qualifies as use of PVA simpliciter; and even if it didn't, this would not satisfy the opponent's initial burden. Obiter: An amalgamating company does not need to be named as a predecessor under s. 30(b).
27. Canadian Medical Association v. Physician's Choice of Arizona, June 16, 2005 (Herzig) Section 30(i)/Trade Name Use/Use of TM/Deceptively Misdescriptive/Section 9(1)(n)(iii)
Use-based application for PHYSICIAN'S CHOICE for a variety of non-medicated skin care products. PHYSICIAN'S disclaimed. Opposition based, inter alia, on s. 30(i) because the Ontario Medicine Act prohibits the use of the designation PHYSICIAN by a person who is not a member of the College of Physicians and Surgeons, s. 30(b) because the applicant's use of PHYSICIAN'S CHOICE is more consistent with trade name rather than trade mark usage, s. 12(1)(b) and s. 9(1)(n)(iii) in view of the opponent's official mark PHYSICIAN.
Held: Application refused based on s. 30(b), s. 12(1)(b) (deceptively misdescriptive) and s. 9(1)(n)(iii).
Re s. 30(b): The applied for mark appears on the packaging but inconspicuously in diminutive lettering, at the bottom of the packaging followed by a mailing address. Although TM appears after PHYSICIAN'S CHOICE on the packaging, that symbol cannot by itself transform trade name use into trade mark use. The term PHYSICIAN'S CHOICE is being used to alert the consumer of the manufacturer's mailing address, not to identify or distinguish the product. The other trade mark on the packaging is serving the latter function.
The s. 30(i) ground failed because it wasn't clear to the Registrar that the Ontario Medicine Act prohibits the use of PHYSICIAN in the possessive form as a component of a trade mark used to identify the source of wares and because the opponent did not plead that the applicant was aware of the facts on which the ground relies.
28. Jack W. Chow Realty v. Millennium Insurance, June 21, 2005 (Bradbury) Distinctiveness
Use-based application for DIRECTINSURE.CA for providing general insurance underwriting of all types and administering same; providing warranty and extended warranty contracts for new and used vehicles of all types. .CA disclaimed. Opposition based, inter alia, on non-distinctiveness. Only the opponent filed evidence or a written argument.
Held: Application refused. The opponent filed evidence to show prior use of DIRECTINSURE.CA but failed to show that such use enured to its benefit under s. 50. This evidence was nevertheless sufficient to satisfy the opponent's initial burden with respect to the non-distinctiveness ground.
29. Canplas Industries v. Suntown Building Products, June 28, 2005 (Bradbury) Confusion
Use-based application for DURA-PLUS for building products, namely wall vents. Opposition based, inter alia, on s. 12(1)(d) due to confusion with DURAFLO registered for roof vents.
Held: Application refused. The evidence showed that wall vents and roof vents can be used interchangeably and are typically sold and advertised together. Moreover, there was no admissible evidence showing that consumers are used to distinguishing between DURA prefixed marks in this field.
30. Biomune v. Matol Biotech Laboratories, June 29, 2005 (Carrière) Confusion
Proposed-use application for MATOL BIOMUNE OSF PLUS & Design for food supplements, nasal spray and homeopathic preparations and remedies for humans. Opposition based, inter alia, on s. 16(3)(a) because the mark is confusing with the mark BIOMUNE previously used by the opponent for avian and animal vaccines.
Held: Application refused because the word BIOMUNE is the dominant feature of the applicant's mark and there is a potential overlap in the channels of trade and the nature of the parties' businesses. Although the opponent's primary use is in association with avian and animal vaccines, there is also uncontroverted evidence that it uses BIOMUNE as a secondary mark in association with dietary products for human consumption. There is also evidence that there are medicines in the marketplace that can be used in the treatment of both humans and animals. Furthermore, the applicant's web site said that its products are safe for pets.
31. Sealy Canada v. Simmons I.P., June 30, 2005 (Folz) Section 30(b)/Descriptivene
