Recent Decisions October 2007
I. FEDERAL COURT DECISIONS
(a) Patents
1. Novopharm v. Abbott Laboratories, TAP Pharmaceuticals, The Minister of Health and Takeda Pharmaceutical, June 28, 2007, 2007 FCA 251 (Nadon, Sexton, Ryer JJ.A.) Appeal/Prohibition Order/Inducement of Infringement/Patented Medicines (Notice of Compliance) Regulations
Appeal by Novopharm from a decision prohibiting the Minister from issuing a NOC to Novopharm for Lansoprazole until after expiry of the '741 patent ("Patent"). Lansoprazole was the subject of an earlier use patent to treat excess gastric secretions. The Patent is directed towards a new use as an antibacterial agent to treat and prevent infectious diseases. In construing the patent and relevant claim, the Judge concluded that Novopharm's product monograph and bottle label would induce or encourage infringement. Novopharm argued that: 1) the Judge erred in law in failing to properly construe the relevant claim; 2) there was no evidence before the Judge which could lead him to conclude that its product monograph and bottle would induce or encourage physicians to prescribe their product to patients for the new use; and 3) the decision was unfair because the issue of inducement was not pleaded in Abbott's NOA and was only raised in written submissions to the Judge following cross-examinations. Novopharm also argued that the Judge erred in not considering its arguments regarding the decision in AstraZeneca v. Canada (Minister of Health), [2006] 2 S.C.R. 560 ("AstraZeneca") since AstraZeneca was determinative of the matter. Novopharm argued that AstraZeneca supported its proposition that since the new use of Lansoprazole was not an approved use, and because it had not "early worked" the Patent in its ANDS, the Regulations did not require it to make reference to the Patent.
Held: Appeal dismissed. The Judge properly construed the Patent and relevant claim. Absent an overriding and palpable error, it is not open to the Court to reassess the evidence. The Judge's conclusion that Novopharm's product monograph and bottle label would induce infringement was open to him on the evidence before him. Since Novopharm never argued or took the position that allowing Abbott to raise the issue of inducement of infringement at a late stage was prejudicial and required leave, it was too late to take the position that the Judge erred in allowing the issue to be raised. The decision in AstraZeneca was not determinative of the matter. Whether Novopharm was obliged by the Regulations to compare its drug to the relevant NOC and address the patents listed therein was a matter for the Minister and Novopharm ought to have raised the issue with him. If it was open to Novopharm to raise the issue in the proceedings commenced by Abbott, Novopharm was obliged to raise the matter in its NOA. The Judge did not make a reviewable error on this point.
2. Janssen-Ortho v. AG Canada and Minister of Health, July 9, 2007, 2007 FC 729 (O'Reilly J.) Judicial Review/ Minister's Decision/ Ineligibility for Listing/ Patent Register/ Section 4(2)(b)/ Patented Medicines (Notice of Compliance) Regulations
Application by Janssen-Ortho for judicial review of the Minister's decision refusing to list its '668 patent ("Patent") on the patent register ("Register"). The Patent was held to be ineligible for listing because it only protected the dosage forms for the administration of the drug and not the medicine itself or its use.
Held: Application dismissed. The Minister did not err in finding the Patent ineligible to be listed on the Register. The claims of the Patent are not for the medicine or its use, but relate to a particular form of tablet that permits a desired release profile for the tablet's active ingredient. The Patent's disclosure describes the benefits and mechanics of a tablet possessing these characteristics. The tablet design is generic and capable of administering many different medicines.
3. Apotex v. AstraZeneca, July 10, 2007, 2007 FC 696 (Shore J.) Motion to Strike/Insufficient Material Facts/Section 8/Damages/Standing/Second Person/Patented Medicines (Notice of Compliance) Regulations
Motion by AstraZeneca to set aside the Prothonotary's order and have its underlying motion to strike Apotex's statement of claim granted. Apotex's claim was for various forms of relief pursuant to s. 8 of the Regulations in respect of its delayed entry into the market for Apo-Omeprazole. AstraZeneca argued that Apotex had not pleaded the requisite elements of the claim, namely that it has standing as a "second person". The Prothonotary held that AstraZeneca had not met its burden on a motion to strike and that its argument would be more properly raised by a defence. The fundamental issue is whether AstraZeneca demonstrates that it is plain and obvious that Apotex's claim discloses insufficient material facts to support a cause of action under s. 8 of the Regulations. AstraZeneca also alleged that the Prothonotary erred in two respects: 1) in improperly reversing the burden on the parties by not obliging Apotex to plead the elements of a s. 8 cause of action; and 2) in misinterpreting the Regulations.
Held: Motion dismissed. As held by the Prothonotary, Apotex has pleaded sufficient material facts to support a cause of action pursuant to s. 8. AstraZeneca has not established an error that undermines this decision. Apotex has also pleaded material facts to establish the legal conclusion for consideration that Apotex is a second person under the Regulations. AstraZeneca failed to establish a deficiency in Apotex's pleading. The Prothonotary's order did not reverse the burden; it simply determined that Apotex's claim was sufficient and that AstraZeneca could plead its own set of material facts. The Prothonotary's decision that it was inappropriate to come to a final conclusion as to the interpretation of s. 8 is well supported by the jurisprudence. “Regulations in respect of second persons are, yet, to be determined as to what second persons have a right to avail themselves, subsequent to a determination as to which party is, in fact, a second party.” The interpretation of the law in regard to s. 8 is at an "embryonic state"; the Court has been hesitant to strike out s. 8 claims at the pleadings stage and has held that matters of interpretation should be deferred to trial. By pleading that the patent in issue was listed on the Patent Register and prevented Apotex from receiving a NOC, and that AstraZeneca commenced a prohibition proceeding against it in respect of that patent, Apotex pleaded material facts in support of its conclusion that it was a "second person". Since AstraZeneca's arguments that Apotex is not a "second person" relate to the interpretation of s. 8, they should be reserved for trial.
4. Abbott et al. v. Minister of Health and Apotex, July 17, 2007, 2007 FC 753 (O'Reilly J.) Prohibition Application/ Invalidity/ Anticipation/ Obviousness/ Hoffmann Principle/ Patented Medicines (Notice of Compliance) Regulations
Application by Abbott for an order to prohibit the Minister from issuing a NOC to Apotex until two of its patents, which describe two forms of clarithromycin (Form I and Form II), expire. Apotex alleged that Abbott's patents are invalid on the basis of anticipation, obviousness, double patenting, inutility and insufficiency. Abbott asserted that its '729 patent contains a valid claim to Form I of clarithromycin when prepared in the prescribed manner. Abbott further argued that a hypothetical patent for Form I would be valid because, although Form I had been disclosed in earlier publications, the disclosure was not enabling. Apotex argued that the claim for Form I is invalid because it was a known product. Relying on the Hoffmann principle, Apotex argued that one cannot obtain a valid patent for an old product even if the product is made by a new process (which Apotex also disputes). With regard to the '102 patent, Abbott argued that while the properties of clarithromycin and the existence of Form II were known, no one had recognized that Form II could be used as an antibiotic. Apotex argued that the use of Form II as an antibiotic was obvious.
Held: Application dismissed. The '729 patent for Form I is invalid even if it was produced by a novel process because Form I is an old product. Numerous prior art sources contained sufficient information to enable skilled workers to make Form I; the fact that they would not have known that they had made that particular form of clarithromycin is, according to a recent FCA decision (2007 FCA 153) which applied the Hoffmann principle, "legally irrelevant" given that well established analytical techniques would have disclosed the presence of Form I if such techniques were employed at the appropriate time. The '102 patent is invalid. Apotex provided evidence showing that the use of Form II as an antibiotic was obvious in light of the prior art. There is nothing in the '102 patent that supports Abbott's contention that the use of Form II as an antibiotic was an aspect of the invention. Abbott has not shown that it discovered any particular therapeutic characteristics of Form II or any other properties that would make it useful as an antibiotic.
5. Biovail et al. and Glaxosmithkline v. Minister of National Health and Welfare and Sandoz, July 23, 2007, 2007 FC 767 (Stinson, Assessment Officer) Costs Assessment/ Reasonableness/ Column III/ Settlement Offer/ Double Costs/ Disbursements/ Expert Costs/ Patented Medicines (Notice of Compliance) Regulations
Costs assessment following Biovail's unsuccessful application for an order prohibiting the Minister from issuing a NOC to Sandoz. The main issues were: i) appropriateness of a written disposition for costs assessment; ii) reasonableness of the Column III costs claimed by Sandoz; iii) whether double costs were warranted; and iv) level of disbursements for the Respondent's experts. Biovail argued that oral cross-examination was needed to expose the unreasonableness of the amount claimed for one of Sandoz's experts (Dr. Celik) and further argued that Dr. Celik's evidence was simply a duplication of evidence provided in previous proceedings. Sandoz argued that Column III costs were reasonable given the importance and complexity of the legal issues. Biovail argued that the lack of evidence supporting counsel fees suggested that the work performed was likely minimal. Sandoz claimed double costs (counsel fees) based on Biovail's rejection of their settlement offer. Biovail argued that Sandoz was merely attempting to manipulate the process to obtain double costs by seeking capitulation under the guise of a settlement offer. Sandoz justified its disbursements on the basis that the matter involved complex patent issues requiring written expert evidence for resolution. Biovail argued that Sandoz's proof was insufficient and that the legal tests cited by Sandoz could not be satisfied based on the vagueness of Dr. Celik's time descriptions and the fact that the activities claimed were ones that an expert in a particular field of study should not have to perform.
Held: Sandoz's bill of costs was reduced. Oral examination of an expert from trial before an Assessment Officer is not generally necessary to expose problems with the expert's account. The exact amount of time taken for a task does not always reflect the reasonably necessary time to complete it. Although the issues were not novel, the underlying materials were detailed and required careful attention. Cross-examinations of experts during NOC proceedings are key. Since Biovail refused an unrevoked settlement offer and then failed to obtain judgment, double costs were awarded. Costs found reasonable in a prior proceeding should not determine what is reasonable in a subsequent proceeding. Experts may provide technical assistance in areas of case preparation beyond the capacity of supervising counsel; however, such work should not stray into areas for which supervising counsel are responsible. Biovail could not presume that Dr. Celik's work in prior proceedings could be transplanted to the present matter. However, Biovail should not have to bear Dr. Celik's costs for educating himself. In assessing the reasonableness of Sandoz's experts' accounts, the Assessment Officer considered the Judge's reliance on the expert's testimony. Sandoz had asserted a defence with two parts; if the Judge did not accept the first part (i.e. non-infringement) then Sandoz would assert the second part (i.e. invalidity). That the Judge accepted the first defence and did not decide on invalidity does not mean that case preparation of the second part of the defence was not prudent and reasonably necessary. It was irrelevant that Dr. Celik's bill constituted a considerable percentage of the overall costs if his technical assistance was essential, unless his charges are demonstrably exorbitant.
6. Abbott and Tap Pharmaceuticals et al. v. AG Canada and Minister of Health, July 31, 2007, 2007 FC 797 (Simpson J.) Judicial Review/ Patent Register/ Section 4(3)(c)/ Eligibility/ Old and New Regulations/ Patented Medicines (Notice of Compliance) Regulations
Application for judicial review seeking an order to quash the Minister's decision to remove the '053 patent ("Patent") from the patent register ("Register"). The Patent relates to the methods for producing lansoprazole crystals and use of the crystals in the treatment of ulcers. On July 20, 2006, the Applicants submitted a patent list for the purpose of listing the Patent on the Register in relation to a SNDS for the use of lansoprazole in the treatment of NSAID ulcers; the Patent was added to the Register on July 25, 2006. In February 2007, the Minister de-listed the Patent. The Minister stated that it did not satisfy the amended eligibility requirements under the Regulations since it did not expressly contain a claim to the changed use as required by s. 4(3)(c) of the New Regulations and also because the Patent claimed a polymorphic form of the drug in contravention of the Regulatory Impact Analysis Statement for the New Regulations. The issues in dispute were: i) whether the Minister had authority to delete the Patent from the Register; and ii) whether the Patent meets the eligibility requirements in s. 4(3)(c) of the New Regulations.
Held: Application allowed. The Patent meets the eligibility requirements of s. 4(3)(c) of the New Regulations and should not have been removed from the Register. However, Simpson J. held that the Minister had authority under the New Regulations to delete the Patent in the course of maintaining the Register. It was not necessary for the Patent to expressly claim the treatment of NSAID ulcers since s. 4(3)(c) of the New Regulations only requires that a patent "contain" a claim for the new use in order to be eligible to be listed on the Register. It is consistent with expert evidence to conclude that the Patent is eligible because it includes a claim to the new use of lansoprazole to treat NSAID ulcers. The fact that the Patent includes claims for the polymorphic form of lansoprazole does not disqualify it for listing under s. 4(3)(c) of the New Regulations.
7. Ratiopharm v. Wyeth et al. and Minister of Health, August 1, 2007, 2007 FCA 264 (Nadon, Sharlow, Ryer JJ.A.) Appeal/ Motion to Dismiss/ Prohibition Application/ Section 6(5)(a)/ Patent Listing/ Supplementary New Drug Submission/ Patented Medicines (Notice of Compliance) Regulations
Appeal by Ratiopharm of the dismissal of its motion to dismiss a prohibition application commenced by Wyeth on the basis that Wyeth's '778 patent ("Patent") is not eligible for listing in respect of Effexor XR. Cross-appeal by Wyeth to set aside an order requiring the Minister to de-list the Patent in relation to four NOCs. Wyeth had the Patent listed in respect of Effexor XR on the basis of six SNDSs. The Judge found that two of the six SNDSs could support the listing of the Patent as he could not find that the Minister had made a palpable and overriding factual error in finding the requisite relationship and considered himself bound to conclude that the requisite relationship exists. The Judge also ordered that the Patent be de-listed in relation to the other four SNDSs. Ratiopharm argued that the Judge erred in law in deferring to the Minister's listing decisions rather than making his own determination as to whether the Patent was eligible for listing. The issue in this appeal is whether the prohibition application should be dismissed without a hearing on the merits on the basis that the Patent is not properly listed on the patent register ("Register").
Held: Appeal and cross-appeal allowed. None of the SNDSs upon which Wyeth relied to list the Patent were capable of supporting listing on the Register. Ratiopharm's motion should have been allowed and the prohibition application should have been dismissed. A motion under s. 6(5)(a) of the Regulations entails no standard of review of the Minister's decision. It is a judicial decision as to the sufficiency of the relationship between an innovator's application to list a particular patent and the NDS or SNDS upon which that application is based. In a motion under s. 6(5), the Judge may hear new evidence that was not before the Minister; the fact that the Minister concluded that the Patent was eligible for listing is not relevant. The fact that a SNDS is substantive in the sense that it may have implications for the safety or effectiveness of the drug says nothing about whether the SNDS is one that can support a patent listing. The portion of the order that requires the Minister to de-list the Patent was set aside since Ratiopharm had not asked for this remedy in its motion. Wyeth and the Minister were not given notice that the Judge was considering making that order and had no opportunity to make submissions in that regard.
8. Abbott and TAP Pharmaceuticals v. Minister of Health, Apotex and Takeda Pharmaceutical, August 3, 2007, 2007 FC 817 (Harrington J.) Appeal/Leave to File Additional Affidavits/Federal Court Rule 312/Section 7 Canada Evidence Act/Patented Medicines (Notice of Compliance) Regulations
Appeal by Abbott from a Prothonotary's order refusing leave to file one additional affidavit pursuant to Federal Court Rule 312 in reply to an affidavit filed by Apotex. Apotex's expert affidavit offered an opinion as to what an abstract by Dr. Unge teaches ("Unge Abstract"). Abbott argued that Apotex's expert went far beyond the allegations in the NOA and moved to file an affidavit from Dr. Unge explaining the Unge Abstract. Abbott argued that the Prothonotary's decision was derived from a wrong principle since neither party raised s. 7 of the Canada Evidence Act in their written submissions before the hearing.
Held: Appeal dismissed. The Prothonotary's order was not, nor could it have been, vital to the final issue, thus it follows that her order stands unless clearly wrong. The Prothonotary considered s. 7 of the Canada Evidence Act during the hearing. There is a four part conjunctive test that must be considered in exercising discretion to allow filing of additional evidence pursuant to r. 312: a) whether the further evidence serves the interests of justice; b) whether the further evidence will assist the Court; c) whether granting the motion will cause substantial or serious prejudice to the other side; and d) whether the evidence was not available or could not have been anticipated as being relevant at an earlier date. The Prothonotary did not misdirect herself. The issues raised in Apotex's expert's affidavit should have been anticipated as they did not go beyond the NOA. In the alternative, should it be that the Prothonotary's order was clearly wrong because discretion was based upon a wrong principle of law or misapprehension of the facts, de novo discretion would be exercised. Dr. Unge's affidavit is based on what his intended purpose was in carrying out the study and what it stands for. The Abstract speaks for itself; it is not what the author intended but what he said which contributes to the state of the art. Abbott may make representations as to what the Unge Abstract means, but does not require Dr. Unge's affidavit to do so.
9. Sanofi-Aventis et al. v. Laboratoire Riva and Minister of Health, August 10, 2007, 2007 FC 832 (Aalto P.) Motion to Strike/ Notice of Application/ Section 6(5)(b)/Standing/ Deficiency/Cross-referenced NOC Submission/ Inducement or Procurement of Infringement/ Patented Medicines (Notice of Compliance) Regulations
Motion by Riva to strike out all or part of Sanofi's NOA pursuant to s. 6(5)(b) of the Regulations. Sanofi sought an order prohibiting the Minister from issuing a NOC to Riva for ramipril despite Riva's allegation that it intended to use ramipril only for its "old" use. Sanofi argued that: 1) Riva has no standing to deliver a NOA because it is a privy of Pharmascience; 2) Riva cannot get a NOC unless and until another generic, Pharmascience, obtains a NOC since Riva's submission is cross-referenced to Pharmascience's submission; 3) Riva's NOA is deficient; and 4) Riva's allegations of non-infringement are not justified because patients will infringe the patents and Riva will be connected to this infringement. Sanofi also argued that s. 6(5) is an "all or nothing regime" and does not permit the Court to dismiss or strike out portions of the NOA.
Held: Motion granted in part. The NOA is akin to a pleading; the Court has jurisdiction under the Regulations to dismiss specific grounds or issues raised. Riva and Pharmascience are not privies; this issue arose in previous proceedings and should not be re-litigated. The Minister expressly stated that Health Canada no longer required Riva's NOC to be dependent on Pharmascience's submission being approved; this issue is also res judicata as it was dealt with in a previous proceeding. Riva's NOA is not deficient; Sanofi knows the case it has to meet. The issue of infringement is contentious and should not be struck. It is not "plain and obvious" that the allegation of inducement or procurement of infringement has no possibility of success. Sanofi led specific evidence relating to the use of price and exclusive supply contracts by Riva to compel the use of Riva's ramipril product.
10. Solvay Pharma and Altana Pharma v. Apotex and Minister of Health, August 28, 2007, 2007 FC 857 (Blais J.) Leave to File Reply Affidavit Evidence/ Federal Court Rule 312/ Patented Medicines (Notice of Compliance) Regulations
Motion by Solvay and Altana seeking leave to file supplemental reply evidence pursuant to r. 312 of the Rules in a prohibition proceeding.
Held: Motion dismissed. In an application under the Regulations supplemental affidavits should be allowed only in very limited circumstances and cannot be used to introduce additional legal arguments. Even though the applicants are right in arguing that the interests of justice are better served if the Court has all the relevant information before it, this must be done pursuant to the rules and there are limits. One set of documents that the applicants are seeking to file does not constitute affidavit evidence and are rejected on the ground of hearsay. With respect to the other set of documents, they are of a detailed scientific nature and the fact that they were not filed nor commented on by an expert leaves doubt as to their impact or relevance on the case. Additionally, given the time constraints, Apotex could be prejudiced if the documents are filed.
11. Abbott and Tap Pharmaceuticals v. Minister of Health, Novopharm and Takeda Pharmaceutical, August 29, 2007, 2007 FC 865 (Hugessen J.) Rule 51/ Appeal/ Prothonotary's Order/ Eligibility/ Patent Register/ Costs/ Patented Medicines (Notice of Compliance) Regulations
Proceeding involving two r. 51 motions: (i) motion by Abbott appealing the Prothonotary’s decision allowing Novopharm’s motion to strike and dismissing Abbott’s prohibition application under the Regulations; and (ii) motion by Novopharm appealing the Prothonotary’s decision to grant Takeda’s costs on the motion to strike. Takeda is the owner of the ‘753 patent. TAP Pharmaceuticals is a joint venture between Takeda and Abbott to sell lansoprazole in Canada. Novopharm served Abbott with an NOA alleging it would not infringe the ’548 or ‘741 patents. Abbott was granted an order, which was upheld on appeal, prohibiting the Minister from issuing a NOC to Novopharm. Subsequently, the ‘753 patent was added to the Register for the reference product. Novopharm served another NOA alleging that it would not infringe the ‘753 patent and Abbott brought another prohibition application. Novopharm responded with a motion to dismiss the application and succeeded on the grounds that the ‘753 patent was not eligible for inclusion on the Register because it did not contain a claim for the medicine itself or a claim for the use of the medicine. The Prothonotary also awarded costs to Takeda for appearing to defend itself against allegations that Novopharm later abandoned. In the first motion, Abbott argued that the Prothonotary erred in construing a claim of the ‘753 patent as a delivery system and not as a claim to the medicine itself. In the second motion, Novopharm argued that the Prothonotary misapprehended the facts and misapplied the law in concluding that Takeda should have its costs.
Held: Appeals dismissed. The Prothonotary acted accordingly in construing the claims and deciding which of the parties' views, in the face of conflicting expert evidence, was more convincing on a balance of probabilities. The Prothonotary displayed a thorough grasp of the proper principles of patent claim construction and performed his analysis by reference to the disclosure and the expert evidence before him without allowing himself to be held prisoner by the latter. After reviewing the Prothonotary’s reasons, Hugessen J. held that the Prothonotary’s decision on costs was proper and that there was no basis for him to interfere.
12. Rivard Instruments v. Ideal Instrument, August 29, 2007, 2007 FC 870 (Hugessen J.) Summary Judgment/Conflicting Experts
Motion by defendant for summary judgment. The plaintiff holds a patent for magnetically detectable cannula, used in the meat packing industry. The claim at issue is a claim for cannula composed in part of ferritic stainless steel. The defendant moved for summary judgment stating that the cannula is not made of ferritic stainless steel but of duplex stainless steel. The plaintiff's expert witness and the defence's expert witness disagreed on the definition of ferritic steel.
Held: Motion dismissed. Given the conflicting expert evidence, this is a classic example of a case that must go to trial.
13. Ferring v. The Minister of Health, Apotex, and Novopharm; Sanofi-Aventis Canada v. Minister of Health, AG Canada and Apotex; and Sanofi-Aventis Canada v. Minister of Health, AG Canada and Novopharm, September 6, 2007, 2007 FCA 276 (Richard, Sexton, Sharlow JJ.A.) Appeal/ Judicial Review/ Patent Register/ Abbreviated New Drug Submission/ Standard of Review/ Patented Medicines (Notice of Compliance) Regulations
Appeals by both Ferring and Sanofi from judgments of Hughes J. disposing of applications for judicial review of decisions of the Minister resulting in the issuance of NOCs to the respondents to manufacture and market generic versions of certain drug products. The appellants argued on a number of grounds that the Minister was wrong to issue NOCs to Apotex and Novopharm without first requiring them to address certain patents listed on the patent register after filing their respective ANDSs.
Held: Appeals dismissed. The decisions of Hughes J. are agreed upon by this Court save for his alternative basis for dismissing the application of Ferring, in which he found that Ferring did not have standing to bring its application. Ferring did have standing to challenge that decision because it was made by the Minister in the course of administering the Regulations. This finding does not alter the outcome since the application of Ferring was dismissed on the merits. The standard of review to be applied in an application for judicial review of a determination by the Minister that a generic drug manufacturer is not required to address a particular patent under the Regulations is correctness for questions of law, and patent unreasonableness for questions of fact. Where there is a mixed question of law and fact, the standard of review is patent unreasonableness unless the question of law is extricable from the question of fact in which case the question of law is determined on the basis of correctness.
14. David Deck Rendina v. AG Canada et al., September 13, 2007, 2007 FC 914 (de Montigny J.) Reinstatement Payment/Patent Rule 6.1
The applicant (Rendina) is seeking judicial review of a decision of the Commissioner of Patents in which the Commissioner refused to accept payment of the patent application maintenance and reinstatement fees during the one-year reinstatement period. The applicant is the owner and inventor of the patent application in question. After preparing and filing the application, he appointed a patent agent. The annual maintenance fee that was due was not paid by either the agent or the applicant, and the application was therefore deemed abandoned on April 4, 2005. During the one year reinstatement period, the applicant wrote a letter to the Commissioner requesting the reinstatement of the application and authorizing the payment of the fees from his credit card. Those payments were received and processed by CIPO. However, on March 31, 2006, the applicant was advised by CIPO that while an application is pending the fee to maintain the application may only be paid by the authorized correspondent. After the expiration of the one year period, the patent agent wrote a letter to CIPO seeking reconsideration of the rejection, and authorizing the payment of the fees. CIPO reiterated its position to refuse payment by the applicant based on r. 6(1) of the Patent Rules.
Held: Application dismissed. Both parties agreed that the appropriate standard of review is the correctness standard, as the issue at hand was a question of law. The applicant cited various sections of the Patent Act (27.1(1) and 73(3)) where it is stated that the applicant may pay reinstatement fees. The applicant's position was that, because of these provisions, the opening words of r. 6(1) ("Except as provided by the Act or these Rules") would allow the applicant to apply for reinstatement himself. The Court held that the problem with this interpretation was that it would strip r. 6(1) of its meaning and render it superfluous; the Commissioner therefore did not err in refusing to accept payment.
(b) Trade Marks
1. Maison Cousin v. Cousins Submarines, December 14, 2006, 2006 FCA 409 (Pelletier, Nadon, Létourneau JJ.A.) Opposition Appeal/Confusion
Appeal from Trial Division decision that found that there was not a likelihood of confusion between the mark MAISON COUSIN as registered for bread, pastries, cooked meat, salads, sandwiches, candies, chocolate, etc. and COUSINS as applied for in association with sandwiches, namely submarine sandwiches, beverages, namely carbonated beverages, coffee, milk and ice tea and restaurant services.
Held: Appeal allowed. The Trial Judge made errors of law and palpable and overriding errors with respect to questions of mixed law and fact. His conclusions that the wares sold by each party are essentially very different and that they were not sold through the same commercial networks were incorrect. Both parties’ wares are food products which are very similar and which are commonly found in the same vicinity; any distinction between them is not sufficient to prevent confusion. Moreover, confusion can occur even if the wares are not of the same general class. The Judge was wrong to compare the respondent’s present way of operating with that of the appellant since the application does not restrict in any way the channels of trade which may be employed to distribute the wares. The Judge also erred in not according considerable weight to the factor of the distinctiveness of the two marks; the appellant’s mark has acquired distinctiveness through decades of use whereas the respondent’s mark has no distinctiveness, inherent or acquired.
2. Remo Imports v. Jaguar Car, July 18, 2007, 2007 FCA 258 (Décary, Létourneau, Trudel JJ.A.) Section 18/ Section 22/ Damages/ Passing-off
Appeal and cross-appeal from Trial decision that, inter alia, expunged Remo’s registration and issued a permanent injunction against Remo regarding use of JAGUAR.
Held: Expungement and injunction maintained, despite several errors by the Trial Judge. Overall, the Court noted that the Trial Judge’s use of loose language did nothing to improve a matter that had been rendered unduly complex by the litigants.
The Trial Judge erred in finding that s. 22(1) is a ground of invalidity. He also erred in ordering expungement based on prior use, because the limitation period in s. 17(2) had run. Also, there was no basis for the Trial Judge to find that Remo’s registration was void ab initio. As its registration was an absolute defence to an action in passing-off, damages cannot be claimed for the period of time preceding the expungement order. Damages are not awardable pursuant to the s. 22 cause of action because, although there may have been a linkage between the parties’ marks in the mind of the somewhat hurried consumer, there is insufficient evidence to establish a likelihood of depreciation of Jaguar’s mark.
Remo initially claimed that Jaguar was infringing its mark. It dropped its infringement action shortly before the hearing of the appeal, but that does not prevent the Court from relying on the facts adopted by Remo to the detriment of Remo.
An appellant cannot raise arguments at the hearing of an appeal that were not raised in the Notice of Appeal or Memorandum of Fact and Law.
3. Budget Blind Service and Mark Reynolds v. Budget Blinds, July 31, 2007, 2007 FC 801 (Simpson J.) Section 57 Expungement/Confusion/Distinctiveness
Application to expunge the respondent’s trade mark registrations for BUDGET BLINDS on the basis of invalidity. The applicant argued that there was a likelihood of confusion and that the respondent’s mark lacked distinctiveness.
Held: Application dismissed. Although the applicant claimed that it was using BUDGET BLINDS when the respondent applied to register that mark, the evidence only showed that the applicant used Budget Blind Services and Budget Blind Cleaning. These are weak names so small differences will serve to distinguish them from similar marks. The applicant’s business is primarily the repair and cleaning of blinds whereas the respondent’s business is primarily the retail sale and installation of blinds. The respondent’s franchisees travel to customer’s home to offer their services, which the Court assumed indicated that a prospective purchaser will not be in a hurry when purchasing the respondent’s wares and services. Thus the Court concluded that confusion was unlikely because of the differences in the names/marks being used, the differences in the associated businesses, and the manner in which the respondent carries on business. Regarding the second basis for expungement, the evidence filed by the respondent concerning its promotion and use of its marks showed that its marks had acquired distinctiveness.
4. Sun World v. Parmalat Dairy, August 28, 2007, 2007 FC 861 (Harrington J.) Amendment of Statement of Opposition on Appeal/Section 56/Trade-mark Rule 40/Federal Court Rule 75
Appeal from Prothonotary’s decision that refused to allow a statement of opposition to be amended in an opposition appeal. The appellant (Parmalat) wishes to add a ground of opposition pursuant to s. 22, on the basis that the application of this section was broadened as a result of a recent SCC decision.
Held: Appeal dismissed. The Court held that an appellate court has the jurisdiction to grant leave to amend the pleadings in the court or tribunal below, notwithstanding that that court or tribunal has already rendered a decision on the merits. Exercising this discretion de novo, the Court held that leave to amend should still be denied; in so doing the Court expressed concern that parties might save new issues for appeal. “Although there may possibly be circumstances in which a new issue may be introduced in a section 56 appeal, supported by an amendment to the original pleadings, this is not one of them.”
The Registrar cannot allow an amendment of a statement of opposition after she has issued a decision on the merits because she is then functus. It is therefore not possible for the Court to exercise such discretion, pursuant to s. 56 of the Trade-marks Act, on behalf of the Registrar. Nor does Federal Court Rule 75 enable the Court to grant leave to amend in these circumstances; to do so would necessarily reopen the hearing. Federal Court Rule 399(2) allows the Court to set aside or vary an order by reason of a matter that arose or was discovered subsequent to the making of the order, but s. 22 of the Trade-Marks Act “was not ‘discovered’ after the decision under appeal.”
(c) Copyright
1. Canadian Private Copying Collective v. Zei Media Plus et al., August 28, 2007, 2007 FC 858 (de Montigny J.) Contempt/Production of Documents/Private Copying Tariff
A show-cause contempt order was issued regarding the defendants’ failure to provide all of the requested documents in a timely fashion and to organize the documents “in such a way that the plaintiff can readily ascertain the amounts payable and the information required under the private copying tariffs.” Defendants argue that they did their best to comply with the Order but that 21 days was insufficient to retrieve all the materials.
Held: The defendants are in contempt of the Order. The evidence shows that the defendants have not taken the Order as seriously as they should have. They did not start collecting the materials immediately upon the issuance of the Order and waited for someone to return from vacation to take on the task. They did not attempt to retrieve the information by product codes and no satisfactory explanation was given as to why their computer software was not able to retrieve the documents in an efficient manner. The obligation imposed on the defendants should have been no surprise to them, as s. 9 of the Private Copying Tariff provides that “[e]very manufacturer or importer shall keep and preserve (…) records from which CPCC can readily ascertain the amounts payable and the information required under this tariff”. Whether or not they succeed on their argument that some of their products are not covered by the tariff, they need to be able to sort their records by product.
2. Setana Sport v. 2049630 Ontario et al., September 11, 2007, 2007 FC 899 (Hughes J.) Copyright Ownership
Motion for an interlocutory injunction to restrain each of the defendant sports bars from displaying on TVs certain European soccer matches, in which the plaintiff claims to own copyright.
Held: Motion dismissed because the plaintiff’s evidence as to copyright is defective. The plaintiff’s certificates of registration of copyright are defective on their face. They list a corporation as the author but an author must be a human being or a group of human beings. Also, it is clear that registration has been made in respect of works not yet in existence; a work has to exist before copyright can exist. In addition, neither the certificates, pleadings or evidence allege that the author was, at the date of making of the work, a citizen or subject of, or ordinary resident in, a convention country and, if the work was published then first published in that country.
(d) Practice
1. Sanofi-Aventis Canada et al. v. Apotex, September 12, 2007, 2007 FC 907 (Hughes J.) Abuse of Process/Motion to Strike/Motion to Stay/Valid Defences
Appeal by Apotex from an order of the Prothonotary staying portions of its counterclaim, and motion by Sanofi-Aventis to strike out certain paragraphs of Apotex's defence and counterclaim or, in the alternative, stay proceedings pursuant to those paragraphs. Sanofi-Aventis sued Apotex for infringement of a patent relating to the drug ramipril, licensed to Sanofi-Aventis. Apotex counterclaimed and added Ratiopharm as a party, alleging that the defendants-by-counterclaim were engaged in a conspiracy whereby a license was given to Ratiopharm to deal in ramipril on a generic basis and the license was structured so as to frustrate several of Apotex's aspirations, who had to bring ramipril to market without the benefit of a license.
Held: Appeal dismissed. Motion allowed in part. Apotex's appeal of the Prothonotary's order staying the proceedings against Ratiopharm was dismissed. Because Apotex had earlier commenced an action against the same parties in Ontario Superior Court, in which it made the same conspiracy allegations and sought the same relief, allowing the counterclaim as against Ratiopharm to continue would result in that party being "twice vexed" in the Federal Court and the Ontario Court, which would be an abuse of process.
The motion by Sanofi-Aventis to stay the counterclaim and to strike out parts of the defence was allowed in part. The counterclaim was stayed because it was duplicative of the already-commenced Ontario action. The relevant pleadings in the defence were struck out as they related to Sanofi-Aventis. These pleadings alleged unlawful conduct in contravention of the Competition Act. Hughes J. concluded that for such pleadings to provide a valid defence, the unlawful conduct must relate either to the acquisition of title to the patent or to a claim for equitable relief (or both). In this action, Sanofi-Aventis, as licensee, did not have title to the patent at issue and could not seek equitable relief (by virtue of s. 55 of the Patent Act, 1985).
2. Hyundai Auto Canada v. Cross Canada Auto Body Supply (West) et al., September 13, 2007, 2007 FC 918 (Hugessen J.) Amendment of Pleadings/Contempt/Implied Undertaking
Appeal from an order of the Prothonotary granting leave to Hyundai to amend its pleadings to add other defendants and denying a motion by Cross Canada Auto Body Supply to cite Hyundai for contempt of court for having used information obtained on discovery to amend its pleadings.
Held: Appeal dismissed. Hugessen J. held that while there is a common law undertaking of confidentiality that attaches to information and documents disclosed in the discovery process, it is not an improper or collateral use of that information to seek leave to amend the very action in which the discovery was conducted. Nor was it improper for the plaintiff to make use of and refer to the information and documents in its motion which it filed in the public record of the Court. Even if there was any breach of the implied undertaking, it was trivial and technical and was, in any event, entirely remedied once the Prothonotary had concluded that the amendment should be allowed.
3. Solvay Pharma v. Apotex and The Minister of Health, September 14, 2007, 2007 FC 913 (Snider J.) Appeal/Patented Medicines (Notice of Compliance) Regulations/Reply Affidavits/ Rule 312/Canada Evidence Act/Delay
Appeal by Solvay Pharma from the decision of the Prothonotary denying a motion to file reply affidavits. After being granted significant extensions of time, Solvay filed evidence consisting of affidavits from 12 expert witnesses, to which Apotex responded with affidavits from 10 expert witnesses. Solvay argued that in denying their motion to file a reply, the Prothonotary had erred by relying on the fact that they may have exceeded limits set out in the Canada Evidence Act; had misapprehended the facts in stating that there was a significant delay in bringing the motion; and had applied an incorrect test in requiring that the material in the affidavits be "necessary".
Held: Appeal dismissed. According to Federal Court Rule 312, the admission of additional evidence requires leave of the court. After reviewing the four-part test for admitting evidence set out in Eli Lilly and Co. v. Apotex Inc. (1997), 76 C.P.R. (3d) 15 (FCTD) and other cases, which requires that the additional evidence (1) serve the interests of justice (2) assist the Court in making its final determination, (3) not cause substantial or serious prejudice to the other party and (4) not be available prior to the cross-examination of the opponent’s affidavits, Snider J. concluded that the Prothonotary had applied the correct legal principles based on the facts of the case and in the context of an NOC application. With respect to the volume of evidence, which may have exceeded the limits of the Canada Evidence Act, the Court noted that the reference to the Canada Evidence Act by the Prothonotary was incidental and was not relied on in the decision. As such, there was no clear error in this regard. With respect to delay by Salvoy in bringing their motion, the Court held that it was not unreasonable for the Prothonotary to calculate the amount of delay as from the day Solvay was served with Apotex's expert affidavits to the day the motion record was filed (as opposed to the day of the Notice of Motion, which Solvay contended). Finally, the Court held that the Prothonotary did not err when she stated that her determination of the issue was in part based on whether the additional material was "necessary." While the term "necessary" does not correctly state the test, the Court held that when read in context, her use of the word could be interpreted as "shorthand" of the correct test to be applied and that an examination of her findings did not reveal that she misapplied the legal principles.
4. Eli Lilly v. Apotex, September 18, 2007, 2007 FC 929 (Harrington J.) Examination for Discovery/Interpretation of Orders/Extension of Time for Examination
Appeal by Eli Lilly from orders of Prothonotary allowing Apotex to proceed with examinations for discovery of the inventor and of Eli Lilly. Eli Lilly argued that Apotex was "out of time" to conduct these examinations because the Prothonotary had set deadlines which had not been respected. Specifically, Eli Lilly argued that the Prothonotary had incorrectly interpreted her own previous orders in granting further time for examination and that if she had read her orders together, she would have concluded that the deadlines had not been met. The Prothonotary noted that if she was wrong in her interpretation of her order regarding examination of Eli Lilly, Apotex should still be granted an extension of time under the test in Canada (Attorney General) v. Hennelly [1999] F.C.J. No. 846 (F. C.A.).
Held: Appeal dismissed. The orders under appeal are discretionary in nature and should not be disturbed unless the orders are based upon a wrong principle or upon a misapprehension of the facts. Whether two orders are to be read together, or if one supersedes the other, is a matter of construction and a court order should ordinarily be construed in the context of the application for it. A strict literal textual approach is not appropriate for an analysis of scheduling orders. The question should be whether the case manager's interpretation was reasonable, and in the interest of justice. The Court held that there was nothing in the record to indicate that the "Prothonotary got it wrong" and even if she had, Apotex would have still met the four-part test in Hennelly in order to be granted an extension of time to examine Eli Lilly: (a) was there a continuing intention to pursue the application? (b) does the application have some merit? (c) will prejudice to the respondent arise from the delay? (d) is there reasonable explanation for the delay?
5. General Motors Corporation v. Diabco International, October 3, 2007, 2007 FC 1007 (Hugessen J.) Costs/Solicitor and Client Basis/ Column V Tariff/ Defendant Misconduct
Costs award based on representations submitted by General Motors after being granted summary judgment against the defendants. The defendants were found responsible for importing counterfeit automotive parts into Canada, obstruction of an Anton Pillar Order, destroying evidence, employing misleading and delaying tactics, and giving misleading evidence. The defendants did not file representations.
Held: Costs award of $60,000 on an increased scale and on a solicitor and client basis. While the case was complex and detailed, no questions of law were presented of "more than ordinary difficulty." As such, the actual expenditure by the plaintiffs of over $160,000 was considered to be too high a figure. Conversely, the draft bill of costs submitted by the plaintiff, approximately $30,000 based on Column V of the Tariff, was considered to be too low, in light of the "outrageous character" of the defendants' conduct. Hugessen J. held that while not representing full indemnification to the plaintiffs, which is "rarely if ever achieved," the cost award properly reflects the almost criminal conduct of the defendants, their abuse of the plaintiff's property rights and delaying tactics in litigation.
II. OPPOSITION BOARD DECISIONS
1. Hola v. Telelatino Network, April 16, 2007 (Herzig) Confusion
Proposed-use application for HOLA for entertainment services, namely radio and television programming and broadcasting services, … calendars, posters, pens and pencils, and television program and entertainment guides. Opposition based, inter alia, on s. 12(1)(d) due to confusion with the opponent’s mark HOLA registered for “agendas, livres, revues, publications litteraires et artistique”.
Held: Opposition rejected. The parties’ wares and services are more different than they are alike and the opponent’s evidence did not lead to a conclusion that it is common for magazines to be associated with companion television shows. In addition, the opponent’s mark did not acquire a substantial reputation in Canada at any point of time.
2. Swanson Group v. John Thomas Black, April 18, 2007 (Bradbury) Confusion
Proposed-use application for MUSKOKA & Design for clothing, etc. Opposition based, inter alia, on s. 12(1)(d) due to confusion with the opponent’s mark MUSKOKA LAKES registered for clothing.
Held: Application refused. The Applicant did not meet its onus to show that there was not a reasonable likelihood of confusion between the two fairly similar marks as applied to the same type of wares.
3. Asset v. Park It & Sell It of Canada, April 18, 2007 (Bradbury) Section 30(b)/ Section 30(i)/ Non-existent Applicant/ Confusion/ Disclaimers/ Estoppel
Use-based application for PARK IT & SELL IT & Design for operation of a business designed to assist buyers and sellers of motor vehicles. Opposition based, inter alia, on s. 12(1)(d) due to confusion with the opponent’s mark PARK + SELL registered for operating a lot for the display of automobiles on private sale and s. 30(b) and (i).
Held: Application refused. The s. 12(1)(d) ground succeeded because the marks are very similar, as are their services and channels of trade, the applicant has not acquired any significant reputation in respect of its mark, and there is no evidence of peaceful co-existence in the same geographic area or common adoption of similar marks in this field. The marks must be considered in their entireties, regardless of any filed disclaimers. The s. 30(b) and (i) grounds succeeded because the applicant did not exist as of either the claimed date of first use or the filing of the application. The Board Member refused an estoppel argument raised by the Applicant.
4. Pronuptia de Paris v. Pronovias, April 19, 2007 (Carrière) Section 30(b)/Multiple Classes of Wares
Use-based application for PRONOVIAS & Design for ready-made wedding dresses; lace and embroidery, artificial flower adornments for hair nets. Opposition based, inter alia, on s. 30(b), namely that “the applicant at the time of filing the application was not using as stated the wares and services.”
Held: Application refused only with respect to lace and embroidery, artificial flower adornments for hair nets. During cross-examination, the applicant’s affiant was asked to produce the first invoice evidencing sale of each of the applicant’s wares in Canada and the number of units sold per year. Documents produced in reply related only to wedding dresses. The applicant argued unsuccessfully that the remaining applied-for wares are accessories to wedding dresses and that evidence of use with wedding dresses is sufficient to support all of the wares. The Board Member held that the use of a semi-colon in the list of wares indicated that there was more than one general class of wares.
5. Uniboard Surfaces v. Quickstyle, April 24, 2007 (Carrière) Confusion
Use-based application for LOCK N’ WALK for various floor covering products. Opposition based, inter alia, on s. 12(1)(d) due to confusion with the opponent’s mark LOCK ‘N SEAL registered for pre-glued laminate flooring.
Held: Opposition rejected. Both marks are weak and there is no evidence that either has acquired a reputation. Moreover, state of the register evidence supported the inference that marks incorporating “loc”, “lok” or “lock” are common in the relevant marketplace.
6. Instabox Canada v. Ibox Packaging, April 27, 2007 (Bradbury) Confusion/Relevance of Passing Off Action/Former Franchisee
Proposed-use application for IBOX for cardboard boxes, cardboard counter top display units and cardboard wall shelf units. Opposition based, inter alia, on s. 12(1)(d) due to confusion with INSTABOX & Design registered by the opponent for packaging materials, cardboard cases and containers.
Held: Opposition rejected. The applicant was formerly a franchisee of the opponent and while a franchisee, it promoted its telephone number as 604-522-ibox. The opponent argued that such advertisements irretrievably linked IBOX to the franchisor/opponent, but the Board Member found that the promotions which occurred almost 5 years ago were not likely to result in confusion as of the date of the decision. The outcome of a passing off action between the parties is not a significant factor in the analysis of the likelihood of confusion given the differences in the evidence, tests, onuses and material dates. The opponent’s evidence did not show use of its mark in association with its wares in accordance with s. 4. The opponent is clearly not entitled to monopolize the use of the word BOX in association with boxes and the like.
7. Unilever v. Superior Quality Foods, April 27, 2007 (Bradbury) Descriptiveness/
Laudatory
Use-based application for BETTER THAN BOUILLON for soups and soup bases. Opposition based, inter alia, on s. 12(1)(b). .
Held: Application refused. The s. 12(1)(b) ground succeeded because the mark is a laudatory description in that it clearly describes the applicant’s soups and soup bases as being “better than bouillon”. The Board Member rejected the applicant’s argument that the word BETTER is a comparative word, not a laudatory word.
8. Travis Wagner v. 604 Records, April 27, 2007 (Bradbury) Confusion
Proposed-use application for 604 RECORDS for pre-recorded compact discs featuring musical sound recordings and musical production services, etc. Opposition based, inter alia, on s. 16(3)(b) due to confusion with the opponent’s mark VIOIV 604 CLOTHING CO., which is the subject of a previously filed application for clothing. The opponent did not file any evidence.
Held: Opposition rejected. Confusion not likely given the inherent weakness of numerals, the differences between the parties’ marks and wares/services, and the lack of evidence and argument from the opponent.
9. Kellogg Canada v. Nature’s Path Foods, April 27, 2007 (Bradbury) Descriptiveness
Proposed-use application for POWER BREAKFAST for waffles, cereal-based food bars and breakfast cereals. Opposition based, inter alia, on s. 12(1)(b) because “power breakfast” clearly describes a breakfast food that provides energy and is often associated with business breakfasts and because recipes and menus feature power breakfast foods.
Held: Opposition rejected. There was no relevant evidence so the Board Member addressed the issue on a first principles basis. POWER BREAKFAST is not a defined term in dictionaries. The mark may suggest that the associated wares are a good source of energy at breakfast time, but that does not make it clearly descriptive of any character or quality of the wares. The first impression of the ordinary Canadian consumer would not be that the wares are intended for a breakfast “at which influential people discuss business or politics.”
10. Saputo Group Boulangerie v. Hollandia Bakeries, May 2, 2007 (Carrière) Confusion
Proposed-use application for GOOD2GO & Design for cookies. Opposition based, inter alia, on s. 12(1)(d) due to confusion with the opponent’s mark HOP & GO! registered for snack food and deserts.
Held: Opposition rejected. Confusion not likely because the degree of resemblance between the mark is so tenuous.
11. French Connection v. International Clothiers, May 3, 2007 (Bradbury) Confusion
Proposed-use application for F.H.U.K. for clothing. Opposition based, inter alia, on s. 12(1)(d) due to confusion with the opponent’s mark F.C.U.K. registered for clothing.
Held: Application refused. Confusion is likely since all of the surrounding circumstances favour the opponent.
12. Archmetal v. Jag Flocomponents, May 3, 2007 (Bradbury) Section 30(b)
Use-based application for FUSION for ball valves for industrial use and the design and manufacture of valves. Opposition based, inter alia, on s. 30(b) because the applicant is not a legal entity.
Held: Application refused. The opponent filed a NUANS search directed to the key components of the applicant’s name, which did not locate the applicant. Also, the opponent’s affiant attested that one of the companies with a name similar to the applicant was previously the opponent’s marketing agent and that he was unaware of any company with the applicant’s name. This satisfied the opponent’s initial burden and the applicant took no action to meet its legal burden.
13. J. Mavor Moore v. Labatt Brewing, May 9, 2007 (Bradbury) Distinctiveness
Proposed-use application for SPRING THAW for alcoholic brewery beverages, wearing apparel… entertainment services (not including stage performances, television performances, or radio performances). Opposition based, inter alia, on distinctiveness because the mark is not capable of distinguishing the applicant’s wares and services from the opponent’s SPRINGTHAW entertainment productions.
Held: Opposition rejected. The opponent did not meet his initial burden since he did not provide any exhibits to support his statements regarding use and reputation. There was no evidence that the opponent ever used SPRINGTHAW in accordance with s. 4.
14. UMA Group v. CIBA Specialty Chemicals, May 9, 2007 (Bradbury) Confusion
Proposed-use application for UMA for chemical products used in industry, namely flocculants …, treatment of materials, namely mineral processing, filtration, etc. Opposition based, inter alia, on s. 12(1)(d) due to confusion with UMA registered by the opponent for consulting and engineering services relating to transportation … water resources, pollution control, etc.
Held: Application refused. Confusion likely since the marks are identical, their applications and clientele overlap and the applicant filed no evidence.
15. Terumo v. Boston Scientific, May 11, 2007 (Bradbury) Confusion
Proposed-use application for CAPIO for apparatus for placing a suture. Opposition based, inter alia, on s. 12(1)(d) due to confusion with CAPIOX registered by the opponent for oxygenators, cardiotomy reservoirs, blood pumps, etc.
Held: Application refused. The applicant did not meet its initial burden regarding the issue of confusion. The applicant’s mark is not yet in use. The marks are used in the same industry and could be used during the same kind of surgery. The issue is not whether a surgeon is likely to confuse the two wares but whether as a matter of first impression the user may infer that the two products share the same source.
16. WaterGroup v. Darlene Van Pelt, May 14, 2007 (Herzig) Descriptiveness
Use-based application for SIMPLY PURE WATER for bottled water, installation, refilling and maintenance of systems for dispensing cooled bottled water, etc. Opposition based, inter alia, on s. 12(1)(b).
Held: Application refused. The mark is clearly descriptive since its plain meaning, as a matter of immediate impression, is an ellipse for “water without impurities or additives”.
17. Camiceria Pancaldi v. La Cravatte Di Pancaldi, May 14, 2007 (Carrière) Confusion
Use-based application for VITALIANO PANCALDI & Design for neckties, shaving kits, eyeglasses, refrigerators, watches, books, suitcases, ceramic tiles, furniture, etc. Opposition based, inter alia, on s. 12(1)(d) due to confusion with PANCALDI & Design registered by the opponent for clothing and cosmetics.
Held: Application refused only with respect to wares that “overlap” with those of the opponent, e.g. neckties, shaving kits, eyeglasses. In view of the resemblance between the marks, a consumer would think that such wares originate from the opponent.
18. Rust-Oleum v. Kpr Adcor, May 16, 2007 (Martin) Confusion
Use-based application for WE STOP RUST for corrosion inhibiting and removal chemicals and compositions, and operation of a business with respect to rust inhibiting services. Opposition based, inter alia, on s. 12(1)(d) due to confusion with STOPS RUST registered by the opponent for rust preventative paint and enamel surface coating compositions.
Held: Application refused. Confusion likely given the resemblance between the wares, services, trades and marks of the parties and the fact that only the opponent has evidenced that its mark has acquired a reputation.
19. Benefactor Funding v. Worldwide Legal Consultants, May 24, 2007 (Bradbury) Confusion/Use of Trade Name/Distinctiveness
Proposed-use application for BENEFACTOR FUNDING for financing services, accounts receivable and factoring services. Opposition based, inter alia, on s. 16 due to confusion with the opponent’s trade name BENEFACTOR FUNDING and on distinctiveness.
Held: Application refused under the distinctiveness ground; there was evidence that the opponent’s name had been exposed to a number of Canadian businesses as of the material date. The s. 16 ground failed because the opponent did not show use of its trade name in Canada in the normal course of trade; the documents in the opponent’s evidence that displayed the opponent’s trade name were not issued by it but were issued by its clients.
20. Francis and Virginia Mougey v. Kathryn Janzen, May 24, 2007 (Bradbury) Section 30(b)/Section 30(i)
Use-based application for GLACIER GOLD for hydrocarbon refrigerant, air conditioning system additives … chemical additives for use with internal combustion engine fuels and hydraulic systems, all of the foregoing specifically excluding lubricant grease for engines. Opposition based, inter alia, on s. 30(b) and (i). Regarding s. 30(i), the opponent claimed that the applicant was its distributor, whereas the applicant claimed that the opponent was simply the applicant’s private labeler.
Held: Application refused. The s. 30(b) ground succeeded with respect to some of the wares since the evidence contradicted the claimed date of first use. The s. 30(i) ground succeeded because the opponent’s evidence corroborated its view of the parties’ relationship better than did the applicant’s.
21. 933460 Ontario v. Never Quit, May 24, 2007 (Bradbury) Confusion
Proposed-use application for NQ Design for wearing apparel, etc. Opposition based, inter alia, on s. 16 due to confusion with the opponent’s mark N Design previously used for shirts, hats and camping equipment.
Held: Application refused. The applicant did not file any evidence and each of the s. 6(5) factors favoured the opponent.
22. Pernod Ricard v. Maple Leaf Distillers, May 27, 2007 (Carrière) Confusion
Proposed-use application for NORM’S WILDBERRY MOONSHINE & Design for alcohol containing fruit beverages. Opposition based, inter alia, on s. 12(1)(d) due to confusion with WILDBERRY registered by the opponent for distilled alcoholic beverag
