The Best Defence Is A Good Offence: Gilead Invalidates Patent Threatening its SOVALDI Product
On November 2, 2015 Justice Annis released a 326-page decision holding that Canadian Patent No. 2,490,191 is invalid (2015 FC 1156). Gilead sells the antiviral drug sofosbuvir in Canada under the brand name Sovaldi, for use in combatting Hepatitis C virus (HCV). Gilead commenced an action to impeach the 191 Patent because the manufacture, use... Read More
Post-filing Amendments are Subject to Data Protection
In Hospira Healthcare Corporation v. The Minister of Health, Attorney General of Canada and Sanofi-aventis Canada Inc., Hospira was unsuccessful in its application for judicial review of a decision of the Minister refusing to issue a Notice of Compliance for its OXALIPLATIN FOR INJECTION product due the application of the data protection provisions of the... Read More
Stand on ENVIRO-GUARD; Tiger’s trade-mark opposition denied
In Tiger Calcium Services Inc. v. Compass Minerals Canada Corp., 2015 FC 1257, Justice McDonald upheld the TMOB’s decision to reject Tiger’s opposition to the registration of the trade‑mark ENVIRO‑GUARD, owned by Compass (formerly Sifto Canada). At issue was whether the ENVIRO‑GUARD mark was confusing with the marks CLEAR GUARD, ROAD GUARD PLUS, and NANUK... Read More
Time for a Change – Federal Court Confirms that it can Amend the Inventorship and Ownership of a Patent after it is Issued
On October 28, 2015 Justice LeBlanc released his judgment and reasons in Imperial Oil Resources Ltd. v. ExxonMobil Upstream, 2015 FC 1218, an application by Imperial and Upstream under section 52 of the Patent Act, for an order to vary the inventorship and ownership of Canadian Patent 2,740,481. The 481 Patent named 11 co-inventors and... Read More
Speed Queen mark suffers quick end – Trade-mark expunged on appeal
Alliance Laundry Systems LLC v Whirlpool Canada LP, 2015 FCA 232 In a decision from the bench, the Federal Court of Appeal allowed Alliance’s appeal and expunged Registration Number UCA15837 for the trade-mark SPEED QUEEN on the basis that the evidence in the underlying s. 45 proceeding was insufficient to prove use of the mark.... Read More
ABSOLUTE marks confuse absolutely
Absolute Software Corporation has operated under the trade-name ABSOLUTE SOFTWARE since 1993 and used its name as a common law mark. Since that time, it registered the following trade-marks in association with its software and services, including ABSOLUTE, and ABSOLUTE SECURE DRIVE. In November 2012, Valt.X, a start-up company that produces software that protects computers... Read More
Do ask, still don’t get – $2000 awarded on Bill of Costs seeking more than $400,000
Teva Canada Limited and Sanofi-Aventis Canada Inc have duelled over Teva’s generic ramipril product in various proceedings, including an NOC proceeding, an infringement action, and a counterclaim for s. 8 damages. Teva was successful in each of these proceedings. In Teva’s counterclaim for s. 8 damages, Teva alleged that Sanofi Germany exerted a degree of... Read More
BCFIT Trade-Mark Infringed and Passed Off, with a Side of Defamation
In British Columbia Recreation and Parks Association v. Zakharia [2015] BCSC 1650, Justice Funt of the British Columbia Supreme Court found the Defendants, John Zakharia and Jane Doe, liable for defamation, passing off, trademark infringement, injurious falsehood, breach of the Competition Act and conspiracy to injure. In addition to injunctive relief, Justice Funt awarded the... Read More
Unanswered Questions – Bard Successfully Avoids Answering Questions on Discovery
On October 16, 2015, Justice LeBlanc dismissed an appeal by W.L. Gore & Associates, Inc. and W.L. Gore & Associates Canada Inc. from an order of Prothonotary Morneau who had denied Gore’s request for certain answers to questions posed during discovery. In this action the Plaintiffs, Bard Peripheral Vascular, Inc. and Bard Canada Inc. have... Read More
Pay the wall – circumventing paywalls is copyright infringement
In 1395804 Ontario Limited (Blacklock’s Reporter) v. Canadian Vintners Association, 2015 CanLII 65885, Deputy Judge Lyon Gilbert of the Ottawa Small Claims Court found that the Defendants breached the Plaintiffs copyright by using a third party to circumvent the Plaintiff’s paywall. The Plaintiff was an electronic daily that provides news for subscription-only users. Commonly, the... Read More
Don’t Ask, Don’t Get – Costs on Motions in the Federal Court
On September 18, 2015, Justice Leblanc granted an appeal of a decision of Prothonotary Tabib awarding Eli Lilly costs on a motion for a Protective and Confidentiality Order. Apotex did not contest Lilly’s underlying motion for a Protective Order, and Lilly did not seek costs. Prothonotary Tabib granted the Protective Order, and directed each party... Read More
Cheers! Beer Company Successfully Defends Trade-mark in Expungement Application
On September 17, 2015, Justice Martineau of the Federal Court released the judgment and reasons in Pacific Western Brewing Company Ltd. v. Cerveceria del Pacifico, 2015 FC 1078. The case was an application for an expungement order respecting the trade-mark PACIFICO & design (which was filed in November 1987, registered in August 1990, and used... Read More
Minister’s Import Ban Against Apotex Enacted For Improper Purpose
On October 14, 2015, Justice Manson of the Federal Court released his judgment and reasons in Apotex’s judicial review of the Minister of Health’s import ban for products Apotex made at two of its Indian facilities (identified as APIPL and ARPL). Justice Manson concluded that the Minister acted with an improper purpose and quashed the... Read More
An Appeal is Mooted after Contested Trade-mark Application is Withdrawn
Engineers Canada, a national federation of provincial and territorial associations of professional engineers had its appeal of a decision of the Trade-marks Opposition Board rejecting its opposition to the mark POLARTEC ECO-ENGINEERING DESIGN by MMI-ICO LLC as moot. Engineers Canada opposed the mark pursuant to the Trade-marks Act, on the basis that MMI-ICO, which deals... Read More
Brochures and Invoices Demonstrate Evidence of Use
In Cameron IP v. Haldex AB, Cameron was unsuccessful in its appeal from a decision by a Hearing Officer of the Trade-mark Opposition Board which maintained, in part, the registration of a word mark for HALDEX (TMA 693,747) and a design mark for HALDEX (TMA 667,821). Cameron originally sought to expunge both marks pursuant to... Read More
Fight Over Factums: Ontario Divisional Court Grants Leave to Appeal From Decision Refusing to Approve a Class Action Settlement
In Waldman v. Thomson Reuters Canada Limited, 2015 ONSC 3843, Justice Swinton of the Ontario Divisional Court granted leave to appeal an order of Justice Perell, who had refused to approve a settlement of the proceeding/class counsel fees in the class action that was at issue in this proceeding. The case involved a certified class... Read More
University Professor Unable to Rely on Copyright Fair Use in Plagiarism Suspension
On July 15, 2015, Justice Bich of the Quebec Court of Appeal released her judgment in Syndicat des professeures et professeurs de l’Universite du Quebec a Montreal (SPUQ-CSN) c. Universite du Quebec a Montreal, 2015 QCCA 1256, an application for leave to appeal brought by the SPUQ-CSN. In February 2013, the University of Quebec in... Read More
Pot-shots from the sidelines not enough to disprove inherent anticipation
On June 15, 2015, Justice Barnes released his public Judgment and Reasons in a prohibition application involving Mylan and Canadian Patent No. 2,341,031 listed on the Patent Register against Takeda’s pantoprazole product, TECTA. The 031 Patent is generally directed to pantoprazole magnesium dihydrate. Mylan raised a number of invalidity allegations, but the case ultimately turned... Read More
No one is higher than the law – Headshop trade-mark infringer jailed for contempt
Hightimes Smoke Shop and Gifts, a headshop located in Niagara Falls, was previously ordered to pay $55,000 in damages and costs relating to trade-mark infringement and passing off regarding Trans-High’s registered trade-mark, HIGH TIMES. Hightimes was also permanently enjoined from selling, distributing or advertising any goods or services in association the HIGH TIMES mark. Despite... Read More
Inherent Distinctiveness Must Consider Potential Uses Of Marks, Not Merely Their Actual Uses
Constellation Brands Inc. and related companies appealed a decision of the Trade-Marks Opposition Board that rejected Constellation’s opposition under s. 38 of the Trade-marks Act. Constellation had opposed Domains Pinnacle Inc.’s attempt to register a trade-mark for in association with apple based alcoholic beverages and non-alcoholic apple based products such as sparkling and not sparkling... Read More
A Sheep In Wolf’s Clothing – Alleged Errors of Fact Should Not Be Dressed Up As Errors Of Law
The Federal Court of Appeal recently considered two competing appeals regarding patents listed on the Patent Register against Alcon’s moxifloxacin product, VIGAMOX. In the Application below, Justice Phelan dealt with three patents and held that Actavis’ allegation of obviousness in respect of Canadian Patent No. 2,342,211 was justified, whereas its allegations in respect of Canadian Patent No. 1,340,114 and 2,192,418 were... Read More
Court of Appeal Is Not The Place to Reargue Factual Findings
On September 16, 2015, the Federal Court of Appeal dismissed Actavis’s appeal from a judgment of the Federal Court prohibiting the Minister of Health from issuing a notice of compliance for Actavis’s generic VIGAMOX. In the decision below (2014 FC 462) Justice Phelan dealt with three patents, Canadian Patent Nos. 1,340,114, 2,342,211 and 2,192,418. The... Read More
Cleaning Up the Waste: Federal Court Invalidates Patent for Treating Waste Material from Mining Operations
On August 24, 2015, Justice Phelan held that Canadian Patent No. 2,515,581 is invalid for obviousness (2015 FC 997). This action involved only a challenge to the validity of the 581 Patent by SNF as CIBA’s counterclaim for infringement was settled during the course of the trial. The 581 Patent is generally directed to a... Read More
Absent Special Circumstances, Interlocutory Trademark Decision Not Subject To Judicial Review
McDowell applied for judicial review of an interlocutory decision of the Trade-Marks Opposition Board that had refused to grant McDowell leave to amend its Statement of Opposition to add a ground of opposition that was inadvertently omitted. The amendment was sought 4 years after its Statement of Opposition, and after Automatic Princess had filed its... Read More
Can’t have your steak and eat it too – expunging TM’s for deviated use
Justice Kane dismissed an appeal from the Registrar of Trade-Marks expunging Padcon’s trade-mark for “THE OUTRIGGER STEAKHOUSE AND BAR” pursuant to section 45 of the Trade-marks Act in Padcon Ltd. v. Gowling Lafleur Henderson LLP, 2015 FC 943. Padcon licensed the use of the trade-mark to Shoeless Joe’s but the only evidence of use of... Read More