Canada: Intellectual Property Weekly Abstracts Bulletin - Week Of November 7, 2011

Last Updated: November 14 2011
Most Read Contributor in Canada, September 2016

Edited by Chantal Saunders and Beverley Moore


Statement of Claim Struck for Deficient Pleading of Infringement

Larry Bertelsen v. Automated Tank Manufacturing Inc.

The Defendant appealed an Order of a Prothonotary, allowing an amendment of a Statement of Claim. The Court reviewed the requirements for pleadings in a patent infringement action, and found that the paragraphs in the Amended Statement of Claim simply restated the claims of the patent in issue. The Court held that the pleadings are deficient, and that the Prothonotary erred in allowing the proposed amendments. The action was dismissed, with costs to the Defendant.

Motion for Summary Judgment Alleging Inutility Dismissed

Reinhard Delp v. Fresh Headies Internet Sales Ltd. et al.

The Plaintiff alleged patent infringement, and the Defendants raised a number of grounds of invalidity in defence. The Defendants brought the within motion, seeking summary judgment on the grounds of inutility.

The Court first noted that there was no evidence provided as to the understanding of a person skilled in the art of the claims. Accordingly, the Court was required to construe the claims without the aid of expert evidence. The Court found that the Defendants misconstrued the promise of the patent and that a person skilled in the art would be capable of optimally working the invention through routine trial and error. The Court held that even if wrong about the promise of the patent, the evidence was insufficient to warrant summary judgment.

Patent and Trade-Mark Infringement Action Dismissed

Hollick Solar Systems Ltd. and Conserval Engineering Inc. v. Matrix Energy Inc.

The Plaintiffs alleged patent infringement, trade-mark infringement, passing off and depreciation of the value of the goodwill in the registered trade-mark.

The patent infringement allegation turned on the determination of whether an element of the impugned claims is an essential element. Following the test set out in Improver Corp. v. Remington when addressing a variant, the Court found that the plaintiffs failed to meet their burden of proving, on a balance of probabilities, that the variant does not have a material effect on the way the system works. The Court then determined that a person skilled in the art would have understood that the variant in the Defendant's system would have a material effect, and that strict compliance was required. Accordingly, the Court found no infringement of the patent.

The Defendant distributed systems designed by the Plaintiffs pursuant to various Distributor Agreements for a period of time, but the Agreement was not renewed. The Plaintiffs alleged that the trade-mark remained on the Defendant's website, and in various publications beyond the end of the Agreement. The Court found that the trade-mark was used by the Defendant on three occasions, but this use was not to represent the Defendant's system as that of the Plaintiffs. The Court therefore found no infringement, no passing-off and no depreciation of goodwill.

Other Cases of Interest

Application to Expunge Trade-Mark Dismissed

McCallum Industries Limited v. HJ Heinz Company Australia Ltd.

The Applicant filed a Notice of Application, seeking to expunge the Respondent's trade-mark "OX & PALM". The Applicant has a registration for the trade-mark "PALM & Device".

The Court first considered the Respondent's argument that the Applicant is not a "person interested", as required by the Trade-marks Act. The Court noted that the Applicant must establish that it will be affected or reasonably apprehends that it may be affected by the impugned trade-mark. Further, the Applicant must show that it would suffer damage if the trade-mark remained on the Register. The Court held that there was no such evidence in the within case. However, the Court noted that the "person interested" threshold is low, and accordingly considered the Applicant's arguments supporting its request for expungement.

The Court considered whether the two trade-marks are confusing and after reviewing the factors in section 6(5) of the Trade-marks Act as well as additional circumstances, the Court concluded that any similarities between the two trade-marks were insufficient to support a finding of confusion. In response to the Applicant's argument that the OX & PALM trade-mark was not distinctive at the time the within application was commenced, the Court found that it was "adapted so as to distinguish". Accordingly, the Court dismissed the application.

Other Industry News

Health Canada released a Draft Guidance Document: Guidance Document for Clinical Trial Sponsors – Clinical Trial Applications.

About BLG

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

In association with
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.