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

Edited by Chantal Saunders and Beverley Moore

Actions

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.

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.