The Court of Appeal (FCA) dismissed Merck's appeal of the
Federal Court's decision to grant damages to
Apotex pursuant to s. 8 of the NOC Regulations. Our
summary of the Federal Court's decision can be found here.
The FCA considered which version of s. 8 should apply to the
facts of the case and agreed with the Federal Court that
Merck's application was pending when the 1998 version of the
NOC Regulations came into force. Merck argued that it was
an appeal, not the application before the Supreme Court. However,
the FCA held that the Supreme Court had the power to give judgement
in the application, thus the application was still pending. As a
result, the 1998 version of s. 8 should apply.
The FCA also held that the purpose of the 1998 revisions was to
clarify the liability of patent holders. The meaning of the 1993
version of s. 8 was considered to be enigmatic and puzzling. They
provided for a "black box" of potential liability, and it
could not be said that Merck was certain of its potential liability
at the time it applied for prohibition in 1993. Thus, there was no
interference with vested rights.
Finally, the FCA held that the findings as to whether Apotex was
ready to come to market were factual determinations that could only
be overturned if there was palpable and overriding error. No such
error was found. Thus, the appeal was dismissed.
OTHER CASES OF INTEREST
Modifications to Registered Trade-mark Means Trade-mark not
This is an appeal of the decision of the Registrar of
Trade-marks (Registrar) to expunge the trade-mark LAZIZA &
Design (Trade-mark). In response to a notice from the Registrar
requiring Clic to file an affidavit establishing use of the
Trade-mark during the preceding three year period, Clic filed
samples of labels used. Clic admitted that the trade-mark used
differed from the Trade-mark as registered. In particular, the
trade-mark used did not include the design portion. The Registrar
found this design portion to be an essential feature and in light
of the modifications, the registered Trade-mark had not been
No additional evidence was filed on the appeal to the Court and
the standard was therefore determined by the Court to be one of
reasonableness. The Court concluded that the Registrar's
findings and decisions were not unreasonable. Specifically, the
Court agreed with the Registrar that the modifications made
departed from a "cautious variation" of the
The Federal Court dismissed a motion by Apotex seeking particulars from Allergan's pleading relating to the prior art, inventive concept, promised utility and sound prediction of utility of the patents at issue.
Last year we saw the Canadian Courts release trademark decisions that granted a rare interlocutory injunction, issued jailed sentences for failure to comply with injunctive relief, grappled with trademark and internet issues...
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