Canada: Intellectual Property Weekly Abstracts Alert - Week Of December 19, 2011

Last Updated: January 2 2012

Edited by Chantal Saunders and Beverley Moore

ACTIONS
Action Dismissed and Trial Date Released Notwithstanding Pending Appeal
Teva Canada Limited v. Wyeth LLC and Pfizer Canada Inc.

In a previous decision, the Court granted the motion for a summary trial and held that Teva could not continue ratiopharm's claim for damages under section 8 of the NOC Regulations.

This is a motion by Wyeth and Pfizer to have the action dismissed and for directions as to costs. Teva argued that the action should not be dismissed yet and the trial date, currently set for the beginning of 2013, should be preserved as Teva has appealed the decision of the Court regarding the continuation of the action. The Court found that it may not be possible to complete the appeal process prior to the date scheduled for trial, and that other litigants are seeking trial dates. The Court therefore dismissed the action and released the trial date, but stated that the Order will include the right of the parties to apply for an expedited trial date if necessary. The Court awarded costs to Wyeth and Pfizer arising after the date of the merger between Teva and ratiopharm because ratiopharm had a valid cause of action prior to that date.

OTHER CASES OF INTEREST
Enantiomer Not Considered Innovative Drug Despite Extensive Clinical Data
Takeda Canada Inc. v. Minister of Health
Drug: DEXILANT dexlansoprazole

This is a judicial review of the decision of the Minister of Health (Minister), refusing to list DEXILANT on the Register of Innovative Drugs (Register). The medicinal ingredient in DEXILANT is an enantiomer of lansoprazole, which is contained in a marketed drug.

The Court noted that Takeda filed a New Drug Submission for the approval of its drug, containing extensive clinical trial data to establish the safety and efficacy of the product. The Minister refused to list the product on the Register on the basis that it did not meet the definition of "innovative drug".

The Court first determined that the proper standard of review is one of correctness because the primary issue is one of statutory interpretation. The Court found that enantiomers are one of the enumerated list of variations of a previously approved medicinal ingredient that is expressly set out as not meeting the definition of "innovative drug". The Court held that, where there is some doubt as to whether a medicinal ingredient is a variation, the data submitted for approval is a relevant factor to consider in determining whether it is an innovative drug. The Court found that it was proper for the Minister to determine that the drug is not an innovative drug because it contains an enantiomer without considering the nature of the data submitted in the NDS.

Decision to Dismiss Opposition Reasonable
Mövenpick Holding AG v. Exxon Mobil Corporation

This is an appeal of the decision of the Trade-marks Opposition Board (TMOB), dismissing the opposition by Mövenpick to Exxon's application to register "Marché Express" (Mark).

The Court first noted the appropriate standard of review. In particular, the standard of review is reasonableness, unless new evidence is submitted and considered to be material to the decision, in which case the Court must review all the evidence and reach its own conclusion.

The Court first considered whether the proposed Mark is clearly descriptive and found that the finding of the TMOB that it is not clearly descriptive was reasonable. The Court further concluded that the new evidence submitted by both parties merely shored up the decision of the TMOB. The Court then considered confusion. The Court reviewed the new evidence, and concluded that there is no likelihood of confusion. Finally, the Court determined that the new evidence relating to date of first use merely shored up the evidence before the TMOB, and the decision of the TMOB that there was no doubt raised about the veracity of this date was reasonable. The Court noted that the rules of evidence must reflect those that govern proceedings before the TMOB.

Pre-judgment Interest in Provincial Act Waived by Election of Statutory Damages
Society of Composers, Authors and Music Publishers of Canada v. IIC Enterprises Ltd. c.o.b. as Cheetah's Nightclub

This is an appeal, by ex parte motion, of a Prothonotary's decision awarding default judgment. In particular, SOCAN appealed the Prothonotary's refusal to award pre-judgment interest from the date on which SOCAN's cause of action arose. Pre-judgment interest was awarded from the date of the Statement of Claim to the date of judgment.

The Court found that the issue of pre-judgment interest is governed by the Federal Courts Act because the case proceeded in the Federal Court. The Court found that the Prothonotary's decision that SOCAN waived its rights to provincial licence fees and therefore pre-judgment interest on that amount by electing statutory damages under the Copyright Act was correct.

Appeals Dismissed in Trade-mark Case as no Palpable or Overriding Error
Shapiro Cohen v. Empressa Cubana Del Tabaco Trading Also as Cubatabaco

The Court allowed the appeals from two decisions of the Registrar of Trade-marks (Registrar), expunging two trade-marks. The Court of Appeal considered two issues: whether the Court erred in finding that Cubatabaco had demonstrated control over the quality or character of the wares so as to benefit from the licensee's use in Canada; and whether the Court erred in finding that the trade-mark registration included cigars and cigarillos.

The Court of Appeal noted that the first issue was essentially a challenge to the Court's application of the legal test to the facts of the case. The Court of Appeal did not find any palpable or overriding error in the Court's consideration of the evidence. With respect to the second issue, new evidence before the Court supported the Court's finding. The appeals were dismissed.

OTHER INDUSTRY NEWS

Health Canada published a draft Guidance Document: The Use of Foreign Reviews by Health Canada – update to Appendix 3.

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