Actions
Final Amount for Section 8 Damages
Determined
Apotex Inc. v. Merck Canada Inc. and Merck
Frosst Canada & Co.
Drug: alendronate
The Court had previously provided a judgment, resolving a number of matters in
dispute between the parties with respect to the amount of
compensation to be paid pursuant to s. 8 of the NOC Regulations
(summary here). After consulting with their
accountants, one matter remained in dispute. In this decision, the
Court adjudicated that matter, which concerned deductions for
rebates, and finalized the judgment. The Court also provided
guidelines for determining costs and asked the parties to come to
an agreement on that sum.
Paragraphs in Statement of Claim Not Struck
Michael Kors LLC v. Beyond the Rack
Enterprises Inc.
This is the appeal of a Prothonotary's decision to refuse the
Defendant's motion to strike out paragraphs in the Amended
Statement of Claim for a trade-mark infringement suit, and to grant
the Plaintiff's motion for a further and better affidavit of
documents.
The Court confirmed that pleadings should not be struck unless it
is "plain and obvious" that it discloses no reasonable
cause of action. The Court held that it cannot be said that the
claim is so bereft of material facts that it could constitute a
fishing expedition. The Defendant's defences of grey market
goods and exhaustion of rights will be for the Defendant to prove
in the action. The Orders for further production and a
"Counsel's Eyes Only" provision in the Protective
Order were also upheld.
Other Cases of Interest
Decision to Remove Inventor from Patent Upheld on
Judicial Review
Bing Baksh v. Probiohealth, LLC
In this case, Mr. Bakash contended that he was wrongly removed as
a named inventor on a patent. In 2006, when CIPO asked for evidence
that Probiohealth was the legal representative of the inventors,
one inventor assigned his rights, while Baksh refused. Probiohealth
then removed those claims it thought were relevant to Mr.
Baksh's contribution. Mr. Baksh filed the removed claims as a
divisional. That divisional was originally refused, but upheld on
judicial review (summary here).
Probiohealth asked the Commissioner to remove Mr. Baksh as an
inventor and the Commissioner agreed. Mr. Baksh challenged that
decision on the basis that it was not supported by affidavit
evidence. That challenge was eventually settled. However,
Probiohealth then filed a second request to remove Mr. Baksh, this
time supported by an affidavit of the other inventor. The
Commissioner again removed Mr. Baksh. Mr. Baksh challenged that
decision by both appeal and judicial review in the within
case.
The Court held that only parties to the original decision can
appeal it. Thus, the proper course of action in this case is
judicial review. Furthermore, the Court held that only evidence
before the decision-maker can be considered on an application for
judicial review. Thus Mr. Baksh's affidavit from the previous
judicial review, and the subsequent cross-examination were not
considered. The Court held that the Commissioner was not estopped
from removing Mr. Baksh as an inventor due to the previous
settlement agreement, as in the previous case, it was clear that
the settlement was because there was no affidavit evidence, not
because the Commissioner was convinced that Mr. Baksh was an
inventor. Furthermore, the Court held there was no unfairness to
Mr. Baksh in not giving him an opportunity to make submissions in
response to Probiohealth's request. Finally, the Court held
that the Commissioner's decision was not unreasonable and
dismissed the application.
Appeal Relating to Cross-Examination of Affidavits Filed
Before TMOB Dismissed
The Devil's Martini v. Bacardi &
Company Limited
The Trade-marks Opposition Board (TMOB) allowed in part the
application of The Devil's Martini to register the trade-mark
THE DEVIL'S MARTINI in respect of specific goods. Bacardi
appealed the decision of the TMOB. The Devil's Martini brought
a motion for leave to cross-examine on affidavits that had been
filed by Bacardi in the proceeding before the TMOB. The
Prothonotary dismissed the motion based on his interpretation of an
agreement between counsel deferring cross-examinations. However,
the Prothonotary allowed a request for an extension of time by The
Devil's Martini to file additional evidence in Court. No
additional evidence was filed.
The Court dismissed the appeal of the Prothonotary's decision.
The Court of Appeal considered that the Court applied the correct
standard of review and dismissed the appeal. The Court of Appeal,
however, found that the Court erred in his consideration of the
appeal relating to a further extension of time to file evidence,
and the Court of Appeal allowed the appeal relating to the
extension of time, and set a date for the filing of evidence in the
Court by The Devil's Martini.
Other Industry News
The PMPRB has published Rules of Practice and Procedure in the Canada
Gazette II. They came into force the day they were
registered.
The Natural Health Products Directorate has published eleven newly proposed monographs and three revised
monographs for ingredients and is requesting feedback. The
consultation is open until January 3, 2013.
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.
