Canada: Intellectual Property Weekly Abstracts Bulletin (Week Of December 10, 2012)

Last Updated: December 13 2012
Article by Chantal Saunders and Beverley Moore

Most Read Contributor in Canada, September 2016


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.

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.

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