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


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.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

In association with
Related Topics
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of

To Use you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions