Canada: Intellectual Property Weekly Abstracts Bulletin (Week Of December 17, 2012)

Last Updated: December 20 2012

Edited by Chantal Saunders and Beverley Moore


Impeachment Action in respect of Expired Patent Allowed to Continue
Apotex v. Warner-Lambert
Drug: quinapril

Apotex commenced an impeachment action in respect of two patents. Warner-Lambert brought a motion seeking to dismiss the action as it related to one patent on the basis that the patent had expired. The Motions Judge granted the motion. Our summary is here.

The Court of Appeal granted the appeal and dismissed the motion. Apotex argued that dismissal of the action as it relates to the one patent affects its ability to commence an action pursuant to the Statute of Monopolies of Ontario and in an action pursuant to section 8 of the NOC Regulations. In a previous decision, the Ontario Court of Appeal held that an action under this Statute was not bereft of any possibility of success and the Court of Appeal found no basis to take a contrary position.


Trade-Mark Expunged when Filed for Improper Purpose v. Hrdlicka

The Federal Court granted an application expunging a trade-mark from the Register. The Court held that a trade-mark which appears on a computer screen website in Canada, constitutes use and advertising in Canada under the Trade-Marks Act, regardless of where the information may have originated from or be stored.

In this case, the services of the parties were identical and the trade-marks are not just confusing, they are also identical. Since HomeAway used the trade-mark before the application to register the same mark was filed by Hrdlicka, Hrdlicka was not entitled to register the Mark. Furthermore, the Court held that Hrdklicka filed the application and secured the Mark for improper purposes.

Default Judgment for Trade-mark Infringement Granted and Damages Awarded
Driving Alternative v. Jarvis

This is an action for trade-mark infringement, passing off and depreciation of goodwill. The Plaintiff holds a registered trade-mark KEYS PLEASE, and the Defendant used the trade-mark KEYZ PLEEZZ. The Court held that the marks are identical from an auditory and connotational perspective. The Court also held that the nature of the services provided by the two parties are identical. The Defendant did not file a Statement of Defence.

The Court found that the use of KEYZ PLEEZZ by the Defendant caused confusion and likely led to the inference that the Defendant's services were those of the Plaintiff. The Court noted that the Plaintiff did not introduce evidence supporting its claim for damages and the Court therefore evaluated the damages at a lower amount than sought by the Plaintiff.

Refusal of Trade-Mark for Registration Upheld on Appeal
Iwasaki Electric v. Hortilux Schreder

The Court of Appeal dismissed Iwasaki's appeal of a decision of the trial judge, refusing its trade-mark application for registration (summarized here). The Judge reversed the decision of the TMOB, on the basis that there was no evidence before it that could lead to a reasonable conclusion that the Mark was used in Canada in the normal course of trade in October 1997. Furthermore, there was new evidence before the Federal Court that Hortilux had used the mark prior to that date. The Court of Appeal found that the Judge did not err.

Trade-Mark Expunged as Not Distinctive and Clearly Descriptive
Bodum USA Inc. v. Meyer Housewares Canada Inc.

Bodum sued for inter alia, infringement of its "FRENCH PRESS" trade-mark, and Meyer counterclaimed for invalidity. The Court held that the trade-mark registration is not valid and expunged it from the Register, granting the counterclaim and dismissing the action.

The case turned on the issue of distinctiveness. The Court held that "French Press" was "a generic commercial term to describe the type of device and method of brewing coffee before Bodum chose to employ it as a mark in Canada." Furthermore, CIPO has issued other registrations to third parties, including those words, since the Bodum registration. The Court also found this case to be similar to those where a company is trying to appropriate words from a language for their exclusive use, rather than a situation where a made-up name becomes distinctive. Thus, the Court held the term was not distinctive at any time. Furthermore, it was held to be clearly descriptive.


Health Canada has started a Consultation on its Public Clinical Trials Database. The Consultation is open for comment until February 13, 2013.

Health Canada has released a draft Guidance Document for Consultation: Submission Information for Human-Use Biologic Drugs Derived from Plant Molecular Farming (PMF). The consultation is open until March 18, 2013.

Please note, that this will be the last IP Alert until the new year. Happy Holidays!!

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.

Similar Articles
Relevancy Powered by MondaqAI
Blaney McMurtry LLP
Clark Wilson LLP
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Blaney McMurtry LLP
Clark Wilson LLP
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