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
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.
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.
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.
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
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.
A recent Saskatchewan Court of Queen's Bench decision allowed a court-appointed receiver to sell and transfer intellectual property rights free and clear of encumbrances, finding that a license to use improvements of an invention was a contractual interest and not a property interest.
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