Canada: Court Dismisses NOC Proceeding For Mootness When NOA Withdrawn (Intellectual Property Weekly Abstracts Bulletin - Week Of January 28, 2013) (218312

Last Updated: February 4 2013
Article by Beverley Moore


Court Dismisses NOC Proceeding for Mootness when NOA Withdrawn

Eli Lilly v. Teva

Drug: pemetrexed

Lilly brought an application for prohibition pursuant to the Patented Medicines (Notice of Compliance) Regulations. Subsequently, Teva established to Lilly's satisfaction that it would not infringe the patent at issue. Teva never filed evidence to support its allegations of invalidity, and never disputed Lilly's reliance on the presumption of validity in s. 43 of the Patent Act. Teva then withdrew its Notice of Allegation. The parties could not agree on how to terminate the proceeding.

The Court held that there was no live issue between the parties, and that the application is therefore moot. Furthermore, there is no reason to depart from the usual disposition of moot proceedings, which is to dismiss the proceeding on that ground.

Trade-Mark Proceedings Federal Court Upholds Dismissal of Trade-Mark Opposition

Habib Bank Limited v. Habib Bank AG Zurich

Habib Bank Limited appealed a decision of the Registrar of Trade-marks dismissing its opposition to the registration of Habib Bank AG Zurich's trade-marks. The parties were related at one point, but have since become separate entities, competing internationally in many of the same markets. The Federal Court held that the decision is to be reviewed on a standard of reasonableness, and considered the issues of confusion due to prior use and distinctiveness. The Federal Court then upheld the dismissal.

Motion for Interlocutory Injunction, Declaration and Production of Documents Denied

Ryan et al. v. Zemla et al

Ryan is a 75% shareholder in the plaintiff company who carries on business as "Bloor Street Boxing & Fitness". The defendant, Zemla, is a 20% shareholder of that company. Zemla opened "Bloor Fitness 24/7". The plaintiffs sought an interlocutory injunction restraining the defendants from passing off their business as being related to the plaintiffs. The plaintiffs also sought production of documents, and a declaration that the defendants had crashed their website and caused damages.

The Court considered the test for granting an injunction and held that the plaintiffs had not produced sufficient evidence to support the contention that they will suffer irreparable harm if an interlocutory injunction is not granted. Furthermore, the Court held that the declaration sought was akin to a motion for summary judgment and must be scheduled through the Motions Scheduling Court. Furthermore, there was insufficient evidence to grant the motion and to grant the request for further documentation. Thus the motion was dismissed.


Motion to Amend Pleadings After Discovery Allowed

Delta Hotels v. Backus-Naur

In this case, the Plaintiff brought a motion to amend its statement of claim to clarify the relief sought, provide further particulars of the material facts supporting the claim, to plead and rely upon the Copyright Act and plead equitable ownership of copyright. The motion was opposed on the basis that a scheduling order required discoveries to be completed by the end of August. The Court held that the timing of the amendments were not prejudicial to the defendant. Furthermore, none of the proposed claims were untenable. Thus, the motion was allowed.


Ontario Court Dismisses Generic Claims for Unjust Enrichment in s. 8 Proceeding

Apotex v. Abbott

Drug: lansoprazole

Apotex sued Abbott and Takeda for damages pursuant to s. 8 of the NOC Regulations. As part of the claim, Apotex claimed disgorgement of profits. Abbott and Takeda brought the within motion for summary judgment dismissing that part of the claim, and the Ontario Superior Court of Justice granted that motion.

In the prior litigation pursuant to the NOC Regulations, the parties had settled, and Apotex reserved its rights to claim damages under s. 8. In addition, specific dates for compensation were negotiated. The Court held that nothing in that agreement permits Apotex to start a claim for unjust enrichment. However, the contract issues were held to be peripheral to the within motion.

The Court considered issues of jurisdiction and held that the Federal Court (FC) has all the powers of the Superior Court when dealing with subject-matter that is within its jurisdiction. Thus, the equitable jurisdiction of the Superior Court is not broader than that of the FC. The Court then held that the factual record was complete, and it was possible to have a full appreciation of the evidence and issues. Thus, it was both possible and appropriate to determine the matter by summary judgment.

The Court then analyzed the jurisprudence of the FC and Federal Court of Appeal (FCA), and the amendments made to the NOC Regulations and held that the FCA decision in Eli Lilly was well-reasoned and should be followed for a number of reasons.

The Court went on to consider the test for unjust enrichment. Abbott and Takeda conceded for the purposes of this analysis that they had been enriched and that Apotex had experienced a corresponding deprivation. However, they argued that there was a juristic reason for the enrichment and the Court agreed. Validly enacted statutes or regulations constitute a juristic reason for enrichment within this test. Furthermore, in this case, the settlement agreement between the parties constitutes another juristic reason for the enrichment.


CIPO has published a WIPO questionnaire to seek the views of Industrial Design (ID) registration system users on the work being done by the Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT) to harmonize formal application requirements. The questionnaire must be completed by March 7, 2013.

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