Canada: Motions Relating to Copyright Infringement Action Dismissed (Intellectual Property Weekly Abstracts - Week Of February 18, 2013)

COPYRIGHT PROCEEDING

Motions Relating to Copyright Infringement Action Dismissed

Roué v. Nova Scotia

This application in the Supreme Court of Nova Scotia relates to the restoration of the Bluenose II, and allegations of copyright infringement or violation of moral rights. The Respondents filed motions seeking to convert the application to an action, seeking to strike portions of the Notice of Application, and seeking particulars.

The Court held that the factors to be considered in determining whether to convert an application to an action favoured proceeding by way of application. Applying a standard of "clearly unsustainable", the Court refused to strike any portions of the Notice of Application. Further, particulars were not ordered.

Appeal Dismissed in Refusal to Grant Application for Trade-mark THYMES

Dart Industries Inc. v. Baker & McKenzie LLP

Thymes, LLC ("Thymes") filed an application to register the trade-mark THYMES (the "Mark") for a number of wares, based on proposed use, and registration and use in the US. Reitmans filed an opposition, and the application was refused. Thymes appealed.

The Court held that the Registrar did not err in finding that Thymes was required to use the Mark in the US pursuant to section 16(2) of the Trade-marks Act. New evidence was filed in the appeal and the Court determined that this new evidence is significant. Accordingly, the Court was entitled to come to its own conclusions with respect to the likelihood of confusion with Reitman's mark THYME MATERNITY. The Court concluded that the evidence demonstrated a likelihood of confusion. The appeal was dismissed.

New Evidence Filed on Appeal Leads to Restriction of Wares and Services in Application

The Governor and Company of Adventurers of England Trading into Hudson's Bay v. Sirketi

This is an appeal of a decision of the Trade-Marks Opposition Board ("TMOB") rejecting an opposition by Hudson's Bay to the registration of a trade-mark B BEYMEN (the "Mark") for a number of wares. The TMOB noted that the opposition was based on the likelihood of confusion between the Mark and Hudson's Bay's registered trade-marks, and found that no evidence of prior use or making known by Hudson's Bay of its trade-marks had been submitted.

On appeal, further evidence was adduced by Hudson's Bay and the Court considered this new evidence to be significant, thereby leading the Court to consider the matter de novo. The Court held that there would be confusion, and narrowed the list of wares and services in the application for the Mark. The Court returned the application to the Trade-marks Office for further consideration.

The Court considered a second appeal relating to the application for the trade-mark BEYMAN CLUB B. Similarly, the Court restricted the wares and services and returned the application to the Trade-marks Office.

Appeal of Dismissal of Proceedings for Delay Dismissed

Canadianmagicjack.ca Ltd. v. Magicjack LP

magicJack LP applied for the registration of the trade-marks "magicJack" and "magicJack & Design". Canadianmagicjack.ca opposed the registration but was unsuccessful. Canadianmagicjack.ca applied for judicial review of the decision accepting the registration and the decision striking the opposition. A Notice of Status Review (the "Notice") was issued in each proceeding, and the Prothonotary dismissed the proceedings for delay after considering the response to the Notice. Canadianmagicjack.ca appealed.

The Court first noted that the appellant Canadianmagicjack.ca is a corporation and therefore must be represented by a lawyer, which it is not. The CEO of Canadianmagicjack.ca continued to purport to act, despite not being a lawyer. The Court allowed the CEO to act for the purposes of this appeal. The Court stated that its discretion must be exercised de novo because the decision of the Prothonotary ended the proceedings. The Court dismissed the appeals.

Confusion Unlikely between RED HORSE and BLACK HORSE

San Miguel Brewing International Limited v. Molson Canada 2005

The Trade-marks Opposition Board ("TMOB") refused to register the trade-mark RED HORSE due to a likelihood of confusions with the trade-mark BLACK HORSE. This decision was appealed.

The Court considered the new evidence filed on appeal to be material and the standard of review became one of "correctness". The Court held that there is no evidence of confusion and such confusion is unlikely. The appeal was granted and the application was granted.

Majority Decision in Court of Appeal Grants Appeal Relating to Data Protection

Minister of Health v. Celgene Inc.

Drug: THALOMID

The Minister of Health ("Minister") refused to register Celgene's drug THALOMID on the Register of Innovative Drugs. The Court quashed this decision by the Minister.

The issue to be determined on the appeal is whether the medicinal ingredient thalidomide falls within the definition of "Innovative Drug", and can obtain data protection. In particular, the Court of Appeal considered whether thalidomide has been "previously approved" in Canada. Celgene filed a New Drug Submission ("NDS") seeking approval for THALOMID thalidomide. The Court of Appeal noted that THALOMID is a "new drug" within the meaning of the Food and Drug Regulations.

The majority of the Court of Appeal stated that Celgene's argument related to the approval status of the drug at the time the NDS is filed; it was a banned drug at the time that the NDS was filed. The Minister argued that the word "approved" means an action in the past is to be considered, and not the current status. The majority of the Court of Appeal considered dictionary definitions of "previously" as well as the relevant treaties and held that it "can reasonably be understood to mean submitted for approval for the first time to the appropriate authority in the territory of a signatory state." The Court of Appeal further noted that the legislator could have extended the protection provided to other "new drugs" and chose not to.

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