The Court of Appeal has overturned a lower court decision and
struck the mark NEOWEB from the register because it is confusing
with the earlier registered mark GEOWEB. The Court held that it was
more likely than not that a consumer, with an imperfect
recollection, who encounters NEOWEB would be confused with respect
to whether the product was made by Presto or P.R.S.
The GEOWEB mark was registered by Presto in 2001 in association
with a product containing polyethylene cells in a honeycomb shape
that are filled with sand or soil and are used for erosion control.
Presto provided P.R.S. with a licence to sell GEOWEB in
approximately 20 countries, but P.R.S. had never sold the product
in Canada. Once the licence agreement ended, P.R.S. commenced
selling their own competing product, NEOWEB, in Canada. P.R.S. was
able to register their NEOWEB mark, so Presto moved under section
57 of the Trade-marks Act to strike it from the Trade-marks
The court below refused to strike the mark, but the Court of
Appeal disagreed, stating that the fact that "both companies
are engaged in the same wares, business and trade" should have
been considered and was not.
Following the framework from the Supreme Court decision in Masterpiece, the Court of Appeal found that a
consumer would be confused because the marks are obviously similar
(with only one letter different and with the substitution of one
Greek three letter prefix for another), they rhyme, and the use of
"neo" could imply it was simply a newer version of
Appeal allowed, mark struck from the register. Other Cases of Interest Teva Canada Innovation v. Attorney General of
Drug: COPAXONE SYRINGE
The Patented Medicine Prices Review Board (the PMPRB) ordered Teva
to pay the Crown approximately $2.4 million for selling its product
at an excessive price between 2004 and 2010. Teva brought an
application for judicial review of this decision, and the Federal Court sent the issue back to the PMPRB
for redetermination on the basis that the PMPRB did not consider
all the factors in determining whether the pricing was excessive,
but instead focused on only one factor, namely the Consumer Price
Index (CPI). The PMPRB made a second determination that Teva was to
pay approximately $2.8 million for excessive pricing. The present
decision relates to a review of this second decision of the
The Court noted that the PMPRB set out the factors set out in
section 85(1) of the Patent Act. The PMPRB determined the pricing
was excessive on the basis of price increases over the years,
although noted that the product was the lowest priced medicine
relative to its comparators.
The Court found that the PMPRB did not fully consider the factors
that favoured a finding of non-excessive pricing and focused on the
CPI. The Court also found that the PMRPB erroneously interpreted
section 85(1). In particular, the Court found that Parliament
provided protection from excessive pricing, not from price
increases, and the CPI is only one factor to consider. The Court
set aside this second decision of the PMPRB and returned the issue
for redetermination by a differently constituted panel. Industry News
The PMPRB published its April 2013 newsletter.
The Federal Court dismissed a motion by Apotex seeking particulars from Allergan's pleading relating to the prior art, inventive concept, promised utility and sound prediction of utility of the patents at issue.
Last year we saw the Canadian Courts release trademark decisions that granted a rare interlocutory injunction, issued jailed sentences for failure to comply with injunctive relief, grappled with trademark and internet issues...
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).