Canada: Intellectual Property Weekly Abstracts Bulletin: Week Of June 10, 2013

Last Updated: June 20 2013

Edited by Chantal Saunders and Beverley Moore


NOC Proceedings

Supreme Court Amends Order to Remove Declaration that Patent is Void
Teva Canada Limited v. Pfizer Canada Inc. et al., 33951
Drug: sildenafil

In November, the Supreme Court issued its decision in the sildenafil case, and, as part of its order, found the patent to be invalid. As this case was brought pursuant to the NOC Regulations, Pfizer brought a motion to amend that Order (reported here), and the Supreme Court has granted that motion. The order now states that Teva established its allegation that the patent is not valid. The Supreme Court also amended its order to give costs to Teva in the Courts below.


A New Argument that was not before the Registrar does not Constitute "New Evidence"
Tcho Ventures, Inc. v. MM Meyer Markenverwaltung & Co., 2013 FC 358

In this application, Tcho was appealing a decision of the Registrar of Trade-Marks rejecting its application to register the trade-mark TCHO. The Registrar had held the mark to be confusing with the respondent's mark: TCHIBO, and also held that the mark was not distinctive.

Tcho had a two-pronged attack against the Registrar's decision: that it was unreasonable, and that it should be reviewed de novo on the basis of an additional evidence argument. The Court held that the Registrar's findings were all within the realm of reasonableness. The Court also held that an argument that was not before the Registrar does not constitute new evidence, and does not entitle the applicant to a de novo hearing. Thus, the appeal was dismissed.

College of Traditional Chinese Medicine Practitioners and Acupuncturists of British Columbia Upheld as a Public Authority; Entitled to Register Official Marks
Council of Natural Medicine College of Canada v. College of Traditional Chinese Medicine Practitioners and Acupuncturists of British Columbia, 2013 FC 287

In this case, the Council of Natural Medicine College of Canada (the Council) brought an application for judicial review to set aside the decision of the Registrar of Trade-Marks to give notice that the College of Traditional Chinese Medicine Practitioners and Acupuncturists of British Columbia (the College) had adopted and used 16 official marks.

The Council ran educational programs and entered into a trade-mark licence with graduates regarding the use of various trademarks previously held by, or for which registration had been applied, such as the D.T.C.M. (Doctor of Traditional Chinese Medicine). The Court held that there is a "vast legal distinction between the right to use a trade-mark and the right to practice a regulated trade or profession." (para. 13). Furthermore, individuals enrolled in the Council's programs had no right to practice acupuncture or traditional Chinese medicine (TCM) in British Columbia upon graduation.

The College was established under the Health Professions Act and the Traditional Chinese Medicine Practitioners and Acupuncturists Regulation, to regulate the practice of TCM and acupuncture in British Columbia.

In 2005, the Council demanded that the College stop using the phrase D.T.C.M. The Court held that this demand ignored the statute and regulation, including that the titles were reserved and prescribed under provincial law. The College then decided to adopt official marks and began to use them in 2007. The notice of this adoption was published in 2009. In 2009, the College also obtained a permanent injunction restraining the Council from using these marks in association with inter alia TCM (decision here; appeal discontinued).

The Court held that the Registrar correctly determined that the College was a public authority, and had adopted and used the official marks by displaying them on its public website. The Court held that it was irrelevant whether the marks were displayed merely to support its application to the Registrar.

The Council, and the Attorney General of British Columbia (AGBC) also argued that elements of s. 9(1)(n), s. 11 and s. 12(1)(e) of the Trade-Marks Act should be read down where they overlap with matters assigned to the provinces.

This argument was rejected by the Court, as it held that the evidence pointed away from the regulatory chaos suggested by the Council, and towards the necessary overlap and incidental effects in a complex federation. Furthermore, the inter-jurisdictional immunity argument advanced by the AGBC and the Council was explicitly rejected by the Supreme Court in another case. In addition, the Court held that although s. 9(1)(n) impinges s. 2(b) of the Charter, it can be justified under s. 1 as Canadians must have confidence that the marks of a public authority are used by the public authority and no other. In this case, the Council had mislead students into believing it had regulatory authority over the practice of TCM and acupuncture and had improperly used the marks to imply a licence to practice. Thus, the College was entitled to respond by adopting the titles as official marks. Finally, the Court held that the Bill of Rights does not entitle the Council to a hearing prior to the issuance of the public notice. Thus, the application was dismissed.

Colour Trade-mark Allowed; Appeal from the TMOB Dismissed
JTI Macdonald TM Corp. v. Imperial Tobacco Products Limited, 2013 FC 608

Imperial Tobacco Products Limited (Imperial) filed two trade-mark applications relating to the colour orange as applied to its packaging. They were opposed by JTI Macdonald TM Corp (JTI). The Board rejected the opposition, and JTI appealed those decisions. The Court allowed both decisions to be dealt with in one application in light of their close relationship. However, the Court dismissed both applications.

New evidence was filed, however, the Court held that it did not justify a departure from the reasonableness standard in reviewing the Board's decision. The Court held that the Board's decision that the relevant designs were trade-marks rather than distinguishing guises was reasonable. The Court also held that the Board's decision holding that Imperial's marks complied with s. 30(h) of the Act, relating to drawings, was reasonable. Finally, the Court upheld the finding that JTI did not meet its evidentiary burden in establishing distinctiveness as a ground of opposition.

Other Decisions of Interest

The Supreme Court of Canada will issue its decision on Thursday, with respect to Takeda's application for leave to appeal regarding the denial of data protection for its DEXILANT dexlansoprazole product. The Court of Appeal's decision can be found here, and our summary of it here.

Other Industry News

CIPO has issued a Practice Notice: Examination Practice Respecting Medical Uses.

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