Supreme Court Amends Order to Remove Declaration that
Patent is Void 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" 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 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 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. 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. CIPO has issued a Practice Notice: Examination Practice Respecting Medical
Uses. For a printer friendly version of this bulletin, please click here. The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
and
Beverley Moore
IN THIS ISSUE
NOC Proceedings
Teva Canada Limited v. Pfizer Canada Inc. et
al., 33951
Drug: sildenafilTrade-marks
Tcho Ventures, Inc. v. MM Meyer
Markenverwaltung & Co., 2013 FC 358
Council of Natural Medicine College of Canada
v. College of Traditional Chinese Medicine Practitioners and
Acupuncturists of British Columbia, 2013 FC 287
JTI Macdonald TM Corp. v. Imperial Tobacco
Products Limited, 2013 FC 608Other Decisions of Interest
Other Industry News
ARTICLE
20 June 2013
Intellectual Property Weekly Abstracts Bulletin: Week Of June 10, 2013
Borden Ladner Gervais LLP
Contributor
BLG is a leading, national, full-service Canadian law firm focusing on business law, commercial litigation, and intellectual property solutions for our clients. BLG is one of the country’s largest law firms with more than 750 lawyers, intellectual property agents and other professionals in five cities across Canada.
In November, the Supreme Court issued its decision in the sildenafil case, and, as part of its order, found the patent to be invalid.