Canada: Successful Opposition by McDonald’s To MACDIMSUM Upheld On Appeal (Intellectual Property Weekly Abstracts Bulletin, Week of 7/23/2013)

Last Updated: July 24 2013
Article by Chantal Saunders, Beverley Moore and Adrian J. Howard

Most Read Contributor in Canada, September 2016

Successful Opposition by McDonald's to MACDIMSUM Upheld on Appeal
Tong G. Cheah v. McDonald's Corporation, 2013 FC 774

A Member of the Trade-marks Opposition Board (Member) refused the registration  of MACDIMSUM for a variety of food and drink items (the Trade-mark). The applicant appealed and the Court dismissed the appeal.

The application for registration of the Trade-mark was based on proposed use in Canada. The Court further noted that the application was for a word, and not the word in a particular style, or with any other word or design. Accordingly, the Board and the Court were not entitled to consider that use of a particular style or with a design could avoid or minimize confusion. McDonald's opposed on the basis of confusion.

The Court concluded that the decision of the Member that the Trade-mark was likely to be confusing with McDonald's family of trade-marks was reasonable. McDonald's submitted a survey, in respect of which the Member stated that he had no reason to doubt the reliability, and the Member found that the survey supported his conclusions. The Court agreed, noting that the survey was not the principal basis for the Member's decision. The Court stated that the "Court has been suspect as to the growing use of and reliance upon surveys in proceedings such as this." However, the Court held that the manner in which the Member used the survey evidence could not be faulted. The Court refused to consider the argument that the applicant's Section 15 Charter rights had been violated, found that there was no evidence of bullying by McDonald's, and held that the argument of dilution of MAC or MC to be unsupported by the evidence. Costs were awarded to McDonald's.


Disclosure Part of Test for Anticipation Determined on Balance of Probabilities
Hoffmann-La Roche Limited v. Apotex Inc., 2013 FC 718

In an application brought pursuant to the Patented Medicines (Notice of Compliance) Regulations, the Court found the allegations of invalidity and non-infringement justified. In particular, Apotex alleged that the impugned patent was invalid on the basis of anticipation, obviousness and overbreadth. Apotex also alleged non- infringement in the alternative on the basis that the invention relates to crystallinity and the Apotex product is amorphous (non-crystalline).

The Court considered the test for anticipation, and particularly the disclosure part of the test and whether an exact description of the invention is necessary in the prior art. The Court concluded that "many cases have cited Justice Hughes' principles and have also referred to the first branch of the anticipation test as requiring that it 'necessarily infringe' or 'inevitably result' in infringement, yet have applied the test on a balance of probabilities to determine whether the claim has been disclosed in the prior art." The Court then concluded "I find that  the invention of the '721 was disclosed in EP 329 and enabled. The POSITA would understand the invention and make it without extensive efforts and with no additional inventive step, and in so doing, would on a balance of probabilities infringe the patent."

The Court found the invention to be obvious but the allegations of overbreadth were not justified. In respect of the allegation of non-infringement made in the alternative, the Court found that the allegation is justified. Apotex did not provide samples to Roche. Roche's expert conducted experiments to model the Apotex process that was provided by Apotex. The Court concluded that it was not persuaded by Roche's evidence, and Apotex provided evidence that its product was not crystalline and highlighted "frailties in the experiments conducted" by Roche. Costs were awarded to Apotex.

Amount of Damages Determined in Remedy Portion of a Bifurcated Trial
Merck & Co., Inc. v. Apotex Inc., 2013 FC 751
Drug : lovastatin

This is the remedy portion of a trial that was bifurcated. In the liability portion, the Court found the patent valid and infringed, findings that were affirmed by the Court of Appeal. The Court found in the liability portion that the Plaintiffs were entitled to damages and not an accounting of profits.

As a remedy, the Court found that the Plaintiffs are entitled to damages in the amount of $119,054,327 plus pre- and post-judgment interest. In summary, damages were awarded to both Merck Canada and Merck US for sales prior to the expiry of the patent as well as a reasonable royalty for post-expiry infringing sales within Canada and a reasonable royalty for export sales. Damages were not awarded in respect of ramp-up sales occurring after the expiry of the patent and royalties were not awarded in respect of additional sales by a third entity, Merck and Company, Incorporated (MACI). The Court refused to take into account Apotex' non-infringing alternative when assessing damages.

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