Canada: Appeal Of Prohibition Order Dismissed (Intellectual Property Weekly Abstracts Bulletin - October 21, 2013)

Last Updated: October 29 2013

Edited by Chantal Saunders and Beverley Moore and Adrian Howard

NOC Proceedings

Appeal of Prohibition Order Dismissed

Teva Canada Limited v. Novartis Pharmaceuticals Canada Inc, 2013 FCA 244
Drug: zoledronic acid

The Federal Court issued an order prohibiting Teva from entering the market with its version of zoledronic acid until the expiration of two patents. Teva appealed the order with respect to one of the patents. (Decision here, summarized here.) The Federal Court of Appeal (FCA) dismissed the appeal.

The appeal related mainly to obviousness issues. The FCA held that the Trial Judge did not apply a higher standard than that set out in Sanofi to determine whether the patent was obvious. Furthermore, the FCA was not convinced that the Trial Judge made an overriding and palpable error in appreciating the evidence.

Evidence Struck and Reply Granted after Partial Reversal

Pfizer Canada Inc. v. Apotex Inc., 2013 FC 1036
Drug: celecoxib

In this case, there was an Order for partial reversal of evidence. Apotex brought a motion to strike substantial portions of the affidavits of three of Pfizer's experts on validity, alleging that they relied on an extensive number of clinical studies and other documents which Apotex argues are facts, and should have been disclosed as part of the "fact" evidence.

The Court held that Directions of the Court carry the weight of judicial decision making and are the expectation of what will happen in the conduct of a case. However, as there was dispute over the meaning of "fact" evidence, the Court held that it could not be definitively said that the Court's Direction was contravened. The Court struck portions of Pfizer's affidavits, criticising Apotex' witnesses for not commenting on certain pieces of art cited by Pfizer's experts. Apotex was granted reply with respect to other issues.

Patent Actions

Patent Infringement, Trade-mark, Copyright and Competition Act Claims Dismissed

Distrimedic Inc. v. Dispill Inc. and Emballages Richards Inc., 2013 FC 1043

In this case, Distrimedic sought a declaration of non-infringement in relation to a kit for the manufacture of a set of individual pill containers. Richards filed a disclaimer, and then a Statement of Defence and Counterclaim, adding a number of new allegations and legal claims, and joining a number of other parties. In particular, allegations relating to copyright infringement, trade-mark rights and breach of the Competition Act were added. The original Claim was discontinued, but the Counterclaim proceeded to this hearing.

The Court construed the patent, and held that Distrimedic did not infringe the patent. The Court refused to definitively rule on whether the disclaimer was valid, however held that there was insufficient evidence to constitute a mistake, accident or inadvertence for the purposes of establishing a valid disclaimer. In addition, the inventor was not consulted. However, the Court held that Distrimedic had failed to show there was anything in the Patent Act that would prevent the patentee from returning the pre-disclaimer patent. The Court accepted the evidence that the patent was neither obvious nor anticipated.

In relation to the non-patent issues, the Court held that the allegations of misrepresentation had not been made out, as the evidence was not sufficient to establish, on a high preponderance of probabilities, that Distrimedic made misleading representations with respect to Richards' wares. The Court also held that Richards had failed to show it holds trade-mark rights in the colour scheme, because it has a purely functional purpose, there was no intention to use it as a trade-mark, and there was no trade-mark recognition among the relevant public. The Court then held that the Label Form could not be protected by copyright under the Copyright Act. Thus, the counterclaim was dismissed as a whole.

Trade-Mark Decisions

LAZARO COHIBA for rum is confusing with COHIBA-brand tobacco

Empresa Cubana Del Tabaco et al. v. Tequila Cuervo, S.A. Dec. V. 2013 FC 1010

Tequila Cuervo sought a trade-mark for LAZARO COHIBA based on proposed use in Canada with rum. Empresa Cubana Del Tabaco opposed by arguing, among other things, it would be confused with its COHIBA registered trade-marks used in conjunction with tobacco products. The Trade-marks Opposition Board rejected the opposition. The Federal Court overturned that decision on appeal based on new evidence filed. Finding COHIBA is a widely known brand across Canada, and recognizing the relationship between smoking and alcohol, it was found that a consumer would likely think that the rum was from the same source as the tobacco.

ZENERGY confusing with ENERGIE for the hurried consumer

International Stars S.A. v. Simon Chang Design Inc., 2013 FC 1041

Simon Chang applied for registration of the trade-mark ZENERGY BY/POUR SIMON CHANG & Design (the Mark) in association with certain sports clothing. International Stars unsuccessfully opposed the registration on the basis of evidence that it had used the trade-mark ENERGIE for similar wares. On appeal, the Federal Court reversed the earlier decision, finding that the Registrar performed a side-by-side comparison and not one of first impression in the mind of a casual consumer. The Court found that casual consumer would be confused and therefore directed the Registrar to refuse the application.

Neither party entitled to register HORTILUX

Hortilux Schreder B.V. v. Iwasaki Electric Co., 2013 FC 1034

Both parties to this proceeding are seeking to register the mark HORTILUX in association with lighting equipment used in the horticultural industry, and each party opposes the other's efforts. Hortilux Shréder was unsuccessful before the Trade-marks Board, and appealed to the Federal Court, the subject of the present decision. In reviewing the decision, the Court decided that the Board had relied upon the correct legal principles and did not misapprehend the evidence. The new evidence filed on appeal was found to not have materially affected the Board's conclusions, and therefore the appeal was dismissed.

Previously, Iwasaki had successfully registered the mark, but that was overturned by the Federal Court, and upheld on appeal. So far, neither party has registered rights to the mark.

FRENCH PRESS is a generic term

Bodum USA Inc. v. Meyer Housewares Canada Inc., 2013 FCA 240

Bodum previously sued Meyer for infringement, passing off and depreciation of goodwill of their mark FRENCH PRESS. (Decision here, summarized here.) Bodum lost that decision and appealed, but the Court dismissed from the bench. The case turned on the issue of distinctiveness, but the panel failed to find any error in law or fact warranting intervention. FRENCH PRESS was considered to be a common name for the non-electric coffee making device at issue, and its use was a bona fide commercial use as a generic term.

Other Decisions of Interest

ss. 53(2) of the Patent Act is a shield, not a sword

F. Hoffmann-La Roche AG v. The Commissioner of Patents, 2013 FC 1001

Hoffmann-La Roche was denied the opportunity to correct a single word error in a patent's disclosure pursuant to ss.53(2) of the Patent Act. The impetus for the application arose from an earlier Federal Court decision where the Court admonished a patentee for not correcting a patent as drafted. However, that statement was found to have limited value, if any, as a precedent.

Nonetheless, in this era of the "promise of the patent", the patentee sought to remedy the uncertainty the single abbreviation "viz" could create when reading the disclosure. The Court determined that ss. 53(2) could not be a stand alone provision, rather it can only be invoked as a defence to a claim under ss.53(1). Allowing an amendment to a patent under judicial supervision is a policy choice best left for Parliament to make.

Other News

Although the details have not been made official, it has been reported that the Canada-European Union Comprehensive Economic and Trade Agreement (CETA) would result in Canada introducing a form of patent term restoration, for up to two years, for pharmaceutical patents. Additional changes for pharmaceutical patents may also be forthcoming; however, the text of the treaty was only agreed to in principle and is not yet publicly available.

Bill C-434, the "Terminator Seeds Ban Act", is reinstated in Parliament

A private-members bill, C-434, has been reinstated in Parliament. The bill is entitled the "Terminator Seeds Ban Act", and it would make it an offence to release terminator seeds. It would also amend the Patent Act, making the technology ineligible for patent protection. Private member bills rarely become law.

Health Canada has issued a Post-Notice of Compliance (NOC) Changes: Quality Document.

The PMPRB has released its 2012 Annual Report.

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