Canada: Allegations As To Non-Infringement Of Form I Held To Be Justified (Intellectual Property Weekly Abstracts Bulletin: January 20, 2014)

Last Updated: January 24 2014
Article by Chantal Saunders, Beverley Moore, Adrian J. Howard and Ryan Steeves

Most Read Contributor in Canada, September 2016

NOC Proceedings

Allegations as to Non-infringement of Form I held to be Justified
Bristol-Myers Squibb v. Teva Canada Limited, 2014 FC 30
Drug: efavirenz

Teva asserted both non-infringement and invalidity in its Notice of Allegation. The Court noted that invalidity of this patent had been before it previously (BMS v. Mylan, decision here, summary here). In that case the allegations as to invalidity were held to be not justified, however the allegations as to non-infringement were held to be justified. In this case, the Court held that the invalidity issues were determinative; thus "it is unnecessary and probably unwise to attempt to resolve the validity issues."

The patent was held to be primarily directed at a process for making Form I efavirenz. It also claimed the compound. However, the Court refused to draw an adverse inference from Teva's refusal to give samples of its product. Teva acknowledged that its process was disclosed in another patent application, and undertook not to assert that the sample obtained and tested by Merck was different in character or composition to Form Teva. The Court held that Merck had the capacity to closely replicate Teva's manufacturing process, yet chose only to conduct small scale testing. The Court was satisfied that some Form I was present after grinding. However, this was held not to be a reliable surrogate for the process used by Teva in manufacturing. Thus, the non-infringement allegations were held to be justified.

Trade-Mark Cases

No Confusion for Same Trade-marks
Bridgestone Corporation v. Campagnolo S.R.L., 2014 FC 37

This was an appeal by Bridgestone Corp. of a decision by a member of the Trade-marks Opposition Board. Campagnolo filed an application for the trade-mark POTENZA based upon proposed use in Canada in association with, among other wares, "bicycle parts and accessories ... but not including tires, brakes, wheels, rims and spokes". Bridgestone filed a statement of opposition relying on two of its own trade-marks, POTENZA and POTENZA RE92, based on use in association with "tires, tubes and wheels" and "tires and inner tubes", respectively. Bridgestone argued that Campagnolo's POTENZA trade-mark would be confusing with its POTENZA trade-marks. The Registrar concluded that there was no likelihood of confusion.

On confusion, the Board found in favour of Bridgestone with regard to the factors described in paragraphs 6(5)(a) ("inherent distinctiveness"), (b) ("length of time in use") and (e) ("degree of resemblance between the trade-marks") of the Trade-marks Act. These factors were not disputed in this application. The Court noted that the crux of the appeal was the Board's analysis with respect to the factors found at paragraphs 6(5)(c) ("nature of the wares") and (d) ("nature of the trade").

On appeal, the Court found that the Board's decision was "detailed and reasonable". The Court agreed that (i) the nature of the respective wares were fundamentally different, and (ii) the channels of trade would not likely overlap. The Court held that the Board properly considered all of the predictable and usual channels of trade in which the products would be sold rather than all hypothetical channels. The Court also held that, even if Bridgestone were to eventually sell bicycle tires in Canada, the level of sophistication of the Campagnolo purchasers of its racing bicycle components are likely to know the difference between a Campagnolo and Bridgestone bicycle tire. For this reason, the Court rejected Bridgestone's argument that they could sell bike tires and wheels in the same channel of trade.

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