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.
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.
A recent Saskatchewan Court of Queen's Bench decision allowed a court-appointed receiver to sell and transfer intellectual property rights free and clear of encumbrances, finding that a license to use improvements of an invention was a contractual interest and not a property interest.
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