Canada: Appeal Relating To Admissibility Of And Weight Given To Expert Evidence Dismissed (Intellectual Property Weekly Abstracts Bulletin - 10 March 2014)

Last Updated: March 13 2014

Edited by Chantal Saunders and Beverley Moore and Adrian Howard

Patents

Appeal Relating to Admissibility of and Weight Given to Expert Evidence Dismissed

Pfizer Canada Inc. v. Apotex Inc. , 2014 FCA 54

Drug: azithromycin

This is an appeal from a decision of the Court allowing Apotex to claim compensation pursuant to section 8 of the NOC Regulations. The quantum is to be determined in a further proceeding.

Pfizer made arguments relating to the admissibility of the evidence on the issue of infringement provided by one of Apotex' experts. The Court of Appeal refused to make a finding on this issue after considering the arguments made by Pfizer relating to the decision by the Supreme Court of Canada (SCC) in R.v. J.-L.J., 2000 SCC 51. The Court of Appeal noted that this SCC decision addresses threshold reliability of the evidence and Apotex' expert was interpreting the results of known tests. The Court of Appeal further noted that Pfizer did not object at the trial level to the admissibility of the evidence and that, while it is open in some cases for an appellate court to consider the admissibility of evidence for the first time, this was not such a case. The Court of Appeal then considered Pfizer's argument that the Court made a palpable and overriding error in giving weight to this expert evidence, and dismissed this argument and thus the appeal.

Appeal of an Order of a Case Management Judge Dismissed

AbbVie Corporation v. Janssen Inc. , 2014 FC 178

Janssen appealed the decision of the Case Management Judge relating to a trial on the issue of an injunction. After noting that the Order of a Prothonotary will only be set aside on the basis of an error in law or a fundamental misapprehension of material facts, the appeal was dismissed.

Trade-marks

No confusion found between SMITH & BARNES LONDON and LONDON DRUGS

London Drugs Limited v. International Clothiers Inc. , 2014 FC 223

This is an appeal pursuant to section 56 of the Trade-marks Act. International Clothiers filed applications to SMITH & BARNES LONDON on the basis of proposed use in association with retail department store services and a wide variety of wares. London Drugs opposed on the basis of registrability, entitlement and distinctiveness, including confusion with pending applications for LONDON DEPARTMENT STORES, LONDON PREMIERE and LONDON GOURMET. The Trade-marks Opposition Board member did not find confusion, and dismissed the opposition. Generally speaking, the common use of the word LONDON was not found to be confusing as the use of the word as a geographic designation is not inherently distinctive. The marks were otherwise not found to be similar in appearance, sound or ideas suggested.

On appeal London Drugs filed new evidence, but it was not found to have been sufficient to materially affect the Officer's findings of fact. The decision was found to be reasonable and therefore the appeal was dismissed.

Victoria's Secret is a "person interested" and may continue their action for a declaration

Victoria's Secret Stores Brand Management, Inc. v. Thomas Pink Limited , 2014 FC 76

Victoria's Secret is seeking a declaration that their use of PINK and VICTORIA'S SECRET PINK trade-marks and trade-names was not contrary to the rights given to the registered trade-marks of the Defendant, Thomas Pink. It was revealed that Thomas Pink is suing a related Victoria's Secret corporation in the UK for the infringement of several marks, including PINK.

Thomas Pink brought a motion to dismiss the action against them on the basis that Victoria's Secret was not an "interested person" and therefore had no standing.

The Court reviewed the jurisprudence on determining who qualifies as a "person interested" and determined that Victoria's Secret has a reasonable apprehension of being sued given the current UK proceedings. Therefore, the action for a declaration was allowed to proceed.

Harley-Davidson Obtains Declarations Related to its SCREAMIN' EAGLE Mark

H-D U.S.A., LLC v. Berrada , 2014 FC 207

The Plaintiffs in this action, H-D U.S.A. and Harley-Davidson Motor Company Inc. ("Harley"), claimed several declarations with regard to their right in the sale and advertisement of the trade-mark "SCREAMIN' EAGLE". The Defendants counterclaimed, alleging that Harley has been selling and advertising clothing and accessories with SCREAMING EAGLE trade-mark or marks confusingly similar thereto in an effort to diminish, destroy or acquire the goodwill of the Defendants who have used the trade-marks SCREAMING EAGLE and SCREAMIN' EAGLE for over 20 years. Specifically, the Defendants alleged that Harley was violating paragraphs 7(b) and 7(e), and sections 19, 20 and 22 of the Trade-marks Act (the "Act").

Harley owns several Canadian trade-marks in relation to HARLEY-DAVIDSON, including the SCREAMIN' EAGLE trade-mark in relation to motorcycles and motorcycle parts. Harley is also the owner of the trade-mark SCREAMIN' EAGLE for clothing in the U.S., but not in Canada. There was evidence, however, that Canadians are aware of and have purchased Harley's SCREAMIN' EAGLE clothing. The Defendants, on the other hand, had registrations for SCREAMING EAGLE and SCREAMIN' EAGLE for clothing, both of which have been expunged. The Defendants continue to use the trade-mark SCREAMIN' EAGLE in association with clothing and clothing accessories, however.

The Defendants counterclaimed pursuant to section 22 of the Act for depreciation of goodwill. In its analysis, the Court found that (i) Harley has been using its own trade-marks and not the Defendants'; (ii) while there is some goodwill attached to the Defendants' trade-mark, Harley's marks are better known and enjoy much greater brand recognition and fame with Harley motorcyclists and motorcyclists in general; (iii) a reasonable buyer of Harley motorcycle clothing would not associate or think of the Defendants' mark; and (iv) the Defendants have failed to adduce any evidence of lost sales or damage to their goodwill.

With respect to the Defendants' counterclaims pursuant to sections 7 and 20 of the Act, they were required to prove (1) the existence of goodwill; (2) the likelihood of deception of the public due to a misrepresentation; and (3) actual or potential damages. With respect to the first element (i.e. reputation or goodwill with the average Harley motorcycle rider), the Court found that despite significant advertising expenditures by the Defendants, there was no evidence showing goodwill of this kind in the record, nor any such admission by Harley. With respect to the second element, the Court found that there was no evidence that the average Canadian Harley motorcycle rider was led to believe by Harley that they were purchasing the Defendants' clothing at Harley dealerships. Based on the evidence, the Court considered the factors found at section 6(5) of the Act, and found the likelihood of confusion of such a motorcyclist associating SCREAMIN' EAGLE with the Defendants as being improbable, if not impossible. With respect to the third element (i.e. actual or potential damages), the Court could not find any actual evidence of damages. As such, the Defendants' claims under sections 7 and 20 were dismissed.

With respect to the Defendants' claim pursuant to section 19 of the Act, they had to adduce evidence that Harley used the identical trade-mark as the one registered and that it was in connection with identical wares or services covered by the registration. The Court could not find any evidence that Harley used a mark identical to that of the Defendants' (prior to their expungements). The Defendants' claim under section 19 was therefore dismissed.

In view of the above, the Court granted Harley's action, and declared that Harley was entitled to distribute, advertise, offer for sale and sell collateral items, including clothing, in connection with their trade-mark SCREAMIN' EAGLE, throughout Canada but exclusively at Harley dealerships; as this will not infringe any valid rights of the Defendants. The Court dismissed all of the Defendants' counterclaims, and requested submissions on costs.

Copyright

Appeal Dismissed: Paragraphs of the Statement of Claim Shall not be Struck

United Airlines, Inc. v. Cooperstock , 2014 FC 157

This was an appeal of a prothonotary's decision refusing to order that certain paragraphs of the Statement of Claim be removed. Following examination for discovery, the Defendant was advised by the Plaintiff that it was no longer claiming monetary compensation in the proceeding for the infringement of its rights. The Defendant wanted the Statement of Claim to be amended in order to reflect that the action for copyright infringement, trade-mark infringement and passing off would not claim any more for damages.

Prothonotary Morneau dismissed the Defendant's request, which he noted was in the form of a request for directions and intervention. He found that there was no need for the amendment, since the Plaintiff confirmed to the Court that it would not seek monetary compensation at trial. On appeal, the Court noted that it would review a decision of a prothonotary de novo only if the question raised is vital or the order is clearly wrong. The Court found neither, and stated that even if it did review de novo the matter, it would have reached the same conclusion as the prothonotary. The Court found that the amendment was not needed in view of the concession made by the Plaintiff on the record and on numerous occasions. The Court held that there was no confusion and no prejudice suffered by the Defendant. The appeal was dismissed, with no costs awarded.

About BLG

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.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Similar Articles
Relevancy Powered by MondaqAI
Clark Wilson LLP
 
In association with
Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
Clark Wilson LLP
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions