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. 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. 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 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. 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. 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. 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. and
Beverley Moore
and
Adrian Howard
Patents
Appeal Relating to Admissibility of and Weight Given to Expert
Evidence Dismissed
Appeal of an Order of a Case Management Judge Dismissed
Trade-marks
No confusion found between SMITH & BARNES LONDON and LONDON
DRUGS
Victoria's Secret is a "person interested" and
may continue their action for a declaration
Harley-Davidson Obtains Declarations Related to its
SCREAMIN' EAGLE Mark
Copyright
Appeal Dismissed: Paragraphs of the Statement of Claim Shall
not be Struck
ARTICLE
13 March 2014
Appeal Relating To Admissibility Of And Weight Given To Expert Evidence Dismissed (Intellectual Property Weekly Abstracts Bulletin - 10 March 2014)
This is an appeal from a decision of the Court allowing Apotex to claim compensation pursuant to section 8 of the NOC Regulations.