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

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