Pfizer Canada Inc. v. Apotex Inc., 2014 FC 173 Pfizer appealed the costs portion of a decision of the
case-management Prothonotary striking portions of its evidence on
reply (Decision here; summary here). Pfizer argued that costs should not
have been awarded on an elevated scale without giving it a chance
to make submissions or without a finding of exceptional
circumstances. The Court disagreed and dismissed the motion, holding that there
was no unfairness to Pfizer in the circumstances, and nothing
unreasonable about the Prothonotary's decision. TevaCanada Limited v. Pfizer Canada Inc., 2014 FC 248 Drug: venlafaxine In this case, the Court made key findings as to the method of
determining quantum of s. 8 damages, and sent the parties away to
determine the actual quantum. As background, a predecessor to Teva,
Ratiopharm, had filed an ANDS and agreed to await expiry of the
patent on the Patent Register at that time. A second patent was
listed on the Patent Register, and Ratiopharm sent a NOA with
respect to that patent. It then brought a motion to have the patent
removed from the Patent Register. That motion was successful, and
Ratiopharm came to market with its venlafaxine product. Another
predecessor to Teva, Novopharm, had entered into a licence with
Pfizer to sell venlavaxine. The Court of Appeal held that the
damages claim was not to be reduced by Novopharm's gains under
the licence (decision here; summary here). Ratiopharm also entered into a
cross-licence agreement with another generic company,
Pharmascience. The Court considered the relevant period for damages, and held
that although it is not in issue in this case, there is no
discretion as to the end date for the period. With respect to the
start date, in this case, the Patent Hold date preceded the expiry
of the patent to which Ratiopharm had agreed to await. The Court considered the applicability of this date, along with
the arguments of Ratiopharm and Pfizer for other dates. Ratiopharm
argued that the start date should be the date that patent
expired. Pfizer argued that the start date should be the date 45
days after Ratiopharm had sent a NOA on the second patent, because
until that time, Ratiopharm had not met the requirements of the NOC
Regulations. The Court held that the appropriate date was the
expiry date of the patent because there was no loss claimed by
Ratiopharm prior to that date. The Court used actual sales of venlafaxine during the relevant
period to determine the size of the market. Novopharm's actual
sales, with an adjustment for differences in provincial formulary
listing dates was agreed to be the size of the generic market. The
Court then considered Ratiopharm's market share in the
"but-for" world together with the share of other
generic companies. The Court held that Ratiopharm must show
that it was able to supply the market, and that Pfizer must prove
when competitors would have entered the market. The Court then
considered all of the other relevant factors, including formulary
listing, trade-spend, ramp-up and interest. Rothmans, Benson & Hedges Inc. v. Imperial
Tobacco Products Ltd.,
2014 FC 300 This is an appeal under s. 56 of the Trade-marks Act from a
decision of the Trade-marks Opposition Board (TMOB) in relation to
two trade-marks filed by Imperial Tobacco Products Ltd (ITPL). Both
applications relate to orange package design. Rothmans, Benson
& Hedges Inc. (RBH) opposed both applications, but the TMOB
rejected both oppositions. The Court noted that in separate
proceedings, another tobacco company had also opposed the same two
applications, but had been unsuccessful (decision here, summary here). Both parties adduced new evidence on appeal. However the Court
held that the new evidence would not have materially affected the
TMOB's decision. Thus, the Court agreed that the reasonableness
standard was applicable to the appeal. The Court then held that the
TMOB's decision was reasonable, as it fell within the range of
possible, acceptable outcomes which are defensible in respect of
the facts and in law. Unicast SA v. South Asian Broadcasting Corporation
Inc., 2014 FC 295 In this case, Unicast brought an application pursuant to s. 57
of the Trade-marks Act requesting expungement of the trade-mark
"RED FM" from the Register. The Court dismissed the
application. The Applicant operates a radio station in association with the
trade-mark "ROUGE FM". It is operated over the internet
in Canada. The Respondent offers radio programming in association
with the RED FM trade-mark. The Court held that for the Applicant
to be successful, it must satisfy the Court that it had used its
trade-mark before the Respondent, had not abandoned it, and that
the two marks were confusing. In considering these elements, the Court held that the
Applicant's online activities did not constitute
"broadcasting" for the purposes of the legislation. The
Applicant does not store its transmitted content on Canadian
servers. It is not physically present in Canada. It does not seek
or have advertisers in Canada. Finally, it did not take steps
towards gathering Canadian listeners, other than offering its
programming online. Thus, the Applicant's activities were held
not to constitute a "broadcasting undertaking" as they
are not "carried in whole or in part in Canada", under
the Broadcasting Act. Thus, it cannot claim to have used the ROUGE
FM trade- mark while providing broadcasting services to Canadians.
As a result, the application must be dismissed. Corporativo de Marcas GJB, SA de CV v. Bacardi
& Company Ltd.,2014 FC 323 This was an application for judicial review of a decision of the
Registrar of Trade-marks. The Registrar allowed an opposition by
Bacardi & Company Ltd. (the "Opponent") and refused
an application for the trade-mark RON CASTILLO LABEL design filed
on behalf of Corporativo de Marcas GJB, SA de DV
("Marcas" or the "Applicant"). The judicial
review turned on the issue of "use". The Opponent opposed the design mark on the ground that it did
not satisfy the use requirement under subsection 30(b) of the
Trade-marks Act (the "Act"). While there is an initial
evidentiary burden on the Opponent to adduce sufficient evidence
supporting its claim of non-compliance by Marcas, the Court held
that the Opponent met that burden. The Court found that the record
was "clearly inconsistent" with Marcas' claim of
continuous use, and therefore satisfied the evidentiary burden
imposed on the Opponent. The Court also held that it was reasonable
for the Registrar to draw an adverse inference from the lack of
evidence of use filed by Marcas, and conclude that the evidentiary
burden with respect to use had been met by the Opponent on that
basis. With the Opponent having satisfied its evidential burden, Marcas
was then required to satisfy its legal burden with respect to the
compliance of its application under section 30 of the Act. The
Court found that it was reasonable for the Registrar to conclude
that the design mark was not sufficiently used throughout the
material time and, as a result, that Marcas had failed to satisfy
its legal burden regarding the continuous use of the design mark
during the relevant period. The Court noted that the evidence
pointed strongly against continuous use, and found that there were
no reasonable explanations for the "total void of evidence of
use for a majority of the material time". The Court therefore
dismissed Marcas' application for judicial review. Canadian Broadcasting Corporation v. Sodrac 2003
Inc., 2014 FCA 84 These reasons applied to three applications for judicial review.
In two of those applications, the CBC and Astral Media each sought
to set aside several terms of the 2008-2012 license issued to it
pursuant to the respective decisions of the Copyright Board (the
"Board"). The third application for judicial review dealt
with Board's decision extending the 2008- 2012 license to the
2012-2016 period on an interim basis pending a final determination
of SODRAC's request under section 70.2 of the Copyright Act
(the "Act") for that period. Section 70.2 of the Act provides for a form of arbitration in
which parties who are unable to agree on the term of a license can
apply to the Board to fix those terms. The disputes involving the
CBC and Astral Media, and SODRAC, were focused on SODRAC's
business model, which the CBC and Astral Media argued is
"inconsistent with the prevailing industry model". The
CBC and Astral Media argued that the normal practice is for the
producer of an audiovisual work to obtain a license-to-the-viewer
license from the rights holder (i.e. where the producer obtains or
'clears' all necessary rights for downstream users). In
comparison to this model, SODRAC has adopted a layered approach to
licensing in which each link in the distribution chain must acquire
(and pay for) the right to make the copies required for its
commercial purposes. The Court of Appeal noted that SODRAC's
strategy corresponds to the adoption of new technology that
generally necessitates, for example, multiple copies (i.e.
ephemeral copies) of a musical work in order to incorporate it into
an audiovisual work. The Board then set the various terms of
licenses to the CBC and Astral Media. The main argument put forth by the CBC and Astral Media before
the Court of Appeal was that the analysis by the Board flew in the
face of the principle of technological neutrality established by
the Supreme Court of Canada in ESA v. SOCAN, 2012 SCC 34
("ESA"). The Board's decision was grounded in the
Supreme Court of Canada's decision in Bishop v. Stevens, a case
in which the Supreme Court held that each of the rights enumerated
in subsection 3(1) of the Act was a separate right reserved to the
owner of copyright, whose use by another attracted liability for
the payment of royalties. Therefore, the Court of Appeal held that
unless Bishop v. Stevens had been overturned or disavowed by the
Supreme Court (in ESA), it would determine the outcome of this
branch of the applications for judicial review. The CBC and Astral
Media argued that Bishop v. Stevens has been overturned by ESA. The Court of Appeal acknowledged that the Supreme Court in ESA
affirmed the principle of technological neutrality. However, the
Court of Appeal held that in view of the different views of
technological neutrality articulated in ESA, "it is
difficult to know how one is to approach technological neutrality
post-ESA." The Court of Appeal held that "ESA,
while restating the principle of technological neutrality in
copyright law, provides no guidance as to how a court should apply
that principle when faced with a copyright problem in which
technological change is a material fact." The Court of Appeal
found that nothing in ESA authorized the Board to create a category
of reproductions or copies which, by their association with
broadcasting, would cease to be protected by the Act. As such, the
Court of Appeal held that ESA did not overrule Bishop v. Stevens.
The arguments made by the CBC and Astral Media with respect to
technological neutrality therefore failed, in the Court of
Appeal's view. The CBC and Astral Media also raised a number of other issues
with the Board's decision, only one of which was successful. In
objecting to a 'blanket license', the CBC objected on the
basis of a discount formula, which is designed to give
broadcasters credit when they broadcast a program in which the
producer has in fact obtained a through-to-the-viewer license from
SODRAC. The Court of Appeal reviewed the 'discount formula'
and found that it was flawed. As a result, the Court of Appeal
allowed the applications in part to allow for the amendment of the
'discount formula'. With respect to the application for judicial review of the
interim license, the Board disagreed with the CBC that the license
did not represent the status quo given its significant differences
from the parties' prior pattern of dealings. The Court of
Appeal held that once the Board made the order with respect to the
2008-2012 period, the terms of that order became the new status
quo. Given that the Court of Appeal proposed to uphold the
2008-2012 license (with the one small change), it saw no reason not
to treat that order as the status quo. Therefore, the Court of
Appeal dismissed this application for judicial review. The Court of Appeal allowed the applications for judicial review
(Re: ephemeral copies) in part, but only for the purpose of
amending the 'discount formula'. The Court of Appeal also
dissolved the stays of execution of the licenses issued by the
Board, and awarded costs to SODRAC, but reduced by 10% for CBC and
Astral Media's partial success. Keatley Surveying Ltd. v.Teranet Inc., 2014 ONSC 1677 In this case, Keatley Surveying Ltd. (the "Appellant")
appealed a decision of Horkins J., denying a motion to certify a
class proceeding under the Class Proceedings Act ("CPA").
The proposed class action alleges that Teranet Inc.'s (the
"Respondent") database constitutes copyright infringement
in the plans of survey under the Copyright Act. In denying the
certification, the motion judge held that four of the five criteria
required by the CPA were not met, namely (1) there was no
identifiable class; (2) the proposed common issues would not
significantly advance the litigation; (3) a class proceeding was
not the preferable procedure; and (4) the representative plaintiff
did not adequately represent the interests of the class nor did it
put forward a workable litigation plan. On appeal, the Appellant
significantly revised its certification request. On appeal, the Divisional Court found that the Appellant's
revisions to its request for certification made it appropriate for
its case to proceed as a class proceeding. While the Respondent
alleged that the Appellant's case on appeal constituted an
abusive and prejudicial re-formulation of the case on almost all of
the certification criteria, the Court disagreed. The Court found no
prejudice (but noted that if there were prejudice, this is exactly
the sort that can be addressed through costs), and favoured
deciding the matter itself, rather than remitting it back to the
certification judge for a new hearing; in the Court's view,
this approach recognized the goals of judicial economy and access
to justice. With respect to the 'identifiable class' criterion, the
motion judge found that the Appellant had not met this criterion
because the class definition was "merit-based", and
because the Appellant had failed to provide satisfactory evidence
that there were two or more persons "interested" in
joining the action. On appeal, the Appellant submitted a new class
definition, and the Court agreed that it was no longer
'merit-based'. With respect to whether there were two or
more persons "interested", the Court found that the
motion judge erred in principle when, as part of her identifiable
class criterion analysis, she required the Appellant to adduce
evidence that there was someone, in addition to the Plaintiff, who
also wished to pursue a claim for copyright infringement against
the Respondent. The Court found that the CPA does not (nor
does the case law) require evidence of a desire among class members
to pursue an action. With respect to the 'common issues' criterion, the
Appellant filed a revised list of common issues on appeal, seeking
to meet the concerns identified by the motion judge. The Court
found the revised common issues to be suitable for certification.
And with respect to the 'preferable procedure' criterion,
the Court found that, given the revised list of common issues, the
action now met the preferability criterion as well. The Court also
noted that three other copyright infringement cases involving
electronic databases that raised significant individual issues were
also found suitable for certification. With respect to the final issue, and whether the representative
plaintiff had a workable litigation plan, the Court agreed with the
motion judge that the Appellant's circumstances were atypical
of most surveyors in Ontario. However, the fact that its
circumstances were "atypical" did not render it
unsuitable to be a representative plaintiff. Noting that litigation
plans are a "work in progress" and may have to be amended
during the course of proceedings, the Court held that, if the
Appellant amends its Statement of Claim to abandon its claim for an
injunction, it can fairly and adequately represent the interests of
the class. As such, and subject to the Appellant amending its Statement of
Claim, the Court allowed the appeal, set aside the decision of the
motion judge and certified the modified common issues. The Competition Bureau has released a draft update of its Intellectual Property
Enforcement Guidelines for public consultation. The
consultation is open until June 2, 2014. CIPO and the Competition Bureau have announced that they have
signed a Memorandum of Understanding calling for
closer cooperation between the two agencies. 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.
NOC Proceedings
Substantial Indemnity Costs Upheld
Drug: celecoxibS. 8 Cases
Method for Assessing Quantum of Damages Determined by
Court
Trade-Marks Cases
New Evidence Not Material; TMOB Decision Upheld as
Reasonable
Applicant is not a Broadcasting Undertaking; thus held Not to
have Previous Use in Broadcasting Services
Registrar's Decision was Reasonable: "Use it or Lose
it"
Copyright Cases
FCA: Broadcasters Required to Pay for Ephemeral Copies
Divisional Court Overturns Motion Judge and Certifies Class
Proceeding for Copyright Infringement
Other Industry News