Canada: Elevated Costs Awarded For Not Dropping A Second Prohibition Proceeding (Intellectual Property Weekly Abstracts Bulletin - Week Of May 19)

Last Updated: May 22 2014
Most Read Contributor in Canada, September 2016

Edited by Chantal Saunders and Beverley Moore , Adrian Howard and Ryan Steeves


Elevated costs awarded for not dropping a second prohibition proceeding

Bayer Inc. v. Apotex Inc., 2014 FC 403
Drug: drospirenone + ethinylestradiol

Bayer had commenced multiple applications for prohibition against at least two generic companies in respect of its birth control tablets sold under the brand name YAZ®. On October 22, 2013, the first of those applications to be heard, against Cobalt, was dismissed. It is currently under appeal (A-385-13), but it might not be heard prior to the expiry of the patent at issue on December 22, 2014.

Prior to the hearing in the present application against Apotex, the Court advised the parties that it was unlikely to come to a different conclusion in respect of Apotex's allegations. As a result, the parties did not make any submissions and the proceeding was dismissed for the same reasons as the Cobalt proceeding.

The Court took issue with the applicant for not dismissing the proceeding earlier, and therefore Apotex was awarded a 25% premium on costs for the time period following the release of the reasons in the Cobalt decision.

Does an Injunction Preventing the Sale of Medication Irreparably Harm Patients? Issue is Left to be Decided another Day

Janssen Inc. v. AbbVie Corporation, 2014 FCA 112

Janssen sought a stay of the remedies phase of a trial before the Federal Court. Janssen had earlier been found to be infringing AbbVie's patent directed to human antibodies that bind a human cytokine known as interleukin 12 or IL-12 by the Federal Court (2014 FC 55). The decision on the merits is awaiting hearing by the Court of Appeal, and Janssen argued it was prudent to wait for the results of that appeal before deciding the remedies. Furthermore, the remedies phase was bifurcated into separate hearings for the injunction and the issue of damages, and that decision is also under appeal (2014 FC 178). Janssen argued if it was successful in the Court of Appeal, then the trial for injunctive relief either should not happen, or should not have been separated from the damages issues.

The Court of Appeal applied the test from RJR-MacDonald for a stay, but found that Janssen had not demonstrated irreparable harm. However, Janssen was specifically not precluded from bringing this motion again in the future.

Janssen had argued that patients will not be able to use its medication if the injunction issues, but the Court found that patients are not affected at this point in time. Depending on what happens in the Federal Court, the injunction may include terms that reduce or eliminate the harm to patients or, for that matter, other harms that Janssen could suffer. Or it might not grant the injunction at all. So at this point, the Court of Appeal held that the irreparable harm is speculative and hypothetical, and it declined to decide the issue of whether the harm to patients could amount to irreparable harm.


Intervener Loses Appeal, Can't Intervene in a Trade-mark Expungement Proceeding

Coors Brewing Company v. Anheuser-Busch, LLC, 2014 FC 318

The Applicants, Coors Brewing Company and Molson Canada 2005, sought the expungement of the Canadian trade-mark "Grab Some Buds" registered by the Respondent, Anheuser- Busch, LLC. The International Trade-mark Association ("INTA") sought leave to intervene. That motion was dismissed, and this is the appeal therefrom. The question for the Federal Court was thus whether the decision by the Prothonotary was based upon a wrong principle or upon a misapprehension of facts.

The Prothonotary considered a number of factors in determining whether or not a third party intervention should be permitted. His major point was that INTA had failed to demonstrate that its proposed intervention would add to the debate, a factor that the Court agreed with. The Court held that it would certainly be able to hear and decide the case on its merits without the proposed intervention. The Court also noted that the interests of justice would not be better served by allowing an intervention given the late stage of the proceeding (i.e. two weeks before the hearing date). Therefore, the Court dismissed the appeal, and awarded costs to the Applicants. While the Court acknowledged that costs were following the event, it was also done in part because the appeal was made presentable in Vancouver while counsel for the Applicants (and Respondent, who did not appear in any event) reside in Ottawa.

Appeal of Opposition Board's Decision Dismissed – New Evidence not Enough

Servicemaster Company v. 385229 Ontario Ltd., 2014 FC 440

This was an appeal from a decision of the Trade-marks Opposition Board refusing two trade- mark applications filed by the Applicant, The Servicemaster Company ("Servicemaster"). The applications were to register the trade-marks SERVICEMASTER CLEAN (the "Word Mark") and SERVICEMASTER CLEAN & Design (the "Design Mark"). The Respondent Ontario corporation is the owner of the registered trade-mark MASTER CLEAN.

With respect to the Word Mark, the Registrar found that the Respondent's s. 16(1)(a) ground of opposition succeeded. With respect to the Design Mark, the Registrar found that the Respondent's grounds of opposition succeeded with respect to s. 12(1)(d), s. 16(1)(d) and s. 2. On appeal, Servicemaster limited the challenge to the findings related to the above-noted grounds, and relied on a "new evidence" argument. The Court noted that the standard of review for appeals pursuant to s. 56 of the Trade-marks Act is reasonableness, unless new evidence is filed that would have materially affected the Registrar's decision. Where additional evidence is filed, as there was here, and where is it found that the evidence would have materially affected the Registrar's finding of fact or exercise of discretion, the Court must come to its own conclusions as to the correctness of the decision.

The Court found that Servicemaster failed to produce new evidence that would have materially affected the Registrar's decision. Therefore, the Court had no need to exercise its discretion with respect to the Registrar's findings, and thus dismissed Servicemaster's appeal.

Court Grants Injunction, Delivery Up and Awards Compensatory Damages for Lost Sales to Souvenir Maker

Gary Gurmukh Sales Ltd. v. Quality Good Imd Inc., 2014 FC 436

This case involves two competitors in the souvenir-making industry, and at issue are two trade-marks: CANADIAN FAST FOOD and CANADIAN POLAR BEAR IN SNOW STORM.

Per-Design Inc. ("Per") is the owner of the trade-marks, while Gary Gurmukh Sales Ltd. ("GGS") sells merchandise bearing these trade-marks, and is the exclusive licensee of Per. In one of the herein proceedings, GGS and Per commenced an infringement proceeding against Quality Goods IMD Inc. ("QG"), a competitor to GGS, where GGS and Per sought an injunction restraining QG from using the trade-marks, delivery up of Quality's infringing merchandise, damages for trade-mark infringement, pre- and post-judgment interest, and costs. In the second proceeding, QG started an expungement proceeding, where it sought an order striking the trade-marks, as well as damages for continuing lost sales resulting from threatening letters sent to its customers after the alleged improper registration of the trade- marks, as well as pre-judgment interest and post-judgment interest on any damages award.

According to the Court, GGS has sold merchandise bearing the trade-marks since 2005, while QG used the trade-marked phrases on merchandise, often accompanied by images similar to those used by GGS, since 2005. QG claimed that its art and design department developed the designs independently in 2004, and that they were well known in Canada. It was also noted that when GGS registered the trade-marks, QG was aware, and chose not to file an opposition to the registrations. GGS only became aware that QG was selling merchandise bearing its trade-marks in 2007, which continued into 2008. GGS sent several cease and desist letters during this time, while the trade-marks were in the process of being registered. Once the trade-marks were registered, in 2010, GGS sent another cease and desist letter to QG providing conditions that, if fulfilled, would result in GGS not taking legal action. QG did not fulfill the conditions, and QG continued selling merchandise bearing the trade-marks. Over the course of nearly a year, GGS discovered several retailers selling merchandise, purchased from QG, bearing the trade-marks. Cease and desist letters were also sent to those retailers. QG refused to stop using the trade-marks, claiming that they were not unique, and that the concepts were well known in the industry before they were registered as trade-marks. QG also claimed that they entered into an agreement (orally, not in writing) with GGS (which GGS denied) to allow both companies to sell merchandise bearing the trade-marks. QG claims that GGS breached that agreement by sending cease and desist letters to its retail customers and that, as a result, several of QG's customers returned its merchandise.

In the expungement proceeding, the Court first considered whether the trade-marks are distinctive. In the Court's view, QG failed to rebut the presumption of validity in the marks, as it produced insufficient evidence to demonstrate that the marks are no longer distinctive. While QG's argument that the trade-marks lack distinctiveness was premised on GGS's failure to adduce evidence that its trade-marks distinguish its products, the Court held that this type of argument was insufficient to prove that a trade-mark is no longer distinctive. The Court also considered the issue of whether the trade-marks were confusing with trade-marks previously made known in Canada by QG, at the time of registration. QG claimed it had common law trade-marks in the phrases prior to GGS registering them. However, the Court held that QG failed to adduce sufficient evidence to demonstrate that it used the trade-marks (pursuant to s. 4 of the Trade-marks Act) or made them known prior to GGS. On these bases, the Court found that QG had failed to show invalidity of the trade-marks.

In the infringement proceeding, the Court first addressed the issue of the alleged agreement between the parties. In view of "inconsistent" and "insufficient" evidence, the Court held that there was no such agreement whereby GGS consented to QG's use of the trade-marks. On the issue of infringement pursuant to section 19 of the Trade-marks Act, the Court found the evidence clear that QG sold merchandise bearing the exact phrases covered by the trade-marks, and thus infringed. With respect to infringement pursuant to section 20, the Court considered the trade-marks used by QG (FAST FOOD CANADIAN STYLE and CANADIAN POLAR BEAR IN A BLIZZARD) and conducted a confusion analysis using the factors set out in subsection 6(5). The Court noted that infringement for the purposes of section 20 requires only a likelihood of confusion, not actual confusion. The Court considered the factors for confusion, and held that when viewed in all of the circumstances and with regard to the evidence and factors in subsection 6(5), the trade-marks used by QG are confusing with the registered trade-marks.

The Court also considered GGS' passing off claim, and acknowledged that the important issue to consider is whether GGS has demonstrated goodwill attaching to their trade-marks. GGS relied primarily on the volume of sales of its products to support its argument. No other significant evidence was provided, and thus, the Court could not establish goodwill. GGS' claim for passing off failed.

With respect to remedies, GGS sought an injunction, delivery up, compensatory damages (a claim of $160,000, based on QG's 50% profit margin, tied to revenues from sales of the infringing merchandise), and punitive damages (a claim of $65,000 for persistent and deliberate infringing behaviour and disregard for demand letters). GGS actually claimed slightly higher damages at the hearing, citing further infringing activities. QG argued at the hearing that GGS was not entitled to claim damages and an amount based on QG's profits, and noted that GGS presented no evidence of any loss suffered. The Court held, however, a lack of evidence as to the losses suffered by GGS does not preclude an award of damages. Where appropriate, the amount of infringing sales and profits are a relevant consideration and the Court can rely on its best estimate of damages that should be awarded. In light of GGS' failed claim for passing off, the Court did not consider the sales of merchandise bearing the trade-marks between 2005 and 2008; this reduced the overall included sales. Therefore, when considering the total amount of QG's remaining sales, and applying the 50% profit margin, the Court calculated that approximately $74,000 was lost due to QG's infringement. The Court did not think this was an appropriate case to award punitive damages, as the Court did not characterize QG's behaviour as "malicious, oppressive, or offensive" to the Court's sense of decency. Compensatory damages, the Court held, were sufficient to remedy the harm suffered by GGS. In addition to those damages, the Court also granted the requested injunction and delivery up of infringing goods, together with pre- and post-judgment interest, and costs.


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