Canada: Apotex Sought To Enter The Market With Its Generic Version Of Travoprost (Intellectual Property Weekly Abstracts Bulletin – Week Of August 18)

Last Updated: August 21 2014
Article by Beverley Moore, Chantal Saunders, Ryan Steeves and Adrian J. Howard

Most Read Contributor in Canada, September 2016

NOC Cases

Invalidity Allegations re Anticipation and Obviousness found Justified

Alcon Canada Inc. v. Apotex Inc. , 2014 FC 699<</p>

Drug: travoprost

In this case, Apotex sought to enter the market with its generic version of travoprost. The Court dismissed the proceeding on the basis that Apotex' allegations as to anticipation and obviousness were held to be justified. The Court construed the claims at issue to claim the use of a compound containing a therapeutically effective amount of travoprost for the treatment of glaucoma and ocular hypertension; and the use of a topical opthalmic composition for the treatment of glaucoma and ocular hypertension.

The Court held that the patent at issue was not a selection patent, as one of the hallmarks of a selection patent is a clear statement of the promise of the special advantages of the selected compound over the genus. In this case, the Court held that although some classic selection language is used, the claims as construed do not promise more than therapeutic effectiveness in the treatment of glaucoma and ocular hypertension. Since the promise is only to be useful or to provide a therapeutically effective treatment for glaucoma, then it has not asserted any special advantages, and will not be characterized as a selection patent.

The Court considered the inventive concept and the promise of the patent, and held that this promise was soundly predicted. The Court then held that the anticipation allegations were justified, as an exact description is not required in the test for anticipation, and travoprost was encompassed by the compounds of one of the pieces of prior art, although it was not specifically named or made. The Court dismissed Alcon's argument that travoprost was carved out of the previous document. The Court also held that the allegations as to obviousness were justified.


Court Grants Appeal: Decision of Registrar Set Aside

Hayabusa Fightwear Inc. v. Suzuki Motor Corporation , 2014 FC 784

This was an appeal of a decision of the Trade-marks Opposition Board refusing the trade-mark application made by Hayabusa Fightwear Inc. (the "Applicant"), seeking registration of the trade-mark HAYABUSA (the "Mark"). The refusal was made following the opposition of Suzuki Motor Corporation (the "Respondent") for registration of the Mark.

As background, the Applicant designs and sells specialized fightgear and fightwear, in the field of mixed martial arts. The Respondent has been using the registered trade-mark HAYABUSA in relation to motorcycles and fittings thereof, and in relation to caps (or hats) (although the HAYABUSA trade-mark of the Respondent (the "Cited Mark") is registered for use in association with motorcycles and fittings, but not in relation to caps).

The grounds of opposition were essentially related to non-conformity (pursuant to section 30 of the Act),non-registrability (confusion), not the person entitled to registration (confusion) and non-distinctiveness pursuant to section 2 of the Act. The Registrar dismissed one ground of opposition related to non-conformity, but largely sided with the Respondent on the others. The Registrar decided not to deal with the grounds of non-registrability and one of the non-conformity grounds (lack of statement in ordinary commercial terms).

On appeal, the Applicant filed additional affidavit evidence of its Co-President and CFO. As a result, the issues on the appeal were: (1) does the additional evidence materially affect the Registrar's decision for each individual ground of opposition? (2) was the Registrar's decision reasonable? and (3) can the Court decide the remaining grounds of opposition that the Opposition Board chose not to decide?

The Applicant argued that its new evidence would have materially affected the Registrar's decision since it would have addressed the evidentiary gaps raised by the Registrar itself, in particular regarding non-entitlement (regarding the channels of trade), and distinctiveness. The Court was not persuaded, noting that the supplementary affidavit evidence was not relevant and could not have materially affected the Registrar's decision.

With respect to the reasonableness of the Registrar's decision, the Court held that the different channels of trade for the products of the Applicant and the Respondent were a most crucial factor that should have tipped the balance in favour of the Applicant. The Court held that the Registrar could not reasonably conclude, on the basis of the evidence that was before her, that this factor was not sufficient to shift the balance of probabilities in favour
of the Applicant.

The Court also decided the remaining grounds of opposition that the Opposition Board chose not to decide, namely non-registrability and one of the non-conformity grounds (lack of statement in ordinary commercial terms). Both were dismissed, with brief reasons.

Therefore, the Court granted the appeal and set aside the decision of the Registrar.

Industry News

Health Canada has released a draft revised Guidance Document: Reconsiderat​ion of Decisions Issued for Human Drug Submissions for a 60-day consultation period. The Consultation is open until October 11, 2014.

The BLG Life Sciences Group has published LIFESIGNS: Life Sciences Legal Trends​ in Canada, a Report on Intellectual Property, Litigation, Corporate Commercial legal trends and industry developments in Canada.

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

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

In association with
Related Video
Up-coming Events Search
Font Size:
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
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). 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 & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd 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 or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.