Canada: Court Upholds Board’s Decision Refusing Trademark For Lack Of Distinctiveness (Intellectual Property Weekly Abstracts Bulletin: Week Of January 19, 2015)

Last Updated: January 22 2015

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

Trademarks Decisions

Court Upholds Board's Decision Refusing Trademark for Lack of Distinctiveness

Philip Morris Products SA v. Imperial Tobacco Canada Limited, 2014 FC 1237

This was an appeal from a decision of the Registrar of Trademarks' decision to decline Philip Morris' application to register the proposed trademark "FLIP-TOP". The Court dismissed the appeal.

The issue on appeal was whether the Board erred in finding that the proposed mark could not be registered because it was not distinctive. The Federal Court refused to consider the issue of whether the proposed mark was clearly descriptive, because the Board had considered the issue but had expressly refused to make a finding.

Both parties filed new evidence, however the Court held it would not have materially affected the Board's decision. Thus, the Court assessed the decision using the reasonableness standard. The Court held it was open to the Board to conclude that the term "FLIP TOP" in association with tobacco products was not distinctive. Thus, it was reasonable, and the Federal Court dismissed the appeal.

Other Decisions of Interest

Court Finds Claims Do Not Cover Method of Medical Treatment, Orders that they Issue

Abbvie Biotechnology Ltd. v. Canada (AG), 2014 FC 1251

In this decision, Abbvie brought a judicial review of a decision of the Commissioner of Patents refusing to issue its patent. The issue was whether the claims were directed to a method of medical treatment. The Court disagreed, held that the claims were patentable, and directed that they be allowed.

The Court considered the standard of review and held that it is correctness. The issue is a pure question of law relating to the statutory limits of patentable subject matter. There are no facts in dispute. The only issue is the Commissioner's interpretation of statutory subject matter and, more specifically, the scope of the prohibition on methods of medical treatment.

The Court held that the skill and judgment of the physician is exercised when a decision is made as to whether or not to use the claimed invention in the treatment of a patient. Furthermore, "just because the claims involve a fixed dosage and schedule does not mean that they are automatically patentable, nor does it mean that they constitute unpatentable subject matter." (para. 113) The jurisprudence is consistent that when the claim is directed to the exercise of professional skill or judgment, it is not patentable. In this case, the claim was to a vendible product. The skill and judgment relates to whether or not to prescribe that product. Thus, the claim was patentable.

The Court then held that the Commissioner had already found the claims to be not anticipated and not obvious. Only the issue of patentable subject matter was to be resolved. Thus, the Court held there is nothing more to re-examine and the claims should issue.

Court Refused to Grant Protective Order Covering NOA

Takeda Canada Inc. v. Mylan Pharmaceuticals ULC, 2014 FC 1076

In the context of a proceeding brought pursuant to the NOC Regulations, Mylan sought a confidentiality that would allow it to designate portions of its Notice of Allegation (NOA) as confidential and shield it from public disclosure.

The Court refused to grant a confidentiality order covering portions of the NOA, as Mylan did not treat the information as confidential at all material times. It held that Mylan had voluntarily sent it to Takeda with no reasonable expectation of it being kept confidential. Furthermore the Court refused to allow Mylan to mark as confidential a fact affidavit attesting to why the NOA should be confidential. The Court held that Mylan had no real expectation that the affidavit would be kept confidential, and furthermore, it did not contain any confidential information.

The Court also considered and rejected Mylan's argument that it being the first to enter a generic market is sufficiently important a commercial interest to justify the confidentiality order. The Court held that other generic companies are part of the "public", and they have an interest in this material.

Minister's Decision to Grant NOA to Generic Company Set Aside, as the Generic did not Comply with the NOC Regulations

Pfizer Canada Inc. v. Teva Canada Limited, 2014 FC 1243

In this proceeding, Pfizer sought to judicially review the Minister of Health's decision to grant Teva a NOC for exemestane. A company called GMP filed an ANDS for exemestane. However, it sent a NOA to Pfizer for atorvastatin. Health Canada issued a NOC to GMP for exemestane. Teva then filed an administrative ANDS seeking approval to market exemestane, and was granted a NOC.

Pfizer started a proceeding seeking to quash the NOC issued to Teva. GMP sent a letter to Health Canada indicating that it had sent the wrong NOA to Pfizer. Health Canada informed GMP and Teva that the NOCs would be rescinded and Pfizer discontinued its judicial review.

GMP sent a NOA to Pfizer with respect to exemestane. Pfizer did not start a proceeding, as GMP does not sell products in Canada. GMP was issued a new NOC. Teva was also issued a new NOC. Health Canada's records indicate that Teva filed an administrative ANDS, based on a licensing agreement with GMP and Health Canada determined that Pfizer's AROMASIN exemestane product was the reference product for Teva's exemestane product. Pfizer started the within judicial review.

The Court held that the Minister's decision must be reviewed on the basis of correctness. The Court held that the NOC Regulations exist not only to allow generic companies to early work patented medicines, but also to balance these interests with those of the patentee in obtaining protection for inventions that are legitimately patented. The Court held that Teva made exactly the sort of comparison contemplated by the NOC Regulations. Once the purpose of the NOC Regulations was understood, it supports the conclusion that Teva must comply with them. Thus, the application was granted and the Minister's decision granting Teva a NOC was set aside.

Other Industry News

Health Canada has published a Draft Guidance Document - Tamper-Resistant Formulations of Opioid Drug Product Submissions. The Consultation is open until March 7, 2015.

Health Canada has released drafts of Part I: Health Professional Information and Part II: Scientific Information - Guidance Document: Product Monograph. The Consultation is open until March 4, 2015.

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