Canada: Formulation Patent – Allegations Of Non-Infringement, Obviousness And Lack Of Utility Justified (Intellectual Property Weekly Abstracts Bulletin: Week Of March 2, 2015)

Last Updated: March 5 2015

Edited by Chantal Saunders , Beverley Moore and Adrian Howard


Formulation patent – allegations of non-infringement, obviousness and lack of utility justified

Laboratoires Servier and Servier Canada Inc. v. Canada (Health), 2015 FC 108

Drug: gliclazide

Servier sought a prohibition order against Apotex in relation to its DIAMICRON MR gliclazide product. The application was dismissed. The patent at issue claimed a new formulation for a breakable modified release tablet. The Court considered allegations of non-infringement, obviousness and lack of utility.

The Court held that Apotex' allegations of non-infringement were justified, as its product did not contain a binder, which was an essential element of the patent. Furthermore, the in vitro dissolution profile of Apotex' product was not identical to that in the patent. The Court conducted the obviousness analysis and concluded that the skilled worker would have been able to combine the mosaic of prior art into the claimed invention, as the step was not high and the gap was not broad.

The Court then considered the inutility allegations, holding that as of the filing date, the patent must either disclose demonstrated utility or a basis for a sound prediction of utility. Servier relied on two studies as evidence of demonstrated utility. However, these studies were not referenced in the specification of the patent. Furthermore, the study included in the patent tested a single tablet. The Court held that this was not sufficient for utility to be demonstrated. The Court then held that the patent was not soundly predicted.


Business delays in opening a Canadian establishment found not sufficient to support non-useof the markSTK

Gouverneur Inc. v. The One Group LLC, 2015 FC 128

This is an appeal from a decision of the Registrar who refused to expunge the Respondent's mark pursuant to section 45 of the Trademarks Act. The mark STK (the "Mark") was registered in 2008 for a high energy, female-friendly steakhouse.

In the three years after it was registered the Mark was never used, although there were discussions with various hotels and property owners to open a STK establishment in Canada. It was submitted that after the recession all those deals fell through.

The Court found on the evidence that while the discussions with hotels and property owners fell through, there was not enough to support a finding that the non-use of the Mark was attributable to decisions made by third-parties. The Court also found that the process of opening an establishment can take years, and this is not uncommon, unusual or exceptional. It was described that Parliament's intent was to provide three years to commence use in Canada, and beyond that there must be something out of the ordinary to explain non-use,  but there was nothing out of the ordinary here. The appeal was allowed, and the registration for the Mark was expunged.

Nominal damages awarded following infringementof PIRANHA mark

Black & Decker Corporation v. Piranha Abrasives Inc., 2015 FC 185

The Applicants own or licence two trademarks, a PIRANHA word mark and a PIRANHA design mark in association with saw blades and related wares. These marks were asserted against the Respondent who sells high quality diamond abrasive blades, grinding cups, polishing pads and core bits. After a complaint was lodged, the Respondent applied for a PIRANHA ABRASIVES design trademark and further commenced a section 45 request in response.

The Court found the Applicants' marks had been infringed. However, the Court was unable to find that the Applicants established a reputation to support a valid claim in passing-off, nor to establish depreciation of goodwill.

Although the Respondent argued that the BLACK & DECKER mark or the distinctive orange and black colour scheme would assist the consumer in avoiding confusion, the Court held that there was no subjugation or erosion of the distinctiveness of the product trademark. The distinctive marks and length of use, as well as the degree of overlap, weighed against such a finding.

Nonetheless, the Court did not find sufficient evidence of an independent reputation in the PIRANHA marks to support a claim of passing off. The Court also did not find evidence of a depreciation of goodwill as there was no evidence showing that the Applicants have suffered any loss of reputation or customers due to the activities of the Respondent.

Nominal damages of $10,000 and $20,000 in costs were awarded, and a limited injunction for use of the PIRANHA ABRASIVES design trademark in association with abrasive circular saw blades. The Respondent's domain names www.piranha and were not ordered to be transferred. The Respondent had 90 days to sell off any infringing inventory and otherwise had to destroy or deliver up any remaining infringing inventory to the Applicants.


Canada's amendments to the Plant Breeders' Rights Act and several other pieces of legislation have received Royal Assent. The amendments will come into force on a day to be fixed by order of the Governor in Council.

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