Damages Portion of Trial Determined This decision relates to the remedy portion of an infringement action in which the Plaintiffs
were successful. That decision was upheld on appeal. The Plaintiffs elected an accounting
of the Defendants' profits. The Court began by noting the burden on each party, namely that
the Plaintiffs must establish the Defendants' revenue
attributable to the sale of the infringing product, and the
Defendants must establish the costs incurred in the production and
sale of the infringing product and any applicable apportionment.
The Defendants argued that a portion of their revenue should be
deducted from the revenue to be used for the calculation because it
was paid for non-infringing indemnity and legal services to its
affiliates in other countries, and was not related to the sale of
the infringing product. The Court disagreed based on the evidence
and also found that apportioning that revenue would not be
equitable in this case. The Defendants also argued that there were non- infringing
alternatives (NIAs) available and the differential profit approach
should be applied. The Court found that the Defendants could deduct
only their stipulated incremental costs. The Court rejected the
arguments made by the Defendants with respect to NIAs. The Court
stated that "the Supreme Court of Canada simply reiterated
that 'the inventor is only entitled to that portion of the
infringer's profit which is causally attributable to the
invention' (Schmeiser,at para 101). In other words, the
'Preferential profit' approach is preferred over the actual
profit approach when the latter would lead courts to order the
infringer to disgorge its profits from its sales, whether or not
the invention was only a portion or component of the good sold or
used and whether or not the infringer's profits were only
partly attributable to the infringement." Notwithstanding its
findings with respect to the NIAs, the Court considered whether any
NIAs were available to the Defendants, and concluded there were
not. The Defendants brought a motion for an order staying the Order
until the latest of the exhaustion of all appeals including the
Supreme Court of Canada, and the final determination of cases in
the UK. The motion was dismissed. The Court also refused to redact
much of the information submitted by the Defendants to be
confidential. Court Holds Appeal of Opposition of Withdrawn Trademark
Application is Moot Engineers Canada appealed from a Trademarks Opposition Board
(TMOB) decision refusing its opposition to the mark POLARTEC
ECO-ENGINEERING DESIGN (the Mark). The Federal Court held that the
appeal was moot, and declined to exercise its discretion to hear
it. Engineers Canada had argued that as the respondent was not
registered to practice engineering, and does not employ licensed
engineers, the Mark was deceptively misdescriptive. The TMOB
disagreed, and also held that the Mark was distinctive. However,
while the appeal was pending, the Respondent withdrew its
application for registration of the Mark, and moved to have the
appeal dismissed for mootness. Engineers Canada did not consent to
the motion. The Respondent indicated it would not appear at the
hearing of the motion. Engineers Canada argued that the withdrawal of the application
does not equate to abandonment of the Mark, and thus, the
Respondent may still use the Mark. However, the Court held that
this argument had been previously considered and dismissed in a
similar decision. Furthermore, if a court order is required, the
Applicant can bring a trademark infringement action. 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.
Patents
ADIR v. Apotex Inc., 2015 FC 721
Drug: perindoprilTrademarks
Engineers Canada v. MMI-IPCO, LLC, 2015 FC
839