The Federal Court of Appeal (FCA) issued two sets of reasons
stemming from two appeals between these companies. Both
appeals were from the same Federal Court decision (here, summary
here). In this case, the Application Judge held that the
allegations as to obviousness were justified. The FCA
dismissed the appeal.
The FCA held that the patent related to a new dose for a known use
of a known compound. The FCA held that as long as a judge does not
misidentify or misapply the legal test, the deferential standard of
palpable and overriding error applies to the analysis. Furthermore,
the FCA held that if the judge's reasons are alive to the
issues, the judge is assumed to have considered all of the evidence
and there is no palpable and overriding error due to a failure to
reference a particular piece of evidence. The FCA held that
its role was not to re-weigh evidence on appeal.
FCA Dismisses Appeal; Upholds Grant of Prohibition Order in
Face of Lack of Sound Prediction and Obviousness
In the second case, Actavis appealed the grant of a prohibition
order by the Application Judge. At issue was whether the
patent was invalid for lack of sound prediction and utility and for
obviousness. The Application Judge held that the allegations
were not justified and the FCA dismissed the appeal.
The patent claimed moxifloxacin and its stereoisomers and mixtures.
The FCA held that construction of the patent is a matter of law, to
be reviewed on a correctness standard; whereas sound prediction and
obviousness are matters of mixed fact and law, to be reviewed on a
standard of palpable and overriding error. The FCA held that
the Appellant was essentially re-arguing its case, asking it to
prefer different evidence.
Court Refuses Prohibition Order; Finds Allegations of
Non-infringement and Obviousness Justified
The Federal Court dismissed the proceeding, refusing to grant
Lilly a prohibition order in relation to its formulation
patent. The Court held that the allegations of
non-infringement and obviousness were justified, however, the
allegation of invalidity due to lack of utility was not
justified. Furthermore, the proceeding was not an abuse of
When Assessing Confusion in Relation to Word marks, One
Must Look Beyond any Single Use to the Entire Scope of the
The Federal Court granted an appeal from the Trademarks
Opposition Board (TMOB); quashed its decision and remitted the
matter back for further determination. One of the applicants
had registered the trademarks PINNACLES and PINNACLES RANCHES in
association with wine. A second applicant, another winery, had
used the mark PINNACLE under licence. They opposed the
respondent's application for DOMAINE PINNACLE & DESIGN in
association with inter alia apple based alcoholic
The Court held that new evidence may be submitted on appeal,
however the question remains: would the fresh evidence have
materially affected the TMOB's findings or its exercise of
discretion. That determination affects whether the Court will
perform a de novo review, or consider the matter on a
standard of reasonableness. In this case, the Court did not
accept that the fresh evidence would have materially affected the
However, the Court held that the TMOB made an error in its
determination of the degree of resemblance between the marks, and
that error impacted the TMOB's global analysis of the factors
under the confusion test. The Court held that as long as the
confusion analysis uses a registered word mark as the basis for the
analysis, the teaching of the Supreme Court of Canada in
Masterpiece, is pertinent and not distinguishable. In
this case, the TMOB's analysis hinged on the visual element and
the ideas suggested, when it should have taken into account that
the registered word mark PINNACLE could have had different styles
of lettering, colour or design.
The Federal Court dismissed a motion by Apotex seeking particulars from Allergan's pleading relating to the prior art, inventive concept, promised utility and sound prediction of utility of the patents at issue.
Last year we saw the Canadian Courts release trademark decisions that granted a rare interlocutory injunction, issued jailed sentences for failure to comply with injunctive relief, grappled with trademark and internet issues...
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