Canada: Struck Paragraphs Claiming Section 8 Losses Relating To Overall Market Share Are Allowed Back Into The Pleadings (IP Weekly Bulletin - Week Of October 19, 2015)

PATENT DECISIONS

Struck paragraphs claiming section 8 losses relating to overall market share are allowed back into the pleadings

Pharmascience Inc. v. Pfizer Canada Inc., 2015 FC 1134

The Federal Court has allowed an appeal of a Prothonotary's decision that struck out certain paragraphs of an Amended Statement of Claim without leave to amend. Pfizer brought a motion to strike several paragraphs in Pharmascience's claim pursuant to section 8 of the PM(NOC) Regulations, including paragraphs 35 and 36:

35.  Therefore, Pfizer's invocation of the PM(NOC) Regulations and its commencement of Prohibition Proceeding #1 and Prohibition Proceeding #2 have resulted in lost sales to Pharmascience for the Pharmascience Capsules, the Pharmascience 225 Capsules and other, non-pregabalin products.

36.  In addition, during the Exclusionary Period and the Second Exclusionary Period, Pharmascience lost its opportunity for significantly enhancing its reputation for introducing new products on the market in advance of its competitors, thereby increasing the sale of Pharmascience' s products.  As a result of this lost opportunity, Pharmascience was prevented from obtaining increased sales and market share for its non-pregabalin products.

The Court held that losses suffered during the section 8 period relating to other products and to overall market share are losses which the jurisprudence recognizes as potentially recoverable in a section 8 proceeding. On that basis, the claims to such losses were not struck.

TRADEMARK DECISIONS

Twenty-five year old trademark registration for PACIFICO & Design is not expunged as first use is shown and no confusion was found

Pacific Western Brewing Company Ltd. v. Cerveceria del Pacifico, 2015 FC 1078

Pacific Western sought to expunge the trademark registration for PACIFICO & Design in association with beer, but was unsuccessful. The mark was filed in 1987, claiming use in Canada as early as 1986 and it issued in 1990.

Pacific Western was described as a Canadian brewery, selling beer throughout British Columbia and internationally. The Court noted that Pacific Western had been operating since 1957, and had manufactured and sold beer in association with various PACIFIC trade-marks since at least as early as 1984.

Pacific Western alleged that the Registration was invalid for two reasons: 1) the Mark was not first used in Canada as early as April 14, 1986, as stated on the register, and this misstatement was material or fundamental; and/or (b) when Cerveceria filed its application for registration of the Mark, it was not entitled to secure the registration of the trade-mark, as it was confusingly similar to Pacific Western's various trade-marks, which were used prior to the first use of the Mark by the Cerveceria.

The evidence showed, among other things, that April 14, 1986 was the date of the first wholesale transaction of PACIFICO beer in Canada. On this basis, the Court concluded that the date of first use was accurate, and accordingly there was no material or fundamental misstatement as to the claimed date of first use.

As for the allegation of confusion, the Court looked to Pacific Western's registered marks that were both used (PACIFIC GENUINE DRAFT and PACIFIC DRAFT), or adopted (PACIFIC) as of the relevant date. There were also two PACIFIC PILSNER labels in evidence. After reviewing all the evidence, the Court found that Pacific Western's marks were all comprised of additional elements that served to further distinguish them from the PACIFICO mark. Some of these elements included the use of Spanish on the label and the strong and contrasting colours and fonts that suggested a foreign origin and the impression of an imported beer originating from Mexico. This was found to contrast with Pacific Western's marks.

The Court further noted that the parties have coexisted in the marketplace for decades and noted that the 25 year delay before attempting to invalidate the Registration weighed heavily against a finding of confusion. Therefore, the mark was not expunged.

OTHER INDUSTRY NEWS

Health Canada has published a Notice: Clarification of bioanalytical method validation procedures.

Health Canada has published a Notice — Re: Preparation of Drug Master File (DMF) in "Non-eCTD Electronic-Only" Format.

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