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
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
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
Twenty-five year old trademark registration for PACIFICO &
Design is not expunged as first use is shown and no confusion was
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
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.
A recent Saskatchewan Court of Queen's Bench decision allowed a court-appointed receiver to sell and transfer intellectual property rights free and clear of encumbrances, finding that a license to use improvements of an invention was a contractual interest and not a property interest.
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