Canada: Court Of Appeal States Obviousness Test Is "More Or Less Self-Evident" And Not "A Fair Expectation Of Success" (Intellectual Property Weekly Abstracts Bulletin — Week Of January 4, 2016)

NOC Decisions

Court of Appeal states obviousness test is "more or less self-evident" and not "a fair expectation of success"
Eli Lilly Canada Inc. et al. v. Mylan Pharmaceuticals ULC et al., 2015 FCA 286
Drug: tadalafil

The Court of Appeal has dismissed the appeal of a dismissal of an application pursuant to the PM(NOC) Regulations that had found Mylan's allegations of invalidity to be justified.

The Court of Appeal held that the correct test for obviousness, and the test that ought to be applied by the Federal Court, is that articulated by the Supreme Court of Canada in Apotex Inc. v. Sanofi-Synthelabo Canada Inc., 2008 SCC 61, [2008] 3 S.C.R. 265, at paragraph 66: "For a finding that an invention was 'obvious to try', there must be evidence to convince a judge on a balance of probabilities that it was more or less self-evident to try to obtain the invention. Mere possibility that something might turn up is not enough."

Trademark Decisions

Federal Court upholds refusal of four applications for marks containing the word SECRET
Eclectic Edge Inc v. Gildan Apparel (Canada) LP, 2015 FC 1332

Eclectic Edge Inc. ("Eclectic") previously filed applications to register four trademarks containing the words "valentine" and "secret", based on proposed use in association with several goods in the nature of women's clothing, undergarments and lingerie. The respondent Gildan Apparel (Canada) LP ("Gildan"), through one of its predecessor entities, opposed the registration on the basis of reasonable likelihood of confusion with its own registered trademark SECRET and numerous other trademarks containing the word SECRET (the "SECRET Marks"). The Registrar of Trademarks refused Eclectic's four applications, and Eclectic appealed from those decisions.

One issue on appeal related to judicial comity. Eclectic claimed that judicial comity should lead the Court to follow the conclusions of Justice Manson in the recent Eclectic Edge Inc v Victoria's Secret Stores Brand Management, Inc, 2015 FC 453 decision involving Eclectic's VALENTINE SECRET Marks and the VICTORIA'S SECRET trademarks. Conversely, Gildan argued that the principle of judicial comity should instead convince the Court to echo the judicial findings of fact and law made by Justice Tremblay-Lamer in Cortefiel SA v Doris Inc, 2013 FC 1107, which related to the WOMEN'SECRET trademark and Gildan's SECRET Marks. The Court did not agree with either party on the issue of judicial comity because it held that comity only applies to determinations of law, and not to findings of facts where there is a different factual matrix or evidentiary basis between the two cases. The Court concluded that the current appeal involves a different issue, based on different facts, and opposing different parties, and assessed the current appeal based on the evidentiary record and arguments before him.

The Court was not persuaded the new evidence filed in the appeal would have materially affected the Registrar's decisions. Therefore, the Court applied the reasonableness standard of review and on that basis dismissed the appeal.

Appeal pursuant to section 56 granted and opposition granted
Home Hardware Stores Limited v. Benjamin Moore & Co., Limited, 2015 FC 1344

This is an appeal pursuant to section 56 of the Trade-marks Act in respect of a decision of the Trademarks Opposition Board (the "Board") to reject Home Hardware's opposition to the trademark applications filed by Benjamin Moore.

The Court considered the standard of review and in particular found that the new evidence submitted by Home Hardware would have materially affected the Board's findings. The Court agreed with the Board in dismissing the grounds of opposition under section 30(e) and (i) of the Trade-marks Act. The Court considered the likelihood of confusion in light of Home Hardware's new evidence and found that an ordinary consumer would likely be confused.

The Court set aside the Board's decision rejecting the opposition and the application was refused with costs to Home Hardware.

Copyright Decisions

Additional costs awarded to TekSavvy to produce names and addresses pursuant to Norwich order
Voltage Pictures LLC v. John Doe, 2015 FC 1364

TekSavvy has successfully appealed in part an earlier costs order relating to a motion to compel a non-party pursuant to Rule 238 (We previously summarized the motion during the week of February 25, 2014). TekSavvy was ordered to produce the names and addresses of subscribers associated with roughly 1140 Internet Protocol ("IP") addresses, which Voltage had identified as engaging in the infringement of their copyrights.

The original costs order assessed the reasonable legal costs, administrative costs and disbursements incurred by TekSavvy in complying with the production of the names and addresses. The original costs order provided that Voltage would pay TekSavvy its costs of $21,577.50 before TekSavvy would be required to release the requested information, and allocated no costs to the assessment itself or to the motion on the merits.

The Court held on appeal that there is nothing in the jurisprudence that suggests that an innocent party must be made whole, fully indemnified or compensated on a "but for" damage-like causation basis for any and all costs incurred in connection with a motion for a Norwich-type order. However, the Court noted that this is not to say that although indemnification of costs incurred in a Norwich-type order are normally limited to those incurred in the motion and in abiding with the order, that greater indemnification cannot be awarded for the consequential costs arising as a result of the motion.

The appeal of the costs order was allowed in part and awarded TekSavvy an additional amount of $11,822.50 in costs. This included further costs in the amount of $4,322.50 for the "second check/QA verification" task and legal costs of $7,500 on the motion itself.

Rules of procedural fairness breached by refusal to allow Netflix to be heard on new provisions in tariff
Netflix, Inc. v. Society of Composers, Authors and Music Publishers of Canada, 2015 FCA 289

This was an application for judicial review of a decision by the Copyright Board (the "Board") of a tariff of royalties for audiovisual webcasts (the "Tariff") for 2007 to 2013. Netflix's challenge related specifically to the establishment of a monthly minimum fee for free trials of subscription services. The Court of Appeal found that the process by which the Board certified the Tariff was not procedurally fair and allowed the application on this basis.

The Society of Composers, Authors and Music Publishers of Canada ("SOCAN") filed annual statements of the royalties that it proposed to collect for audiovisual works from 2007 to 2013, and in 2011, the Board indicated that it would consider certifying the Tariff. There were Objectors to the proposed Tariff, which did not include Netflix. A Settlement was reached between SOCAN and the Objectors. As part of this Settlement, the Tariff was amended to include, among other things, a minimum monthly fee for free trials. The Court of Appeal noted that none of the Objectors offer subscriptions and therefore free trials.

Netflix took a number of steps to address the minimum monthly fees for free trials, and ultimately brought this application. The Court of Appeal held that Netflix had the right to be heard with respect to these royalties even though it was not involved in the initial process. In particular, the Court of Appeal found that "[a]lthough Netflix itself did not have this right, the industry affected by the provision at issue enjoyed that right and therefore should have the opportunity to be heard and put its case forward." The Court of Appeal considered that the interests of an industry are a relevant factor to be taken into consideration in determining whether there has been a breach of the duty of procedural fairness. The Court of Appeal also noted section 67.1 of the Copyright Act, and the right for affected parties to be heard, which cannot be denied when a certified tariff includes subject matter that was not publicly advertised. The Court of Appeal also reviewed the framework in the Board's decision in Re:Sound 5.

The Court of Appeal set aside the Board's decision with respect to royalties on free trials and returned the matter to a different panel of the Board for redetermination.

Trademark and Copyright Decisions

Ontario Superior Court refuses to stay a defamation action pending the outcome of a copyright, trademark and competition action proceeding in the Federal Court
Canadian Standards Association v P.S. Knight Co. Ltd., 2015 ONSC 7980

The Ontario Superior Court has declined to stay a defamation action pending the outcome of a copyright, trademark and competition action proceeding in the Federal Court.

Canadian Standards Association ("CSA") commenced an action in the Federal Court in 2012, suing Gordon Knight and his corporation P.S. Knight Co. Ltd. for copyright infringement and for breach of s. 7(a) of the Trade-marks Act, and s. 52 of the Competition Act.

In this action in the Superior Court of Justice, CSA sues Mr. Knight and his corporation for defamation.

After the action for copyright infringement in the Federal Court was commenced, Mr. Knight and his corporation began to operate a website under the name "RestoreCSA," which, among other things, discussed the copyright litigation in the Federal Court between CSA and Mr. Knight and his corporation. The CSA alleges that the commentary was false and defamatory. In 2013, CSA then issued an Amended Statement of Claim alleging that Mr. Knight and his corporation were knowingly or recklessly making false and misleading statements that tended to discredit the wares, services or business of CSA contrary to s. 7(a) of the Trade-marks Act and were knowingly or recklessly making false and misleading representations to the public contrary to s.52 of the Competition Act.

On April 23, 2015, CSA commenced a defamation action in the Ontario court against P.S. Knight Co. Ltd. and Mr. Knight with respect to the alleged to be defamatory statements posted on the RestoreCSA website and in Restore CSA Issues Summary Re: Canadian Standards Association, a publication.

Knight sought to have the defamation action dismissed or permanently stayed or in the alternative temporarily stayed until the conclusion of the Federal Court action. 

The Superior Court held that there is no unfairness in having the proceedings proceed in tandem. The defamation action has different substantive elements and different remedies available to CSA assuming it were successful. Rather than staying the Ontario proceeding, the Court found that the Ontario proceedings should just be fairly managed to continue to make progress in tandem with the further advanced Federal Court proceedings.

Default judgment awarded in respect of trademark and copyright rights
Re/max, LLC v. PM Branding Corp., T-155-15

The Plaintiff brought a motion in writing for default judgment against the Defendant. The Court issued a Judgment, making a number of findings in respect of the Plaintiff's trademarks and copyright. The Defendant was ordered, inter alia, to pay damages in the amount of $159,000 for its breaches of the Plaintiff's trademark rights, $40,000 as statutory damages for its breaches of the Plaintiff's copyright rights, as well as punitive and exemplary damages, costs determined as a lump sum and post-judgment interest.

Other Industry News

Health Canada has published a Guidance Document — Ethnic Factors in the Acceptability of Foreign Clinical Data ICH Topic E5(R1).

Health Canada has published a Questions and Answers Document — Structure and Content of Clinical Study Reports — ICH Topic E3 Q&A(R1).

About BLG

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.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
 
In association with
Related Topics
 
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions