Canada: Patented Medicines (Notice Of Compliance) Decisions (Intellectual Property Weekly Abstracts Bulletin — Week Of January 18, 2016)

Patented Medicines (Notice of Compliance) Decisions

Court grants prohibition order; finds allegations of obviousness, lack of utility and insufficiency not justified

Leo Pharma Inc. v Teva Canada Limited, 2015 FC 1237

In a decision issued on November 18, 2015, the Federal Court allowed the proceeding, granting Leo Pharma a prohibition order in relation to its patent for use in the treatment of psoriasis. The Court held that the allegations of invalidity due to obviousness, lack of utility and insufficiency were not justified. Given that it was undisputed that Teva's product would infringe claim 17 of the '565 Patent, the Court granted the order sought by Leo Pharma.

Trademark Decisions

Appeal dismissed; use of trademarks in metatags in this case found not to be copyright or trademark infringement

Red Label Vacations Inc. ( v. 411 Travel Buys Limited (411 Travel Buys Limited), 2015 FCA 290

The Federal Court of Appeal (FCA) dismissed an appeal from a trial decision finding that there was no copyright in Appellant's metatags and therefore, no copyright infringement. The trial judge also found that the use of the Appellant's trademarks in the Defendant's metatags did not constitute trademark infringement, passing off or depreciation of goodwill (decision here; our summary here).

The FCA held that the issues raised by the Appellant were based in large part on findings of fact and that the trial judge had not made any palpable and overriding error in making these findings. With respect to trademark infringement, while the trial judge's finding that there was no use of the Appellant's trademarks was upheld, the FCA noted that "in some situations, inserting a registered trademark (or a trademark that is confusing with a registered trade-mark) in a metatag may constitute advertising of services that would give rise to a claim for infringement [...]"

Dawson J.A. issued a set of concurring reasons, in which she concluded that "the decision of the Federal Court must be read in light of the facts before the Court. The extent to which a trademark may be used in metatags without infringing the trademark is, of necessity, fact specific."

Court of appeal applies stare decisis and expunges registration for OCEAN PARK under s. 12(1)(b) and ss. 18(1)(a) and (b)

Lum v. Dr. Coby Cragg Inc., 2015 FCA 293 

By way of Summary Trial, the Federal Court (FC) refused to strike the Defendant's trademark OCEAN PARK from the register on the grounds that it was not registrable pursuant to s. 12(1)(b) and invalid pursuant to ss. 18(1)(a) and (b) of the Act. The FC held that the Plaintiffs had not met the two-part test applicable to determine whether the trademark is descriptive of the place of origin of the Defendant's services, pursuant to s. 12(1)(b). With respect to the Plaintiffs' second allegation of invalidity under s. 18(1)(b), the FC held that the Plaintiffs failed to adduce any evidence in order to establish that the trademark prima facie failed to distinguish the Defendant's services from the services of other dentist in Ocean Park (decision here).

On appeal, the Federal Court of Appeal (FCA) set aside the trial judgment and declared that the OCEAN PARK trademark was invalid and should be struck from the Register. The FCA agreed with the Appellants that the FC misunderstood the meaning of s. 12(1)(b) of the Act and made a palpable and overriding error when applying it.

The FCA had previously dealt with a very similar situation in General Motors du Canada v Décarie Motors Inc, [2001] 1 FC 665, where the plaintiff had sought expungement of the mark "Décarie" (a well-known boulevard in Montréal), on the basis of paragraphs 18(1)(a) and (b) of the Act. In Décarie, the FCA noted that it was reasonable to say that "prima facie the mark was unregistrable under paragraph 12(1)(b) of the Act due to its geographic descriptiveness ('place of origin')." While the mark could have been registrable if it had become distinctive at the date of filing of the application or when its validity was challenged, the inherent weakness of the mark, as well as its limited use as a stand-alone mark, ultimately established that it had not acquired a secondary meaning at any time. As in the Décarie, the trademark at issue in the present case was never used as a stand-alone mark. The Respondents were unable to distinguish Décarie and the FCA held that this precedent was "on all fours with the matter before us and must therefore be followed".

The FCA also found that the FC made a palpable and overriding error in assessing the validity of the trademark under paragraph 18(1)(b) of the Act. Referring once again to Décarie, the FCA concluded that in the present case, there was enough evidence before the FC to conclude that the trademark was not distinctive of the Respondent's services as of the date upon which the trademark's validity was challenged.

Fresh evidence submitted found to materially affect Registrar's decision for SAKURA and design

Kabushiki Kaisha Mitsukan Group Honsha v. Sakura-Nakaya Alimentos Ltda., 2016 FC 20

The Registrar had rejected the Applicant's opposition to the registration of the word SAKURA and design. With respect to the s. 16(3)(a) ground of opposition, the Registrar found that the Applicant failed to prove that the alleged trademark SAKURA was used or made known in Canada by the Applicant or its distributor licensee prior to the material date. The Applicant was also unable to justify its allegation that mark SAKURA was not distinctive under s 2 of the Act.

On appeal to the Federal Court (FC), the Applicant did not dispute the Registrar's findings. Rather, the FC had to consider: (1) whether fresh evidence filed by the Applicant would have materially affected the Registrar's finding that a licensee's use of the SAKURA trademark did not accrue to the benefit of the Applicant; and if in the affirmative, (2) whether there was confusion between the parties' SAKURA trademarks.

The FC found that a verbal license agreement could be inferred from the new evidence. As a result, the Applicant established the use of the SAKURA trademark through a licensee in accordance with s. 50 of the Act. Having filled in gaps identified by the Registrar, the FC held that the new evidence would have materially affected the Registrar's determination with respect to s. 16(3)(a). The FC also concluded that the test for confusion favoured the Applicant, and accordingly, the appeal was allowed and the Registrar's decision was set aside. The FC did not need to consider the opposition ground under s 2 of the Act.

No reviewable errors found in refusing application for AMIRA and design

Amira Foods (India) Limited v. Entreprises Amira Inc., 2015 FC 1419

Amira Foods (India) Limited appealed a decision of the Trademarks Opposition Board ("TMOB") refusing to register the word AMIRA and design. The application was refused on two grounds: 1) for being contrary to subsection 30(e) of the Trade-marks Act where the Applicant had used the proposed mark in Canada prior to the filing date of the application, and 2) for being contrary to paragraph 12(1)(d) of the Trade-marks Act because the application is confusing with a registered trademark belonging to Les Entreprises Amira Inc., AMIRA.

The Federal Court upheld the refusal to register the mark.

It was determined that the new evidence filed on appeal would not have had a material effect on the TMOB decision. On a reasonableness standard, the Court determined that the TMOB did not make a reviewable error in refusing registration.

Supreme Court Leave Applications

Unjust enrichment claim in a section 8 proceeding remains struck

Apotex Inc. v. Eli Lilly and Company, and Eli Lilly Canada Inc. (SCC #36538)

The Supreme Court dismissed Apotex's leave to appeal from the Ontario Court of Appeal (2015 ONCA 305; aff'g 2013 ONSC 5937) in Apotex Inc. v. Eli Lilly and Company and Eli Lilly Canada Inc. (36538). We previously summarized the Ontario Court of Appeal decision during the week of May 18, 2015.

Appeal relating to patent and industrial design dismissed

1284897 Alberta Ltd. v. Zero Spill Systems (Int'l) Inc., et al. (SCC #36542)

The Supreme Court dismissed 1284897 Alberta Ltd.'s appeal from the judgment of the Federal Court of Appeal (2015 FCA 115). 

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

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

Similar Articles
Relevancy Powered by MondaqAI
Bereskin & Parr LLP
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Bereskin & Parr LLP
Related Articles
Related Video
Up-coming Events Search
Font Size:
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
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
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 (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

To Use 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.


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.


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