The appellant is the owner and publisher of an Indian
Punjabi-language daily newspaper called the "Ajit Daily",
a paper that has been published in India since 1955 and is
well-known among the Punjabi population in India. The Bains
Defendants own and publish a Canadian Punjabi-language newspaper
called the "Ajit Weekly", a free newspaper that has been
published in Canada since 1993 and that is distributed at the front
of supermarkets and other stores. Both have an online presence.
For the copyright claim, the Court of Appeal found three errors.
First, the Court of Appeal held that the Federal Court should have
interpreted the partial settlement agreement (PSA) between the
parties even though it had a clause providing that it is to be
governed by the laws of New York and that the New York courts
retain jurisdiction over the interpretation and implementation of
the PSA. It further stated that any lack of evidence about American
law is not an impediment because a court faced with interpreting a
contract that contains a choice of foreign law clause should apply
domestic law if it has no evidence as to the content of the foreign
Second, the Court of Appeal found that the PSA only covered a
part of the claimed 3-year time period so the PSA could not be a
reason to dismiss the claim in its entirety.
Third, the choice of forum provision contained in the PSA does
not provide a basis for the dismissal of the copyright claim
because the parties in this case attorned to the jurisdiction of
the Federal Court for adjudication of the copyright claim through
their pleadings and no party objected to the Federal Court's
jurisdiction by reason of the choice of forum clause in the PSA.
The Federal Court was found to have erred in deferring the dispute
to the New York courts on its own motion.
For the passing off claim, the Court of Appeal held there was a
legal error made when use of a mark in Canada was held to be a
pre-condition for the existence of goodwill. Further errors were
identified, including a failure to consider facts supporting the
originality of the stylized Ajit Daily mark and its reputation,
factors that may have contributed to the mark's acquiring
In the end, the Court of Appeal remitted the case back to the
Federal Court because disposing of the action against the Bains
Defendants would require reassessment of the relevant facts, a task
that was inappropriate for the Court of Appeal to undertake on
appeal in this case.
Supreme Court — Upcoming Leave to Appeal Decisions
The Supreme Court will announce the result of a leave
application which asks the correct applicable standard for patent
utility in Canada and whether a promised utility doctrine properly
exists. The following summary was provided by the Supreme
Intellectual property — Patents — Medicines —
Utility — Validity of patent for drug used in treatment of
gastric acid conditions challenged in infringement and impeachment
action — Whether "promise" in patent of improved
pharmacokinetic and metabolic properties for improved therapeutic
profile demonstrated or soundly predicted at time patent filed
— What is the correct applicable standard for patent utility
in Canada? — Whether a promised utility doctrine properly
The applicants, (collectively, "AstraZeneca") owned
the Canadian '653 patent for the compound, esomeprazole, a
proton pump inhibitor used in the reduction of gastric acid, reflux
esophagitis and related conditions. It was sold under the name
Nexium, and was a very successful drug for AstraZeneca. The
respondents (collectively, "Apotex") applied to the
Minister of Health to obtain a Notice of Compliance which would
allow it to sell its generic version of the drug. In response,
AstraZeneca brought a prohibition application under the Patented
Medicines (Notice of Compliance) Regulations, SOR/93-133 to prevent
Apotex from entering the market until after the expiry of the
'653 patent. In 2010, that application was dismissed and Apotex
received its Notice of Compliance and commenced sales of its
generic esomeprazole. AstraZeneca brought an action against Apotex
for patent infringement. Apotex counter-claimed to impeach the
'653 patent on several grounds.
Materials from a recent "refresher training" for examiners at the Canadian Intellectual Property Office (CIPO) highlight inconsistencies between CIPO's examination practices and Supreme Court precedent.
In this recently reported decision, the Court granted Apotex leave to deliver Fresh as Amended Responding Statement of Issues for the reference into AstraZeneca's damages or Apotex's profits, following the Court's decision that the ‘693 Patent is valid and infringed by Apotex.
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