Experts play an important role in IP litigation, but the court
will carefully consider whether the proposed expert evidence is
necessary to assist the trial judge and has demonstrated an
increasing willingness to determine, before the trial, that expert
evidence will be excluded. Careful assessment of the need for
expert evidence will lead to efficiencies, and is consistent with
the Federal Court's stated goal of achieving increased
proportionality in complex litigation. For businesses managing
litigation budgets, this should translate to lower costs to assert
and defend IP rights.
The ACCA case involves uniquely Canadian "official
marks". Official marks, also known as prohibited marks,
provide powerful trademark rights that trump all others, reserved
for "public authorities". To qualify as a public
authority, an entity must be under a degree of government
The plaintiffs served expert reports from two law professors on
the issue of government control, offering the opinion that the
defendants did not operate under a sufficient degree of government
control to qualify as a public authority. Both reports were ruled
inadmissible on a pre-trial motion, essentially because they were
legal arguments guised as evidence.
The result in the ACCA case is consistent with the outcome in a
recent decision of the Federal Court of Appeal relating to use of
funds by a federal political party: Canada (Board of Internal Economy) v. Canada (Attorney
General), 2017 FCA 43. In that case, the evidence of a law
professor on the issue of comparative constitutional law was also
held to be inadmissible on a pre-hearing motion, as it was
effectively a legal opinion—i.e., the very expertise
of the judge.
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.
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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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