Canada: Apotex Granted Leave To Expand Scope Of Evidence Available To Prove Its NIA Plea (Intellectual Property Weekly Abstracts - Week Of April 10, 2017)


Apotex Granted Leave to Expand Scope of Evidence Available to Prove its NIA Plea

Astrazeneca Canada Inc v. Apotex Inc, 2016 FC 865

Drug: omeprazole

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 (see 2015 FC 322, our summary here ).

The impugned amendments relate to one of the defences plead by Apotex, namely that Apotex had available to it non-infringing alternatives (NIA) which would reduce or eliminate the damages or profits available to AstraZeneca. The Court concluded that the proposed amendments did not add new defence. Rather, the amendments expanded the evidence on which Apotex hopes to prove the defence of NIA, which was previously pled by Apotex.

In the Court's view, the threshold question for allowing amendments that go to an existing plea expanding the scope of the evidence available to prove the plea is whether they would survive a motion to strike. The Court agreed with Apotex that AstraZeneca would not have been successful in striking the proposed amendments if they had been in the original Responding Statement. The Court also found that Apotex established that the proposed amendment was necessary to determine the real question in controversy between it and AstraZeneca.

On the issue of whether the amendment will create an injustice or prejudice that is not compensable in costs, the Court noted that Apotex had given assurances that it will fully cooperate regarding any further discovery. The Court also noted an absence of evidence that such discovery would impact the current schedule, except possibly the date of AstraZeneca's election between damages or profits, which can be moved without consequence if required. The Court also found that Apotex had met its burden to establish that the proposed amendments are in the interests of justice.


ONCA upholds Summary Judgment Concerning Dispute over Website Domain Names

Boaden Catering Limited v. Real Food for Real Kids Inc., 2017 ONCA 248

The Ontario Court of Appeal (ONCA) dismissed the Appellant's appeal from a summary judgment dismissing its action and from an order dismissing the Appellant's motion to strike certain paragraphs of the Respondents' statement of defence. The ONCA also dismissed leave to appeal the costs award.

These proceedings arose out of a dispute over website domain names. The parties are competitors in the market for healthy children's catering in the Greater Toronto Area. The Respondent had previously submitted complaints to the Internet Corporation for Assigned Names and Numbers (ICANN) and the Canadian Internet Registration Authority (CIRA) concerning the Appellant's registration of a .com domain name and three .ca domain names. Both arbitrators found that the Appellant had no legitimate interest in the disputed .com or .ca domain names respectively, and that the domain names had been registered in bad faith.

The Appellant subsequently commenced this action for a variety of relief, including a declaration that the Appellant is the lawful owner of the disputed domain names, and damages for passing off, defamation and theft of trade secrets. The Appellant sought an adjournment of the summary judgment motion for the purpose of cross-examining the Respondents' deponents. The adjournment was refused and the action was summarily dismissed with costs awarded in favour of the respondents in the sum of $98,959.82.

On appeal, the ONCA rejected all grounds of appeal, including the Appellant's argument that it was denied procedural fairness when the motions judge wrongly refused to adjourn the summary judgment motion. For one, the ONCA found that, consistent with the pattern of delay by the Appellant in the litigation, the Appellant did not act reasonably to cross-examine the Respondents' deponents. Also the fact that the Appellant brought a motion to strike paragraphs of the statement of defence did not warrant an adjournment of the summary judgment motion.


Statutory Damages Awarded in Copyright Infringement Case

Trader v CarGurus, 2017 ONSC 1841

Through its websites "" and "", Trader operates "digital marketplaces" relating to new and used vehicles in Canada. Trader provides a service to dealers whereby Trader photographers take photos of vehicles to include in the listings on the websites. CarGurus became a direct competitor in Canada to Trader in the spring of 2015. Trader alleges that CarGurus infringed Trader's copyright in a number of these photos. Trader was seeking statutory damages in the amount of $98,370,000 ($500 per infringing photo, of which there are 196,740).

The Court noted that evidence was provided by CarGurus as to its practices for obtaining vehicle listings, which includes using computer software to "crawl" online and extracting data of interest. The Court found that the photos were the subject of copyright, and that Trader had established it owned the copyright in 152,532 photos. However, there was no direct evidence of ownership with respect to the remainder of the photos.

In terms of infringement, the Court noted that CarGurus' argument was that it did not reproduce the photos but the images only appeared to be part of CarGurus' website and were instead located on servers hosting the Dealers' websites. This argument was rejected by the Court on the basis that the display on the CarGurus website made the photo available to the public by telecommunication. CarGurus relied on the defence of fair dealing, but the Court was not persuaded that the dealing was fair, partly relying on the fact that reason was a commercial one. Finally, the Court considered whether CarGurus is exempt from the claim for statutory damages on the basis that it is a provider of an information location tool pursuant to section 41.27 of the Copyright Act. The Court found that CarGurus was not acting as an intermediary.

The Court granted a declaration that 152,532 photos were infringed, and ordered statutory damages in the amount of $2.00 per photo, for a total of $305,064. The Court considered a number of factors when determining the appropriate amount of statutory damages. Punitive damages and a permanent injunction were denied. The Court noted that CarGurus had removed all the impugned photos and taken a number of other steps such that the injunction was not necessary.


Health Canada published a Notice - Intellectual Property Hold for Notifiable Change Submissions.

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.

In association with
Related Topics
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