Trade-Marks

Reynolds Presto Products Inc. v. P.R.S. Mediterranean Ltd., 2013 FCA 119

The Court of Appeal has overturned a lower court decision and struck the mark NEOWEB from the register because it is confusing with the earlier registered mark GEOWEB. The Court held that it was more likely that not that a consumer, with an imperfect recollection, who encounters NEOWEB would be confused with respect to whether the product was made by Presto or P.R.S.

The GEOWEB mark was registered by Presto in 2001 in association with a product containing polyethylene cells in a honeycomb shape that are filled with sand or soil and are used for erosion control. Presto provided P.R.S. with a licence to sell GEOWEB in approximately 20 countries, but P.R.S. had never sold the product in Canada. Once the licence agreement ended, P.R.S. commenced selling their own competing product, NEOWEB, in Canada. P.R.S. was able to register their NEOWEB mark, so Presto moved under section 57 of the Trade-marks Act to strike it from the Trade-marks Register. The court below refused to strike the mark, but the Court of Appeal disagreed, stating that the fact that “both companies are engaged in the same wares, business and trade” should have been considered and was not.

Following the framework from the Supreme Court decision in Masterpiece, the Court of Appeal found that a consumer would be confused because the marks are obviously similar (with only one letter different and with the substitution of one Greek three letter prefix for another), they rhyme, and the use of “neo” could imply it was simply a newer version of GEOWEB.

Appeal allowed, mark struck from the register.

Other Cases of Interest

Teva Canada Innovation v. Attorney General of Canada
Drug: COPAXONE SYRINGE

The Patented Medicine Prices Review Board (the PMPRB) ordered Teva to pay the Crown approximately $2.4 million for selling its product at an excessive price between 2004 and 2010. Teva brought an application for judicial review of this decision, and the Federal Courtsent the issue back to the PMPRB for redetermination on the basis that the PMPRB did not consider all the factors in determining whether the pricing was excessive, but instead focused on only one factor, namely the Consumer Price Index (CPI). The PMPRB made a second determination that Teva was to pay approximately $2.8 million for excessive pricing. The present decision relates to a review of this second decision of the PMPRB.

The Court noted that the PMPRB set out the factors set out in section 85(1) of the Patent Act. The PMPRB determined the pricing was excessive on the basis of price increases over the years, although noted that the product was the lowest priced medicine relative to its comparators.

The Court found that the PMPRB did not fully consider the factors that favoured a finding of non-excessive pricing and focused on the CPI. The Court also found that the PMRPB erroneously interpreted section 85(1). In particular, the Court found that Parliament provided protection from excessive pricing, not from price increases, and the CPI is only one factor to consider. The Court set aside this second decision of the PMPRB and returned the issue for redetermination by a differently constituted panel.

Industry News

The PMPRB published its April 2013 newsletter.

Authors

Chantal Saunders 
CSaunders@blg.com
613.369.4783

Beverley Moore 
BMoore@blg.com
613.369.4784

Adrian J. Howard 
AJHoward@blg.com
613.787.3557

Expertise

Intellectual Property
Trademarks