Patent Cases

Order of Prohibition Granted in respect of Use Patent
Eli Lilly Canada Inc. v. Mylan Pharmaceuticals ULC, 2015 FC 17
Drug:  CIALIS® tadalafil

The Court found that Mylan’s allegations of lack of utility, and specifically lack of sound prediction, and obviousness-type double patenting were not justified. As a result, an Order of Prohibition was granted.

Trademark Decisions

Registrar’s decision refusing to grant leave to amend a statement of opposition found to be unreasonable
Dairy Processors Association of Canada v. Dairy Farmers of Canada, 2014 FC 1054

This is a judicial review of the decision to not allow the applicant to amend its Statement of Opposition to add new grounds of opposition against f​ive applications for trademarks filed by the respondent. The Federal Court found the member erred in refusing to grant leave to amend the Statements of Opposition in issue.

The Court found that it was appropriate to subject this interlocutory decision to judicial review. It was found that for it not to be subject to review, alternative remedies must be available in the context of the proceeding in issue. Since there were no other effective remedies for the applicant to introduce the new grounds of opposition that it puts forward, the decision was subject to judicial review at this stage.

The Court took note of a practice notice which provides that leave to amend a statement of opposition will be granted if the Registrar is satisfied that it is in the interests of justice to do so having regard to all the surrounding circumstances including:

  1. the stage the opposition proceeding has reached;
  2. why the amendment was not made or the evidence not filed earlier;
  3. the importance of the amendment or the evidence; and
  4. the prejudice which will be suffered by the other party.

In reviewing the Registrar’s decision, the Court found that an error in law was made in not allowing an opposition based on section 7 of the Trademarks Act. A further error was found in not comparing the prejudice suffered by not allowing the amendment against the potential prejudice of allowing it. Therefore, the refusal to allow the amendment was found to be unreasonable and set aside.

Low threshold for evidence shows SPEED QUEEN to have been used in the relevant period
Alliance Laundry Systems LLC v. Whirlpool Canada LP, 2014 FC 1224

The trademark “SPEED QUEEN” was originally registered in 1941 for wares and services including laundry washing machines and laundry dryers. The Mark was acquired by Whirlpool in 2004. Alliance requested the Registrar issue a notice pursuant to section 45 of the Trademarks Act to show use between October 5, 2008 and October 5, 2011. The registrar maintained the Mark and Alliance appealed to the Federal Court.

On the appeal Alliance argued that the respondent had not met its evidentiary threshold: the how, where and when the trademark has been used. It was argued the evidence did not show a transaction in the normal course of trade, and that the photos of the wares did not show the Mark prominently on the wares. It was further argued that the evidence of use was a 10-year summary that did not provide details for the relevant period.

No new evidence was filed on appeal, and thus on the standard of reasonableness, the Court found that although the evidence could have been better, the outcome fell within the range of acceptable outcomes defensible in fact and in law.

Other Industry News

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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

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