Patent Decisions

Motion to Remove Law Firm for Conflict of Interest Dismissed
Sikes v. Encana Corporation, 2016 FC 110

This was a motion to remove Smart & Biggar/Fetherstonhaugh LLP as solicitors of record for the Defendants. One of the Plaintiffs alleged that he provided confidential information during the course of preliminary discussions with counsel at Smart & Bigger. Smart & Biggar defended the motion on the basis that only information necessary to run a conflict search was solicited from one of the Plaintiffs, Dr. Sikes, and if anything, only general information relating to patent litigation in Canada would have been provided. The Court noted the test requires the determination of (1) whether a lawyer received confidential information attributable to a solicitor-client relationship; and (2) if so, is there a risk that the relevant confidential information will be used to the prejudice of the former client.

The Court determined that the Plaintiffs had not met their burden of demonstrating that a "reasonably informed member of the public in possession of all the relevant facts would conclude that there was a solicitor and client relationship between Dr. Sikes and Smart & Biggar or that confidential information relevant to the matter at hand was provided to Mr. Garland." Costs were awarded to the Defendants forthwith in any event of the cause.

Trademark Decisions

Decision to Expunge Based on No Use for Services Upheld on Appeal
Supershuttle International, Inc. v. Fetherstonhaugh & Co., 2015 FC 1259

This was an appeal of a decision of a Hearing Officer of the Trademarks Opposition Board in response to a section 45 notice. This notice requires the Applicant to demonstrate use within the last three year. The Hearing Officer found the evidence did not demonstrate use and expunged the trademark.

The Applicant submitted evidence to the Hearing Officer that Supershuttle provides ground transportation to airline passengers to and from airports in the United States and France. Vans do not operate in Canada but Canadians can book services online. The Hearing Officer determined that this did not constitute use in Canada. The Court found that the decision was reasonable and the appeal was dismissed.

FCA Upholds Decision Striking Trademark from the Register
Product Source International LLC v. TLG Canada Corp, 2016 FCA 31

In the Federal Court, TLG brought a proceeding to expunge Product Source's trademark registration for NIC OUT (FC decision here, summary here). The Federal Court granted that application, holding that the Product Source mark was not registrable on the date it was registered. The FCA dismissed the appeal, holding that the Federal Court did not err in law or on an extricable legal principle.

Other Industry News

Health Canada has announced the Adoption of International Conference on Harmonisation of Technical Requirements for the Registration of Pharmaceuticals for Human Use (ICH) Guidance: Q8, Q9 and Q10 Questions & Answers (R4).

Health Canada has announced the Adoption of International Conference on Harmonisation of Technical Requirements for the Registration of Pharmaceuticals for Human Use (ICH) Guidance: Q9: Quality Risk Management.

Health Canada has published a Post-Notice of Compliance (NOC) Changes: Safety and Efficacy Document.

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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