Patent Actions

Impeachment Action in respect of Expired Patent Allowed to Continue
Apotex v. Warner-Lambert
Drug: quinapril

Apotex commenced an impeachment action in respect of two patents. Warner-Lambert brought a motion seeking to dismiss the action as it related to one patent on the basis that the patent had expired. The Motions Judge granted the motion. Our summary is here.

The Court of Appeal granted the appeal and dismissed the motion. Apotex argued that dismissal of the action as it relates to the one patent affects its ability to commence an action pursuant to the Statute of Monopolies of Ontario and in an action pursuant to section 8 of the NOC Regulations. In a previous decision, the Ontario Court of Appeal held that an action under this Statute was not bereft of any possibility of success and the Court of Appeal found no basis to take a contrary position.

Trademark Cases

Trademark Expunged when Filed for Improper Purpose v. Hrdlicka

The Federal Court granted an application expunging a trademark from the Register. The Court held that a trademark which appears on a computer screen website in Canada, constitutes use and advertising in Canada under the Trade-Marks Act, regardless of where the information may have originated from or be stored.

In this case, the services of the parties were identical and the trademarks are not just confusing, they are also identical. Since HomeAway used the trademark before the application to register the same mark was filed by Hrdlicka, Hrdlicka was not entitled to register the Mark. Furthermore, the Court held that Hrdklicka filed the application and secured the Mark for improper purposes.

Default Judgment for Trademark Infringement Granted and Damages Awarded
Driving Alternative v. Jarvis

This is an action for trademark infringement, passing off and depreciation of goodwill. The Plaintiff holds a registered trademark KEYS PLEASE, and the Defendant used the trademark KEYZ PLEEZZ. The Court held that the marks are identical from an auditory and connotational perspective. The Court also held that the nature of the services provided by the two parties are identical. The Defendant did not file a Statement of Defence.

The Court found that the use of KEYZ PLEEZZ by the Defendant caused confusion and likely led to the inference that the Defendant’s services were those of the Plaintiff. The Court noted that the Plaintiff did not introduce evidence supporting its claim for damages and the Court therefore evaluated the damages at a lower amount than sought by the Plaintiff.

Refusal of Trademark for Registration Upheld on Appeal
Iwasaki Electric v. Hortilux Schreder

The Court of Appeal dismissed Iwasaki’s appeal of a decision of the trial judge, refusing its trademark application for registration (summarized here). The Judge reversed the decision of the TMOB, on the basis that there was no evidence before it that could lead to a reasonable conclusion that the Mark was used in Canada in the normal course of trade in October 1997. Furthermore, there was new evidence before the Federal Court that Hortilux had used the mark prior to that date. The Court of Appeal found that the Judge did not err.

Trademark Expunged as Not Distinctive and Clearly Descriptive
Bodum USA Inc. v. Meyer Housewares Canada Inc.

Bodum sued for inter alia, infringement of its “FRENCH PRESS” trademark, and Meyer counterclaimed for invalidity. The Court held that the trademark registration is not valid and expunged it from the Register, granting the counterclaim and dismissing the action.

The case turned on the issue of distinctiveness. The Court held that “French Press” was “a generic commercial term to describe the type of device and method of brewing coffee before Bodum chose to employ it as a mark in Canada.” Furthermore, CIPO has issued other registrations to third parties, including those words, since the Bodum registration. The Court also found this case to be similar to those where a company is trying to appropriate words from a language for their exclusive use, rather than a situation where a made-up name becomes distinctive. Thus, the Court held the term was not distinctive at any time. Furthermore, it was held to be clearly descriptive.

Other Industry News

Health Canada has started a Consultation on its Public Clinical Trials Database. The Consultation is open for comment until February 13, 2013.

Health Canada has released a draft Guidance Document for Consultation: Submission Information for Human-Use Biologic Drugs Derived from Plant Molecular Farming (PMF). The consultation is open until March 18, 2013.

Please note, that this will be the last IP Alert until the New Year. Happy Holidays!!


Chantal Saunders

Beverley Moore


Intellectual Property