Trademark Decisions

Leave to Appeal Decision to Grant Interlocutory Injunction Denied
Woodpecker Hardwood Floors (2000) Inc. v. Wiston International Trade Co., 2013 BCCA 553

This is an application in the Court of Appeal for British Columbia for leave to appeal in respect of a decision granting an interlocutory injunction, prohibiting Wiston from using the name “Woodpecker” in selling its products.

Woodpecker has sold its products since at least 2000, using the name “Woodpecker” but did not register
the name as a trademark. Wiston registered a number of trademarks, some of which include the word “Woodpecker”. After sending a cease and desist letter, Woodpecker filed an application for an interlocutory injunction, which was granted by the Supreme Court of British Columbia.

The Court of Appeal refused leave to appeal on the basis that it is not in the interests of justice to do so. The Court found that there was no error in the Court’s statement of the legal test, and there was evidence to support the findings.

Copyright Decisions

Copyright claims must be pleaded with particularity, otherwise they are subject to being struck
(AOM) NA Inc. v. Reveal Group, 2013 ONSC 8014

The defendants have successfully struck the claim for copyright infringement against them, but the plaintiffs were provided leave to amend. The plaintiff sells and implements a method and software designed for the management of processing centres and incoming contact centres. It is alleged that the defendant copied the method and software and then used their own version to lure away important clients.

The Court held that the chain of title and the particulars of the right or interest in the copyrighted work must be pled because they are a part of the statutory right of action. Furthermore, the Court noted that the plaintiff must specify what it is that is covered by copyright and what it alleges has been done that gives rise to the statutory remedies. The copyright claims were struck with leave to amend to add these particulars to ensure technical compliance with the Copyright Act.

There was also a related trade secret claim that the Court declined to strike, noting that it would be ludicrous to compel a plaintiff to set out a trade secret with precision in the pleading. Further information may be provided at production and in discovery, but at that point confidentiality orders may be in place to protect the information.

Other Decisions of Note

Court Grants Judicial Review of Minister of Health’s Decision
Apotex Inc. v. Canada (Health), 2013 FC 1217
Drug: telmisartan

Apotex brought this application for judicial review of a decision of the Therapeutic Products Directorate (TPD) refusing to review Apotex’ Abbreviated New Drug Submission (ANDS) for its Apo-Telmisartan product. The Court granted the application, requiring the Minister to reconsider its decision not to accept the ANDS for review.

The dispute centred over the medicinal ingredient in the product. The Court held that there was no breach of procedural fairness. However, the Court also held that the principles
of statutory interpretation do not support the Minister’s approach. In particular, the term “medicinal ingredients” should have a consistent meaning in the Regulations. Thus, the Court held that Apotex had been subjected to an inconsistent approach that differs from its generic predecessors. Thus, the Minister’s decision regarding the interpretation of “identical medicinal ingredient” was held to not be reasonable.

Other Industry News

CIPO has announced a new Global Patent Prosecution Highway (PPH) pilot program including partnerships with many of CIPO’s current PPH partners and the addition of seven new IP offices. In addition, CIPO has announced a new bilateral PPH agreement with Mexico.

Health Canada has announced a new Guidance Document: Labelling of Pharmaceutical Drugs for Human Use.

Health Canada has published a document regarding Prohibitions related to scientific research and clinical applications.

Health Canada has published a Natural Health Products Online System Standard Terminology Guide.


Chantal Saunders

Beverley Moore

Adrian J. Howard


Intellectual Property
Life Sciences