PM(NOC) Proceedings

Order of Prohibition Overturned on Appeal
Drug: omeprazole
Pharmascience Inc. v. Canada (Minister of Health), 2014 FCA 133

This was an appeal of an Order granting an Order of prohibition. The trial decision is found here.

The issue to be determined by the Court of Appeal related to whether the allegation of lack of utility was justified. The Court of Appeal began by considering the burdens on the respective parties. The Court of Appeal held “the onus on Pharmascience to put its allegations “into play” cannot be satisfied by the mere fact of detailing its allegation in its notice of allegation.” The Court of Appeal concluded that the application judge erred in law by failing to apply the correct legal standard in this regard. The Court of Appeal also found that the application judge erred in law in considering the legal standard that AstraZeneca was required to meet to prove that its invention was useful. This legal standard is proof on the balance of probabilities.

The Court of Appeal held that the patent did not provide information about how many samples were tested and what the individual results were in the experiments set out in the patent, and as a result,  “it is impossible to say that the experiments actually prove that which the inventors claim they prove.” The Court of Appeal noted that the patent did not provide information to allow a third party to confirm the validity of the experimental results, and AstraZeneca’s expert did not provide this information, and therefore AstraZeneca did not put sufficient evidence before the Court to establish allegation of lack of utility was not justified. The appeal was granted.


TMOB Erred in not Finding “Direct or Indirect Control of the Character or Quality of the Mark's Use”
Cathay Pacific Airways Limited v. Air Miles International Trading B.V.,2014 FC 549

The Trademarks Opposition Board (TMOB) previously refused to register Cathay Pacific’s application to register five marks, including ASIA MILES. The TMOB found that Cathay Pacific had not established use in Canada and there was a likelihood of confusion with the existing AIR MILES mark. The Federal Court has found that decision unreasonable, and has returned it to the TMOB for reconsideration.

The Court held that the Board erred in failing to credit Cathay Pacific with use of its mark in Canada due to an unclear licensing arrangement. Even in the absence of a written licence the Court found there was sufficient evidence for the TMOB to conclude that Cathay Pacific had “direct or indirect control of the character or quality” of the mark’s use. The Court felt that this finding then led to additional errors that should be reconsidered by a new panel of the TMOB.

Nominal Damages Awarded for Infringement when no Evidence of Damages is Provided
Patterned Concrete Industries Inc. v. Horta, 2014 FC 359

Default judgement was awarded against a defendant for trademark infringement. The defendant was served but never participated in the proceeding, only writing a letter saying they destroyed everything with the mark and will not use it again.

No actual damages were proven, but the Court awarded a nominal $1000 in damages. No injunction or order for delivery up was awarded.

Industry News

Government Announces Coming into Force of the Notice and Notice Regime

The Notice and Notice regime is the final step in implementing the Copyright Modernization Act. The Notice and Notice regime is a system that will legally require internet intermediaries, such as ISPs and website hosts, to take action upon receiving a notice of alleged infringement from a copyright owner.

The government’s announcement can be found here.


Chantal Saunders

Beverley Moore

Adrian J. Howard


Intellectual Property