NOC Cases

Invalidity Allegations re Anticipation and Obviousness found Justified
Alcon Canada Inc. v. Apotex Inc., 2014 FC 699 
Drug: travoprost

In this case, Apotex sought to enter the market with its generic version of travoprost. The Court dismissed the proceeding on the basis that Apotex’ allegations as to anticipation and obviousness were held to be justified. The Court construed the claims at issue to claim the use of a compound containing a therapeutically effective amount of travoprost for the treatment of glaucoma and ocular hypertension; and the use of a topical ophthalmic composition for the treatment of glaucoma and ocular hypertension.

The Court held that the patent at issue was not a selection patent, as one of the hallmarks of a selection patent is a clear statement of the promise of the special advantages of the selected compound over the genus. In this case, the Court held that although some classic selection language is used, the claims as construed do not promise more than therapeutic effectiveness in the treatment of glaucoma and ocular hypertension. Since the promise is only to be useful or to provide a therapeutically effective treatment for glaucoma, then it has not asserted any special advantages, and will not be characterized as a selection patent.

The Court considered the inventive concept and the promise of the patent, and held that this promise was soundly predicted. The Court then held that the anticipation allegations were justified, as an exact description is not required in the test for anticipation, and travoprost was encompassed by the compounds of one of the pieces of prior art, although it was not specifically named or made. The Court dismissed Alcon’s argument that travoprost was carved out of the previous document. The Court also held that the allegations as to obviousness were justified.


Court Grants Appeal: Decision of Registrar Set Aside
Hayabusa Fightwear Inc. v. Suzuki Motor Corporation, 2014 FC 784

This was an appeal of a decision of the Trademarks Opposition Board refusing the trademark application made by Hayabusa Fightwear Inc. (the “Applicant”), seeking registration of the trademark HAYABUSA (the “Mark”). The refusal was made following the opposition of Suzuki Motor Corporation (the “Respondent”) for registration of the Mark.

As background, the Applicant designs and sells specialized fightgear and fightwear, in the field of mixed martial arts. The Respondent has been using the registered trademark HAYABUSA in relation to motorcycles and fittings thereof, and in relation to caps (or hats) (although the HAYABUSA trademark of the Respondent (the “Cited Mark”) is registered for use in association with motorcycles and fittings, but not in relation to caps).

The grounds of opposition were essentially related to non-conformity (pursuant to section 30 of the Act),non-registrability (confusion), not the person entitled to registration (confusion) and non-distinctiveness pursuant to section 2 of the Act. The Registrar dismissed one ground of opposition related to non-conformity, but largely sided with the Respondent on the others. The Registrar decided not to deal with the grounds of non-registrability and one of the non-conformity grounds (lack of statement in ordinary commercial terms).

On appeal, the Applicant filed additional affidavit evidence of its Co-President and CFO. As a result, the issues on the appeal were: (1) does the additional evidence materially affect the Registrar’s decision for each individual ground of opposition? (2) was the Registrar’s decision reasonable? and (3) can the Court decide the remaining grounds of opposition that the Opposition Board chose not to decide?

The Applicant argued that its new evidence would have materially affected the Registrar’s decision since it would have addressed the evidentiary gaps raised by the Registrar itself, in particular regarding non-entitlement (regarding the channels of trade), and distinctiveness. The Court was not persuaded, noting that the supplementary affidavit evidence was not relevant and could not have materially affected the Registrar’s decision.

With respect to the reasonableness of the Registrar’s decision, the Court held that the different channels of trade for the products of the Applicant and the Respondent were a most crucial factor that should have tipped the balance in favour of the Applicant. The Court held that the Registrar could not reasonably conclude, on the basis of the evidence that was before her, that this factor was not sufficient to shift the balance of probabilities in favour
of the Applicant.

The Court also decided the remaining grounds of opposition that the Opposition Board chose not to decide, namely non-registrability and one of the non-conformity grounds (lack of statement in ordinary commercial terms). Both were dismissed, with brief reasons.

Therefore, the Court granted the appeal and set aside the decision of the Registrar.

Industry News

Health Canada has released a draft revised Guidance Document: Reconsideration of Decisions Issued for Human Drug Submissions for a 60-day consultation period. The Consultation is open until October 11, 2014.

The BLG Life Sciences Group has published LIFESIGNS: Life Sciences Legal Trends​ in Canada, a Report on Intellectual Property, Litigation, Corporate Commercial legal trends and industry developments in Canada.


Chantal Saunders

Adrian J. Howard

Beverley Moore


Intellectual Property