Apotex Inc. v. Pfizer Canada Inc., 2014 FC
876 The Court has permitted Pfizer to amend its Further Fresh as
Amended Statement of Defence and Counterclaim, but as a result the
Court has made significant changes to the scheduling of the
proceeding. A previous order of the Court had bifurcated the issue of
determining the start date for liability for section 8 damages, if
liability is subsequently found (2014 FC 159, previously summarized the
week of May 26, 2014). Examinations for discovery have not yet
commenced and though the Court noted this would usually mean the
amendments to the pleadings would be allowed, the nature of the
amendments were such that they would result in a variation of the
earlier bifurcation order. In the result, the Court permitted the amendments, but the Court
ordered, among other things, a schedule for all steps in the
proceeding; a new trial date on all issues; each party shall have 8
days of discovery plus an additional day to Apotex for each
inventor examined; no party shall refuse a question on discovery;
and any disagreement over the relevance of questions shall be dealt
with subject to Rule 95(2). Terrace (City) v. Urban Distilleries Inc., 2014 FC
833 The City of Terrace and Kitasoo Band Council moved for summary
judgment against Urban Distilleries for infringement of the
published official mark SPIRIT BEAR. Public notice of the official
mark was given before Urban Distilleries started manufacturing
spirits under the unregistered trade-marks SPIRIT BEAR VODKA,
SPIRIT BEAR GIN, and SPIRIT BEAR ESPRESSO INFUSED VODKA. Urban
Distillers had previously sought to register the trade-mark SPIRIT
BEAR VODKA but abandoned the application when the City of Terrace
and Kitasoo Band Council opposed. The moving parties subsequently
sought an injunction against Urban Distilleries and moved for
summary judgment. Of the many issues argued, one was determinative. The Court
found that The City of Terrace or Kitasoo Band Council were not
shown to have adopted and used the official marks as of the date of
publication. The requirement for adoption flows from subparagraph 9(1)(n)(iii) of the Trade-marks Act. The jurisprudence provides
that the use cannot be in the abstract; it must be associated with
a particular ware or service, and a connection must be made with
the ware or service and the mark. The evidence from the City of Terrace was not found to prove use
as an official mark for the city. It either was not used as a mark,
or it was only used internally. Kitasoo Band Council provided a
diary entry of the Chief, but it was found to be hearsay. While the
Court noted that the spirit bear is important in the Kitasoo
culture, this was not enough to raise it to the level of use on
wares or services as contemplated for an official mark. On the whole, the Court found that the two official marks were
unenforceable and the motion for summary judgment was refused. The Competition Bureau has released updated Intellectual Property Enforcement
Guidelines following their consultations last spring. 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. The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
Section 8 cases
Pleadings amendments varying an earlier order results in the
Court fixing a schedule
Trade-mark Cases
No evidence of use found before publication of the SPIRIT BEAR
official mark
Industry News