Teva Canada Limited v. Novartis Pharmaceuticals
Canada Inc, 2013 FCA 244 Pfizer Canada Inc. v. Apotex Inc., 2013 FC
1036 Distrimedic Inc. v. Dispill Inc. and Emballages
Richards Inc., 2013 FC 1043 Empresa Cubana Del Tabaco et al. v. Tequila
Cuervo, S.A. Dec. V. 2013 FC 1010 International Stars S.A. v. Simon Chang Design
Inc., 2013 FC 1041 Hortilux Schreder B.V. v. Iwasaki Electric
Co., 2013 FC 1034 Bodum USA Inc. v. Meyer Housewares Canada
Inc., 2013 FCA 240 F. Hoffmann-La Roche AG v. The Commissioner of
Patents, 2013 FC 1001 Although the details have not been made official, it has been
reported that the Canada-European Union Comprehensive Economic and Trade Agreement
(CETA) would result in Canada introducing a form of patent term
restoration, for up to two years, for pharmaceutical patents.
Additional changes for pharmaceutical patents may also be
forthcoming; however, the text of the treaty was only agreed to in
principle and is not yet publicly available. 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.
NOC Proceedings
Appeal of Prohibition Order Dismissed
Drug: zoledronic acid
The Federal Court issued an order prohibiting Teva from entering
the market with its version of zoledronic acid until the expiration
of two patents. Teva appealed the order with respect to one of the
patents. (Decision here, summarized here.) The Federal Court of Appeal (FCA)
dismissed the appeal.
The appeal related mainly to obviousness issues. The FCA held that
the Trial Judge did not apply a higher standard than that set out
in Sanofi to determine whether the patent was obvious. Furthermore,
the FCA was not convinced that the Trial Judge made an overriding
and palpable error in appreciating the evidence.Evidence Struck and Reply Granted after Partial Reversal
Drug: celecoxib
In this case, there was an Order for partial reversal of evidence.
Apotex brought a motion to strike substantial portions of the
affidavits of three of Pfizer's experts on validity, alleging
that they relied on an extensive number of clinical studies and
other documents which Apotex argues are facts, and should have been
disclosed as part of the "fact" evidence.
The Court held that Directions of the Court carry the weight of
judicial decision making and are the expectation of what will
happen in the conduct of a case. However, as there was dispute over
the meaning of "fact" evidence, the Court held that it
could not be definitively said that the Court's Direction was
contravened. The Court struck portions of Pfizer's affidavits,
criticising Apotex' witnesses for not commenting on certain
pieces of art cited by Pfizer's experts. Apotex was granted
reply with respect to other issues.Patent Actions
Patent Infringement, Trade-mark, Copyright and Competition Act
Claims Dismissed
In this case, Distrimedic sought a declaration of non-infringement
in relation to a kit for the manufacture of a set of individual
pill containers. Richards filed a disclaimer, and then a Statement
of Defence and Counterclaim, adding a number of new allegations and
legal claims, and joining a number of other parties. In particular,
allegations relating to copyright infringement, trade-mark rights
and breach of the Competition Act were added. The original Claim
was discontinued, but the Counterclaim proceeded to this
hearing.
The Court construed the patent, and held that Distrimedic did not
infringe the patent. The Court refused to definitively rule on
whether the disclaimer was valid, however held that there was
insufficient evidence to constitute a mistake, accident or
inadvertence for the purposes of establishing a valid disclaimer.
In addition, the inventor was not consulted. However, the Court
held that Distrimedic had failed to show there was anything in the
Patent Act that would prevent the patentee from returning the
pre-disclaimer patent. The Court accepted the evidence that the
patent was neither obvious nor anticipated.
In relation to the non-patent issues, the Court held that the
allegations of misrepresentation had not been made out, as the
evidence was not sufficient to establish, on a high preponderance
of probabilities, that Distrimedic made misleading representations
with respect to Richards' wares. The Court also held that
Richards had failed to show it holds trade-mark rights in the
colour scheme, because it has a purely functional purpose, there
was no intention to use it as a trade-mark, and there was no
trade-mark recognition among the relevant public. The Court then
held that the Label Form could not be protected by copyright under
the Copyright Act. Thus, the counterclaim was dismissed as a
whole.Trade-Mark Decisions
LAZARO COHIBA for rum is confusing with COHIBA-brand
tobacco
Tequila Cuervo sought a trade-mark for LAZARO COHIBA based on
proposed use in Canada with rum. Empresa Cubana Del Tabaco opposed
by arguing, among other things, it would be confused with its
COHIBA registered trade-marks used in conjunction with tobacco
products. The Trade-marks Opposition Board rejected the opposition.
The Federal Court overturned that decision on appeal based on new
evidence filed. Finding COHIBA is a widely known brand across
Canada, and recognizing the relationship between smoking and
alcohol, it was found that a consumer would likely think that the
rum was from the same source as the tobacco.ZENERGY confusing with ENERGIE for the hurried consumer
Simon Chang applied for registration of the trade-mark ZENERGY
BY/POUR SIMON CHANG & Design (the Mark) in association with
certain sports clothing. International Stars unsuccessfully opposed
the registration on the basis of evidence that it had used the
trade-mark ENERGIE for similar wares. On appeal, the Federal Court
reversed the earlier decision, finding that the Registrar performed
a side-by-side comparison and not one of first impression in the
mind of a casual consumer. The Court found that casual consumer
would be confused and therefore directed the Registrar to refuse
the application.Neither party entitled to register HORTILUX
Both parties to this proceeding are seeking to register the mark
HORTILUX in association with lighting equipment used in the
horticultural industry, and each party opposes the other's
efforts. Hortilux Shréder was unsuccessful before the
Trade-marks Board, and appealed to the Federal Court, the subject
of the present decision. In reviewing the decision, the Court
decided that the Board had relied upon the correct legal principles
and did not misapprehend the evidence. The new evidence filed on
appeal was found to not have materially affected the Board's
conclusions, and therefore the appeal was dismissed.
Previously, Iwasaki had successfully registered the mark, but that
was overturned by the Federal Court, and upheld on appeal. So far,
neither party has registered rights to the mark.FRENCH PRESS is a generic term
Bodum previously sued Meyer for infringement, passing off and
depreciation of goodwill of their mark FRENCH PRESS. (Decision here, summarized here.) Bodum lost that decision and appealed,
but the Court dismissed from the bench. The case turned on the
issue of distinctiveness, but the panel failed to find any error in
law or fact warranting intervention. FRENCH PRESS was considered to
be a common name for the non-electric coffee making device at
issue, and its use was a bona fide commercial use as a generic
term.Other Decisions of Interest
ss. 53(2) of the Patent Act is a shield, not a sword
Hoffmann-La Roche was denied the opportunity to correct a single
word error in a patent's disclosure pursuant to ss.53(2) of the
Patent Act. The impetus for the application arose from an earlier
Federal Court decision where the Court admonished a patentee for
not correcting a patent as drafted. However, that statement was
found to have limited value, if any, as a precedent.
Nonetheless, in this era of the "promise of the patent",
the patentee sought to remedy the uncertainty the single
abbreviation "viz" could create when reading the
disclosure. The Court determined that ss. 53(2) could not be a
stand alone provision, rather it can only be invoked as a defence
to a claim under ss.53(1). Allowing an amendment to a patent under
judicial supervision is a policy choice best left for Parliament to
make.Other News
Bill C-434, the "Terminator Seeds Ban Act", is reinstated in Parliament
A private-members bill, C-434, has been reinstated in Parliament.
The bill is entitled the "Terminator Seeds Ban Act", and
it would make it an offence to release terminator seeds. It would
also amend the Patent Act, making the technology ineligible for
patent protection. Private member bills rarely become law.
Health Canada has issued a Post-Notice of Compliance (NOC) Changes: Quality
Document.
The PMPRB has released its 2012 Annual Report.
ARTICLE
29 October 2013
Appeal Of Prohibition Order Dismissed (Intellectual Property Weekly Abstracts Bulletin - October 21, 2013)
The Federal Court issued an order prohibiting Teva from entering the market with its version of zoledronic acid until the expiration of two patents.