CIBA-Geigy Canada Ltd. v. Novopharm Ltd. et al., (1994) 83 F.T.R. 161 (TD)

• Judge: Rothstein, J.
• Court: Federal Court (Canada)
• Case Date: June 08, 1994
• Jurisdiction: Canada (Federal)
• Citations: (1994), 83 F.T.R. 161 (TD)

CIBA-Geigy Can. v. Novopharm Ltd. (1994), 83 F.T.R. 161 (TD)

MLB headnote and full text

CIBA-Geigy Canada Ltd. (plaintiff) v. Novopharm Limited (defendant)

(T-2582-93)

CIBA-Geigy Canada Ltd. (plaintiff) v. Apotex Inc. (defendant)

(T-2583-93)

Indexed As: CIBA-Geigy Canada Ltd. v. Novopharm Ltd. et al.

Federal Court of Canada

Trial Division

Rothstein, J.

July 21, 1994.

Summary:

The plaintiff pharmaceutical manufacturer, in two separate applications, applied for interlocutory injunctions against the defendant manufacturers of look-alike generic drugs, alleging passing off and breach of s. 7(b) of the Trade-marks Act.

The Federal Court of Canada, Trial Division, granted the applications.

Injunctions - Topic 1607

Interlocutory or interim injunctions - Requirement of strong prima facie case - The test for an interlocutory injunction included whether there was a serious issue to be tried - In question was whether a higher standard should be imposed, i.e., a prima facie case - The Federal Court of Canada, Trial Division, held that existing extensive evidence or cross-examination on affidavits, per se, did not justify departure from the general rule - There was no exception to the serious issue test merely because of the existence of extensive evidence before the motions judge - On the contrary, it was not only unnecessary for the judge to conduct a prolonged examination on the merits, it was undesirable, even where the judge believed the plaintiff likely to succeed at trial - See paragraphs 29 to 39.

Injunctions - Topic 1616

Interlocutory or interim injunctions - Arguable issues of law involved or serious question to be tried - [See Injunctions - Topic 1607 ].

Injunctions - Topic 1616

Interlocutory or interim injunctions - Arguable issues of law involved or serious question to be tried - The Federal Court of Canada, Trial Division, held that except in certain very limited circumstances, the first test on an interlocutory injunction application was whether there was a serious issue to be tried, or in other words, that the case was not a frivolous or vexatious one and that there was a substantial question to be tried - See paragraph 39.

Injunctions - Topic 1800

Interlocutory or interim injunctions - Requirement of irreparable injury - General - The Federal Court of Canada, Trial Division, referred to principles respecting establishing proof of irreparable harm - See paragraphs 117 to 120.

Injunctions - Topic 1802

Interlocutory or interim injunctions - Requirement of irreparable injury - What constitutes - The Federal Court of Canada, Trial Division, stated that the harm or damage that was relevant in a passing off action was loss of goodwill to the plaintiff - In the context of passing off, the loss the plaintiff suffered will ultimately be demonstrated by the plaintiff losing sales as a result of the passing off - See paragraphs 121 to 122.

Practice - Topic 3678

Evidence - Affidavits - Use of - Affidavits made on information and belief - The Federal Court of Canada, Trial Division, stated that to be admissible, an affidavit on information and belief must be filed only on an interlocutory motion and the grounds or source of belief must be set out in a manner that is not vague or lacking in sufficiency - See paragraph 48.

Trademarks, Names and Designs - Topic 1806

Trademarks - Infringement - Test - Confusion with other mark or name - The Federal Court of Canada, Trial Division, held that in order to establish passing off, a plaintiff must prove the existence of goodwill, deception of the public due to misrepresentation and actual or potential damage to the plaintiff - See paragraph 43.

Trademarks, Names and Designs - Topic 1806

Trademarks - Infringement - Test - Confusion with other mark or name - The Federal Court of Canada, Trial Division, discussed the requirement of distinctiveness, in a passing off action - The court held that it was unnecessary for the plaintiff to demonstrate that the relevant consumers who purchase the product in question know the plaintiff by name - A product of fairly common appearance may acquire a secondary meaning so that consumers associate the features of the product with a single source of manufacture - While this may be easier to prove if the appearance is novel, striking or unusual, such appearance is not necessary - The fact that a manufacturer has a monopoly did not imply that the appearance of a product had acquired a secondary meaning - See paragraphs 62 to 69.

Trademarks, Names and Designs - Topic 1819

Trademarks - Infringement - Remedies - Injunctions - The defendant pharmaceutical manufacturers proposed to market generic prescription drugs in tablets almost the same colour, size and shape as the plaintiff's - The plaintiff's case for an injunction for alleged passing off was based largely on the deception of patients - The Federal Court of Canada, Trial Division, stated that there was no requirement of direct patient evidence in a case such as this one - See paragraphs 59 to 61.

Trademarks, Names and Designs - Topic 1819

Trademarks - Infringement - Remedies - Injunctions - The defendant pharmaceutical manufacturers proposed to market generic prescription drugs in tablets almost the same colour, size and shape as the plaintiff's - The Federal Court of Canada, Trial Division, held that there was a serious issue to be tried pertaining to the deception of patients - The plaintiff would suffer irreparable harm through loss of goodwill manifested in a loss of market share - Damages would not be an adequate remedy for the plaintiff, if it should ultimately be successful at trial, as it would be impossible for the plaintiff to calculate which loss of sales was due to passing off and which to legitimate market conditions - The court found the balance of convenience with the plaintiff and granted an interim injunction - See paragraphs 101 to 116, 123 to 181.

Cases Noticed:

CIBA-Geigy Canada Ltd. v. Apotex Inc., [1992] 3 S.C.R. 120; 143 N.R. 241; 58 O.A.C. 321; 44 C.P.R.(3d) 289, refd to. [para. 18].

American Cyanamid Co. v. Ethicon Ltd., [1975] A.C. 396 (H.L.), refd to. [para. 28].

Metropolitan Stores (MTS) Ltd. v. Manitoba Food and Commercial Workers Union, Local 832 and Labour Board (Man.), [1987] 1 S.C.R. 110; 73 N.R. 341; 46 Man.R.(2d) 241; 38 D.L.R.(4th) 321; 18 C.P.C.(2d) 273; 25 Admin. L.R. 20, refd to. [para. 28].

Turbo Resources Ltd. v. Petro Canada Inc., [1989] 2 F.C. 451; 91 N.R. 341; 24 C.P.R.(3d) 1 (F.C.A.), refd to. [para. 28].

RJR-MacDonald Inc. et Imperial Tobacco Ltd. c. Canada (Procureur général), [1994] 1 S.C.R. 311; 164 N.R. 1; 60 Q.A.C. 241, refd to. [para. 28].

Chitel v. Rothbart (1982), 69 C.P.R.(2d) 62 (Ont. C.A.), refd to. [para. 31].

Smith, Kline & French Canada Ltd. v. Novopharm Ltd. (1983), 72 C.P.R.(2d) 197 (Ont. H.C.), refd to. [para. 33].

NWL Ltd. v. Woods, [1979] 3 All E.R. 614; [1979] 1 W.L.R. 1294 (H.L.), refd to. [paras. 30, 33].

Searle Canada Inc. v. Novopharm Ltd. (1994), 171 N.R. 48 (F.C.A.), refd to. [para. 35].

Beamscope Canada Inc. v. Nam Electronic et al. (1991), 45 F.T.R. 121; 36 C.P.R.(3d) 1 (T.D.), refd to. [para. 36].

Imperial Chemical Industries plc et al. v. Apotex Inc. (1989), 101 N.R. 147; 27 C.P.R.(3d) 345 (F.C.A.), refd to. [para. 40].

Lumonics Research Ltd. v. Gould, Refac International Ltd. and Patlex Corp. (1983), 46 N.R. 483; 70 C.P.R.(2d) 11 (F.C.A.), refd to. [para. 48].

Maligne Building Ltd. et al. v. Canada (Minister of the Environment) (1980), 37 N.R. 562; 54 C.P.R.(2d) 11 (F.C.A.), refd to. [para. 48].

Novopharm Ltd. v. Smith, Kline and French Laboratories Ltd. and Canada (Attorney General) (1984), 53 N.R. 68; 79 C.P.R.(2d) 103 (F.C.A.), refd to. [para. 49].

Roche Products Ltd. v. Berk Pharmaceuticals Ltd., [1973] R.P.C. 473 (C.A.), refd to. [para. 61].

Oxford Pendaflex Canada Ltd. v. Korr Marketing Ltd. et al. (1982), 41 N.R. 553; 64 C.P.R.(2d) 1 (S.C.C.), refd to. [para. 62].

Williams (J.B.) Co. v. Bronnely (H.) & Co. (1909), 26 R.P.C. 765 (C.A.), refd to. [para. 63].

Ayerst, McKenna and Harrison Inc. v. Apotex Inc. (1983), 72 C.P.R.(2d) 57 (Ont. C.A.), refd to. [para. 65].

Hoffmann-La Roche Ltd. v. Apotex Inc. (1982), 72 C.P.R.(2d) 183 (Ont. H.C.), refd to. [para. 67].

Hoffmann-La Roche (F.) & Co. A.G. v. D.D.S.A. Pharmaceuticals Ltd., [1972] R.P.C. 1 (C.A.), refd to. [para. 68].

Centre Ice Ltd. v. National Hockey League et al. (1994), 166 N.R. 44; 53 C.P.R.(3d) 34 (F.C.A.), refd to. [para. 117].

Parfitt v. Lawless (1872), L.R. 2 P. & D. 462, refd to. [para. 119].

Inland Revenue Commissioners v. Muller & Co.'s Margarine Ltd., [1901] A.C. 217 (H.L.), refd to. [para. 121].

Boots Co. v. Approved Prescription Services Ltd., [1988] F.S.R. 45 (C.A.), refd to. [para. 143].

Sodastream Ltd. v. Thorn Cascade Co., [1982] R.P.C. 459 (C.A.), refd to. [para. 156].

Reckitt & Colman Products Ltd. v. Borden Inc., [1987] F.S.R. 228 (C.A.), refd to. [para. 156].

CIBA-Geigy plc v. Parke Davis & Co., [1994] F.S.R. 8 (Ch. D.), refd to. [para. 156].

Statutes Noticed:

Federal Court Rules, rule 332(1) [para. 48].

Food and Drug Act Regulations, C.R.C. 1978, c. 870, sect. C.08.003 [para. 170].

Prescription Drug Cost Regulation Act, R.S.O. 1990, c. P-23, sect. 4(3) [para. 104].

Prescription Drug Cost Regulation Act Regulations, R.R.O. 1990, reg. 936, sect. 1 [para. 105].

Trade-marks Act, R.S.C. 1985, c. T-13, sect. 7(b) [paras. 1, 11].

Authors and Works Noticed:

Wadlow, C., The Law of Passing off (1990), p. 375 [para. 99].

Counsel:

Gunars A. Gaikis and Alistair G. Simpson, for the plaintiff;

Malcolm S. Johnston, Q.C., and Brigitte Fouillade, for defendant, Novopharm Ltd.;

Harry B. Radomski, for defendant, Apotex Inc.

Solicitors of Record:

Smart & Biggar, Toronto, Ontario, for the plaintiff;

Malcolm Johnston & Associates, Toronto, Ontario, for defendant, Novopharm Ltd.;

Goodman & Goodman, Toronto, Ontario, for defendant, Apotex Inc.

These applications were heard on January 26 and 27, February 17, 18, 21-23, March 1-3, 8 and 9 and June 8, 1994, at Toronto, Ontario and Ottawa, Ontario, before Rothstein, J., of the Federal Court of Canada, Trial Division, who delivered the following judgment on July 21, 1994.