Distrimedic Inc. v. Dispill Inc. et al., (2013) 440 F.T.R. 209 (FC)

Judge:de Montigny, J.
Court:Federal Court
Case Date:October 15, 2013
Jurisdiction:Canada (Federal)
Citations:(2013), 440 F.T.R. 209 (FC);2013 FC 1043
 
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Distrimedic Inc. v. Dispill Inc. (2013), 440 F.T.R. 209 (FC)

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Temp. Cite: [2013] F.T.R. TBEd. OC.022

Distrimedic Inc. (plaintiff) v. Dispill Inc. and Emballages Richards Inc. (defendants)

Emballages Richards Inc. (plaintiff by counterclaim) v. Distrimedic Inc., Robert Poirier, Claude Filiatrault, Distrimedic Canada Inc. and 9268-2244 Quebec Inc. (defendants to the counterclaim)

(T-1591-05; 2013 FC 1043; 2013 CF 1043)

Indexed As: Distrimedic Inc. v. Dispill Inc. et al.

Federal Court

de Montigny, J.

October 15, 2013.

Summary:

Distrimedic Inc. commenced an action under s. 60(2) of the Patent Act for a declaration of non-infringement respecting Canadian Patent No. 2,207,045 (the '045 Patent), owned by Emballages Richards Inc. (Richards). The patent in issue was a kit and process for the manufacture of a set of individual pill containers (i.e., a blister package product). Richards filed a disclaimer under s. 48 of the Patent Act in relation to some of the claims of the '045 Patent. Thereafter, Richards filed a statement of defence and counterclaimed against Distrimedic Inc. and various related parties (collectively referred to as "Distrimedic"), claiming patent infringement, passing off (Trademarks Act, s. 7(b)), trademark infringement and copyright infringement. Distrimedic Inc. discontinued its original action. Nevertheless, Richards' counterclaim continued.

The Federal Court dismissed Richards' counterclaim in its entirety.

Copyright - Topic 1

General - The Federal Court reviewed the principles applicable to copyright protection - See paragraphs 315 to 325.

Copyright - Topic 1000

Works subject to copyright - General - General principles - The Federal Court reviewed the principles applicable to copyright protection - See paragraphs 315 to 325 - The court stated, inter alia, that "... forms and other works resulting from the compilation of elements will not be considered to have a sufficient degree of originality when the selection of the elements entering into the work are dictated by function and/or law, and where their arrangement into a tangible form of expression is not original. Only the visual aspect of the work is susceptible to copyright protection, if original" - See paragraph 325.

Copyright - Topic 1006

Works subject to copyright - Works designed to serve a functional purpose - [See Copyright - Topic 1000 ].

Copyright - Topic 1025

Works subject to copyright - Computer programs - Software for making labels of forms - Richards claimed copyright in the "Dispill Label Form" used in conjunction with its patented pill containers (i.e., blister package products) - The Federal Court noted that there was some confusion as to Richards' claim - The court stated that "In its broadest form, Richards' claim appears to be that the 'Dispill Label Form' that should be protected by copyright is the selection and use of information to be printed onto a container-sealing sheet and aligned in the cells of the columns on the container-sealing sheet ... Such a broad characterization of the Dispill Label Form would obviously fail to attract any copyright protection. As previously shown, copyright does not protect ideas, schemes, methods or selection in the abstract, but rather the original expression of them. As such, the selection of information or fields of information is not a 'work' susceptible of copyright protection. In my view, this finding is entirely obvious and this version of Richards' claim need not be discussed any further. Allowing Richards to monopolize the business of printing basic patient and prescription information on the sealing sheet of a pill dispenser ... would be anti-competitive and against the spirit of copyright law" - See paragraphs 326 and 327.

Copyright - Topic 1025

Works subject to copyright - Computer programs - Software for making labels or forms - Richards claimed copyright in a DOS version and subsequent Windows version of its "Dispill Label Form" used in conjunction with its patented pill containers (i.e., blister package products) - Patient information could be inputted into the form and then printed onto a container-sealing sheet - That is, what was claimed to be copyrighted was the layout, appearance or aesthetics of the entry screens and the arrangement of the information selected - The Federal Court held that the selection of information for the DOS Dispill Label Form had a low degree of originality, being mostly dictated by provincial legislation respecting labelling of prescription drugs - The selection of information and its arrangement in the DOS Dispill Label Form did not require of its author the type of skill and judgment deserving of copyright protection - While it might be that Dispill (later acquired by Richard's), was the first to create a method of generating the necessary patient information for printing on each cell of a pill dispenser, that could not be the subject of copyright protection because it would amount to creating a monopoly on an idea or method, which the law did not permit - See paragraphs 328 to 338.

Copyright - Topic 1025

Works subject to copyright - Computer programs - Software for making labels or forms - Richards claimed copyright in a DOS version and subsequent Windows version of its "Dispill Label Form" used in conjunction with its patented pill containers (i.e., blister package products) - Patient information could be inputted into the form and then printed onto a container-sealing sheet - The Federal Court held that since the DOS Dispill Label Form was not original within the meaning of the Copyright Act because the selection of information was mostly dictated by legislation, utility and common sense, the same had to be said for Windows version - In the Windows version, the information that was specific to Dispill was minimal and there was no greater originality in the layout or aesthetics of the Windows Form than in the DOS version - The court found, therefore, that neither the DOS nor the Windows version of the Dispill Label Form could be protected by copyright - See paragraphs 338 to 342.

Copyright - Topic 1025

Works subject to copyright - Computer programs - Software for making labels of forms - [See Copyright - Topic 1000 ]

Copyright - Topic 1941

Ownership - By authorship - General - [See Copyright - Topic 2203 ].

Copyright - Topic 2203

Transfer of copyright - Assignment - What constitutes - Richards claimed that Distrimedic Inc. infringed its copyright in a DOS and subsequent Windows version of its "Dispill Label Form" used in conjunction with its patented pill containers (i.e., blister package products) - Patient information could be inputted into the form and then printed onto a container-sealing sheet - Distrimedic challenged Richards' standing to sue for copyright infringement, arguing that even if copyright subsisted in the DOS Form or the Windows Form, Richards did not own the copyright in either one - The Federal Court agreed that Richards was not the author of either the DOS or Windows Forms, nor did it hold valid assignments of those copyrights - Thus, Richards did not own copyright in either the DOS or Windows Forms - See paragraphs 343 to 355.

Copyright - Topic 4553

Infringement of copyright - Acts not constituting an infringement - Copying or using computer programs - Richards claimed that Distrimedic Inc. infringed its copyright in a DOS and subsequent Windows version of its "Dispill Label Form" used in conjunction with its patented pill containers (i.e., blister package products) - Patient information could be inputted into the form and then printed onto a container-sealing sheet - The Federal Court held that no copyright subsisted, but even if it did, there was no evidence that Distrimedic illegally reproduced any of those versions, or that they authorized someone else to make such a reproduction - See paragraphs 356 to 366.

Evidence - Topic 1582

Hearsay rule - Hearsay rule exceptions and exclusions - Business records - Regular entries - Entries or records made in the regular course of a business - The Federal Court noted that "Section 30(1) of the Canada Evidence Act allows for documents to be admitted into evidence that would otherwise be hearsay provided that they are identified as records made in the usual and ordinary course of business. However, section 30(10) sets out certain categories of records that are not rendered admissible under section 30(1), including documents made in contemplation of a legal proceeding (s. 30(10)(a)(ii)). This exception exists because there is a danger that a record made in contemplation of a legal proceeding will lack objectivity, rendering it unreliable ... The main requirements for admission of hearsay evidence under the common law business records exception are that the person who created the record did so contemporaneously, based on personal knowledge and under a duty to do so ... Under the principled approach, hearsay evidence must be necessary to prove a fact in issue and must be reliable, with necessity going to the relevance and availability of evidence ..." - See paragraph 83.

Evidence - Topic 1582

Hearsay rule - Hearsay rule exceptions and exclusions - Business records - Regular entries - Entries or records made in the regular course of a business - In a patent infringement case wherein allegations of misrepresentation (Competition Act, s. 52) were raised, the patent owner's general manager (i.e., a witness), referred to certain documents to bolster the patent owner's allegations of misrepresentations - Those documents included emails and handwritten notes prepared by a worker at one of the patent owner's facilities - The Federal Court held that documents failed to satisfy the business records exception to the hearsay rule - There was no indication that the worker was unavailable to provide testimony - Some of the notes were not written contemporaneously with the events - None of the issues in dispute described in the documents were based on personal knowledge of the general manager - The documents were created well after the action was initiated - See paragraphs 79 to 88.

Evidence - Topic 1584

Hearsay rule - Exceptions and exclusions - Business records - Regular entries - Conditions to admission - [See both Evidence - Topic 1582 ].

Patents of Invention - Topic 1026

The specification and claims - Construction of a patent - General - The Federal Court reviewed the principles respecting patent construction - See paragraphs 194 to 201.

Patents of Invention - Topic 1032

The specification and claims - Construction of a patent - Particular patents - Emballages Richards Inc. (Richards) owned Canadian Patent No. 2,207,045 (the '045 Patent) for a kit and process for the manufacture of a set of individual pill containers (i.e., a blister package product) - Richards claimed against Distrimedic Inc., alleging patent infringement - The Federal Court, in this context, construed the '045 patent - See paragraphs 202 to 215.

Patents of Invention - Topic 1351

Disclaimer - General - The Federal Court stated that "A disclaimer is a significant, formal and public act filed at the Patent Office. It is a mechanism that, when filed in the prescribed form and manner, is used by patentees to disclaim part of their patent when, by mistake, accident or inadvertence, and without wilful intent to defraud or mislead the public, the patentee has done one of two things: a) framed his patent too broadly, or b) incorrectly claimed to be the inventor of any material or substantial part of the patent to which he had no lawful right (or incorrectly claimed some other person as the inventor thereof) (Patent Act, s. 48(1))" - See paragraph 231.

Patents of Invention - Topic 1352

Disclaimer - Filing of (incl. validity) - The Federal Court stated that "A disclaimer must be filed in the prescribed form and manner: Patent Act, s. 48(2). More specifically, it must follow the form and instructions for its completion as set out in Form 2 of Schedule 1 of the Patent Rules, to the extent the provisions of the form and the instructions are applicable (Patent Rules, SOR/96-423, s. 44). In completing Form 2, the patentee must follow the precise form of items 3(1) or 3(2), which specify the subject matter disclaimed. Either the patentee disclaims the entirety of a claim or the entirety of a claim with the exception of listed elements of that claim. The expression '...with the exception of the following ...' used in item 3(2) of Form 2 makes it clear that a disclaimer is essentially a negative allegation, and it is clearly not to be used as a device for reformulating or redefining the invention disclosed and claimed" - See paragraph 232.

Patents of Invention - Topic 1352

Disclaimer - Filing of (incl. validity) - The Federal Court stated that while patents were presumed to be valid under s. 43(2) of the Patent Act, that presumption did not extend to disclaimers filed under s. 48(1) of the Patent Act - Further, the fact that the Commissioner of Patents was required to accept disclaimers when filed did not speak to their validity and was not determinative of whether or not the disclaiming party had fulfilled the requirements of s. 48(1) - When a disclaimer was contested, its validity had to be proven, and it was for the Court to determine whether the patentee made the disclaimer in good faith and not for an improper purpose - See paragraph 233.

Patents of Invention - Topic 1352

Disclaimer - Filing of (incl. validity) - Distrimedic Inc. sought a declaration of non-infringement respecting Canadian Patent No. 2,207,045 (the '045 Patent), owned by Emballages Richards Inc. (Richards) - The patent in issue was a kit and process for the manufacture of a set of individual pill containers (i.e., a blister package product) - Richards filed a document purporting to be a disclaimer respecting claims 15 to 21 of the '045 patent (Patent Act, s. 48) - Thereafter, Richards filed a statement of defence and counterclaim - Distrimedic Inc. discontinued its original action, however, Richards counterclaim for patent infringement continued - The Federal Court dismissed Richards' counterclaim - The court reviewed the applicable principles and opined that the disclaimer was invalid - The patentee failed to meet its onus to show that a mistake, an accident or an inadvertence led to the specification being too broad - See paragraphs 229 to 239.

Patents of Invention - Topic 1581

Grounds of invalidity - Lack of "inventive ingenuity" (obviousness) - The Federal Court reviewed the principles relating to obviousness - See paragraphs 246 to 251.

Patents of Invention - Topic 1582

Grounds of invalidity - Lack of "inventive ingenuity" (obviousness) - Test for obviousness - The Federal Court discussed the test for obviousness - See paragraphs 248 to 251.

Patents of Invention - Topic 1589

Grounds of invalidity - Lack of "inventive ingenuity" (obviousness) - Particular patents - Emballages Richards Inc. (Richards) owned Canadian Patent No. 2,207,045 (the '045 Patent) for a kit and process for the manufacture of a set of individual pill containers (i.e., a blister package product) - Richards claimed against Distrimedic Inc., alleging patent infringement - Distrimedic alleged that the patent was invalid on the grounds of anticipation and obviousness - The Federal Court opined that the invention described in the '045 patent was neither anticipated, nor obvious - See paragraphs 252 to 257.

Patents of Invention - Topic 1601

Grounds of invalidity - Anticipation - General - The Federal Court discussed the principles relating to anticipation - See paragraphs 240 to 245.

Patents of Invention - Topic 1602

Grounds of invalidity - Anticipation - Test for - The Federal Court discussed the test for anticipation - See paragraphs 241 and 242.

Patents of Invention - Topic 1605

Grounds of invalidity - Anticipation - Particular patents - [See Patents of Invention - Topic 1589 ].

Patents of Invention - Topic 2801

Infringement of patent - General principles - General - The Federal Court of Canada stated that "Infringement is to be determined by comparing the allegedly-infringing product to the claims, and not to the patentee's own product ... There is infringement if all of the essential elements of a claim are incorporated in a product, but there is no infringement if an essential element is different or omitted ... On the other hand, substitution or omission of non-essential elements is not necessarily fatal to an allegation of infringement ... A patent will not be infringed merely because the product in issue accomplishes the same function as the patented invention ... What matters is whether the product in issue incorporates all of the essential elements of the claim, not whether the product and the patent function similarly ..." - See paragraph 216 and 217.

Patents of Invention - Topic 2926

Infringement of patent - Acts not constituting an infringement - Of particular patents - Emballages Richards Inc. (Richards) owned Canadian Patent No. 2,207,045 (the '045 Patent) for a kit and process for the manufacture of a set of individual pill containers (i.e., a blister package product) - Richards claimed against Distrimedic Inc., alleging patent infringement - Richards claimed that the Distrimedic pill dispenser borrowed a number of essential elements from the '045 patent - The Federal Court found that Distrimedic had not infringed the '045 patent - See paragraphs 220 to 229.

Patents of Invention - Topic 3505

Infringement actions - Approach used by court to determine if patent infringed - [See Patents of Invention - Topic 2801 ].

Trade Regulation - Topic 645

Competition - Advertising - False or misleading representations (incl. advertising) - The Federal Court stated that "Subsection 52(1) of the Competition Act provides that no person shall knowingly or recklessly make a representation to the public that is false or misleading in a material respect for the purpose of promoting the supply or use of a product or for the purpose of promoting any business interest. Pursuant to paragraphs 52(1.1)(a) and (c), it is not necessary that any person be in fact deceived or misled by the false or misleading representation, nor that the representation be made in a place to which the public had access. While subsection 52(1) establishes a criminal prohibition, sections 74.01 and following provide a civil track for pursuing claims of misleading representation" - See paragraph 259.

Trade Regulation - Topic 645

Competition - Advertising - False or misleading representations (incl. advertising) - Section 52(1) of the Competition provided that "No person shall, for the purpose of promoting, directly or indirectly, the supply or use of a product or for the purpose of promoting, directly or indirectly, any business interest, by any means whatever, knowingly or recklessly make a representation to the public that is false or misleading in a material respect" - The Federal Court referred to a summary of the principles applicable to a determination under s. 52(1) - See paragraphs 262.

Trade Regulation - Topic 645

Competition - Advertising - False or misleading representations (incl. advertising) - Emballages Richards Inc. (Richards) owned Canadian Patent No. 2,207,045 (the '045 Patent) for a kit and process for the manufacture of a set of individual pill containers (i.e., a blister package product) - The parties were involved in intellectual property litigation - Richards claimed that Distrimedic Inc. made false and misleading statements to Richards' clients that tended to discredit its business, services and wares (Competition Act, s. 52(1)) - The Federal Court opined that the evidence adduced by Richards fell far short of proving that false and misleading statements were made - The evidence did not give rise to the stringent standard of a high preponderance of probabilities established by the case law - See paragraphs 258 to 271.

Trademarks, Names and Designs - Topic 264.1

Trademarks - What trademarks registrable - Prohibition - Functional trademarks - [See second Trademarks, Names and Designs - Topic 3068 ].

Trademarks, Names and Designs - Topic 3068

Trademarks - Unfair competition - Passing off - The Federal Court stated that the scope of a passing off action under s. 7(b) of the Trade-marks Act was limited to situations where the plaintiff could demonstrate that it held trademark rights in the indicia alleged to have been misappropriated - See paragraph 277.

Trademarks, Names and Designs - Topic 3068

Trademarks - Unfair competition - Passing off - Emballages Richards Inc. (Richards) owned Canadian Patent No. 2,207,045 (the '045 Patent) for a kit and process for the manufacture of a set of individual pill containers (i.e., a blister package product) - Richards claimed that Distrimedic Inc. was guilty of passing off (Trademarks Act, s. 7(b)), relating to the colour scheme of Richards' pill containers (i.e., the Dispill Colour Scheme) - The Federal Court opined that Richards' claim for passing off failed because Richards failed to show that it held trademark rights in the Dispill Colour Scheme as required by s. 7(b) - The Dispill Colour Scheme was primarily functional and was not used to identify the product - Further, there was no convincing evidence that Richards' intention was to use the Dispill Colour Scheme as a trademark, and finally because the Dispill Colour Scheme had not acquired trademark recognition among the relevant public - See paragraphs 272 to 280.

Trademarks, Names and Designs - Topic 3068

Trademarks - Unfair competition - Passing off - Emballages Richards Inc. (Richards) owned Canadian Patent No. 2,207,045 (the '045 Patent) for a kit and process for the manufacture of a set of individual pill containers (i.e., a blister package product) - Richards claimed that Distrimedic Inc. was guilty of passing off (Trademarks Act, s. 7(b)), relating to the colour scheme of Richards' pill containers (i.e., the Dispill Colour Scheme) - The Federal Court held that there was no evidence that Distrimedic directed public attention to its wares, services or business in such a way as to cause or be likely to cause confusion in Canada within the meaning of s. 7(b) - The court opined that Richards' claim failed as it had not demonstrated any of the elements necessary for an action in passing off to succeed: i.e., a trademark with a reputation, a misrepresentation causing or likely to cause confusion, and damages resulting from such misrepresentation and confusion - See paragraphs 277 to 313.

Trademarks, Names and Designs - Topic 3068

Trademarks - Unfair competition - Passing off - The Federal Court stated that "... the handing out of free samples of a product without subsequent distribution of said product on the market does not amount to 'use' of the affixed mark as a trademark, and therefore does not trigger the application of paragraph 7(b) of the Trade-marks Act ..." (i.e., the passing off provision) - See paragraph 303.

Cases Noticed:

Richards Packaging Inc. v. Canada (Attorney General) (2007), 305 F.T.R. 99; 2007 FC 11, refd to. [para. 44].

Richards Packaging Inc. v. Canada (Attorney General), [2006] F.T.R. Uned. 176; 2006 FC 257 (Protho.), refd to. [para. 45].

Richards Packaging Inc. v. Canada (Attorney General) (2008), 371 N.R. 377; 2008 FCA 4, refd to. [para. 50].

Performing Rights Organization of Canada Ltd. v. Lion D'Or (1981) ltée et al. (1987), 16 F.T.R. 104 (F.C.), refd to. [para. 83].

Setak Computer Services Corp. v. Burroughs Business Machines Ltd. (1977), 15 O.R.(2d) 750; 76 D.L.R.(3d) 641 (H.C.), refd to. [para. 83].

Ares v. Venner, [1970] S.C.R. 608, refd to. [para. 83].

R. v. Khan, [1990] 2 S.C.R. 531; 113 N.R. 53; 41 O.A.C. 353; 59 C.C.C.(3d) 92, refd to. [para. 83].

R. v. Khelawon (R.), [2006] 2 S.C.R. 787; 355 N.R. 267; 220 O.A.C. 338; 2006 SCC 57, refd to. [para. 83].

Blaikie v. Quebec (Attorney General) et al., [1979] 2 S.C.R. 1016; 30 N.R. 225, refd to. [para. 175].

Whirlpool Corp. et al. v. Camco Inc. et al., [2000] 2 S.C.R. 1067; 263 N.R. 88; 2000 SCC 67, refd to. [para. 194].

Free World Trust v. Electro Santé Inc. et al., [2000] 2 S.C.R. 1024; 263 N.R. 150; 2000 SCC 66, refd to. [para. 195].

Canamould Extrusions Ltd. et al. v. Driangle Inc. (2003), 229 F.T.R. 104; 2003 FCT 244, affd. (2004), 317 N.R. 91; 2004 FCA 63, refd to. [para. 201].

Quadco Equipment Inc. v. Timberjack Inc. (2002), 216 F.T.R. 29; 17 C.P.R.(4th) 224, refd to. [para. 201].

McKay v. Weatherford Canada Ltd. (2007), 320 F.T.R. 72; 2007 FC 1233, refd to. [para. 216].

Stonehouse v. Batco Manufacturing Ltd. et al. (2004), 266 F.T.R. 256; 2004 FC 1767, refd to. [para. 216].

Simard (Emmanuel) & Fils (1983) Inc. v. Raydan Manufacturing Ltd. (2005), 276 F.T.R. 164; 2005 FC 973, refd to. [para. 217].

MacLennan et al. v. Gilbert Tech Inc. (2008), 389 N.R. 165; 67 C.P.R.(4th) 161; 2008 FCA 35, refd to. [para. 218].

Hershkovitz et al. v. Tyco Safety Products Canada Ltd. (2009), 341 F.T.R. 228; 2009 FC 256, refd to. [para. 219].

Eli Lilly & Co. et al. v. Novopharm Ltd. et al., [1998] 2 S.C.R. 129; 227 N.R. 201, refd to. [para. 226].

Signalisation de Montréal Inc. v. Services de Béton Universels ltée et al., [1993] 1 F.C. 341; 147 N.R. 241 (F.C.A.), refd to. [para. 226].

Sanofi-Aventis Canada Inc. v. Hospira Healthcare Corp. et al. (2009), 358 F.T.R. 36; 2009 FC 1077, refd to. [para. 233].

Pfizer Canada Inc. v. Apotex Inc., [2007] F.C. 971, refd to. [para. 233].

ICN Pharmaceuticals Inc. et al. v. Patented Medicine Prices Review Board et al. (1996), 108 F.T.R. 190 (T.D.), refd to. [para. 233].

Beloit Canada Ltd. v. Valmet Oy (1986), 64 N.R. 287; 8 C.P.R.(3d) 289 (F.C.A.), refd to. [para. 241].

Abbott Laboratories et al. v. Canada (Minister of Health) et al. (2006), 350 N.R. 242; 2006 FCA 187, leave to appeal dismissed (2007), 364 N.R. 400 (S.C.C.), refd to. [para. 241].

Pfizer Canada Inc. et al. v. Canada (Minister of Health) et al. (2006), 351 N.R. 189; 52 C.P.R.(4th) 241; 2006 FCA 214, refd to. [para. 241].

Sanofi-Synthelabo Canada Inc. et al. v. Apotex Inc. et al., [2008] 3 S.C.R. 265; 381 N.R. 125; 2008 SCC 61, refd to. [para. 243].

Consolboard Inc. v. MacMillan Bloedel (Saskatchewan) Ltd., [1981] 1 S.C.R. 504; 35 N.R. 390; 122 D.L.R.(3d) 203, refd to. [para. 243].

Lightning Fastener Co. v. Colonial Fastener Co., [1933] S.C.R. 377, refd to. [para. 243].

Sanofi-Aventis Canada Inc. et al. v. Apotex Inc. (2009), 350 F.T.R. 165; 77 C.P.R.(4th) 99; 2009 FC 676, refd to. [para. 251].

Laboratoires Servier et al. v. Apotex Inc. et al. (2009), 392 N.R. 96; 75 C.P.R.(4th) 443; 2009 FCA 222, refd to. [para. 251].

Laboratoires Servier et al. v. Apotex Inc. et al. (2008), 332 F.T.R. 193; 2008 FC 825, affd. (2009), 392 N.R. 96; 2009 FCA 222, refd to. [para. 251].

Maritime Travel Inc. v. Go Travel Direct.Com Inc. (2008), 265 N.S.R.(2d) 369; 848 A.P.R. 369; 66 C.P.R.(4th) 61, affd. (2009), 276 N.S.R.(2d) 327; 880 A.P.R. 327; 2009 NSCA 42, refd to. [para. 262].

Janelle Pharmacy Ltd. et al. v. Blue Cross of Atlantic Canada (2003), 217 N.S.R.(2d) 50; 683 A.P.R. 50; 27 C.P.R.(4th) 19; 2003 NSSC 179, refd to. [para. 270].

Pentagon Investments Ltd. v. Canadian Surety Co. (1992), 112 N.S.R.(2d) 86; 307 A.P.R. 86 (C.A.), refd to. [para. 270].

Canadian Business School Inc. v Sunrise Academy Inc. (2002), 226 F.T.R. 117; 23 C.P.R.(4th) 220 (F.C.), refd to. [para. 273].

Kirkbi AG et al. v. Ritvik Holdings Inc. et al., [2004] 2 F.C.R. 241; 308 N.R. 1; 2003 FCA 297, aff'd. [2005] 3 S.C.R. 302; 341 N.R. 234; 2005 SCC 302, refd to. [para. 277].

Oxford Pendaflex Canada Ltd. v. Korr Marketing Ltd. et al., [1982] 1 S.C.R. 494; 41 N.R. 553; 64 C.P.R.(2d) 1, refd to. [para. 282].

Tommy Hilfiger Licensing Inc. et al. v. International Clothiers Inc. (2004), 325 N.R. 239; 32 C.P.R.(4th) 289; 2004 FCA 252, refd to. [para. 283].

Medox Ltd. v. Roussel (Canada) Ltée., [1979] T.M.O.B. No. 21; 48 C.P.R.(2d) 97, refd to. [para. 283].

Parke, Davis & Co. v. Empire Laboratories Ltd., [1964] S.C.R. 351, refd to. [para. 288].

Crocs Canada Inc. et al. v. Holey Soles Holdings Ltd., [2008] F.T.R. Uned. 599; 2008 FC 188, refd to. [para. 288].

Distrimedic Inc. v. Richards Packaging Inc., 2012 TMOB 199, refd to. [para. 291].

Apotex Inc. et al. v. Registrar of Trademarks et al. (2010), 366 F.T.R. 77; 2010 FC 291, affd. (2010), 410 N.R. 196; 2010 FCA 313, leave to appeal refused (2011), 424 N.R. 394 (S.C.C.), refd to. [para. 299].

Eli Lilly & Co. et al. v. Novopharm Ltd. et al. (1997), 130 F.T.R. 1; 73 C.P.R.(3d) 371 (T.D.), affd. [2001] 2 F.C. 502; 265 N.R. 137; 10 C.P.R.(4th) 10 (F.C.A.), refd to. [para. 299].

Positive Attitude Safety System Inc. et al. v. Albian Sands Energy Inc. et al., [2006] 2 F.C.R. 50; 343 N.R. 235; 2005 FCA 332, refd to. [para. 300].

Cast Iron Soil Pipe Institute v. Concourse International Trading Inc. (1988), 19 C.P.R.(3d) 393 (T.M.O.B.), refd to. [para. 302].

Renaud Cointreau & Cie v. Cordon Bleu International Ltd. (1993), 52 C.P.R.(3d) 284 (T.M. Bd.), affd. (2000), 188 F.T.R. 29 (T.D.), refd to. [para. 302].

Royal Bank of Canada v. Registrar of Trademarks et al. (1995), 97 F.T.R. 145; 63 C.P.R.(3d) 322 (T.D.), refd to. [para. 302].

Professional Gardener Co. Ltd. v. Registrar of Trademarks (1985), 5 C.P.R.(3d) 568, refd to. [para. 302].

Théberge v. Galerie d'Art du Petit Champlain inc. et al., [2002] 2 S.C.R. 336; 285 N.R. 267, refd to. [para. 315].

CCH Canadian Ltd. et al. v. Law Society of Upper Canada, [2004] 1 S.C.R. 339; 317 N.R. 107; 2004 SCC 13, refd to. [para. 316].

Moreau v. St. Vincent, [1950] Ex. C.R. 198; 12 C.P.R. 32, refd to. [para. 316].

Tri-Tex Co. v. Ghaly et al., [1999] Q.J. No. 4123 (C.A.), refd to. [para. 316].

Goldner v. Canadian Broadcasting Corp. (1972), 7 C.P.R.(2d) 158 (F.C.T.D.), refd to. [para. 318].

U&R Tax Services Ltd. v. H&R Block Canada Inc. (1995), 97 F.T.R. 259; 62 C.P.R.(3d) 257 (T.D.), refd to. [para. 320].

Tele-Direct (Publications) Inc. v. American Business Information Inc. (1997), 221 N.R. 113; 76 C.P.R.(3d) 296 (F.C.A.), leave to appeal dismissed (1998), 228 N.R. 200 (S.C.C.), refd to. [para. 323].

Delrina Corp. v. Triolet Systems Inc. et al. (2002), 156 O.A.C. 166; 17 C.P.R.(4th) 289 (C.A.), refd to. [para. 323].

Bonnette c. Entreprise Dominion Blueline Inc., 2005 QCCA 342, refd to. [para. 324].

Milliken & Co. et al. v. Interface Flooring Systems (Canada) Inc. (1998) 143 F.T.R. 106; 83 C.P.R.(3d) 470, affd. (2000), 251 N.R. 358; 5 C.P.R.(4th) 209 (F.C.A.), refd to. [para. 348].

Philip Morris Products S.A. et al. v. Marlboro Canada Ltd. et al. (2010), 374 F.T.R. 213; 90 C.P.R.(4th) 1; 2010 FC 1099, affd. on copyright issues (2012), 434 N.R. 207; 2012 FCA 201, refd to. [para. 361].

Statutes Noticed:

Canada Evidence Act, R.S.C. 1985, c. C-5, sect. 30(1), sect. 30(10) [para. 83].

Copyright Act, R.S.C. 1985, c. C-42, sect. 3 [para. 358]; sect. 13(1) [para. 345]; sect. 13(4) [para. 349]; sect, 27(1) [para. 357]; sect. 34.1(1) [para. 345]; sect. 41.23 [para. 349].

Competition Act, R.S.C. 1985, c. C- 34, sect. 52(1) [para. 259].

Patent Act, R.S.C. 1985, c. P-4, sect. 48(1) [para. 231].

Trade-marks Act, R.S.C. 1985, c. T-13, sect. 4 [para. 301].

Authors and Works Noticed:

Bryant, Alan W., Lederman, Sydney N., and Fuerst, Michelle K., Sopinka, Lederman & Bryant: The Law of Evidence in Canada (3rd Ed. 2009), pp. 229, 330 [para. 80].

Fox on Canadian Law of Copyright and Industrial Design (4th Ed.) - see McKeown, John, Fox on Canadian Law of Copyright and Industrial Design (4th Ed.).

Hughes, Roger T., and Woodley, John H., Patents (2nd Ed. 2005), p. 134 [para. 243].

McKeown, John, Fox on Canadian Law of Copyright and Industrial Design (4th Ed.), p. 4-3 [para. 318].

Tamaro, Normand, The 2012 Annotated Copyright Act (2012), p. 419 [para. 350].

Counsel:

George R. Locke and Madeleine Lamothe-Samson, for the plaintiff and defendants to the counterclaim;

Dale E. Schlosser and Joanna Vatavu, for the defendants and plaintiff by counterclaim.

Solicitors of Record:

Norton Rose Canada LLP, Montreal, Quebec, for the plaintiff and defendants to the counterclaim;

McMillan LLP, Toronto, Ontario, for the defendants and plaintiff by counterclaim.

This matter was heard in Montreal, Quebec, on March 25-28 and April 2-5, 8-12, 15 and 16, 2013, before de Montigny, J., of the Federal Court, who delivered the following decision in Ottawa, Ontario, on October 15, 2013.

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