Eli Lilly & Co. v. Novopharm Ltd. et al., (1996) 111 F.T.R. 1 (TD)

• Judge: Rothstein, J.
• Court: Federal Court (Canada)
• Case Date: March 18, 1996
• Jurisdiction: Canada (Federal)
• Citations: (1996), 111 F.T.R. 1 (TD)

Eli Lilly & Co. v. Novopharm Ltd. (1996), 111 F.T.R. 1 (TD)

MLB headnote and full text

Eli Lilly and Company and Eli Lilly Canada Inc. (plaintiffs) v. Novopharm Limited (defendant)

(T-2432-95)

Eli Lilly and Company and Eli Lilly Canada Inc. (plaintiffs) v. Nu-Pharm Inc. (defendant)

(T-2433-95)

Eli Lilly and Company and Eli Lilly Canada Inc. (plaintiffs) v. Apotex Inc. (defendant)

(T-2434-95)

Indexed As: Eli Lilly & Co. v. Novopharm Ltd. et al.

Federal Court of Canada

Trial Division

Rothstein, J.

April 16, 1996.

Summary:

Eli Lilly (Eli) manufactured and sold fluoxetine hydrochloride under the name Prozac. The defendants intended to sell fluoxetine hydrochloride in capsules similar in shape, size and colour to Prozac. Eli sued for passing off. Eli sought an interlocutory injunction to enjoin the defendants from selling, distributing or advertising their capsules in Canada.

The Federal Court of Canada, Trial Division, granted the interlocutory injunction.

Injunctions - Topic 1606

Interlocutory or interim injunctions - General principles - Balance of convenience - Eli Lilly (Eli) manufactured and sold fluoxetine hydrochloride under the name Prozac - The defendants produced fluoxetine hydrochloride in capsules similar in shape, size and colour to Prozac - Eli sued for passing off - Eli sought an interlocutory injunction to enjoin the defendants from selling, distributing or advertising their capsules in Canada - The parties conceded that there was a triable issue - The Federal Court of Canada, Trial Division, granted the interlocutory injunction - Both sides could suffer irreparable harm but the balance of convenience favoured Eli - The status quo favoured Eli and the defendants produced their drugs knowing that Eli would defend their trade dress - Eli's delay in bringing the action did not necessarily favour the defendants - See paragraphs 42 to 51.

Injunctions - Topic 1615

Interlocutory or interim injunctions - General principles - Delay - [See Injunctions - Topic 1606 ].

Injunctions - Topic 1773

Interlocutory or interim injunctions - Preservation of status quo - What constitutes the status quo - Eli Lilly (Eli) manufactured and sold fluoxetine hydrochloride under the name Prozac - The defendants produced fluoxetine hydrochloride in capsules similar in shape, size and colour to Prozac - Eli sued for passing off - Eli sought an interlocutory injunction to enjoin the defendants from selling, distributing or advertising their capsules in Canada - Eli claimed that the status quo was that they had the exclusive use of the appearance of the product since they had been in the market for years - The defendants claimed that the status quo was that generic drug companies had been marketing look-alike products for the past 25 years - The Federal Court of Canada, Trial Division, held that the relevant status quo was Eli's exclusivity of its trade dress - See paragraphs 43 to 45.

Injunctions - Topic 1800

Interlocutory or interim injunctions - Requirement of irreparable injury - Eli Lilly (Eli) manufactured and sold fluoxetine hydrochloride under the name Prozac - The defendants produced fluoxetine hydrochloride in capsules similar in shape, size and colour to Prozac - Eli sued for passing off - Eli sought an interlocutory injunction to enjoin the defendants from selling, distributing or advertising their capsules in Canada - Eli claimed, inter alia, that it suffered irreparable harm on the basis of loss of distinctiveness - The Federal Court of Canada, Trial Division, held that the appearance of Prozac was an unregistered trademark, the validity of which was challenged - The court held that irreparable harm could not be based on an assumption of validity of the trademark - See paragraphs 7 to 8.

Injunctions - Topic 1802

Interlocutory or interim injunctions - Requirement of irreparable injury - What constitutes - Eli Lilly (Eli) manufactured and sold fluoxetine hydrochloride under the name Prozac - The defendants produced fluoxetine hydrochloride in capsules similar in shape, size and colour to Prozac - Eli sued for passing off - Eli sought an interlocutory injunction to enjoin the defendants from selling, distributing or advertising their capsules in Canada - The Federal Court of Canada, Trial Division, held that Eli would suffer irreparable harm because its damages would be impossible to quantify and it could be anticipated that it would suffer a permanent loss of its market share - The court stated that the defendants' losses could also not be calculated if the interlocutory injunction issued and they were successful at trial - See paragraphs 6 to 41.

Injunctions - Topic 6305

Particular matters - Injury to trade - Passing off - [See Injunctions - Topic 1606 ].

Cases Noticed:

826129 Ontario Inc. v. Sony Kobushiki Kaisha et al. (1995), 105 F.T.R. 99 (T.D.), refd to. [para. 7].

Molson Breweries, A Partnership and Miller Brewing Co. v. Labatt Brewing Co. (1992), 53 F.T.R. 280 (T.D.), refd to. [para. 8].

Combe International Ltd. et al. v. Scholl (U.K.) Ltd., [1980] R.P.C. 1, refd to. [para. 9].

Sodastream Ltd. v. Thorne Cascade Co., [1982] R.P.C. 459 (C.A.), refd to. [para. 9].

Reckitt & Coleman Products Ltd. v. Borden Inc., [1987] F.S.R. 228 (C.A.), refd to. [para. 9].

CIBA-Geigy v. Park Davis & Co., [1994] F.S.R. 8 (Ch. D.), refd to. [para. 9].

CIBA-Geigy Canada Ltd. v. Novopharm Ltd. et al. (1995), 83 F.T.R. 161 (T.D.), refd to. [para. 9].

Sports Authority Inc. v. Vineberg (1995), 61 C.P.R.(3d) 155, refd to. [para. 46].

Counsel:

Anthony G. Creber, for the plaintiffs;

Douglas N. Deeth, for the defendant, Novopharm Ltd.;

H.B. Radomski, for the defendant, Apotex Inc. and Nu-Pharm Inc.

Solicitors of Record:

Gowling, Strathy & Henderson, Ottawa, Ontario, for the plaintiffs;

Deeth Williams Wall, Toronto, Ontario, for the defendant, Novopharm Ltd.;

Goodman, Phillips & Vineberg, Toronto, Ontario, for the defendant, Apotex Inc. and Nu-Pharm Inc.

This application was heard in Ottawa, Ontario, on March 18, 1996, by Rothstein, J., of the Federal Court of Canada, Trial Division, who delivered the following judgment on April 16, 1996.