Distrimedic Inc. v. Dispill Inc. and Emballages Richards Inc., 2013 FC 1043

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.