Section 8 cases
Pleadings amendments varying an earlier order results in the Court fixing a schedule
The Court has permitted Pfizer to amend its Further Fresh as Amended Statement of Defence and Counterclaim, but as a result the Court has made significant changes to the scheduling of the proceeding.
A previous order of the Court had bifurcated the issue of determining the start date for liability for section 8 damages, if liability is subsequently found (2014 FC 159, previously summarized the week of May 26, 2014). Examinations for discovery have not yet commenced and though the Court noted this would usually mean the amendments to the pleadings would be allowed, the nature of the amendments were such that they would result in a variation of the earlier bifurcation order.
In the result, the Court permitted the amendments, but the Court ordered, among other things, a schedule for all steps in the proceeding; a new trial date on all issues; each party shall have 8 days of discovery plus an additional day to Apotex for each inventor examined; no party shall refuse a question on discovery; and any disagreement over the relevance of questions shall be dealt with subject to Rule 95(2).
No evidence of use found before publication of the SPIRIT BEAR official mark
The City of Terrace and Kitasoo Band Council moved for summary judgment against Urban Distilleries for infringement of the published official mark SPIRIT BEAR. Public notice of the official mark was given before Urban Distilleries started manufacturing spirits under the unregistered trade-marks SPIRIT BEAR VODKA, SPIRIT BEAR GIN, and SPIRIT BEAR ESPRESSO INFUSED VODKA. Urban Distillers had previously sought to register the trade-mark SPIRIT BEAR VODKA but abandoned the application when the City of Terrace and Kitasoo Band Council opposed. The moving parties subsequently sought an injunction against Urban Distilleries and moved for summary judgment.
Of the many issues argued, one was determinative. The Court found that The City of Terrace or Kitasoo Band Council were not shown to have adopted and used the official marks as of the date of publication. The requirement for adoption flows from subparagraph 9(1)(n)(iii) of theTrade-marks Act. The jurisprudence provides that the use cannot be in the abstract; it must be associated with a particular ware or service, and a connection must be made with the ware or service and the mark.
The evidence from the City of Terrace was not found to prove use as an official mark for the city. It either was not used as a mark, or it was only used internally. Kitasoo Band Council provided a diary entry of the Chief, but it was found to be hearsay. While the Court noted that the spirit bear is important in the Kitasoo culture, this was not enough to raise it to the level of use on wares or services as contemplated for an official mark.
On the whole, the Court found that the two official marks were unenforceable and the motion for summary judgment was refused.
The Competition Bureau has released updated Intellectual Property Enforcement Guidelinesfollowing their consultations last spring.
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