Anti-Competitive Use of IP

Transcription

1 MATERIALS / MATÉRIAUX 2012 Competition Law Fall Conference Conférence annuelle d'automne 2012 en droit de la concurrence Anti-Competitive Use of IP Ronald E. Dimock Dimock Stratton LLP (Toronto) September 20-21, et 21 septembre, 2012 Hilton Lac-Leamy Gatineau, Québec Presented by the Canadian Bar Association s (CBA) National Competition Law Section and the Professional Development Committee of the CBA Présentée par la Section nationale du droit de la concurrence de l Association du Barreau canadien (ABC) et le Comité du développement professionnel de l ABC

2 Anti-Competitive Use of IP Friday September 21, 2012 CBA-2012 Competition Law Fall Conference By Ronald E. Dimock

3 Outline Anti-competitive behaviour with intellectual property False or misleading representations made about: Rights of the IP owner Liabilities of the alleged violator of IP rights Legislation: Trade-marks Act, RSC 1986, c T-13 Competition Act, RSC 1985, c C-34

4 Trade-mark Act Unfair Competition s. 7(a) of the Trade-marks Act states: No person shall (a) make a false or misleading statement tending to discredit the business, wares or services of a competitor; s 53.2 allows a Court, upon finding an infringing act, to: make any order that it considers appropriate in the circumstances, including an order providing for relief by way of injunction and the recovery of damages or profits

5 Trade-mark Act Unfair Competition - Purpose Paragraph 7(a) of the Trade-marks Act: precludes a registered patentee from making untrue statements as to the scope and violation of its patent or other intellectual property to the detriment of others addresses false or misleading statements that injure a competitor's business. It is not necessary that there be an improper motive or lack of reasonable belief on the part of the defendant seeks to prevent the abuse of rights conferred by federal IP law

6 Trade-mark Act Representations to Customers Riello Canada Inc. v Lambert (1986), 9 CPR (3d) 324 Justice Barry Strayer (then of the Federal Court and later the Federal Court of Appeal) Plaintiff brought action to impeach patent Defendant patent owner had made false statements about the Plaintiff directed at dealers of Plaintiff s wares

7 Trade-mark Act Representations of a Competitor s Business Requirement of section 7(a): statements made must be directed to discredit a competitor s business Dufort Testing Services Ltd. v Berube, 2004 CarswellOnt 8053 Justice Herman (of the Ontario Superior Court) Party was prevented from suing the patent agents over a cease and desist letter The patent agents were not competitors Competition Act is less restrictive than the Trade-marks Act as to who is liable for false and misleading statements

8 Competition Act Part VI Offences in Relation to Competition Elements of a breach of s. 52(1) are: A representation to the public; that is false or misleading in a material respect; that is made knowingly or recklessly; and promotes, directly or indirectly, any business interest; or promotes, directly or indirectly, the supply or use of a product.

9 Competition Act Part IV Special Remedies s. 36(1) allows any person suffering damages which are a result of conduct contrary to Part VI of the Competition Act to recover an amount equal to the loss or damage proved

10 Competition Act Representations to the Press or Media Bombardier Recreational Products Inc. v Arctic Cat Inc. Pleadings stage We had experts and specialists look at this in depth. For us, it s a clear infringement of our patents and proprietary licenses - Bombardier spokesperson, Montreal Gazette No date set for trial

11 Competition Act Representations to the Press or Media Research In Motion Ltd. v Visto Corp. Pleadings (case settled) Visto allegedly attempted to cause public concern over RIM s core business in order to adversely affect RIM's stock price and to unlawfully coerce RIM into settling Visto distributed a press release to and engaged in a conference call with financial analysts and media outlets about RIM s activities Visto was also quoted in many large publications (IT Week, CNN, CNBC, etc.)

12 Competition Act Representations in a Cease & Desist Letter Peak Innovations Inc. v Pacific Rim Brackets Ltd., 2009 BCSC 1034 Justice Groves (of the British Columbia Supreme Court) Does a cease and desist letter attract absolute privilege? Can it also include false/misleading statements? What if the letter had been published indiscriminately to uninterested 3 rd parties? What if litigation had not yet been fully contemplated?

13 Competition Act Representations to a Public Office Apotex Inc. v Eli Lilly & Co., 2012 ONSC 3808 Justice MacDonald (of the Ontario Superior Court), on motion to strike parts of the Statement of Claim Court s opinion: there is a reasonable prospect that the Applicants can be held to have made assertions of fact which, by reason of the retroactive voiding of the patent, were false Claims had reasonable chance of success; no need to prove knowledge via s7(a)

14 Competition Act Representations to a Public Office Dow Chemical v Nova Chemical Pleadings stage Allegations that false representations about patentability of an invention made to the Canadian Patent Office were contrary to the Competition Act Trial set for a year from now

15 Ron Dimock 20 Queen W. 32nd fl, Toronto, Canada M5H 3R dimock.com