IPY.II.4.c.iii The Canadian Abridgment edigests -- Intellectual Property 2012-20 May 14, 2012 Classification Number: II.4.c.iii Patents -- Validity of patent -- Invention -- Obviousness gear infringed claim 15 of patent -- All essential elements of claim 1 of patent were found in L gear -- Patent was not invalid on ground of obviousness -- Claims 1, 15 and 16 of patent were not obvious, and therefore, claims 2 to 14 were not obvious -- Invention described in patent was more than just shape, as it disclosed more flexible landing gear -- None of prior art relied on by competitor revealed inventive concept in patent -- Invention was necessary to get from prior art to inventive concept contained in patent -- Invention was not obvious to try, nor was it obvious that proposal would work. IPY.II.4.d.ii Classification Number: II.4.d.ii Patents -- Validity of patent -- Novelty and prior art -- Effect of prior publication gear infringed claim 15 of patent -- Competitor could not rely on defence of practising prior art -- Even if features of L gear were found in prior art, namely O strike documents and N documents, competitor could not rely on prior art defence -- O strike documents were public and available to POSITA -- However, competitor failed to prove that disclosure and enablement conditions were met in case of O strike documents -- file:///y /Corporate%20Marketing/public/Legal%20...20Files/12-05-14/CanAbr-Intellectual-2012-20.htm (1 of 10) [5/14/2012 1:06:12 PM]
Competitor failed to establish that N documents were publicly available -- N documents did not meet two criteria test for anticipation because they did not disclose subject matter which would result in infringement of patent and enablement requirement was not met. IPY.II.4.f.v Classification Number: II.4.f.v Patents -- Validity of patent -- Utility -- Broad claims gear infringed claim 15 of patent -- Claims 1 to 14 and claim 16 of patent were invalid and void on basis of lack of demonstrated utility or overbreadth -- Competitor did not prove that invention would not do what specifications promised it would do -- Utility of embodiment included in claim 15 of patent, namely, landing gear that had front cross piece offset forward, was demonstrated at Canadian filing date -- There was lack of demonstrated utility with respect to embodiment included in claim 16, namely, landing gear that had front cross piece offset backwards -- Inventors did not test landing gear whose front cross piece was offset backwards, so promised advantage was speculative -- To extent that claims 1 and 16 covered any embodiment whereby front cross piece was offset backwards, all dependent claims, except claim 15, were held invalid. IPY.II.5.c.i.B Classification Number: II.5.c.i.B Patents -- Application for patent -- Sufficiency of specification -- Disclosure -- Sufficiency of description file:///y /Corporate%20Marketing/public/Legal%20...20Files/12-05-14/CanAbr-Intellectual-2012-20.htm (2 of 10) [5/14/2012 1:06:12 PM]
gear infringed claim 15 of patent -- All essential elements of claim 1 of patent were found in L gear -- Patent was not invalid due to insufficient disclosure or lack of indication of best mode -- Patent specification faithfully disclosed invention and its best mode -- Specification was clear enough to permit POSITA to understand general functioning of claimed invention and its main features -- Open-minded POSITA, desirous of putting invention into practice, would have no difficulty complementing teachings of patent with what was already known to skilled and experienced designer. IPY.II.8.b.v Classification Number: II.8.b.v Patents -- Actions for infringement -- When infringement arises -- Importation gear infringed claim 15 of patent -- All essential elements of claim 1 of patent were found in L gear -- Competitor could not rely on defences of regulatory exception or prior art -- All claims except claim 15 of patent were invalid due to lack of utility or overbreadth. IPY.II.8.c.i Classification Number: II.8.c.i Patents -- Actions for infringement -- Defences -- General principles Regulatory or experimental exception -- Plaintiff patent owner held patent for skid-type landing gear for light helicopters, comprised of 16 claims -- Claim 1 was independent claim, while claims 2 to 16 were dependent claims -- Defendant competitor created two models of landing gear (L gear and P gear), which file:///y /Corporate%20Marketing/public/Legal%20...20Files/12-05-14/CanAbr-Intellectual-2012-20.htm (3 of 10) [5/14/2012 1:06:12 PM]
had novel design compared to competitor's previous gears -- Competitor created L gear, which looked very similar to patent owner's gear, after studying patent owner's gear -- Competitor created P gear by modifying L gear so as to eliminate any alleged patent infringement -- Patent owner brought action for declaration that competitor infringed patent and for damages -- Competitor brought counterclaim for order invalidating patent -- Action and counterclaim allowed in part -- L gear infringed claim 15 of patent -- All essential elements of claim 1 of patent were found in L gear -- Competitor could not rely on defence of regulatory or experimental exception pursuant to s. 55.2(1) of Patent Act -- Competitor did not construct, use or sell L gear solely for uses reasonably related to development and submission of information required by law -- Competitor used L gear on non-test aircraft and in static display at trade show -- Competitor solicited advanced orders and promoted new model of helicopter with L gear, which went beyond what Act and common law intended by regulatory and experimental exceptions. IPY.II.8.c.ii Classification Number: II.8.c.ii Patents -- Actions for infringement -- Defences -- Lack of essential element Competitor brought counterclaim for order invalidating patent -- Action and counterclaim allowed in part -- Infringement action with respect to P gear was dismissed -- P gear did not infringe patent -- Not all essential elements of patent's claim were present -- P gear did not feature "double curvature", which was one of essential elements of claim 1 -- P gear did not have integrated front cross piece required by claim 1. IPY.II.8.c.vi.C Classification Number: II.8.c.vi.C Patents -- Actions for infringement -- Defences -- Invalidity of patent -- Obviousness file:///y /Corporate%20Marketing/public/Legal%20...20Files/12-05-14/CanAbr-Intellectual-2012-20.htm (4 of 10) [5/14/2012 1:06:12 PM]
gear infringed claim 15 of patent -- All essential elements of claim 1 of patent were found in L gear -- Patent was not invalid on ground of obviousness -- Claims 1, 15 and 16 of patent were not obvious, and therefore, claims 2 to 14 were not obvious -- Invention described in patent was more than just shape, as it disclosed more flexible landing gear -- None of prior art relied on by competitor revealed inventive concept in patent -- Invention was necessary to get from prior art to inventive concept contained in patent -- Invention was not obvious to try, nor was it obvious that proposal would work. IPY.II.8.c.vi.D Classification Number: II.8.c.vi.D Patents -- Actions for infringement -- Defences -- Invalidity of patent -- Prior publication gear infringed claim 15 of patent -- Competitor could not rely on defence of practising prior art -- Even if features of L gear were found in prior art, namely O strike documents and N documents, competitor could not rely on prior art defence -- O strike documents were public and available to POSITA -- However, competitor failed to prove that disclosure and enablement conditions were met in case of O strike documents -- Competitor failed to establish that N documents were publicly available -- N documents did not meet two criteria test for anticipation because they did not disclose subject matter which would result in infringement of patent and enablement requirement was not met. IPY.II.8.d.i Classification Number: II.8.d.i file:///y /Corporate%20Marketing/public/Legal%20...20Files/12-05-14/CanAbr-Intellectual-2012-20.htm (5 of 10) [5/14/2012 1:06:12 PM]
Patents -- Actions for infringement -- Remedies -- General principles Injunction -- Plaintiff patent owner held patent for skid-type landing gear for light helicopters, comprised of 16 claims -- Claim 1 was independent claim, while claims 2 to 16 were dependent claims -- Defendant competitor created two models of landing gear (L gear and P gear), which had novel design compared to competitor's previous gears -- Competitor created L gear, which looked very similar to patent owner's gear, after studying patent owner's gear -- Competitor created P gear by modifying L gear so as to eliminate any alleged patent infringement -- Patent owner brought action for declaration that competitor infringed patent and for damages -- Competitor brought counterclaim for order invalidating patent -- Action and counterclaim allowed in part -- L gear infringed claim 15 of patent -- All essential elements of claim 1 of patent were found in L gear -- Claims 1 to 14 and claim 16 of patent were invalid and void on basis of lack of demonstrated utility or overbreadth -- Patent owner was entitled to injunction whereby competitor was permanently enjoined from manufacturing, using or selling L gear, or any similar landing gear that infringed upon claim 15 -- Owner did not delay in bringing infringement action, and any delay was not unreasonable or were reasonably explained -- Owner's representatives did not act improperly at any time. IPY.II.8.d.ii Classification Number: II.8.d.ii Patents -- Actions for infringement -- Remedies -- Damages gear infringed claim 15 of patent -- Patent owner was not entitled to accounting of profits, but was entitled to general damages, which included compensatory damages -- Landing gear represented only small part of total cost of helicopter -- Calculations of profit would be very complex -- Owner could not recover profits flowing from sales of helicopters equipped with P gear -- Monetary value of individual gear was limited and none was ever incorporated in helicopter sold by competitor, so it was questionable whether accounting of profits should be permitted. IPY.II.8.d.iii file:///y /Corporate%20Marketing/public/Legal%20...20Files/12-05-14/CanAbr-Intellectual-2012-20.htm (6 of 10) [5/14/2012 1:06:12 PM]
Classification Number: II.8.d.iii Patents -- Actions for infringement -- Remedies -- Accounting gear infringed claim 15 of patent -- Patent owner was not entitled to accounting of profits, but was entitled to general damages, which included compensatory damages -- Landing gear represented only small part of total cost of helicopter -- Calculations of profit would be very complex -- Owner could not recover profits flowing from sales of helicopters equipped with P gear -- Monetary value of individual gear was limited and none was ever incorporated in helicopter sold by competitor, so it was questionable whether accounting of profits should be permitted. IPY.II.8.d.iv Classification Number: II.8.d.iv Patents -- Actions for infringement -- Remedies -- Delivery up gear infringed claim 15 of patent -- All essential elements of claim 1 of patent were found in L gear -- Claims 1 to 14 and claim 16 of patent were invalid and void on basis of lack of demonstrated utility or overbreadth -- Competitor was ordered to deliver up all L gears, and to destroy all L gears, except one for purpose of potential use in corresponding litigation in other jurisdictions, within 30 days after final judgment disposed of all appeals. IPY.III.6.b.ii file:///y /Corporate%20Marketing/public/Legal%20...20Files/12-05-14/CanAbr-Intellectual-2012-20.htm (7 of 10) [5/14/2012 1:06:12 PM]
Classification Number: III.6.b.ii Trade marks -- Opposition -- Grounds -- Applicant not person entitled Applicant filed application to register trademark "OPUS" -- Associated services were hotel, lodging and accommodation, conference room, exercise facility, entertainment, facsimile, typing, and providing guests with access to Internet and computers for personal and business use -- Opponent, which used "OPUS" in connection with restaurant, brought opposition proceedings -- One of grounds of opposition was that application did not comply with provisions of s. 30(i) of Trade-marks Act -- Oppositions rejected -- Jurisprudence suggested non-compliance with s. 30(i) could be found in one of two circumstances -- First circumstance was where there were exceptional circumstances, such as bad faith, which rendered applicant's statement that it was satisfied that it was entitled to use applied-for mark untrue -- Second circumstance was where there was prima facie case of non-compliance with federal statute -- In this case, there was no evidence of bad faith on part of applicant -- Neither registrar nor Federal Court had ruled on whether s. 30(i) ground of opposition based on violation of s. 22 of Act was valid ground of opposition -- Even if ground of opposition was valid, opponent failed to adduce any evidence supporting likelihood of depreciation of goodwill which would support violation of s. 22. Euromed Restaurant Ltd. v. Trilogy Properties Corp. (2012), 99 C.P.R. (4th) 445, 2012 TMOB 19, 2012 CarswellNat 526, Natalie de Paulsen Member Member (T.M. Opp. Bd.) [Federal] IPY.III.6.b.vi.A Classification Number: III.6.b.vi.A Trade marks -- Opposition -- Grounds -- Confusion -- General principles Applicant filed application to register trademark "OPUS" -- Associated services were hotel, lodging and accommodation, conference room, exercise facility, entertainment, facsimile, typing, and providing guests with access to Internet and computers for personal and business use -- Opponent, which used "OPUS" in connection with restaurant, brought opposition proceedings -- Oppositions rejected -- Grounds of opposition under ss. 16(1)(a), (b), and (c) of Trade-marks Act were rejected -- For reasons related to ground under s. 12(1)(d) of Act, applicant's trademark was not confusing with opponent's trademarks as of relevant date -- Despite fact that trademarks were identical, difference in parties' services (restaurant vs. hotel services) was sufficient to conclude, on balance of probabilities, that there was no likelihood of confusion. Euromed Restaurant Ltd. v. Trilogy Properties Corp. (2012), 99 C.P.R. (4th) 445, 2012 TMOB 19, 2012 CarswellNat 526, Natalie de Paulsen Member Member (T.M. Opp. Bd.) [Federal] IPY.III.6.b.vi.D file:///y /Corporate%20Marketing/public/Legal%20...20Files/12-05-14/CanAbr-Intellectual-2012-20.htm (8 of 10) [5/14/2012 1:06:12 PM]
Classification Number: III.6.b.vi.D Trade marks -- Opposition -- Grounds -- Confusion -- Nature of wares, services or businesses Applicant filed application to register trademark "OPUS" -- Associated services were hotel, lodging and accommodation, conference room, exercise facility, entertainment, facsimile, typing, and providing guests with access to Internet and computers for personal and business use -- Opponent, which used "OPUS" in connection with restaurant, brought opposition proceedings -- Oppositions rejected -- It was not accepted that services related to provision of food and drink were understood to be part of hotel services -- These services occupied different niches -- Mere fact that parties' services all belonged to general class of hospitality services did not lead to finding that parties' services themselves were similar -- Applicant's evidence supported fact that hotel services and bar and restaurant services were different -- Opponent's own evidence showed that restaurant and hotel services were not typically offered in association with same trademark, which further supported distinction between hotel and restaurant services. Euromed Restaurant Ltd. v. Trilogy Properties Corp. (2012), 99 C.P.R. (4th) 445, 2012 TMOB 19, 2012 CarswellNat 526, Natalie de Paulsen Member Member (T.M. Opp. Bd.) [Federal] IPY.III.6.b.vi.F Classification Number: III.6.b.vi.F Trade marks -- Opposition -- Grounds -- Confusion -- Degree of resemblance in appearance, sound or idea Applicant filed application to register trademark "OPUS" -- Associated services were hotel, lodging and accommodation, conference room, exercise facility, entertainment, facsimile, typing, and providing guests with access to Internet and computers for personal and business use -- Opponent, which used "OPUS" in connection with restaurant, brought opposition proceedings -- Oppositions rejected -- There was only some degree of resemblance between trademarks -- While there was high degree of resemblance visually due to emphasis on "OPUS" component in restaurant trademark, marks were somewhat different sounding due to additional components -- Parties' trademarks did not suggest same idea -- Opponent's trademark suggested restaurant located on particular street or avenue, whereas applicant's trademark gave no such impression -- Degree of resemblance was not sufficient to overcome difference in services of each party -- On balance of probabilities, given surrounding circumstances, there was not reasonable likelihood of confusion -- Differences between marks and their associated services were sufficient to make confusion unlikely. Euromed Restaurant Ltd. v. Trilogy Properties Corp. (2012), 99 C.P.R. (4th) 445, 2012 TMOB 19, 2012 CarswellNat 526, Natalie de Paulsen Member Member (T.M. Opp. Bd.) [Federal] IPY.III.6.b.vii file:///y /Corporate%20Marketing/public/Legal%20...20Files/12-05-14/CanAbr-Intellectual-2012-20.htm (9 of 10) [5/14/2012 1:06:12 PM]
Classification Number: III.6.b.vii Trade marks -- Opposition -- Grounds -- Lack of distinctiveness Applicant filed application to register trade-mark "OPUS" -- Associated services were hotel, lodging and accommodation, conference room, exercise facility, entertainment, facsimile, typing, and providing guests with access to Internet and computers for personal and business use -- Opponent, which used "OPUS" in connection with restaurant, brought opposition proceedings -- Oppositions rejected -- On other grounds of opposition, it was found on balance of probabilities that there was no likelihood of confusion between parties' trademarks and trade names -- Conclusion reached on issue of likelihood of confusion under other grounds of opposition were equally applicable to distinctiveness ground of opposition -- Consequently, applicant's trademark was adapted to distinguish and actually distinguished applicant's services from opponent's services. Euromed Restaurant Ltd. v. Trilogy Properties Corp. (2012), 99 C.P.R. (4th) 445, 2012 TMOB 19, 2012 CarswellNat 526, Natalie de Paulsen Member Member (T.M. Opp. Bd.) [Federal] IPY.III.8.b.ii.A Classification Number: III.8.b.ii.A Trade marks -- Loss of rights -- Expungement -- Grounds -- Non-use Registrant acquired trade-marks BIG STEEL, BIG STEEL MAN and BIG STEEL HOMME (Marks) from courtordered receiver for former owner -- As part of transaction, registrant acquired several other trade-marks as well as over 70 stores employing more than 500 individuals -- Registrant alleged that its efforts to revitalize trademarks, stores and other assets required considerable work, therefore delaying its planned re-launch of BIG STEEL, BIG STEEL MAN and BIG STEEL clothing brands -- Requesting party made request to expunge trade-marks under s. 45 of Trade-marks Act -- Registrations expunged -- It was not established that there was use of Marks with respect to any of registered wares and services within meaning of s. 45 and s. 4 of Act -- There were no special circumstances excusing non-use -- Registrant failed to demonstrate that reasons for nonuse of Marks were beyond its control -- Period of non-use of Marks was approximately eight years, and registrant failed to detail its activities during that period -- Registrant provided insufficient evidence demonstrating serious intention to resume use of Marks in Canada -- Registrant provided no details regarding "considerable work" undertaken during period of non-use. Dean Palmer IP Law IProperty Inc. v. Fairweather Ltd. (2012), 2012 TMOB 15, 2012 CarswellNat 534, Andrew Bene H.O. H.O. (T.M. Opp. Bd.) [Federal] file:///y /Corporate%20Marketing/public/Legal%20...20Files/12-05-14/CanAbr-Intellectual-2012-20.htm (10 of 10) [5/14/2012 1:06:12 PM]