Appeal of NOC Proceeding Dismissed as Moot, Despite Ongoing Section 8 Proceeding (Intellectual Property Weekly Abstracts - Week of July 25, 2016)

NOC Decisions

Appeal of NOC Proceeding Dismissed as Moot, Despite Ongoing Section 8 Proceeding

Amgen Canada Inc. v. Apotex Inc., 2016 FCA 196

Amgen was unsuccessful in a proceeding brought pursuant to the NOC Regulations. It appealed that decision. Apotex brought the within motion to dismiss the appeal as moot. The motion was granted.

Amgen argued that the notice of compliance issued by the Minister concerned only one of the dosage strengths of the pharmaceutical product on the market. Disputes arose during cross-examinations, but Amgen did not bring a motion to sort out the refusals, instead offering to do so only if the FCA was of the view that it should. However, the FCA held that it does not advise parties regarding whether they should bring motions, and the record is as it stands. Based on that evidentiary record, the FCA held that the other dosage strength issue was not before the Minister. The Minister could not have been the subject of a prohibition application concerning that product, thus it is not within the ambit of the appeal.

As the appeal only concerned the dosage strength for which a NOC had issued, the appeal was moot. The Court further refused to exercise its discretion to hear the appeal, holding that even though a section 8 proceeding had been started by Apotex, Amgen can still bring an action for patent infringement, and can assert its patent against the section 8 claim.

Trademarks Cases

Charity Status Insufficient to be Public Authority and Hold Official Mark

Starbucks (HK) Limited v. Trinity Television Inc., 2016 FC 790

In 2001, the Registrar of Trademarks gave public notice of the adoption and use of NOWTV as an official mark by Trinity. At the time, Trinity was a registered charity. In October 2013, the Applicant sought to register NOW TV & Design, which was denied on the basis of Trinity's official mark. The Applicant brought this judicial review pursuant to s. 18.1 of the Federal Courts Act, to review the decision made in 2001. Trinity did not participate in the proceeding because the business had been sold in 2005.

The Court noted the standard of review and found that the issues were all to be assessed on a reasonableness standard. The Court then found that the Applicant has standing because it is directly affected by the matter in that the official mark was cited against its application, preventing its registration. Further, the 2001 decision is unreasonable because the charity status is insufficient to render an entity as a "public authority", which is necessary to obtain...