Court Of Appeal States Obviousness Test Is 'More Or Less Self-Evident' And Not 'A Fair Expectation Of Success' (Intellectual Property Weekly Abstracts Bulletin — Week Of January 4, 2016)

NOC Decisions

Court of Appeal states obviousness test is "more or less self-evident" and not "a fair expectation of success" Eli Lilly Canada Inc. et al. v. Mylan Pharmaceuticals ULC et al., 2015 FCA 286 Drug: tadalafil

The Court of Appeal has dismissed the appeal of a dismissal of an application pursuant to the PM(NOC) Regulations that had found Mylan's allegations of invalidity to be justified.

The Court of Appeal held that the correct test for obviousness, and the test that ought to be applied by the Federal Court, is that articulated by the Supreme Court of Canada in Apotex Inc. v. Sanofi-Synthelabo Canada Inc., 2008 SCC 61, [2008] 3 S.C.R. 265, at paragraph 66: "For a finding that an invention was 'obvious to try', there must be evidence to convince a judge on a balance of probabilities that it was more or less self-evident to try to obtain the invention. Mere possibility that something might turn up is not enough."

Trademark Decisions

Federal Court upholds refusal of four applications for marks containing the word SECRET Eclectic Edge Inc v. Gildan Apparel (Canada) LP, 2015 FC 1332

Eclectic Edge Inc. ("Eclectic") previously filed applications to register four trademarks containing the words "valentine" and "secret", based on proposed use in association with several goods in the nature of women's clothing, undergarments and lingerie. The respondent Gildan Apparel (Canada) LP ("Gildan"), through one of its predecessor entities, opposed the registration on the basis of reasonable likelihood of confusion with its own registered trademark SECRET and numerous other trademarks containing the word SECRET (the "SECRET Marks"). The Registrar of Trademarks refused Eclectic's four applications, and Eclectic appealed from those decisions.

One issue on appeal related to judicial comity. Eclectic claimed that judicial comity should lead the Court to follow the conclusions of Justice Manson in the recent Eclectic Edge Inc v Victoria's Secret Stores Brand Management, Inc, 2015 FC 453 decision involving Eclectic's VALENTINE SECRET Marks and the VICTORIA'S SECRET trademarks. Conversely, Gildan argued that the principle of judicial comity should instead convince the Court to echo the judicial findings of fact and law made by Justice Tremblay-Lamer in Cortefiel SA v Doris Inc, 2013 FC 1107, which related to the WOMEN'SECRET trademark and Gildan's SECRET Marks. The Court did not agree with either party on the issue of judicial comity because it held that comity only applies to determinations of law, and not to findings of facts where there is a different factual matrix or evidentiary basis between the two cases. The...