Successful Opposition by McDonald’s To MACDIMSUM Upheld On Appeal (Intellectual Property Weekly Abstracts Bulletin, Week of 7/23/2013)

Successful Opposition by McDonald's to MACDIMSUM Upheld on Appeal Tong G. Cheah v. McDonald's Corporation, 2013 FC 774

A Member of the Trade-marks Opposition Board (Member) refused the registration of MACDIMSUM for a variety of food and drink items (the Trade-mark). The applicant appealed and the Court dismissed the appeal.

The application for registration of the Trade-mark was based on proposed use in Canada. The Court further noted that the application was for a word, and not the word in a particular style, or with any other word or design. Accordingly, the Board and the Court were not entitled to consider that use of a particular style or with a design could avoid or minimize confusion. McDonald's opposed on the basis of confusion.

The Court concluded that the decision of the Member that the Trade-mark was likely to be confusing with McDonald's family of trade-marks was reasonable. McDonald's submitted a survey, in respect of which the Member stated that he had no reason to doubt the reliability, and the Member found that the survey supported his conclusions. The Court agreed, noting that the survey was not the principal basis for the Member's decision. The Court stated that the "Court has been suspect as to the growing use of and reliance upon surveys in proceedings such as this." However, the Court held that the manner in which the Member used the survey evidence could not be faulted. The Court refused to consider the argument that the applicant's Section 15 Charter rights had been violated, found that there was no evidence of bullying by McDonald's, and held that the argument of dilution of MAC or MC to be unsupported by the evidence. Costs were awarded to McDonald's.

Patents

Disclosure Part of Test for Anticipation Determined on Balance of Probabilities Hoffmann-La Roche Limited v. Apotex Inc., 2013 FC 718

In an application brought pursuant to the Patented Medicines (Notice of Compliance) Regulations, the Court found the allegations of invalidity and non-infringement justified. In particular, Apotex alleged that the impugned patent was invalid on the basis of anticipation, obviousness and overbreadth. Apotex also alleged non- infringement in the alternative on the basis that the invention relates to crystallinity and the Apotex product is amorphous (non-crystalline).

The Court considered the test for anticipation, and particularly the disclosure part of the test and whether an exact description of the invention is necessary in the...