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The Supreme Court of Canada Denied Leave in two Intellectual Property Cases Today

November 1, 2012

In BCF s.e.n.c.r.l. v. Spirits International B.V. et al. (SCC #34888) the SCC denied leave in a case where the Federal Court of Appeal had upheld a trademark registration that was the subject of a section 45 non-use proceeding (http://decisions.fca-caf.gc.ca/en/2012/2012fca131/2012fca131.html). The Federal Court of Appeal was satisfied that supplementary evidence of use filed in the Federal Court would have materially affected the Registrar’s decision to expunge the registration for non-use, and that the registration should be maintained. The Federal Court of Appeal had noted in its decision that “The burden on the registrant to prove use in a section 45 proceeding is not a heavy one. An affidavit or statutory declaration will suffice if it provides a factual description of the use of the subject mark demonstrating that the requirements of section 4 are met: Eclipse International Fashions Canada Inc. v. Shapiro Cohen, 2005 FCA 64, at paragraph 6 (see also Central Transport, Inc. v. Mantha & Associés/Associates (1995), 64 C.P.R. (3d) 354 (F.C.A.), and Plough (Canada) Ltd. v. Aerosol Fillers Inc. (F.C.A.), [1981] 1 F.C. 679). It is always open to the Registrar, as the finder of fact, to draw reasonable inferences from the facts stated in the affidavit or statutory declaration.”

In Teva Canada Limited v Nycomed Canada Inc. et al. (SCC #34873) the SCC denied leave in a case where the Federal Court of Appeal had followed its own earlier interlocutory majority decisions that a generic drug company cannot claim damages for permanent loss of market share to other generic drug manufacturers, under section 8 of the Patented Medicines (Notice of Compliance) Regulations (http://decisions.fca-caf.gc.ca/en/2012/2012fca129/2012fca129.html).  An argument that the claim should proceed to trial because the Supreme Court may ultimately choose to follow a dissenting judgment in one of the earlier decisions had been rejected by the Federal Court of Appeal.