Archive for May, 2009
« Older Entries |Osteoporosis Marks a Bone of Contention: NPS Pharmaceuticals v. Biofarma
Friday, May 29th, 2009
The Federal Court recently issued its judgment in NPS Pharmaceuticals, Inc v. Biofarma, Société Par Actions Simplifiée. This case was an appeal by NPS from a decision of the Trade-marks Opposition Board, which had refused NPS’s application to register PREOS, on the basis that it was confusing with Biofarma’s prior application for PROTOS. Both marks were associated with osteoporosis medications.
The Board analyzed the facts with respect to the criteria laid out in Section 6(5) of the Trade-marks Act and also considered the issue of drug errors and whether or not Biofarma would actually use the PROTOS mark. When considering the nature of the wares and the channels of trade for the two marks, the Board found that although the PREOS and PROTOS drugs would be administered in very different forms (PREOS being self injected and PROTOS being dissolved in a glass of water) and could be aimed at different groups of patients, the description of the wares in the applications for both drugs covered identical wares and were not limited as to physical form, dosage and mode of application. The Board also found a “fair degree of resemblance” between the marks, rejecting the “microscopic analysis” by NPS regarding the differences in appearance and sound of the marks. On the issue of possible drug administration errors, the Board held that this was not directly relevant to the issue of confusion. In addition, the Board found that Biofarma was entitled to rely on its allowed application for PROTOS (which was in good standing) to oppose PREOS, despite uncertainty surrounding whether the PROTOS mark would ever be used in Canada. Based on all the factors considered, the Board held that the PREOS mark was confusing with PROTOS.
Posted in Case Law, Trade-mark Oppositions | No Comments »
Breweries Battle Over Ontario
Friday, May 22nd, 2009
In yet another Canadian trademark dispute involving alcoholic beverages – seems to be a bit of a trend lately – Ontario based Brick Brewing Co. Limited has issued an announcement that Labatt Brewing Company Limited has commenced an action in Canada’s Federal Court against Brick, alleging that Brick’s RED BARON trademark infringes Labatt’s BRAVA trademark. While these marks, taken by themselves, seem quite different, the dispute focuses on the similarities between the labels and packaging used with these products, along with the similarity of the bottles.
In an interesting side bar, Labatt has a significant ownership interest in Ontario’s “The Beer Store” which is by far the largest retail channel for beer in Canada’s most populous province. As such, Labatt indirectly receives fees from Red Brick in order to display its RED BARON lager in a lobby display program at The Beer Store, as well as fees to sort RED BARON bottles, which are non-industry standard. Brick argues that because of the set up of The Beer Store, where more popular brands such as those sold by Labatt are featured more prominently, consumers generally have to ask for Brick’s products, such as RED BARON, by name, thereby lessening any likelihood of confusion.
Posted in Case Law, Protection & Enforcement | No Comments »
Ch-ch-ch-ch Changes? CIPO’s Client Consultations Continue
Tuesday, May 19th, 2009
The Canadian Intellectual Property Office has engaged in a number of client consultations recently. Considering changes to Section 45 practice, changes to practice before the Opposition Board – even changes to the method by which it publishes practice notices – CIPO has been soliciting client and stakeholder views. (On the Opposition point, CIPO’s changes to practice before the Board came into effect on March 31, 2009.)
CIPO is now engaged in a new consultation – this one concerning three separate issues. The first concerns deadlines for responding to Examiner reports. CIPO is proposing to extend the deadline for responding to such reports from four to six months.
The second concerns deadlines for responding to CIPO’s requests for outstanding information concerning transfers. Here, CIPO is proposing doing away with such deadlines altogether, though of course the transfer will not be effected it CIPO’s records until all required materials have been provided.
Posted in Legislation, Registration, Trade-mark Oppositions | No Comments »