1

Barton No-Till Disk Inc. et al. v. Dutch Industries et al.

Under the Canadian Patent Act and Patent Rules, an applicant must pay prescribed amounts, called “maintenance fees”, at specified times in order to keep the application or the patent in good standing.  The amount is lower for a “small entity” than for a “large entity”, in order to provide a modest monetary relief to inventors that are presumed to be of limited means.  However, the definition of “small entity” is complex and asks a number of questions, some of which are rather difficult to answer with precision.

It was the practice of the Commissioner of Patents to permit that the deficiency created when a “large entity” paid a fee applicable to a “small entity” be cured by  “top-up” payments, which could be made even after the deadline for the payment of the fee.  In the course of proceedings for patent infringement, Dutch Industries Ltd (“Dutch”) alleges that the Commissioner has no authority to accept top-up payments.

The Trial judge quashed the Commissioner’s decision to accept top-up payments on the grounds that there is no statutory authority allowing him to accept them.  Consequently, the patents were deemed abandoned and cannot be reinstated.

The Federal Court of Appeal agreed with the Trial judge that the Patent Rules preclude the Commissioner from extending the deadlines for the payment of maintenance fees.  That implies that the Commissioner lacks the authority to permit a deficient maintenance fee to be topped up after the date on which the fee was due.

However, the Court held that a person who meets the definition of “small entity” when applying for a patent maintains that status as long as the application is pending and as long as the patent remains in force.  There is no statutory requirement for the status of a person as a “small entity” or “large entity” to be redetermined at any other time, at least in relation to maintenance fees.  This interpretation is based upon the statutory objectives in play in this case, which are intended to defray part or all of the cost of the Patent Office.  There is no definition that stipulates the date at which the facts pertaining to the “small entity” status are to be determined.  The absence of any mention of a temporal element in the definition of “small entity” presents a statutory interpretation that should be solved in a manner that minimizes the risk of catastrophic consequences, such as the abandonment of a patent, due to an innocent error in the determination of the status.

Barton No-Till Disk Inc. and Flexi-Coil Ltd. v. Dutch Industries Ltd. and The Commissioner of Patents and Intellectual Property Institute of Canada. 2003 FCA 121, Docket A-573-01, A-574-01, 7 March 2003, Honourable Justices Rothstein, Sharlow and Malone.

2

Amazon.com Inc. v. PDC

Complainant is the well-known company Amazon.com, founded in 1995, that specializes in selling merchandise over the Internet.  Although it initially sold mainly books, it now sells a myriad of products, including health and beauty products.  For the first three quarters of 2002, it had revenue of U.S.$2.5 billion.  The company owns many “Amazon.com” trademark registrations in the United States and in many other countries.

Respondent, PDC of Ventura, California, is an enterprise selling herbs, vitamins, health products and health encyclopedias over the Internet.  Its founder, Ms. Zulfiyya Mammedova, thrives on promoting the healthy life style of vegetarianism and herbalism of Amazon plantations and promotes the Amazon’s natural products.  She registered the domain names “amazondrugs.com”, “amazonpharmacy.com” and “amazondoctor.com”.

Amazon.com complains that PDC added generic, descriptive terms to its mark intending to capitalize on its famous trademark.  PDC alleges that the domain names were created to promote a healthy lifestyle using plants, herbs and medications cultivated in the Amazon regions of South America.

One Panel member disagrees with the majority and finds that Complainant’s trademark is not a strong one because it is based on a geographical region.

The Panel majority finds that Amazon.com has demonstrated that its trademark is famous and orders that the three disputed domain names be transferred.

Amazon.com Inc. v. PDC, WIPO Arbitration and Mediation Center, Administrative Panel Decision, Case number D2003-0076, 26 March, 2003.

3

American Sporting Goods Corp. v. Sears Canada Inc.

American Sporting Goods Corporation (“American”) is appealing the decision of the Registrar of Trade Marks refusing registration of the trade mark NEVADOS in association with footwear on the grounds that it is confusing with a family of trade marks of Sears Canada Inc. (“Sears”) including the word NEVADA.

Substantial new evidence was filed before the Court on behalf of both parties, attesting to sales in Canada and samples of advertisements in Canada over the relevant period.

The Federal Court agrees with the decision of the Registrar.  The lack of inherent distinctiveness of the NEVADA trademarks in view of its geographic significance is not, of itself, determinative.  There is an overlap in the nature of the wares and a potential overlap in the nature of the trade of the parties.  The Court finds that the applicant has failed to meet the legal burden of showing that there would be no reasonable likelihood of confusion between the trademarks at issue.

American Sporting Goods Corporation v. Sears Canada Inc., 2003 FCT 320, Docket T-222-01, 18 March 2003, Honourable Justice Gibson.

4

Boston Pizza et al. v. Boston Market Corporation et al.

Boston Pizza International Inc. and Boston Pizza Royalties Limited Partnership (together referred to as “Boston Pizza”) seek an interlocutory injunction against the defendants Boston Market Corporation, McDonald’s Restaurants of Canada Limited, Boston Market Canada Company and Global Restaurant Operations of Ireland Limited (all related companies together referred to as “Boston Market”) to restrain them from using the trade name “Boston Market” in Canada in association with the operation of restaurants and sale of prepared food.

The motion arises in the context of Boston Pizza’s action for infringement of trademark, depreciation of goodwill and passing off. 

Boston Pizza has licensed franchisees that operate 162 restaurants in Canada.  It is the licensee of the registered trade-mark BOSTON PIZZA, which has been in use since 1965.

Boston Market restaurants have been operated in the United States since May 2000.  It opened its first restaurant in Canada in September 2002.  A second was opened in December 2002 and a third is planned to open in June 2003.  All three are located in Mississauga.  Boston Market claims to have a different focus that the Boston Pizza restaurants.  It falls into the category of “fast casual” service.  The Boston Market restaurants have drive-through, a cafeteria-style self-serve area and a small dining area.  Boston Pizza restaurants have full table service, dining and bar area and are licensed to serve alcohol.  The fall into the category of “casual dining”.

Expert evidence was submitted on behalf of both parties to demonstrate confusion and irreparable harm, or lack thereof.

In order to grant the injunction, the Court must first determine if a serious issue has been raised.  Both parties agree that there is a serious issue to be tried.  The Court must then decide if Boston Pizza will suffer irreparable harm if the injunction is not granted.  The Court states that while there is some evidence of confusion, the nature of the harm caused as a result of this confusion is not clear and is couched in somewhat hypothetical terms.

Finally, with respect to the “balance of convenience”, the Court is of the opinion that it favors the Respondents.  Boston Market has spent money and effort in advertising and marketing campaigns, including newspapers, billboard signs and mail outs to 50 000 households.

The application for an interlocutory injunction is denied.

Boston Pizza International Inc. and Boston Pizza Royalties Limited Partnership v. Boston Market Corporation, McDonald’s Restaurants of Canada Limited, Boston Market Canada Company and Global Restaurant Operations of Ireland Limited. 2003 FCT 382, Docket T-1319-02, 1 April 2003, Honourable Justice Blanchard.