Date: 20100421
Docket: A-111-10
Citation: 2010 FCA
110
Present: TRUDEL J.A.
BETWEEN:
GLAXO
GROUP LIMITED
Appellant
and
APOTEX INC., APOTEX
FERMENTATION INC.,
CANGENE - CORPORATION, NOVOPHARM LIMITED,
PHARMASCIENCE INC., RANBAXY
PHARMACEUTICALS CANADA INC.,
RATIOPHARM INC., SANDOZ CANADA INC., TARO
PHARMACEUTICALS
Respondents
and
REGISTRAR OF TRADE-MARKS
Respondent
Dealt with in writing without appearance
of parties.
Order delivered at Ottawa, Ontario,
on April 21, 2010.
REASONS
FOR ORDER BY: TRUDEL
J.A.
Date: 20100421
Docket: A-111-10
Citation: 2010 FCA 110
Present: TRUDEL
J.A.
BETWEEN:
GLAXO GROUP LIMITED
Appellant
and
APOTEX INC., APOTEX FERMENTATION INC.,
CANGENE - CORPORATION, NOVOPHARM LIMITED,
PHARMASCIENCE INC., RANBAXY PHARMACEUTICALS
CANADA INC.,
RATIOPHARM INC., SANDOZ CANADA INC., TARO
PHARMACEUTICALS
Respondents
and
REGISTRAR OF TRADE-MARKS
Respondent
REASONS FOR ORDER
TRUDEL J.A.
[1]
An Order
of the Federal Court [2010 FC 291] provides that trade-mark 687,313, owned by
the appellant, Glaxo Group Limited, is expunged. This trade-mark registration
covers two-tone purple colours applied to the visible surfaces of an inhaler
for the administration of pharmaceuticals. The Colour Purple Mark is used in Canada in association with Advair®
Diskus® inhalers. The judge of the Federal Court concluded that, inter alia,
the Colour Purple Mark is not distinctive.
[2]
The
appellant commenced an appeal from the judgment of the Federal Court and now
seeks a stay pending disposition of the appeal to prevent the registration of
the Colour Purple Mark from being struck from the Trade-marks Register.
[3]
The
appellant and its licensee, GlaxoSmithKline Inc., have undertaken to refrain
from commencing any action for infringement of the trade-mark registration at
issue until this Court can render its decision on appeal.
[4]
The
relevant test to be applied to an application for stay is set out in RJR-MacDonald
Inc. v. Canada (Attorney General), [1994] 1 S.C.R. 311. At the
first stage, the applicant must demonstrate a serious question to be tried, but
the threshold is low; at the second stage, the applicant must demonstrate that
it will suffer irreparable harm if the relief is not granted; and, the third
stage requires an assessment of the balance of convenience.
Serious Issue
[5]
In my
view, the grounds of appeal raise serious questions to be tried and are
sufficient for meeting the threshold for granting a stay.
Irreparable Harm
[6]
Firstly,
the appellant argues that the purpose of the stay pending appeal is to prevent
the loss of its legal right in the case that its trade-mark would be
re-instated by Order of this Court. The appellant states that the nature of
the harm is irreparable since it is incapable of being compensated through a
later award of damages “from any parties that infringe the trade-mark
registration during the period of time that the registration is absent from the
Register” (appellant’s motion record, at page 66, paragraph 22).
[7]
Secondly,
the appellant raises its concern regarding its promotional materials, which
refer to the Colour Purple Mark as a registered trade-mark. It argues that
“absent a stay of the Order, there will be financial expense and non-financial
resources incurred in order to revise and approve promotional material for
Advair® Diskus® inhalers, to ensure the material accurately reflects whether
the Colour Purple Mark is registered” (ibidem, at paragraph 34).
Supplementary costs would also be incurred to reverse the situation if the
appeal is successful.
[8]
After
considering the submissions of the parties, I am satisfied that the appellant
meets the test for irreparable harm.
Balance of convenience
[9]
I have
already found that the appellant will suffer the greater harm from the granting
or refusal of the stay. The respondents considered the second element of the RJR-Macdonald
test as dispositive of the motion. Consequently, they did not show that they
will suffer irreparable harm if a stay is not granted.
[10]
For these
reasons, the stay will be granted until disposition of the pending appeal with
costs in the cause.
"Johanne Trudel"
FEDERAL COURT OF APPEAL
NAMES OF COUNSEL AND
SOLICITORS OF RECORD
DOCKET: A-111-10
STYLE OF CAUSE: Glaxo
Group Limited v. Apotex Inc. and others
MOTION
DEALT WITH IN WRITING WITHOUT APPEARANCE OF PARTIES
REASONS FOR ORDER BY: TRUDEL J.A.
DATED: April 21, 2010
WRITTEN
REPRESENTATIONS BY:
|
Grant W. Lynds
|
FOR
THE APPELLANT
|
|
Carol Hitchman
|
FOR
THE RESPONDENT
|
SOLICITORS
OF RECORD:
|
Gowling Lafleur Henderson LLP
Ottawa,
Ontario
|
FOR
THE APPELLANT
|
|
Gardiner Roberts
Toronto, Ontario
|
FOR
THE RESPONDENT
|
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