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www.lexpert.ca | LEXPERT • December 2014 | 23 TRADEMARKS the validity of the Athletic Club's trademark registration. In addition to ordering the registration expunged, the judge also granted an injunction under s. 10 of the Trade-marks Act that prevented the Athletic Club from using its mark in the marketplace (something the loss of registration alone would not have accomplished). e injunction has been stayed pending a possible appeal to the Federal Court of Appeal. "You don't see many injunctions granted under s. 10," says Garland. "It is intended to prohibit someone from using a 'generic descriptor' as a trademark. If the injunction is upheld, it would be incumbent on trademark owners to be more aware of the poten- tial downside of adopting what might be a clearly descriptive or generic trademark." Another unusual ruling with trademark implications was Equustek Solutions Inc. v. Jack, issued in June, 2014. e British Columbia Supreme Court ordered Google, as a third party, to remove from its search engine all websites operated by the defen- dants in the action. e defendants were distributors of the plaintiff s' telecom products, but then started passing off those products as their own (covering over the plaintiff s' name and logo). When the defendants were hit with an injunction, they stopped bricks- and-mortar commerce but continued to sell through a network of websites. When the defendants defi ed several court orders to desist, Google was ordered to help the court enforce its orders in what was essentially a case of trademark infringement. " is is the fi rst time an injunction like this has been granted in Canada," says Wilson. e ruling creates a potential avenue for IP rights holders to address infringement by organizations which defy injunctions and hide behind an exclu- sively online presence. "It doesn't change trademark law, but it adds an arrow to the quiver of a trademark lawyer. It gives trade- mark owners a tool on the Internet to help enforce their trademark rights." Another important trademark ruling emerged from Coors Brewing Company v. Anheuser-Busch, where the Federal Court rejected Coors's application to expunge a trademark registration owned by Anheuser- Busch. Coors argued that the registration was invalid, as use of the disputed mark began in the US a er the Canadian fi ling date. e court upheld the registration on the basis that allegations of an improper claim to registration based on foreign registration and use were not grounds for expunging an issued registration (although they could support opposition to an application prior to registration). In patent law, a notable judgment was issued in July, 2014 in AstraZeneca Canada Inc. v. Apotex Inc. Justice Donald Rennie of the Federal Court ruled that the sound prediction of the utility of a patent does not require the disclosure of a factual basis and a sound line of reasoning in the patent itself unless the patent is for a new use of an old invention. Fourteen years ago, the Canadian judiciary had established that any patent where a result is predicted has to include the data and the theory. "No other country has the requirement," says Cameron. "We're an outlier in the rest of the world, and now even the court has recognized that they may have gone too far." e AstraZeneca Canada Inc. case involved the patent for the acid refl ux drug sold by AstraZeneca under the brand-name Nexium. Justice Rennie held that the requirement for "proper disclosure" of data and theory in the patent applies only to the sound prediction of the utility of new uses, on the basis that utility is the only thing being off ered in exchange for a patent monopoly in those cases. "For me," says Cameron, "this is the fi rst inkling of the court putting the brakes on the pendulum that had swung way out in one direction, and trying to recalibrate itself back to a more internationally accepted position without the need for legisla- tion. ey may be eff ectively saying, 'Maybe we went too far in this increased disclosure requirement for every case predicting an invention and should just limit it to cases where it's a new use of an old thing." Meanwhile, two 2013 rulings helped clarify the role of punitive damages in redressing IP infringements in Canada. In October, the Federal Court of Appeal (FCA), in Bell Helicopter Textron Canada Limitée v. Eurocopter SAS, affi rmed a trial decision that invalidated most of the claims of a patent for failure to meet the promised utility. e FCA also affi rmed the concept of punitive damages for willful patent infringement under Canadian law. "It's probably only the second decision to that eff ect in Canadian law," says Robinson. " e judgment can be read as imposing on sophisticated companies an obligation not only to carry out a search of IP before launching a product, but also to document the results." e amount of damages, both compensa- tory and punitive, remains to be determined. In its December ruling in the copyright infringement case, Cinar Corporation v. Robinson, the Supreme Court of Canada confi rmed the award of punitive damages, but adjusted the amount. e court held that punitive damages must be awarded with restraint and also that there must be proportion- ality — "a rational connection," says Robinson, "between the amount awarded and the purposes of prevention, deterrence and denunciation." e rulings have clarifi ed a signifi cant issue within the IP community, especially on the patent side of the rights, says Robinson. "It's one that I think we're going to be seeing more of over the next year or two." Sheldon Gordon is a Toronto-based business writer. "[EQUUSTEK SOLUTIONS INC. V. JACK] doesn't change trademark law, but it adds an arrow to the quiver of a trademark lawyer. It gives trademark owners a tool on the Internet to help enforce their trademark rights." Chris Wilson > Bull, Housser & Tupper LLP

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