TRADE MARKS |
Registration |
AstraZeneca AB v. Novopharm Ltd.
A-418-01, A-419-01
2002 FCA 387, Rothstein J.A.
15/10/02
11 pp.
Practice--Appeal from Trial Division's decision ((2001), 13 C.P.R. (4th) 61) dismissing appeal under Trade-marks Act, s. 56, from two decisions of Registrar of Trade-marks-- Registrar rejecting Novopharm's statement of opposition to AstraZeneca's (Astra) applications to register two pharma-ceutical tablet trade-marks--Basis for rejection being (1) insufficient detail in statement of opposition enabling Astra to counter assertion trade-marks not distinctive, (2) no quanti-tative and insufficient qualitative evidence of sales, use of tablets--Trial Division finding Registrar not clearly wrong in rejecting opposition for insufficient detail--As requirement for detailed pleadings statutory, Registrar not unreasonable for requiring compliance with statute--Trial Division not considering Registrar's second basis for rejection--Issues: (1) whether Trial Division erring in confirming decision of Registrar on primary ground statement of opposition not sufficiently detailed, (2) if so, whether Trial Division erring in not reviewing Registrar's secondary basis, (3) if error in upholding Registrar's decision, ruling on merits--Novopharm Ltd. v. Astra Zeneca, [2002] 2 F.C. 148 (T.D.), decided after decisions of Registrar and Trial Division and dispositive of procedural issues in appeal--Novopharm, supra, holding : (1) statement of opposition must conform with Trade-marks Act, s. 38(3)(a), by setting out sufficient detail enabling applicant to reply, (2) sufficiency of pleadings determined on interlocutory basis, (3) sufficiency determined on evidence filed and statement of opposition--Trade-marks Regulations (1996), s. 40 allowing applicant or opponent to make interlocutory motion striking all or portion of other party's pleadings--Registrar's failure to consider evidence in assessing whether applicant knew case to be met constituting failure to apply correct legal test for determining adequacy of pleadings--Evidence filed with Registrar curing deficiency in statement of opposition-- Because Trial Division evidence would have affected Registrar's decision, necessary for Trial Division to consider Registrar's secondary basis for rejection, --Trial Division erred in not doing so--Appeal Division having jurisdiction to give judgment Trial Division should have given, but preferable to remit matter involving assessing evidence to Trial Division--Appeal allowed with costs, decision of Registrar and Trial Division quashed, matter remitted to Trial Division--Trade-marks Act, R.S.C. 1985, c. T-10, ss. 38(3)(a), 56--Trade-marks Regulations (1996), SOR/96-195, s. 40.