TRADE MARKS |
Practice |
LifeScan, Inc. v. Novopharm Ltd.
T-780-00
Lemieux J.
10/11/00
50 pp.
In action for patent and trade-mark infringement action, plaintiffs applying for interlocutory injunction restraining defendant from using trade-mark "One Touch" and from infringing patent--LifeScan U.S. owner of patent for "whole blood glucose test strip" invention--LifeScan Canada licensee of patent--LifeScan Canada also licensee of Johnson & Johnson's "One Touch" trade-mark--Novopharm selling in Canada blood glucose test strips known as "Novo Glucose" test strips which can only be used with "One Touch" metre--Sold with three "One Touch" metres displayed on box, with insert providing direction on how to use "Novo Glucose" test strip, with headline containing words "with all "One Touch" metres" and instructions replete with reference to "One Touch" metres and test strip--Health Canada questioned whether Novo Glucose met safety and effectiveness requirements of Medical Devices Regulations--Novopharm voluntarily discontinued sale of own test strips until approval of proposed changes to packaging and insert and satisfied Health Canada on safety issue--Application dismissed--Question whether test strips which Novopharm purchases from other company fall within LifeScan U.S./DSI licence neither frivolous nor vexatious, therefore serious issue--Application of Centre Ice Ltd. v. National Hockey League (1994), 53 C.P.R. (3d) 34 (F.C.A.); Eli Lilly and Co. v. Apotex Inc. (1996), 69 C.P.R. (3d) 455 (F.C.A.); Cutter Ltd. v. Baxter Travenol Laboratories of Canada Ltd. (1980), 47 C.P.R. (2d) 53 (F.C.A.) as to irreparable harm--LifeScan has not met irreparable harm test as evidence not clearly showing harm would result--Evidence on confusion not convincing--LifeScan's evidence of loss of brand equity and reputation not convincing--In any event, nature of harm claimed by LifeScan calculable and compensable in damages--As to balance of convenience, Novopharm would suffer more by grant of injunction than LifeScan would if denied--Furthermore, LifeScan unreasonably delayed bringing application for interlocutory injunction--Medical Devices Regulations, C.R.C., c. 871.