Digests

Ciba-Geigy Canada Ltd. v. Novopharm Ltd.

T-2582-93

Reed J.

15/12/99

13 pp.

Application for trial of issue to determine nature, quantum of damages suffered by defendant as result of operation of 1993 interim, 1994 interlocutory injunctions preventing defendant selling tablets of diclofenac sodium in same colour, shape, size as tablets sold by plaintiff under brand name Voltaren--After issuance of interlocutory injunction, defendant began marketing 100 mg tablets of diclofenac in different colour, size shape than plaintiff's--Never marketed 75 mg tablet in same colour, shape, size as plaintiff's tablets--Defendant not pursuing appeal of interlocutory injunction--Plaintiff not pursuing action against defendant on merits--Consequently injunction dissolved in December 1997 on defendant's application on ground plaintiff not meeting obligation arising with issuance of interlocutory injunction to proceed to trial with reasonable dispatch--Upon receipt of notice of status review under new Federal Court Rules, 1998 plaintiff filing notice of discontinuance--Enforcement of undertakings as to damages integral to award of interlocutory injunctions--Court having discretion in "special circumstances" to excuse compliance with such undertakings--Assertions any damages trivial, arose out of defendant's failure to mitigate (e.g. by not moving to market non-look-alike tablet at earlier date) not demonstrated to extent required to justify denying defendant opportunity to have nature, extent of damages determined--Defendant producing evidence of some damage, putting forth reasonable argument as to why additional damage occurred--Should be given opportunity to present evidence concerning damages, have evidence assessed--Record insufficient to determine plaintiff's claim failure to mitigate--Unclear whether prolongation of interlocutory injunction result of defendant's actions or matter of Court's convenience--Actions taking place during plaintiff's registration proceeding cannot be relied upon as special circumstances for relieving plaintiff of undertakings to pay damages in this proceeding for passing-off--Failure to pursue appeal of interlocutory injunction not relevant to whether defendant should be allowed to have determination of nature, quantum of damages--Plaintiff will not suffer prejudice as result of motion not having been filed earlier--Delay not significant factor--Plaintiff who commences action, subsequently discontinues it, required, unless consent to contrary to reimburse defendant for costs incurred as result of plaintiff's withdrawn claim--Claim by defendant for damages arising out of imposition of interim, interlocutory injunctions, when plaintiff not establishing right to those injunctions, of similar nature--Interim, interlocutory injunctions granted in anticipation of plaintiff establishing right thereto at trial--When such rights not established, plaintiff has had benefit of operation of injunctions without establishing right claimed as basis for their issuance--In absence of agreement to forego claim to damages, obligation to compensate pursuant to undertaking no different in case of discontinuance from that applicable when plaintiff losing on merits--Before April 1998 promulgation of new Rules, no requirements plaintiff move expeditiously to trial--No evidence defendant caused lengthy delay--Fundamental unfairness in allowing plaintiff interlocutory injunction on strength of argument such injunction would not put end to litigation, and then allowing it to avoid undertakings to pay damages on ground injunction, together with passage of time, having that result--Even if nothing left to litigate, as of date of discontinuance (defendant not having moved to market diclofenac in look-alike tablet despite dissolution of injunction), not reason to absolve plaintiff from obligation to recompense defendant for damages arising from imposition of interim, interlocutory injunctions at earlier stage--R. 153 providing Court may, for purpose of making inquiry and report, refer any question of fact in proceeding to judge or other person--Narrower that predecessor R. 500 authorizing referring of any matter to judge or other person for purpose of making inquiries, or for determination of any question or issue of fact--VISX, Inc. v. Nidek Co. (1998), 81 C.P.R. (3d) 572 (F.C.T.D.) holding r. 107 not envisaging reference as such, but simply separate determination by trial or otherwise of separate issue; damages, profits rarely exclusively matters of fact, references pursuant to r. 153 intended to be only for determination of questions of fact--Order pursuant to r. 107 for trial of issue more appropriate herein than reference pursuant to r. 153--Federal Court Rules, 1998, SOR/98-106, rr. 107, 153--Federal Court Rules, C.R.C., c. 663, R. 500.