Upjohn Co. v. Apotex Inc.
T-1357-92
MacKay J.
4/11/93
19 pp.
Application for interlocutory injunction restraining respondent from activities said to be damaging to plaintiffs' interests and rights in registered trade mark ROGAINE-Trade mark ROGAINE registered in association with pharmaceutical preparation, topical dermatological used as hair growth stimulant -- Defendant Apotex company incorporated in Canada manufacturing and selling generic pharmaceutical products-In September 1991, Notice of Compliance issued to Apotex by Minister of National Health and Welfare for minoxidil topical solution APO-GAIN -- At time of hearing, APO-GAIN product not shipped by Apotex for sale in Canada -- APO-GAIN said to infringe plaintiffs' trade mark under Trade-marks Act, s. 20 -- Plaintiffs also alleging passing off on part of defendant contrary to Act, s. 7(b) -- In application for interlocutory injunction, standard to be applied set out by Court of Appeal in Turbo Resources Ltd. v. Petro Canada Inc., [1989] 2 F.C. 451 -- Threshold test whether applicant established serious issue to be tried -- In Ciba-Geigy Canada Ltd. v. Apotex Inc., [1992] 3 S.C.R. 120, SCC holding likelihood of confusion among consumers should be taken into consideration in passing off action in relation to trade mark for prescription drug -- Decision supporting plaintiffs' submission as to serious issues raised herein -- In light of all differences between parties, serious issues raised for consideration at trial-In action to protect trade mark interests, presumption of irreparable harm not basis for interlocutory injunction-Evidence of irreparable harm essential -- Evidence insufficient if speculative -- No evidence of actual confusion -- Plaintiffs' evidence not establishing irreparable harm, pending trial, not adequately compensated in monetary damages if successful at trial-Mark adopted by defendant not identical with plaintiffs'-Concern about possible adverse effects upon plaintiffs' reputation if defendant's product defective or ineffective for patients clearly speculative -- Loss between date of hearing of application and trial could be adequately compensated by damages reasonably calculated in usual manner of court or by accounting of defendant's profits -- Defendant would not suffer irreparable harm if injunction now awarded -- Loss to defendant would be adequately compensated in damages -- Maintenance of status quo going against injunction at present stage of proceedings-Balance of convenience not favouring grant of interlocutory injunction -- Application dismissed -- Trade-marks Act, R.S.C., 1985, c. T-13, ss. 7, 20.