Eli Lilly and Co. v. Novopharm Ltd.
T-2432-95
Rothstein J.
16/5/96
11 pp.
Motion to amend statement of claim pursuant to R. 420-Plaintiff seeking to prevent defendants from marketing fluoxetine hydrochloride in capsule similar to plaintiff's Prozac capsules-Plaintiff licensing third party company to market generic version of Prozac in nearly identical appearance-Defendants contending licensing agreement illegal and resulting in unlicensed concurrent use of trade-mark fatal to plaintiff's action for passing-off-Defendants' proposed amendments contending licence agreement: (1) contravening Competition Act; (2) constituting fraud on provincial health ministries; and (3) constituting tort of common law conspiracy-Competition argument, i.e. only third party and not defendants may use plaintiff's trade mark with respect to fluoxetine hydrochloride, constituting trade mark issue rather than competition issue: if defendants unable to use Prozac appearance for capsules, not due to licence agreement but rather due to existence of valid trade mark-Competition Act, s. 78(d) fighting brand provision not constituting private right of action or defence and cannot be used to attack agreement-No evidence of deception or misrepresentation of facts thus no basis for allegation of fraud-Violation of provincial health ministry regulatory requirement not voiding agreement ab initio and thus not constituting defence to plaintiff's action for passing-off-No basis for conspiracy allegation; predominant purpose of licence agreement not to cause injury to defendants-Furthermore, tort of conspiracy not rendering agreement void ab initio and thus not constituting defence to plaintiff's action for passing-off-Motion to amend dismissed-Federal Court Rules, C.R.C., c. 663, R. 420-Competition Act, R.S.C., 1985, c. C-34, s. 78(d) (as enacted by R.S.C., 1985 (2nd Supp.), c. 19, s. 45).