Monsanto Canada Inc. v. Novopharm Ltd.
T-769-96
McKeown J.
22/11/96
18 pp.
Interlocutory injunction to restrain defendant Novopharm from marketing generic version of patented drug in same shape, colour-Plaintiff carrying on in Canada business of manufacturing, packaging, marketing brand name pharmaceutical preparations through Searle Canada division-Drug prescribed for patients with hypertension-Word "Isoptin SR tablet" on label-Searle Canada selling Isoptin SR tablets in Canada since 1988-Only markings on Isoptin SR tablets two embossed triangles-Patients identifying Isoptin SR tablets by shape, colour of tablets-Notice published by Novopharm announcing Novopharm SR tablets to be made available to pharmacies, distributors on April 10, 1996 in trade dress substantially identical to Isoptin SR trade dress-By June 1996, defendant booked orders for $1.1 million of Novopharm SR tablets-Application for interim injunction by Searle Canada heard on April 9, 1996-Injunction granted by order of Noël J. dated April 11, 1996-Appeal to Federal Court of Appeal allowed on May 23, 1996-Defendant commenced to ship Novopharm SR tablets to depots in Quebec and Nova Scotia in June 1996-To be granted interlocutory injunction applicant must establish: 1) serious issue to be tried; 2) irreparable harm; and 3) balance of convenience favouring granting of injunction-In considering marketing of prescription pharmaceutical preparations, action for passing off will be maintained if plaintiff can show: 1) existence of secondary meaning or goodwill in appearance of preparation; 2) deception of physicians, pharmacists or patients prescribing, dispensing or using preparation; and 3) actual or potential damage-Serious issue established by plaintiff-Only evidence with respect to agreement between Genpharm Inc. and Searle Canada contained in paragraphs 53, 54 of affidavit of Mr. Cloutier-Plaintiff failing to discharge evidentiary burden to prove it will suffer irreparable harm in absence of injunction-Cloutier's statement about sharing of income vague, self-serving, not satisfying plaintiff's evidentiary burden-Motion for interlocutory injunction dismissed.