Markwell Clarizio LLP

Menu
Contact Us

Author name: Dino Clarizio

FCA Reminds Us That Canadian Trademark Law Is Bilingual

IP Decisions, Trademarks /

On May 5, 2026, the Federal Court of Appeal (per Locke J.A., Roussel J.A., and Heckman J.A.) (“FCA”) upheld a Federal Court decision invalidating portions of several THERME-formative trademark registrations owned by Therme Development (“Therme”). The decision is noteworthy for its treatment of descriptiveness (including bilingual analysis), confusion and expert evidence. Therme Development (CY) Ltd. […]

FCA Reminds Us That Canadian Trademark Law Is Bilingual Read More »

Federal Court of Appeal Clarifies the Test for Overbreadth and the Territorial Limits on Infringement

IP Decisions /

On March 20, 2026, the Federal Court of Appeal (per Locke J.A., Roussel J.A., and Heckman J.A.) (“FCA”) released an important decision in the patent dispute between ProSlide and WhiteWater, two competitors in the water slide industry. The ruling restores the validity of three of ProSlide’s patents relating to water slides but confirms that WhiteWater

Federal Court of Appeal Clarifies the Test for Overbreadth and the Territorial Limits on Infringement Read More »

McCain’s Patent Action Zapped By Pulsed Electric Field

IP Decisions /

On June 13, 2025, the Federal Court (per McHaffie J) held that J.R. Simplot Company (“Simplot”) did not infringe a patent owned by McCain Foods (“McCain”) by applying an electric field to uncooked potatoes before cutting them into French fries. McCain owned Canadian Patent No. 2,412,841 (“Patent”) until its expiry in 2021. The Patent claimed

McCain’s Patent Action Zapped By Pulsed Electric Field Read More »

Litigating Trademark Disputes in Canada – What IP Practitioners Should Know

Trademarks /

The process of litigating trademark disputes in Canada bears many similarities to other common law jurisdictions, in particular the United States. However, there are some unique aspects of Canadian procedure that IP practitioners in other jurisdictions should know. This short article provides a brief overview of how trademark disputes are litigated in Canada. 1.                  Trademark

Litigating Trademark Disputes in Canada – What IP Practitioners Should Know Read More »

Federal Court finds Jamp’s nintedanib capsules to infringe Boehringer’s use patent but not its formulation patent

IP Decisions /

On August 8, 2024, the Federal Court (per Furlanetto J.) held that a patent directed to nintedanib for use in the prevention or treatment of idiopathic pulmonary fibrosis (“IPF”) was valid and infringed, while a patent directed to formulations of nintedanib was not infringed.  Boehringer Ingelheim (Canada) Ltd. et al v. Jamp Pharma Corporation, 2024

Federal Court finds Jamp’s nintedanib capsules to infringe Boehringer’s use patent but not its formulation patent Read More »

Federal Court of Appeal Confirms That Cialis Patent is Invalid

IP Decisions /

The Federal Court of Appeal (per Locke JA.) affirmed a trial decision in which claims in Lilly’s patent covering physiologically acceptable salts of tadalafil were found to be invalid for overbreadth and insufficiency. The principal issue on appeal was the proper construction of the claim term “physiologically acceptable”, though the Court’s obiter statements regarding the

Federal Court of Appeal Confirms That Cialis Patent is Invalid Read More »

Claims to Dosing Regimens May Not Be Prohibited Methods of Medical Treatment: A Question of “Whether” and “How”

IP Decisions /

In Pharmascience v Janssen, the Federal Court of Appeal (Locke JA writing for the Court) held that the claims in Janssen’s patent to a dosing regimen are not prohibited as a method of medical treatment. Pharmascience v Janssen, 2024 FCA 23   The Prohibition Against Patenting Methods of Medical Treatment The patentability of methods of

Claims to Dosing Regimens May Not Be Prohibited Methods of Medical Treatment: A Question of “Whether” and “How” Read More »

Federal Court Finds Takeda’s Patent Not infringed and Invalid for Inutility and Insufficiency

IP Decisions /

The Federal Court (per Furlanetto J.) held that Takeda’s 916 Patent covering aspects of its DEXILANT® capsules is not infringed by Apotex’s proposed generic dexlansoprazole capsules and, in any event, is invalid for inutility (lack of sound prediction) and insufficiency. Takeda Canada Inc. v. Apotex Inc. – Federal Court (fct-cf.gc.ca) The Court’s infringement and validity

Federal Court Finds Takeda’s Patent Not infringed and Invalid for Inutility and Insufficiency Read More »

Samsung and Biogen Enjoined From Using BYOOVIZ Trademark for their Biosimilar in Canada

IP Decisions /

The Federal Court (per Pallotta J.) held that Biogen’s and Samsung’s use of the mark BYOOVIZ in association with an ophthalmologic drug infringes Novartis’s trademark registration for BEOVU, and granted a permanent injunction preventing further use of the mark. Novartis v Biogen 2024 FC 52 Novartis is the owner in Canada of a trademark registration

Samsung and Biogen Enjoined From Using BYOOVIZ Trademark for their Biosimilar in Canada Read More »

Litigating Patents in Canada Compared to the U.S.A.

Uncategorized /

Some commentators have said the Inter Partes Review process and various U.S. Supreme Court decisions have recently made enforcement of patent rights in the United States more challenging. As a result, some patentees have looked abroad to places like Europe (especially Germany) to enforce their patent rights. But what about Canada? Why should an American

Litigating Patents in Canada Compared to the U.S.A. Read More »