554 CURRENT INTELLIGENCE
conclude that the district courts finding that Fabre with-
held the Vidal reference with the specific intent to deceive
the USPTO was clearly erroneous.
The Federal Circuit reached the same conclusion with
respect to the GV reference, described the relationship
between the structure and activity of various analogues
of paclitaxel including docetaxel and named one of
Fabres colleagues as an author. It continued that, in con-
cluding that Fabre acted with a specific intent to deceive
the USPTO, the district court did not rely solely on its
finding that Fabre was not credible but instead viewed
Fabres testimony in light of the other evidence to reach
its intent conclusion. The Federal Circuit held that,
based on the evidence presented, this finding was not
clearly erroneous. Therefore, relying on these materiality
and intent findings, the Federal Circuit held that the dis-
trict court found the patents were unenforceable due to
inequitable conduct. In its view, based on the district
courts thorough discussion of its factual findings and its
well-reasoned analysis that was consistent with Thera-
sense, this determination was not an abuse of discretion.
The Federal Circuit therefore affirmed the decision of the
district court.
Practical significance
The Federal Circuit affirmed its central holding in Ther-
asense in relation to what would amount to inequitable
conduct and provided greater insight into the types on
conduct from which district courts may infer an intent
to deceive the USPTO. For patentees to avoid such a
finding, they are best advised to provide their patent at-
torney with all the information which might appear ma-
terial to the question of patentability. A failure to do so
might result, as the defendants found out in this case,
in the patent being unenforceable by the courts. The
patentee must have a solid reason for non-disclosure,
and it should corroborate with other available evidence.
Even where there is only one document that is material
to patentability, the patentee must disclose because any
omission might result in a finding of an intent to
deceive the USPTO, which would lead inevitably, based
on the decisions of the Federal Circuit in Therasense, as
applied in Aventis, to an unenforceable patent. Contrary
to popular belief, the heightened standard accepted in
Therasense did not lead to the death-knell of the in-
equitable conduct doctrine, as its application in Aventis
clearly shows.
Eddy D. Ventose
Faculty of Law, University of the West Indies, Cave Hill
Campus, Barbados
Email: eddy.ventose@cavehill.uwi.edu
doi:10.1093/jiplp/jps093
Journal of Intellectual Property Law & Practice, 2012, Vol. 7, No.
Trade marks
B The lion that roared: Canada accepts
sound marks
Metro-Goldwyn-Mayer Lion Corp. v Attorney General of
Canada et al., T-1650-10, 1 March 2012
Prothonotary Aronovitch directed the Registrar of
Trade-marks to advertise the application of Metro-
Goldwyn-Mayer Lion Corp (MGM) to register the
sound of a lion roaring in the Canadian Trade-marks
Journal.
Legal context
Section 2 of the Canadian Trade-marks Act, RSC, 1985,
c. T-13 defines a trade-mark as
(a) a mark that is used by a person for the purpose of dis-
tinguishing or so as to distinguish wares or services
manufactured, sold, leased, hired or performed by him
from those manufactured, sold, leased, hired or per-
formed by others,
(b) a certification mark,
(c) a distinguishing guise, or
(d) a proposed trade-mark.
Section 30 of the same Act providing that applications for
the registration of non-word trade marks must contain,
inter alia:
(h) . . . a drawing of the trade-mark and such number of
accurate representations of the trade-mark as may be
prescribed.
Facts
On 6 October 1992 MGM applied to register a sound mark
consisting of a lion roaring (application no. 714,314). The
Registrar of Trade-marks refused to advertise the sound
mark in the Trade-marks Journal because it failed to satisfy
the requirements in s 30(h) of the Trade-marks Act, which
requires non-word marks to contain a drawing of the mark
and such number of accurate representations of the trade-
mark as may be prescribed). The refusal was appealed to
the Federal Court on 12 October 2010.
Analysis
Prothonotary Aronovitch issued the following Order:
1. The decision of the Registrar of Trade-marks dated
August 10, 2010 is set aside;
2. The Trade-mark application for advertisement in the
Canadian Trade-marks Journal for the purposes of sub-
section 37(1) of the Act is approved.
Journal of Intellectual Property Law & Practice, 2012, Vol. 7, No. 8
3. The Trade-marks office is provided by the Applicant
with a digital file containing the actual sound mark in
.mp3 or other agreeable electronic format prior to the
happening of paragraph 2, above; and
4. There will be no costs in this matter.
No further discussion or commentary was provided as,
according to Shapiro Cohen, the trade mark agents and
solicitors of record:
Upon receipt of [our] Memorandum of Fact and Law, the
Department of Justice, on behalf of the Attorney General
of Canada, made the decision to accept Shapiro Cohens
arguments and consent to judgment in favor of Metro-
Goldwyn-Mayer Lion Corp.1
Practical significance
Applications for sound marks are now officially accepted
in Canada. After this order was issued, the Trade-marks
Office issued the following Practice Notice on 28 March
2012:
In view of a recent Federal Court Order, effective immedi-
ately, the Office will accept applications for sound marks.
The application for the registration of a trade-mark
consisting of a sound should:
(a) state that the application is for the registration of a
sound mark;
(b) contain a drawing that graphically represents the
sound;
(c) contain a description of the sound; and
(d) contain an electronic recording of the sound.
Where it is not clear whether an application is intended to
cover a sound mark, the Office will ask the applicant for
written clarification.
Where a sound mark is considered to be functional
and/or clearly descriptive or deceptively misdescriptive, an
objection will be raised pursuant to the provisions of para
12(1)(b) of the Trade-marks Act. In such cases, the mark
may be registered pursuant to the provisions of subs 12(2)
or s 14 of the Act.
Electronic recording of sound
New applications for sound marks may only be submit-
ted by way of a paper application, and not through
CIPOs online filing system.
The Office can only accept a recording of the sound in
MP3 or WAVE format, limited to 5 megabytes in size,
and recorded on a CD or DVD. Other types of record-
ing media and references to a hyperlink or a streaming
location cannot be accepted.
1
Shapiro Cohen successfully appeals Registrar of Trade-marks refusal to
advertise MGM Roaring Lion sound mark: First sound mark advertised
CURRENT INTELLIGENCE 555
Electronic recordings should not contain any looping
or repetition of the sound.
The electronic recording of sound should only be sub-
mitted at the time of filing, and need not be re-submit-
ted with a revised application.
Since that Practice Notice, one additional sound mark has
been applied for as of the time of writing (28 April 2012).
The applicant, Mars Canada Inc., applied for a work.rest.-
play jingle in relation to chocolate confectionery. In ac-
cordance with the Practice Notice, the mark is described as:
. . . drums, a tambourine, acoustic rhythm guitars, an elec-
tric guitar and a bass guitar. The mark opens with a
cymbal crash, and the drums playa steady beat with kick,
snare and hi-hats while the tambourine shaker plays
double-speed rhythm over the top. During the first
measure, the acoustic guitars and bass play a D major
chord, with the acoustic guitars playing on the offbeat of
each sixteenth count. At the second measure, an electric
lead guitar comes in a plays the main melody, which con-
sists of a D5 dotted eighth note, followed by a D5 six-
teenth note, E5 eighth note, E5 sixteenth note, E5
sixteenth note, a G5 triplet eighth note, F-sharp triplet
eighth note, and finally a D5 quarter note tied to a D5
dotted half note. The electric bass copies the electric guitar
melody, following it exactly, and the acoustic guitars
match the melody with D, E minor, G, F-sharp, E minor,
and D chords accordingly. As the melody section comes to
an end, another cymbal crash and a snare roll punctuate it.
The acoustic guitars and bass then playa D major chord
for the first two beats and a C major chord for the last two
beats of each measure, repeating the 2-chord rhythm until
the track fades out.
An audio recording of it is available on the Canadian In-
tellectual Property Offices site (http://www.ic.gc.ca/eic/
site/cipointernet-internetopic.nsf/eng/wr03433.html) and
it is visually depicted as follows:
Thanks to the ubiquitous roar of MGMs lion, applications
for sound marks are now officially accepted in Canada. The
registrations, objections and litigation surrounding sound
marks will provide a fertile area in the years to come.
after refusal by Registrar of Trade-marks, available at http://www.
shapirocohen.com/sound_mark.htm.
556 CURRENT INTELLIGENCE
However, in a jungle of available sound marks, MGMs lion
is king. Hakuna matata (for now at least).
Emir Crowne
Associate Professor, University of Windsor, Faculty of
Law; Partner, Crowne PC, Barristers, Solicitors and Trade-
mark Agents
Email: emir@uwindsor.ca
doi:10.1093/jiplp/jps094
B Counterclaims in Community trade
mark infringement proceedings for revo-
cation on grounds of non-use only permit-
ted where could amount to a defence
Adobe Systems Inc v Netcom Distributors Limited & Ors
[2012] EWHC 1087 (Ch), High Court (England and
Wales) (Mr Justice Mann) 24 February 2012
The High Court, England and Wales, has ruled that it
only has jurisdiction in infringement proceedings to
hear a counterclaim for revocation of a Community
trade mark (CTM) on grounds of non-use if the revoca-
tion could amount to a defence to the infringement
claim.
Legal context
In infringement proceedings concerning three Commu-
nity trade marks (CTMs), the High Court was asked to
decide as a preliminary issue whether the defendants were
entitled to counterclaim for the revocation of aspects of
those trade marks on the ground of non-use in circum-
stances where the counterclaim, even if successful, would
not amount to a defence to the claim for infringement.
Article 96 of Council Regulation 207/2009 on the Com-
munity trade mark provides that designated Community
trade mark courts shall have exclusive jurisdiction for
counterclaims for revocation of the Community trade
mark pursuant to Article 100; a CTM court shall treat a
Community trade mark as valid unless its validity is put
in issue by the defendant with a counterclaim for revoca-
tion (Article 99); by Article 100, a counterclaim for revo-
cation may only be based on the grounds for revocation
mentioned in the Regulation; and by Article 51, a CTM
may be revoked for non-use.
Facts
Adobe, the proprietor of three CTMs, commenced pro-
ceedings against the defendants for infringement of the
CTMs, by reason of parallel importation. Two of the three
defendants brought a counterclaim (insofar as relevant for
this report) for partial revocation of the CTMs, on
Journal of Intellectual Property Law & Practice, 2012, Vol. 7, No. 8
grounds of non-use. The goods and services for which
revocation was sought did not include any of the goods in
respect of which infringement was claimed. It was thus
accepted that, even if completely successful, the counter-
claim for revocation of the CTMs could not amount to a
defence to the infringement claim.
The defendants applied for summary judgment on the
counterclaim for revocation of the CTMs. Adobe argued
that the court did not have jurisdiction under the Regula-
tion to hear the counterclaim in respect of the CTMs,
because the counterclaim could not give rise to a defence.
The court directed that this question was to be deter-
mined as a preliminary issue.
Analysis
This is an important judgment because it recognises the
dividing line between the jurisdiction of the CTM courts
and of the Office for Harmonization in the Internal
Market (OHIM), which administers the CTM system. The
judgment demonstrates the adoption of a purposive inter-
pretation of the Regulation, following the policy behind
the Regulation, where a literal interpretation would have
given rise to a different result.
Adobe argued that a counterclaim should be permitted
by way of defence only. Although the articles summarized
above did not in terms refer to counterclaims which act as
a defence, in the sense of going to the parts of the mark
sued on, they were likely to have been drafted with that
intention. Adobe relied on the European courts purposive
construction of Directive 89/104 (now replaced and codi-
fied by Directive 2008/95), which is closely related to the
Regulation, in Case 292/00 Davidoff & Cie SA v Gofkid
Limited [2003] ECR I 389, where the court stated:
[24] . . . Article 5(2) of the Directive must not be inter-
preted solely on the basis of its wording but also in the
light of the overall scheme and objectives of the system of
which it is a part.
The defendants position was that, since a literal interpret-
ation of the words did not give rise to an absurdity
(which was the case in Davidoff), a purposive approach
had no relevance since the words of the Regulation were
clear.
The judge, Mr Justice Mann, explained that:
[14] . . . Words have their meanings and are not to be dis-
torted, or at least not lightly but they exist in a context
and that context includes the purpose of the legislation.
They have to be viewed in that context. One mans distor-
tion is another mans interpretation. . . .
[15] I shall consider the Regulation with the normal use of
the words in mind, but bearing in mind the scheme of the
legislation to ensure that they are not used over-literally or
over-purposively.