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Page 12 OctOber 15, 2018 • Law times www.lawtimesnews.com construct a hotel under the name in Montreal, the project never materialized, finally foiled by the global economic crisis in 2008. In 2014, the company was is- sued a notice under s. 45 of the Trade-Marks Act, requiring it to demonstrate use of the mark in the previous three years. Hilton Worldwide argued that its website, which allows vis- itors to make reservations to stay at any of the company's Waldorf- Astoria hotels around the world, including the original in New York City, should be enough to constitute use in Canada. The website provided a Ca- nadian toll-free number, and the mark appeared in emails sent to Canadians to confirm their bookings. In addition, 1,300 people in this country made payment online for rooms in Waldorf-Astoria hotels between 2011 and 2014 in order to take advantage of discount room rates for advance bookings. However, following a hearing, the registrar of trademarks was unconvinced and ordered the mark expunged due to the lack of a physical hotel in Canada. "If someone says they offer 'hotel services' in Canada, the average consumer is expecting a hotel. If the customer has to leave Canada to actually enjoy the service, this is not 'hotel ser- vices,'" the registrar wrote. In his decision, Pentney found the registrar had con- strued the meaning of "hotel services" too narrowly. The or- dinary understanding of the term, he wrote, includes ancil- lary services such as reservation and booking services, in addi- tion to the provision of a room in a physical hotel. Pentney added that the meaning of words in a registra- tion can also evolve over time: "In the current case, for ex- ample, since the time of the original registration, the scope of services delivered on-line has expanded greatly, and the meaning of 'hotel services' must adapt to ref lect the fact that an ordinary customer would ex- pect to be able to book a hotel room on-line today, either di- rectly or through the interme- diary of a service dedicated to travel arrangements ( e.g. Expe- dia, Travelocity or Orbitz)," he wrote in his Sept. 7 judgment. The judge then went on to conclude that the registrar erred by failing to consider the mean- ingful benefit Canadians could take from Hilton Worldwide's delivery of the registered services. "Therefore, Hilton has estab- lished 'use' of its trademark in Canada during the relevant pe- riod," Pentney concluded. LT In Doshi's case, by con- trast, it appeared that Health Canada had adopted a blanket confidentiality policy based on procedures devised in the pre- Vanessa's Law era, Grammond found, declaring the decision unreasonable. "It ran against one of the pur- poses of Vanessa's Law. It had the effect of perpetuating the mischief against which Van- essa's Law was aimed," the judge wrote. "Quite simply, Health Canada cannot ignore that Par- liament intended to make clini- cal trial data public and adopt a policy that is in direct contradic- tion with that purpose." Health Canada's decision to impose the confidentiality agreement also failed to balance or even take account of Doshi's Charter-guaranteed freedom of expression, Grammond found. Without the ability to refer to the conclusions drawn in clinical trial reports or other contents in the documents he received from Health Canada, even in summa- ry form, it is difficult to under- stand how he could "meaning- fully communicate the results of his research," the judge wrote. Grammond issued an or- der of mandamus compelling the release of the documents to Doshi, over the objections of a government lawyer who argued that Health Canada could have reached a different conclusion on other requirements under the law if it had known it was unable to impose the confidentiality agreement. "Such a statement is astonish- ing," the judge wrote. "At best, it suggests that Health Canada was engaged in a form of results-ori- ented reasoning whereby the de- cision not to make clinical trial reports public had to be justified in any conceivable manner. . . . At worst, it suggests that Health Canada would try to circumvent a decision of this Court in favour of Mr. Doshi by rescinding con- clusions favourable to him." Intellectual property litiga- tor Yael Bienenstock, who was not involved in the case, says the result is consistent with admin- istrative law principles. "The court insisted on Health Canada really looking at what is at play and exercising its discre- tion, as opposed to imposing a blanket policy," says Bienen- stock, counsel to the Toronto of- fice of Torys LLP. For Lynn Ing, a lawyer with intellectual property law bou- tique Smart & Biggar, the deci- sion highlights a broader trend toward transparency in Canada when it comes to the health and pharmaceutical sectors. In fact, she says, it was a little incongruous to see lawyers for the attorney general arguing so strenuously against disclosure in this case, particularly in light of recently released draft regula- tions under Vanessa's Law. If passed in their current form, the proposed regulations suggest that Health Canada will no longer view informa- tion regarding clinical trials as confidential business informa- tion once the regulator has ap- proved a drug by issuing it with a notice of compliance or when a drug has been denied approval or withdraws from the process. "The draft regulations are out, but the government seemed to be taking the opposite posi- tion in this case," Ing says. Tomkins says she hopes Grammond's decision will help guide the federal government as it finalizes the regulations. "Our biggest hope is that we can continue to drive Health Canada to become a leader when it comes to clinical trial transparency," she says. "Health Canada holds a lot of informa- tion, and studies like those car- ried out by Dr. Doshi, which put together all the data, trials and studies to identify larger trends and uncover issues not picked up by the regulatory process, are extremely valuable. It was pleas- ing to see that value recognized by this decision." LT FOCUS Continued from page 10 Continued from page 11 Policy didn't honour Vanessa's Law Meaning can evolve © 2018 Thomson Reuters Canada Limited 00254EK-A93991-CM Available risk-free for 30 days Online: store.thomsonreuters.ca Call Toll-Free: 1-800-387-5164 | In Toronto: 416-609-3800 Quickly and confi dently address IP considerations When IP issues arise in commercial transactions, this remarkable new book ensures you have an intellectual property specialist at your side, at all times. Get immediate, expert direction on the acquisition, sale, and licensing of: • Trademarks • Copyrights • Patents • Trade Secrets • Corporate Names and Trade Names • Domain Names Cover IP considerations in commercial contracts The thinking has been done for you. Reference the IP transaction you're working on, and make sure you've addressed the relevant issues. 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