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LDS Church and Mormon fundamentalist group set for Canadian clash over concurrent use

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The public battles between the Utah-based Church of Jesus Christ of Latter-day Saints (“LDS”) and fundamentalist offshoot Mormon sects are legendary throughout western North America. Although the LDS renounced polygamy 124 years ago, it still fights such sects who practice polygamy, whether through public relation campaigns, excommunication of polygamous members, or assisting law enforcement in prosecuting polygamists, in order to protect the LDS’s public image.

Registration 796742

Now, this battle is taking place in cross-border trade mark litigation. Last month, the LDS filed a trade mark infringement lawsuit in the Supreme Court of British Columbia against the Bountiful, British Columbia (“B.C.”) based Church of Jesus Christ of the Latter Day Saints Inc., a polygamist sect headed by Winston Blackmore (“Blackmore Church”). Fundamentalist Mormon sects, like the Blackmore Church, have claimed to be the true heirs of the LDS’ original teachings based on their members’ continued practice of polygamy, and have named their sects with often confusingly similar names to that of the LDS to reflect this association. In this current lawsuit, the LDS claims that the Blackmore Church has infringed its registered Canadian design trade mark that includes the LDS’s name and logo (Registration 796742, registered on May 5, 2011) under the Trade-marks Act, and that they misrepresented their connection to the LDS through passing off use of the LDS’s common law marks that include variations of the mark both with and without its design (collectively, the “common law marks”). For these acts, the LDS claims monetary and punitive damages, a declaratory judgment on the LDS’s ownership of the registered mark and the Blackmore Church’s infringement of it, and both interlocutory and permanent injunctions.

Bountiful, B.C.

The one question that recurs from examining the facts of this case is why the LDS has only recently sought enforcement of its trade mark rights against Bountiful-based fundamentalist sects. The Blackmore Church and its other fundamentalist predecessors have been present in the Bountiful area for decades, and have arguably used the LDS' registered and common law marks in whole or part for much of this period. Yet the LDS has only recently sought legal action for use of such marks. This may be explained by B.C.’s recent delay in fully prosecuting members of the Blackmore Church. Although B.C. courts have upheld the constitutionality of laws making polygamy a criminal act in 2011 (Reference re Section 293 of the Criminal Code of Canada, 2011 BCSC 1588) and Mr Blackmore has been tried and found guilty of tax evasion, B.C. authorities have arguably delayed their prosecution of Mr Blackmore and members of the Blackmore Church for their polygamous acts.

However, the LDS’s claims in this recent lawsuit also derive from a more pragmatic need, namely corporate name registration. The Blackmore Church has incorporated and registered multiple corporate names with the B.C. Corporate Registry (“BCCR”) that encompass the registered and common law marks and similar variations of them. Dating back to 2008, the Blackmore Church registered their church as the “Fundamentalist Church of Jesus Christ of the Latter Day Saints Inc.,” “Church of Jesus Christ of the Latter Day Saints Fundamentalists Inc.”, and most recently, on May 3, 2010, as the “Church of Jesus Christ of the Latter Day Saints Inc.”. It was this most recent registration that prevented the LDS from registering its Canadian branch (“Church of Jesus Christ of the Latter Day Saints in Canada”) with the BCCR.

Although the Blackstone Church has yet to answer the LDS’s claims, this case potentially comes down to whether the Blackstone Church’s use of the registered and common law marks qualifies as permissible concurrent use. Although the LDS asserts that it has used CHURCH OF JESUS CHRIST OF LATTER DAY SAINTS worldwide since 1838, the Blackmore Church may claim that it has used similar variations of those marks since their members settled in B.C. in 1946. As its 2011 registration is the only Canadian registered trade mark on which the LDS bases its lawsuit, the Blackmore Church may claim that its use of LDS’s marks constitutes permissible concurrent use based on its established prior use of the marks before 2011.

In the U.S. for example, an owner of an unregistered mark may claim concurrent use and be protected from an injunction sought by a subsequently registered trade mark owner if (1) the owners are confined to geographically separate markets and (2) there is no likelihood that the registered trade mark owner will expand their use into the unregistered mark owner’s market. Dawn Donut Co. v Hart’s Food Stores, Inc., 267 F.2d 358(2nd Cir. 1959) - a ruling that has been questionedin the internet age. As the Blackmore Church is located in rural Bountiful, B.C., which is habited almost exclusively by fundamentalist Mormons, who are insular by definition and reject the LDS for its abandonment of polygamy, the Blackmore Church could claim a concurrent use defense against the LDS Church’s injunctive demands.

Yet because this lawsuit was filed in Canada, and not the U.S., it is likely that such a concurrent use argument will fail. Canada arguably has more stringent requirements for establishing valid concurrent use. Under Section 21 of the Trade-marks Act, a concurrent use finding requires that: (1) a prior common law mark owner’s objection to a trade mark registration be brought within five years of registration of the trade mark; (2) the common law mark owner’s use of the mark was in “good faith”; and (3) the common law mark owner’s use of the mark is not is “not contrary to public interest.” Although this lawsuit is within five years of registration of the LDS’s registered mark, and good faith may be debatable in light of the Blackmore Church’s belief that it is the true Church of Jesus Christ of the Latter Day Saints, it will be difficult to argue that the Blackmore Church’s use of the registered mark was not contrary to the public interest based on their Church’s illegal polygamous activities.

The outcome of this lawsuit is keenly awaited. Meanwhile, no one doubts that this lawsuit will not end the battles between the LDS and the Blackmore Church and other fundamentalist Mormon sects.

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Pfizer not privy to patent in Jamaica

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This Kat was delighted to spot, courtesy of a Tweet from Carpmaels & Ransford, an extraordinary case in the Privy Council of interest primarily to patent necrophiliacs, concerning as it does the Jamaican Patent Act 1857 (yes, really), which apparently bears some similarities to the United Kingdom Patent Law Amendment Act 1852. As well as tweeting about it, Glyn Truscott kindly agreed to pen a guest blogpost about it, and so here it is.

Seventeenth Century case law, invention by importation, local novelty and ten-year patent terms are not part of the day-to-day considerations of most EP/UK attorneys. However, all of these topics are considered in a compact (44 paragraph) recent judgment from the Privy Council (delivered by Sir David Kitchin), on appeal from the Court of Appeal of Jamaica (Pfizer Limited (Appellant) v Medimpex Jamaica Limited and another (Respondents); [2014] UKPC 20). Paragraph 10 of the judgment summarises the unusual nature of the case, from an EP/UK perspective:

"10. It can be seen from this provision that the Act is concerned with local novelty and it is therefore permissible to secure a patent in Jamaica for inventions previously made available to the public in another country. That this is the scheme of the Act is also apparent from sections 25, 29 and 31. This may seem somewhat surprising to those familiar only with the provisions of the European Patent Convention. However, invention by importation was a feature of United Kingdom law until the Patents Act 1977 came into force in June 1978. The principle was explained in the early 17th century in the case of The Clothworkers of Ipswich (1614) 78 ER 147…"

Amlodipine

The case relates to Amlopidine besylate, sold by Pfizer as Norvasc for the treatment of high blood pressure. The invention was made in 1986 and patent applications were filed in a number of countries. In 1992 an attorney in Jamaica, Mr Robinson, applied in his name for a Jamaican patent for this drug on instructions from Pfizer (the appellant), on the basis that this drug was not previously known in the island (i.e. as assessed under local novelty). Once granted as Patent No. 3247 in 2002, Mr Robinson assigned the patent to Pfizer for a nominal sum. Pfizer then brought infringement proceedings against the respondents (Medimpex Jamaica Limited and Lasco Distributors Limited), who had been importing and selling generic amlopidine besylate in Jamaica since 2001. The respondents counterclaimed for invalidity. It is these proceedings that resulted in an appeal to the Privy Council.

The first issue in this case is whether, by filing the application in his name, Mr Robinson acted on his own behalf or on Pfizer's behalf (as its attorney). This was closely related to the second issue - whether the expiration of a patent for the same invention in another country (here, Egypt, where patent term at the time was only ten years) before grant of the Jamaican patent rendered the patent invalid under Section 29 [Merpel will post the wording of the section at the end of this post] of the Jamaican Patent Act 1857, or whether the applicant had to be the same in the foreign and the Jamaican patent for this provision to take effect.

At first instance, the trial judge held that Mr Robinson was the “true and first inventor” in Jamaica, but did not consider the capacity in which he acted. He found the patent to be invalid because he accepted that the expiry of the corresponding Egyptian patent, prior to grant of the Jamaican patent, rendered the Jamaican patent invalid (irrespective of the identity of the applicants). The Jamaican Court of Appeal agreed with the Judge on the foreign expiry issue but also held that Mr Robinson had acted as attorney for Pfizer and so the patent was invalid for that reason too. Pfizer then appealed to the Privy Council, which remains the final appellate court for civil appeals from Jamaica.

How did we get to Egypt?
asks Merpel

The Privy Council considered the second issue first. It found that both the first instance judge and the Court of Appeal erred in their findings that the expiry of the Egyptian patent rendered the Jamaican patent invalid regardless of the respective applicants. At paragraph 30, The Privy Council found that the application of a local novelty requirement, and the concept of invention by importation:

“…is entirely rational. It encourages the importation of foreign inventions into Jamaica and so promotes the setting up of new industries in the island. It also encourages foreign inventors who have taken out patents for their inventions to import those inventions into Jamaica as soon as possible”.

Having decided that the Egyptian patent expiry did not necessarily render the patent invalid, the case then turned on the first issue – in what capacity did Mr Robinson act? If he was Pfizer’s attorney, then the applicant was the same for the Egyptian and Jamaican Patents and so Section 29 would bite. Pfizer argued that Mr Robinson was the applicant, and not the attorney, because (i) a Power of Attorney was not filed, (ii) Pfizer was not “an absentee” that required representation, and (iii) Mr Robinson was named as the applicant and the relationship between the Mr Robinson and Pfizer “is neither here nor there”. However, the Privy Council decided at paragraph 41 that the difference between naming the attorney or the principal as applicant was an issue of form and not substance. In these situations:

“The attorney has neither identified a new and useful invention abroad nor decided to import that invention into Jamaica. He is still acting throughout on the instructions of the principal and consequently holds the application to the principal’s order.”

Accordingly, it held that Mr Robinson applied for the Patent as Pfizer’s attorney, with the result being that Pfizer’s earlier Egyptian patent had the same applicant and so Section 29 invalidated the Jamaican patent. Pfizer’s appeal was unanimously dismissed.

Merpel adds that Section 29 reads as follows, with the (to her) important wording emboldened:

No applicant shall be deprived of his right to a patent in this Island upon the like proceedings being had in all respects as in case of an original application for his invention by reason of his having previously taken out Letters Patent therefor in any other country:

Provided, that such invention shall not have been introduced into public and common use in this Island prior to the application for a patent therein; and that the patent granted in this Island shall not continue in force after the expiration of the patent granted elsewhere; and that where more than one such patent or like privilege is obtained abroad, then immediately upon the expiration or determination of the term which shall first expire or be determined of such several patents or like privileges, the patents granted in this Island shall cease to be in force:

Provided further, that no Letters Patent for or in respect of any invention for which any such patent or like privilege as aforesaid shall have been obtained elsewhere, and which shall be granted in this Island after the expiration of the term for which such patent or privilege was granted or was in force shall be of any validity

The IPKat thanks Glyn for this post, and as usual invites comments, and perhaps reminiscences from his older readers.