Merck & Co. Inc. v. Apotex Inc.
T-2408-91
MacKay J.
21/10/93
26 pp.
Injunctions-Application for interlocutory injunction restraining defendant from manufacturing, importing, exporting, selling or offering for sale in Canada enalapril and enalapril maleate in bulk or tablet form in violation of rights granted under Canadian Letters Patent 1,275,349, or for order directing defendant to keep account of all enalapril and enalapril maleate in possession, custody or power -- Plaintiff Merck Frosst marketing enalapril maleate in tablet form in Canada under trademark VASOTEC -- VASOTEC most often prescribed drug for treating hypertension and congestive heart failure in Canada -- Defendant Apotex largest producer of generic prescription drugs in Canada, manufacturing and selling drugs invented by others -- In March 1991, Merck aware enalapril tablets, not of Merck origin, appearing in Caribbean Islands -- Apotex's APO-ENALAPRIL tablets generally similar in size, shape, colour and concentration of drug to corresponding VASOTEC tablets of Merck Canada -- In September 1991, plaintiffs commencing action against Apotex for alleged infringement of Merck patent -- Dubé J. ordering Minister of Health and Welfare to issue Notice of Compliance (NOC) sought by Apotex in relation to APO-ENALAPRIL and dismissing Merck's application for prohibition -- Gibson J. staying order of Dubé J. pending determination of appeal initiated by Merck against decision of Dubé J. -- Mahoney J.A. allowing Apotex's appeal, setting aside stay order of Gibson J. -- Defendant raising issue of estoppel or abuse of process as Gibson J., on stay application, fully considered question of irreparable harm in proceedings involving same parties, on virtually same evidence as in present application -- Finding expressly endorsed by Court of Appeal -- Court required to consider evidence adduced not entirely same as that before Gibson J. -- Previous order of Gibson J. not determinative of issues and arguments raised herein -- Plaintiffs not to be barred in seeking relief by principle of issue estoppel-Threshold requirement for applicant in interlocutory injunction to establish serious issue, action neither frivolous nor vexatious -- Plaintiffs' action raising serious issues that, absent settlement between parties, can only be resolved by trial-Potential harm to consumers by Apotex tablets merely speculative, given issue of NOC to Apotex authorizing sale of product for consumption in Canada -- Apotex entry into market for drug in question not adversely affecting plaintiffs' reputation as leading innovator in pharmaceutical field -- Plaintiffs' concerns about loss of market share speculative -- Plaintiffs not suffering irreparable harm not adequately compensated in damages between now and trial of action -- Mere difficulty in precisely calculating damages not constituting harm not adequately compensable in damages -- None of cases referred to definitive in determining harm claimed by plaintiffs may not be adequately compensated by damages following trial -- Plaintiffs' recoverable damages resulting from continuance of defendant's activities pending trial adequate remedy -- Alternative relief claimed in plaintiffs' application entirely appropriate -- Application for interlocutory injunction pending trial dismissed -- Application for order defendant maintain records and accounts allowed.