Apotex Inc. et al. v. Registrar of Trademarks et al., 2010 FC 291

• Judge: Barnes, J.
• Court: Federal Court (Canada)
• Case Date: March 12, 2010
• Jurisdiction: Canada (Federal)
• Citations: 2010 FC 291;(2010), 366 F.T.R. 77 (FC)

Apotex Inc. v. Reg. of TM (2010), 366 F.T.R. 77 (FC)

MLB headnote and full text

Temp. Cite: [2010] F.T.R. TBEd. MR.020

Apotex Inc., Apotex Fermentation Inc., Cangene - Corporation, Novopharm Limited, Pharmascience Inc., Ranbaxy Pharmaceuticals Canada Inc., ratiopharm Inc., Sandoz Canada Inc. and Taro Pharmaceuticals (applicants) v. Registrar of Trade-marks and Glaxo Group Limited (respondents)

(T-2240-07; 2010 FC 291)

Indexed As: Apotex Inc. et al. v. Registrar of Trademarks et al.

Federal Court

Barnes, J.

March 12, 2010.

Summary:

The applicants sought an order under s. 57 of the Trade-marks Act, striking out a trademark of Glaxo Group Ltd. on the grounds that it was not distinctive and that, as a shaping of the ware, it should have been registered under s. 13 of the Act as a distinguishing guise.

The Federal Court allowed the application and struck the trademark.

Trademarks, Names and Designs - Topic 885

Trademarks - Registration - Expungement of mark - Who may apply for expungement - The applicants sought an order under s. 57 of the Trade-marks Act, striking out a trademark of Glaxo Group Ltd. on the grounds that it was not distinctive - The trademark consisted of the colours dark purple and light purple applied to the visible surface of portions of the particular object, namely a plastic spherical inhaler (Advair Disckus inhaler) - The Federal Court held that the applicants, as pharmaceutical manufacturers of generic medications with an interest in the production and sale of products that closely resembled brand name medications, were interested parties who were entitled to bring this proceeding - This was fundamentally a commercial interest although a collateral public interest might also be advanced through the minimization of patient confusion - The impugned trademark restricted the applicants' interest in making a look-alike inhaler - The applicants met the low threshold for bringing this proceeding - See paragraph 7.

Trademarks, Names and Designs - Topic 889.1

Trademarks - Registration - Expungement of mark - Grounds - Loss of distinctiveness (incl. non-distinctiveness) - The applicants (pharmaceutical manufacturers of generic medications) sought an order under s. 57 of the Trade-marks Act, striking out a trademark of Glaxo Group Ltd. on the grounds that it was not distinctive - The trademark consisted of the colours dark purple and light purple applied to the visible surface of portions of the particular object, namely a plastic spherical inhaler (Advair Disckus inhaler) - The Federal Court discussed the legal threshold for distinctiveness - It was insufficient to show that the appearance of a product might represent a secondary check of product identity or that it might cause a person to wonder whether the expected product was correctly dispensed - What was required was that physicians, pharmacists and patients related the trademark to a single source and thereby used the mark to make their prescribing, dispensing and purchasing choices - An educated guess about source was not enough to constitute distinctiveness and neither was a design that was simply unique in the marketplace and recognized as such - The fact that a physician or pharmacist might make an informal assumption about the provenance of a purple disc-shaped inhaler in the context of a therapeutic discussion with a patient was also insufficient to establish distinctiveness - See paragraphs 8 to 13.

Trademarks, Names and Designs - Topic 889.1

Trademarks - Registration - Expungement of mark - Grounds - Loss of distinctiveness (incl. non-distinctiveness) - The applicants (pharmaceutical manufacturers of generic medications) sought an order under s. 57 of the Trade-marks Act, striking out a trademark of Glaxo Group Ltd. on the grounds that it was not distinctive - The trademark consisted of the colours dark purple and light purple applied to the visible surface of portions of the particular object, namely a plastic spherical inhaler (Advair Disckus inhaler) - The Federal Court allowed the application - An unlabelled two-tone purple circular inhaler did not mean enough to a physician, pharmacist or patient for a finding of distinctiveness - A trademark which was based on product colour and shape was likely to be weak - In the context of a market where purchasing decisions were usually made by professionals or on the advice of professionals, the commercial distinctiveness of such a mark would be inherently more difficult to establish - The fact that the trademark was registered in the United Kingdom was of no assistance - Section 14 of the Act disposed of some of the bars to registerability set out in s. 12 where a trademark had been registered abroad - The provision did not eliminate the requirement for distinctiveness under s. 18(b).

Cases Noticed:

Novopharm Ltd. v. Bayer Inc. et al., [2000] 2 F.C. 553; 178 F.T.R. 260; 3 C.P.R.(4th) 305 (T.D.), affd. (2000), 264 N.R. 384; 9 C.P.R.(4th) 304 (F.C.A.), refd to. [para. 5].

CIBA-Geigy Canada Ltd. v. Apotex Inc., [1992] 3 S.C.R. 120; 143 N.R. 241; 58 O.A.C. 321; 44 C.P.R.(3d) 289, refd to. [para. 5].

Fairmont Resort Properties Ltd. v. Fairmont Hotel Management, L.P. (2008), 332 F.T.R. 74; 67 C.P.R.(4th) 404; 2008 FC 876, refd to. [para. 7].

Novopharm Ltd. v. Astra Aktiebolag et al., [2000] F.T.R. Uned. 362; 6 C.P.R.(4th) 224; 97 A.C.W.S.(3d) 141 (T.D.), affd. (2000), 187 F.T.R. 119; 6 C.P.R.(4th) 16 (T.D.), affd. [2002] F.C. 148; 278 N.R. 392; 2001 FCA 296, refd to. [para. 9].

Novopharm Ltd. v. CIBA-Geigy Canada Ltd. - see Novopharm Ltd. v. Astra Aktiebolag et al.

Novopharm Ltd. v. AstraZeneca AB - see Novopharm Ltd. v. Astra Aktiebolag et al.

Kirkbi AG et al. v. Ritvik Holdings Inc. et al., [2005] 3 S.C.R. 302; 341 N.R. 234; 2005 SCC 65, refd to. [para. 11].

Royal Doulton Tableware Ltd. v. Cassidy's Ltd./Cassidy's Ltée, [1986] 1 F.C. 357; 1 C.P.R.(3d) 214 (T.D.), refd to. [para. 13].

AstraZeneca AB v. Novopharm Ltd. et al. (2003), 300 N.R. 266; 24 C.P.R.(4th) 326; 2003 FCA 57, refd to. [para. 14].

Wal-Mart Stores Inc. v. Samara Brothers Inc. (2000), 529 U.S. 205 (Sup. Ct.), refd to. [para. 14].

Cadbury Schweppes Ltd. v. Darrell Lea Chocolate Shops, [2008] FCA 470 (Aust. Fed. Ct.), refd to. [para. 17].

Eli Lilly & Co. et al. v. Novopharm Ltd. et al. (1997), 130 F.T.R. 1; 73 C.P.R.(3d) 371 (T.D.), affd. [2001] 2 F.C. 502; 265 N.R. 137; 10 C.P.R.(4th) 10 (F.C.A.), refd to. [para. 18].

General Motors du Canada et al. v. Décarie Motors Inc. et al., [2001] 1 F.C. 665; 264 N.R. 69; 9 C.P.R.(4th) 368 (F.C.A.), refd to. [para. 19].

Novopharm Ltd. v. AstraZeneca AB et al. (2003), 240 F.T.R. 300; 28 C.P.R.(4th) 129; 2003 FC 1212, refd to. [para. 21].

Molson Breweries, A Partnership v. Labatt (John) Ltd. et al., [2000] 3 F.C. 145; 252 N.R. 91; 5 C.P.R.(4th) 180 (F.C.A.), refd to. [para. 38].

CIBA-Geigy Canada Ltd. v. Novopharm Ltd. et al. (1994), 83 F.T.R. 161; 56 C.P.R.(3d) 289 (T.D.), varied (1994), 83 F.T.R. 233; 56 C.P.R.(3d) 344 (T.D.), refd to. [para. 38].

Lubrication Engineers Inc. v. Canadian Council of Professional Engineers, [1992] 2 F.C. 329; 140 N.R. 318; 41 C.P.R.(3d) 243 (F.C.A.), refd to. [para. 38].

Statutes Noticed:

Trade-marks Act, R.S.C. 1985, c. T-13, sect. 14, sect. 18(b) [para. 41].

Counsel:

Carol Hitchman, Esther Jeon and Christopher Tan, for the applicants;

James Mills and Grant Lynds, for the respondents, Glaxo Group Limited.

Solicitors of Record:

Gardiner Roberts, LLP, Toronto, Ontario, for the applicants;

Gowling Lafleur Henderson, LLP, Ottawa, Ontario, for the respondents , Glaxo Group Limited.

This application was heard at Toronto, Ontario, on October 26 and 27, 2009, by Barnes, J., of the Federal Court, who delivered the following reasons for judgment on March 12, 2010.