Pfizer Products Inc. v. Canadian Generic Pharmaceutical Association, 2015 FC 493

• Judge: Russell, J.
• Court: Federal Court (Canada)
• Case Date: April 20, 2015
• Jurisdiction: Canada (Federal)
• Citations: 2015 FC 493;(2015), 478 F.T.R. 240 (FC)

Pfizer Products v. Generic Pharmaceutical (2015), 478 F.T.R. 240 (FC)

MLB headnote and full text

Temp. Cite: [2015] F.T.R. TBEd. AP.042

Pfizer Products Inc. (applicant) v. Canadian Generic Pharmaceutical Association (respondent)

(T-733-13; 2015 FC 493)

Indexed As: Pfizer Products Inc. v. Canadian Generic Pharmaceutical Association

Federal Court

Russell, J.

April 20, 2015.

Summary:

Pfizer Products Inc. applied to register the trademark Viagra Tablet Design, a blue, diamond-shaped tablet (the Mark), based on its use in Canada in association with a pharmaceutical product to treat sexual dysfunction.The Canadian Generic Pharmaceutical Association opposed the application. The Trademarks Opposition Board refused Pfizer's application, concluding that it was not satisfied that the Mark was distinctive as of March 6, 2006, the date the statement of opposition was filed. The Board found that Pfizer had established that the Mark was distinctive among patients, but not among physicians and pharmacists. Pfizer appealed.

The Federal Court, on the standard of review of correctness, dismissed the appeal.

Trademarks, Names and Designs - Topic 265

Trademarks - What trademarks registrable - Distinctive marks - General - The Trademarks Opposition Board refused Pfizer's application to register the trademark Viagra Tablet Design (the Mark) - On appeal, Pfizer raised two issues: (1) whether the new evidence on appeal would have had a material effect on the Board's decision; and (2) whether the Mark should have been held to be distinctive - The Federal Court determined the principle to be applied when assessing the evidence - "Much was made by the Applicant [Pfizer] in the present case that the blue, diamond-shaped appearance of the Viagra pill is not, and need not be, the primary means of identifying a single source. I agree that there is no justification for abandoning the 'first impression' principle just because we are dealing with a pharmaceutical. However, I also do not think that Justice Barnes abandoned it in Apotex [Apotex Inc. et al. v. Registrar of Trademarks et al., 366 F.T.R. 77]. He does not say that appearance has to be the 'primary characteristic' for identifying a single source for the product, and his decision as a whole makes it clear that, as a matter of first impression, it is still necessary to show that there is sufficient evidence to establish, on a balance of probabilities, that appearance is recognized as an indicator of source." - See paragraph 72.

Trademarks, Names and Designs - Topic 265

Trademarks - What trademarks registrable - Distinctive marks - General - Pfizer applied to register the trademark Viagra Tablet Design, a blue, diamond-shaped tablet (the Mark) - The Trademarks Opposition Board refused Pfizer's application, concluding that it was not satisfied that the Mark was distinctive - The Board accepted that the Pfizer had established distinctiveness with regard to patients but not with regard to physicians and pharmacists (i.e., the test was conjunctive) - On appeal, Pfizer argued that the test was disjunctive - The Federal Court, on a review of the jurisprudence, concluded that it was misleading to think in terms of a disjunctive or conjunctive test in this context, and reiterated the principle that "that trade-mark law applies to the pharmaceutical industry the same as it does to all other industries. The Applicant must adduce sufficient evidence to establish that, on a balance of probabilities, consumers associate the Mark with a single source of manufacture to a significant degree. The consumers of Viagra include physicians, pharmacists, and patients. If the Applicant can demonstrate a significant degree of recognition among these consumers, the Applicant will have established that the Mark is distinctive." - See paragraphs 74 to 97.

Trademarks, Names and Designs - Topic 265

Trademarks - What trademarks registrable - Distinctive marks - General - Pfizer applied to register the trademark Viagra Tablet Design, a blue, diamond-shaped tablet (the Mark) - The Trademarks Opposition Board refused Pfizer's application, concluding that Pfizer had established that the Mark was distinctive among patients, but not among physicians and pharmacists - The Board reasoned that the Mark was distinctive among patients because they were exposed to extensive advertising, and the reference to "little blue pill" by "at least some patients" suggested that the Mark had a reputation "with at least some consumers," and the use of "little blue pill" by "at least some patients" was a reference to the brand Viagra and not to erectile dysfunction medications generally - The Federal Court held that "the Board was wrong in law in failing to consider whether distinctiveness amongst patients satisfied the requirement for distinctiveness, irrespective of whether the Mark was distinctive for physicians and pharmacists, but was also wrong in law in not considering whether distinctiveness amongst patients was established 'to any significant degree', and was unreasonable in failing to provide a sufficient evidentiary justification for finding distinctiveness amongst patients." - See paragraphs 100 to 104.

Trademarks, Names and Designs - Topic 265

Trademarks - What trademarks registrable - Distinctive marks - General - Pfizer applied to register the trademark Viagra Tablet Design, a blue, diamond-shaped tablet (the Mark) - The Trademarks Opposition Board refused Pfizer's application, concluding that Pfizer had established that, as of 2006, the Mark was distinctive among patients, but not among physicians and pharmacists - Regarding pharmacists, the Board did not find that there was sufficient evidence to meet Pfizer's burden that pharmacists used the Mark "as one of the primary characteristics" by which Viagra tablets were distinguished from the wares of others - The Federal Court concluded that a "primary characteristic" requirement was not in accordance with the basic principles of distinctiveness - See paragraphs 105 to 113.

Trademarks, Names and Designs - Topic 265

Trademarks - What trademarks registrable - Distinctive marks - General - Pfizer applied to register the trademark Viagra Tablet Design, a blue, diamond-shaped tablet (the Mark) - The Trademarks Opposition Board refused Pfizer's application, concluding that Pfizer had established that, as of 2006, the Mark was distinctive among patients, but not among physicians and pharmacists - Regarding physicians, the Board concluded that Pfizer had not clearly established that a significant number of physicians related the Mark to prescribing the wares - Pfizer appealed - The Federal Court, in dismissing the appeal, held that the Board dealt with the physician evidence in accordance with established legal principles - The evidence did not suggest to any significant degree that the Viagra tablet without markings was distinctive of a single source among physicians - See paragraphs 113 to 117.

Trademarks, Names and Designs - Topic 265

Trademarks - What trademarks registrable - Distinctive marks - General - Pfizer applied to register the trademark Viagra Tablet Design, a blue, diamond-shaped tablet (the Mark) - The Trademarks Opposition Board refused Pfizer's application, concluding that Pfizer had established that, as of 2006, the Mark was distinctive among patients, but not among physicians and pharmacists - On appeal, Pfizer argued that the Board imposed a "consumer use" requirement that was not justified by the jurisprudence - The Federal Court, on a review of the jurisprudence, concluded that "[i]n my view, the Federal Court of Appeal has already rejected the 'consumer use' requirement and made it clear that consumers need only associate the product with source. ... When I read the word 'use' in the context of the Board Decision before me, I am not convinced that a consumer use requirement has been applied. I do not see that the Board Member required anything more than an association between the Mark and the source. This does not change my view on the improper introduction of the 'primary characteristics' requirement when the Board is dealing with the evidence on pharmacists." - See paragraphs 118 to 136.

Trademarks, Names and Designs - Topic 265

Trademarks - What trademarks registrable - Distinctive marks - General - The Trademarks Opposition Board refused Pfizer's application to register the trademark Viagra Tablet Design (the Mark) - On appeal, Pfizer argued that (1) the Board erred in its application of the test for distinctiveness by requiring that distinctiveness be established among all three groups: patients, physicians, and pharmacists; (2) the Board erred in its application of the "consumer use" requirement in dealing with physicians and pharmacists; and (3) the new evidence established distinctiveness among physicians and pharmacists - The Federal Court concluded that "this appeal cannot succeed on the issue of distinctiveness. In the evidence adduced on this appeal - not all of which was before the Board - I am unable to conclude that the proposed Mark (i.e. the colour and shape of the Viagra pill) was distinctive of the product at the material date. The evidence before me suggests to me that the limited use which physicians, pharmacists and patients may make of the appearance of the Viagra pill for identification purposes is not enough to establish the distinctiveness required for a valid trade-mark, or as Justice Dawson put it in Novopharm Ltd. v. AstraZeneca AB [240 F.T.R. 300] ... What does an unmarked blue, diamond-shaped pill mean to a physician, pharmacists or patient? Not enough for a finding of distinctiveness." - See paragraphs 209 and 210.

Trademarks, Names and Designs - Topic 715

Trademarks - Registration - General - Opposition - Grounds - [See seventh Trademarks, Names and Designs - Topic 265 ].

Trademarks, Names and Designs - Topic 988

Trademarks - Registration - Appeals or judicial review - Scope of review of decision of registrar (incl. Opposition Board) - The distinctiveness of Pfizer's blue, diamond-shaped Viagra tablet as of 2006 was at the heart of this appeal under s. 56 of the Trade-marks Act - The Trademarks Opposition Board had refused Pfizer's trademark application - The Federal Court held that the Board's determinations of law should be reviewed on a standard of correctness - The question was whether the jurisprudence had satisfactorily determined the standard of review - A direct analogy was insufficient because the decisions were from different tribunals and different statutes - On a consideration of the Dunsmuir factors, the presumption of the reasonableness standard had been rebutted - "The Act explicitly provides for an appeal to the Federal Court in which new evidence may be heard and the Federal Court is permitted to exercise any discretion vested in the Registrar. In my view, these provisions rebut any presumption that the legislature expected the Board to have greater expertise in trade-mark matters than the Federal Court. Further, the nature of the question is the interpretation of 'distinctiveness.' The Board interpreted 'distinctiveness' by reference to Federal Court and Federal Court of Appeal jurisprudence. The Board has no expertise over the Federal Court in interpreting case law." - See paragraphs 137 to 149.

Cases Noticed:

Novopharm Ltd. v. Eli Lilly and Co. (2004), 45 C.P.R.(4th) 254 (T.M. Opp. Bd.), refd to. [para. 7].

Novopharm Ltd. v. Pfizer Products Inc., [2009] T.M.O.B. No. 181, refd to. [para. 8].

Morris (Philip) Inc. v. Imperial Tobacco Ltd. (1985), 7 C.P.R.(3d) 254 (F.C.T.D.), affd. (1987), 81 N.R. 28; 17 C.P.R.(3d) 289 (F.C.A.), refd to. [para. 12].

Apotex Inc. et al. v. Registrar of Trademarks et al. (2010), 366 F.T.R. 77; 2010 FC 291, affd. (2010), 410 N.R. 196; 2010 FCA 313, appld. [para. 12].

Glaxo Group Ltd. v. Apotex Inc. - see Apotex Inc. et al. v. Registrar of Trademarks et al.

Novopharm Ltd. v. Bayer Inc. et al., [2000] 2 F.C. 553; 178 F.T.R. 260 (T.D.), affd. (2000), 264 N.R. 384; 9 C.P.R.(4th) 304 (F.C.A.), appld. [para. 12].

Novopharm Ltd. v. Astra Aktiebolag (2000), 6 C.P.R.(4th) 101 (T.M. Opp. Bd.), refd to. [para. 12].

Novopharm Ltd. v. Astra Aktiebolag et al. (2000), 187 F.T.R. 119; 6 C.P.R.(4th) 16 (T.D.), affd. (2001), 278 N.R. 392; 2001 FCA 296, refd to. [para. 14].

Bojangles' International LLC et al. v. Bojangles Café Ltd. (2006), 293 F.T.R. 234; 2006 FC 657, refd to. [para. 15].

R. v. Mohan, [1994] 2 S.C.R. 9; 166 N.R. 245; 71 O.A.C. 241, refd to. [para. 19].

New Brunswick (Board of Management) v. Dunsmuir, [2008] 1 S.C.R. 190; 372 N.R. 1; 329 N.B.R.(2d) 1; 844 A.P.R. 1; 2008 SCC 9, refd to. [para. 24].

Agraira v. Canada (Minister of Public Safety and Emergency Preparedness) et al., [2013] 2 S.C.R. 559; 446 N.R. 65; 2013 SCC 36, refd to. [para. 24].

JTI Macdonald TM Corp. v. Imperial Tobacco Products Ltd. (2013), 434 F.T.R. 19; 2013 FC 608, refd to. [para. 25].

Scott Paper Ltd. v. Georgia-Pacific Consumer Products LP (2010), 367 F.T.R. 249; 2010 FC 478, refd to. [para. 25].

Vivat Holdings Ltd. v. Levi Strauss & Co. (2005), 276 F.T.R. 40; 2005 FC 707, refd to. [para. 25].

Mövenpick Holding AG v. Exxon Mobil Corp. et al. (2011), 401 F.T.R. 191; 2011 FC 1397, refd to. [para. 25].

Advance Magazine Publishers Inc. v. Farleyco Marketing Inc. (2009), 342 F.T.R. 224; 2009 FC 153, refd to. [para. 25].

Engineers Canada v. REM Chemicals Inc., [2014] F.T.R. Uned. 266; 2014 FC 644, refd to. [para. 26].

Mattel Inc. v. 3894207 Canada Inc. et al., [2006] 1 S.C.R. 772; 348 N.R. 340; 2006 SCC 22, refd to. [para. 27].

Labatt (John) Ltd. v. Molson Companies Ltd. (1990), 36 F.T.R. 70; 30 C.P.R.(3d) 293 (T.D.), affd. (1992), 144 N.R. 318; 42 C.P.R.(3d) 495 (F.C.A.), refd to. [para. 27].

AstraZeneca AB v. Novopharm Ltd. et al. (2003), 300 N.R. 266; 2003 FCA 57, refd to. [para. 27].

Minister of National Revenue v. Larsson (1997), 216 N.R. 315 (F.C.A.), refd to. [para. 30].

Autodata Ltd. v. Autodata Solutions Co., [2004] F.T.R. Uned. 771; 2004 FC 1361, refd to. [para. 30].

CIBA-Geigy Canada Ltd. v. Apotex Inc., [1992] 3 S.C.R. 120; 143 N.R. 241; 58 O.A.C. 321, refd to. [para. 33].

Smith, Kline & French Canada Ltd. v. Registrar of Trademarks, [1987] 2 F.C. 633; 9 F.T.R. 129 (T.D.), refd to. [para. 33].

Oxford Pendaflex Canada Ltd. v. Korr Marketing Ltd. et al., [1982] 1 S.C.R. 494; 41 N.R. 553, refd to. [para. 33].

Havana House Cigar & Tobacco Merchants Ltd. et al. v. Skyway Cigar Store (1998), 147 F.T.R. 54; 81 C.P.R.(3d) 203 (T.D.), refd to. [para. 33].

Molson Breweries, A Partnership v. Labatt (John) Ltd. et al., [2000] 3 F.C. 145; 252 N.R. 91 (F.C.A.), refd to. [para. 33].

Apotex Inc. v. CIBA-Geigy Canada Ltd. et al., [2000] F.T.R. Uned. 350 (T.D.), refd to. [para. 36].

Novopharm Ltd. v. CIBA-Geigy Canada Ltd. - see Apotex Inc. v. CIBA-Geigy Canada Ltd. et al.

Cross-Canada Auto Body Supply (Windsor) Ltd. et al. v. Hyundai Auto Canada (2007), 313 F.T.R. 278; 2007 FC 580, affd. [2008] N.R. Uned. 28; 2008 FCA 98, refd to. [para. 38].

Apotex Inc. v. Monsanto Canada Inc. et al. (2000), 187 F.T.R. 136; 6 C.P.R.(4th) 26 (T.D.), refd to. [para. 42].

Novopharm Ltd. v. Astra Aktiebolag et al., [2000] F.T.R. Uned. 362; 6 C.P.R.(4th) 224 (T.D.), refd to. [para. 42].

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

Pfizer Canada Inc. et al. v. Canada (Minister of Health) et al. (2007), 367 N.R. 103; 2007 FCA 261, refd to. [para. 45].

Ratiopharm Inc. v. Pfizer Canada Inc. - see Pfizer Canada Inc. et al. v. Canada (Minister of Health) et al.

Societé Anonyme des Bains de Mer et du Cercle des Étrangers à Monaco, Société Anonyme v. Monte Carlo Holdings Corp. et al. (2012), 424 F.T.R. 85; 2012 FC 1528, refd to. [para. 45].

R. v. Perka, Nelson, Hines and Johnson, [1984] 2 S.C.R. 232; 55 N.R. 1, refd to. [para. 45].

Eli Lilly and Co. v. Novopharm Ltd. et al. (2006), 295 F.T.R. 219; 2006 FC 843, refd to. [para. 49].

Eli Lilly & Co. et al. v. Novopharm Ltd. et al., [2001] 2 F.C. 502; 265 N.R. 137; 195 D.L.R.(4th) 547 (F.C.A.), refd to. [para. 49].

Novopharm Ltd. v. AstraZeneca AB et al. (2003), 240 F.T.R. 300; 2003 FC 1212, refd to. [para. 50].

Royal Doulton Tableware Ltd. v. Cassidy's Ltd., [1986] 1 F.C. 357; 1 C.P.R.(3d) 214 (T.D.), refd to. [para. 50].

Eli Lilly & Co. et al. v. Novopharm Ltd. et al. (1997), 130 F.T.R. 1; 147 D.L.R.(4th) 673 (T.D.), refd to. [para. 50].

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. 63].

Western Clock Co. v. Oris Watch Co., [1931] Ex. C.R. 64, refd to. [para. 63].

Rogers Communications Inc. et al. v. Society of Composers, Authors and Music Publishers of Canada et al. (2012), 432 N.R. 1; 2012 SCC 35, refd to. [para. 142].

Atkinson v. Canada (Attorney General) (2014), 464 N.R. 382; 2014 FCA 187, refd to. [para. 144].

Kandola v. Canada (Minister of Citizenship and Immigration) (2014), 456 N.R. 115; 2014 FCA 85, refd to. [para. 144].

Canada (Attorney General) v. Johnstone et al. (2014), 459 N.R. 82; 2014 FCA 110, refd to. [para. 144].

Alberta Teachers' Association v. Information and Privacy Commissioner (Alta.) et al., [2011] 3 S.C.R. 654; 424 N.R. 70; 519 A.R. 1; 539 W.A.C. 1; 2011 SCC 61, refd to. [para. 147].

McLean v. British Columbia Securities Commission, [2013] 3 S.C.R. 895; 452 N.R. 340; 347 B.C.A.C. 1; 593 W.A.C. 1; 2013 SCC 67, refd to. [para. 147].

Pfizer Canada Inc. v. Canada (Minister of Health) et al. (2015), 470 F.T.R. 204; 2014 FC 1243, refd to. [para. 148].

Statutes Noticed:

Trade-marks Act, R.S.C. 1985, c. T-13, sect. 38(2)(d), sect. 38(8), sect. 56(5) [para. 29].

Counsel:

Andrew Shaughnessy, Nicole Mantini and Laura Redekop, for the applicant;

Andrew Brodkin, Richard Naiberg and Michel Shneer, for the respondent.

Solicitors of Record:

Torys LLP, Toronto, Ontario, for the applicant;

Goodmans LLP, Toronto, Ontario, for the respondent.

This appeal was heard at Toronto, Ontario, on November 24 - 27, 2014, before Russell, J., of the Federal Court, who delivered the following judgment and reasons, dated April 20, 2015.