Date: 20060718
Docket: T-407-03
Citation: 2006 FC 889
Ottawa, Ontario, July 18,
2006
PRESENT: The Honourable Mr. Justice Harrington
BETWEEN:
RATIOPHARM
INC.
Plaintiff
and
LABORATOIRES RIVA INC.
Defendant
REASONS FOR JUDGMENT AND
JUDGMENT
[1]
Until a few
years ago, Ratiopharm was in the enviable position of having a part of the
Canadian cough syrup market all to itself. Its product “CALMYLIN” was
the only codeine based syrup which could be had without a doctor’s
prescription. Then, in 2002, Laboratoires Riva came along with a similar
codeine based product. There was nothing Ratiopharm could do about the
competition. It has no patent on the formula for the syrup. However, it
objected to the name Laboratoires Riva gave to its product: “DAMYLIN”.
[2]
This is the
trial of an action instituted by Ratiopharm in which it claims Laboratoires
Riva infringed its registered Canadian trade-mark, passed its wares off as its
own, and depreciated the value of the goodwill in the Calmylin trade-mark. More
particularly, it invoked sections 7, 19, 20 and 22 of the Trade-marks Act.
[3]
The
evidence at trial was limited to issues of liability. It was agreed that
quantum, be it in the form of damages or an equitable accounting of profits,
would be left to another day. Finally, after evidence was closed, Ratiopharm’s solicitors
announced that they were no longer seeking judgment with respect to passing off
or diminution of goodwill.
[4]
Thus, it
is not necessary to consider the nuances which arise depending upon which
sections of the Trade-Marks Act are invoked. We are left with an
infringement action under section 20 of the Act which provides “the right of
the owner of a registered trade-mark to its exclusive use shall be deemed to be
infringed by a person not entitled to its use under this Act who sells,
distributes or advertises wares or services in association with a confusing
trade-mark or trade-name…”
[5]
The
statutory basis of an action in the Federal Court for passing off is section 7
of the Trade-marks Act. Bad faith or misfeasance is a feature of passing
off actions, but is not a necessary element of an infringement action. (R.T.
Hughes, Hughes on Trade Marks, 2nd ed. (Markham: LexisNexis Canada Inc.,
2005, at 981). Since the passing off portion of the action has not been
pursued, it is not necessary to take into account the evidence Ratiopharm led
from a former Laboratoires Riva salesperson. She testified that in selling to
pharmacists she emphasized the similarity of the two products and the two
names. However, she did not testify that this sales tactic was dictated to her
by the company.
[6]
Nor is it
necessary to deal with the physical appearance or “get-up” of the two products
either in the context of passing off or trade-mark infringement. Each of the
two products is sold in three sizes: 100 ml., 250 ml. and 350 ml. The bottles
are identical, but no evidence was led to distinguish these bottles from any
other standard bottle available in a pharmacy. Evidence was led as to the
labelling. Calmylin had changed its labelling and was trying to suggest that
Damylin had copied it. However, it turns out that the one and only Damylin
label was on the market before the current Calmylin label, so that it cannot be
said that Damylin was a copycat. In any event, in my opinion, the two labels are
not confusing.
[7]
Section 19
of the Act, which was also invoked in the statement of claim, is not relevant
because it only applies to use by a defendant of the identical trade-mark (Mr.
Submarine Ltd. v. Amandista Investments Ltd. (1987), 19 C.P.R. (3d) 3
(FCA)).
[8]
The section
of the Act to which this action is now limited, section 20, leads us to sections
2 and 6. The definition of trade-mark as truncated from section 2 in order to
fit the facts of this case is “a mark that is used by a person for the purpose
of distinguishing or so as to distinguish wares… manufactured [or] sold… by him
from those manufactured [or] sold… by others.” Likewise, Section 6(2) provides
that “the use of a trade-mark creates confusion with another trade-mark if the
use of both trade-marks in the same area would be likely to lead the inference
that the wares…associated with those trade-marks are manufactured [or] sold by
the same person whether or not the wares…are of the same general class.”
Section 6(5) then enumerates a non-exhaustive list of circumstances to which
the Court shall have regard in determining whether the trade-marks are
confusing. They will be considered in turn below.
ISSUES
[9]
By the
time the parties came to argue, there were two remaining issues:
a.
Does the
plaintiff have standing to sue?
b.
Is Damylin
likely to be confused with Calmylin within the meaning of Section 20 of the
Act?
STANDING TO SUE
[10]
Although
Ratiopharm Inc., the plaintiff, a Canadian corporation, was once the registered
holder of the Calmylin trade-mark, in September 2002, it sold it to a related
corporation, Ratiopharm GmbH. Thus, the allegation in the statement of claim,
which was filed in March 2003, that Ratiopharm Inc. was the owner of all right,
title and interest in the Calmylin trade-mark is incorrect. However, the owner of
a trade-mark may license its use to another who may, in its own name, institute
an infringement action. It is no longer necessary for the purposes of this case
to consider whether the same holds true in actions for passing off and
diminution of goodwill.
[11]
The two
Ratiopharm corporations entered into a trade-mark license agreement on 12 April
2005. The preamble states that Ratiopharm GmbH, as licensor, had, as of 10
September 2002, granted the plaintiff, the exclusive right to use the Calmylin and
other trade-marks within Canada. It bears mentioning that,
according to data maintained by the Canadian Intellectual Property Office, that
is the same date that Ratiopharm Inc. transferred title to Ratiopharm GmbH. It
would appear that no one bothered to paper an assignment back. Section 3.2 of
the Trade-mark Licence Agreement goes on to provide:
“The licensee
shall, at its own expense and after prior permission of licensor have the right
and the obligation to take any action under the law applicable in the territory
to secure and preserve the licensor’s rights in and to Trade-marks in the
Territory, including surveillance of the market. Licensee shall provide
licensor fully informed [sic] of the progress of such proceedings or finding of
infringing rights. Licensor shall provide necessary information and assistance
to licensee in the event the licensee decides that proceedings should be
commenced or defended. Licensor agrees if necessary to be joined as a party to
any action taken by licensee to secure and preserve the licensor’s right in and
to the Trade-marks in the territory. Any recovery shall belong exclusively to
the licensee.”
[12]
Laboratoires
Riva takes the position that the plaintiff did not have Ratiopharm GmbH’s
“prior permission” to take this action. However, I am satisfied that it did
have that permission.
[13]
The only witness
on this point was Kent Denike, Ratiopharm Inc.’s Director of Patent, Regulatory
and Legal Affairs. He only joined the company 26 August 2002, and was just peripherally
aware of the transfer of the Calmylin trade-mark to Ratiopharm GmbH, and the
assignment back. However, he was the one who first retained a law firm with
respect to the Damylin matter. In October 2002, he then transferred the file to
the current solicitors of record on Ratiopharm GmbH’s recommendation. As far as
he is aware, there is no written instruction from Ratiopharm GmbH to institute
suit. However, Ratiopharm GmbH receives monthly reports both from the plaintiff
and from its solicitors; as well it approved the litigation budget. I am
satisfied that the license requirements of Section 50 of the Act have been met
and that the action has the same force and effect, and is as binding, as if
instituted in the name of the registered trade-mark owner.
[14]
Having so
found, it is not necessary to consider whether Laboratoires Riva was precluded
from raising this point in an infringement action (as opposed to a passing off
or diminution of goodwill action) in the light of the issues mutually
identified at the pre-trial conference and in light of the written admissions
made prior to trial.
INFRINGEMENT/CONFUSION
[15]
Turning
now to the infringement action, the defendant’s unregistered trade-mark Damylin
is not identical to Calmylin. The issue under section 20 of the Act is whether
it is confusing. Trade-marks are confusing in the circumstances set out, for
the purposes of this case, in sections 6(2) and (5) of the Act.
[16]
For the
purposes of section 6(2), both trade-marks are currently used in the same
geographical area, Quebec. Although Damylin is
currently only marketed in Quebec, nothing prevents the
defendant from marketing its product nationwide, as is the case with Calmylin.
Not only are the wares of the same general class, they are of the identical
class.
[17]
Section
6(5) of the Trade-Marks Act requires the Court in reaching its
determination to have regard for all the surrounding circumstances, including:
|
6.(5) In determining
whether trade-marks or trade-names are confusing, the court or the Registrar,
as the case may be, shall have regard to all the surrounding circumstances
including
(a) the inherent
distinctiveness of the trade-marks or trade-names and the extent to which
they have become known;
(b) the length of
time the trade-marks or trade-names have been in use;
(c) the nature of
the wares, services or business;
(d) the nature of
the trade; and
(e) the degree of resemblance between the
trade-marks or trade-names in appearance or sound or in the ideas suggested
by them.
|
6.(5) En décidant si des marques de commerce ou des noms commerciaux
créent de la confusion, le tribunal ou le registraire, selon le cas, tient
compte de toutes les circonstances de l’espèce, y compris :
a) le
caractère distinctif inhérent des marques de commerce ou noms commerciaux, et
la mesure dans laquelle ils sont devenus connus;
b) la
période pendant laquelle les marques de commerce ou noms commerciaux ont été
en usage;
c) le
genre de marchandises, services ou entreprises;
d) la
nature du commerce;
e) le
degré de ressemblance entre les marques de commerce ou les noms commerciaux
dans la présentation ou le son, ou dans les idées qu’ils suggèrent.
|
INHERENT DISTINCTIVENESS
[18]
I am
satisfied that neither trade-mark is inherently distinctive. Benoît Leblanc, a linguistics professor,
called by the plaintiff, made the point that the suffix “YLIN” is fairly common
in the pharmaceutical industry. He mentioned Benelyn, Agrylin, Haemaloxylin and, as a
variant, Nilyn. Professor Claire Gélinas-Chebat, another linguistics
professor, called as an expert by Laboratoires Riva, added “Tussilyn”.
Since there is nothing distinctive in the suffix, both agree that one must
focus on the roots “CALM” and “DAM”. Since we have to consider unilingual
French speaking, unilingual English speaking, and bilingual customers, both
experts considered “CALM” and “DAM” in English and in French. In both languages, “CALM” or “CALME”
indicates a system of repose and freedom from turmoil or agitation, “état d’une
personne qui est ni agitée ni énervée, ni inquiète; impression de repos qui en
résulte”. “CALM” is a good root
in context as it suggests that after taking the medicine, one’s throat will be
quiet and in a state of repose.
[19]
“DAM”, on the other
hand, has no pharmaceutical connotations. In English, it may indicate a barrier
(barrage) or in French, “châtiment” (punishment or penalty). In both languages
a “DAM” might also indicate a lady. One could conjure up other meanings such as
a variant on Lady Macbeth’s “Out, damned spot!” (out damn cough), but I accept
that “DAM” has no particular connotation in the context of this case.
EXTENT
TO WHICH THEY ARE KNOWN
[20]
Calmylin
was registered as a trade-mark in 1984. The trade-mark data indicates that the
name had actually been used in association with a cough syrup and expectorant
since 1979.
[21]
To add some
flesh to these documents, Ratiopharm Inc. called Denis Langlois, the Director
of Sales and Marketing of its Rougier Consumer Division. He has worked in the
industry since 1982 but only joined TechniLab Inc., one of the companies which
was amalgamated to form Ratiopharm, in 1997. Although his testimony as to
events prior thereto was of a hearsay nature, it was backed up by company
documentation which fell within his own scope of duty within the company, and
was not challenged.
[22]
He passed
on information that a company by the name of Casgrain Charbonnel marketed a
cough syrup under the name Calmyl. That company is said to have become insolvent.
TechniLab took the name over and added the “IN” at the end so as to compare it
with Benelyn. His understanding is that this took place in the 1979 to 1981
timeframe.
[23]
The sale
of Calmylin with codeine, often called the “original” Calmylin, is restricted,
as is Damylin. Neither is available “over-the-counter” or on the shelf of a
drugstore or supermarket. The products must be kept “behind-the-counter” and
are only available either on prescription or after consultation with a
pharmacist. This is because codeine is a controlled substance from a Federal
Food and Drug regulatory point of view as well as from a provincial point of
view.
[24]
The
plaintiff sells the same cough syrup to pharmaceutical chains who market it
under their own house brands. The “Life” brand of Shoppers Drug Mart was
mentioned, as was London Drugs. It is not suggested that Damylin creates any
confusion with respect to those sales.
[25]
If it can
be said that “behind-the-counter” sales represent a middle ground, then
Ratiopharm’s predecessor TechniLab decided to put product in the two other
markets for cough syrup, “over- the-counter” (or on-the-shelf) and “by
prescription only”.
[26]
In about
1992, TechniLab decided to go into the over-the-counter market. It marketed
seven Calmylin products, none of which contained codeine, Calmylin No. 1, 2, 3,
4, pediatric, cough and flu, and expectorant. These over-the-counter products
were featured in two television commercial campaigns and in point of purchase
advertising. One campaign ran from November 1993 to February 1994 in French and
English across the country. The record is incomplete with respect to the other
campaign, but it is thought to have taken place earlier. Versions of both
advertisements were exhibited during trial.
[27]
Come 1995
and 1996, another Calmylin product was introduced. This one also contained
codeine, and thus was a behind-the-counter product. While both products
contained codeine, the original Calmylin also contained diphenhydramine
hydrochloride and ammonium chloride. The newer version, which was raspberry
flavoured, contained codeine, pseudoephedrine hydrochloride, and guaifenesin. Both
versions of Calmylin with codeine are still marketed.
[28]
There is still
a third Calmylin cough syrup currently on the market, Calmylin Ace. It is
available by prescription only. Its serves as a generic substitute for the
brand name Robitussin AC.
[29]
The Calmylin
over- the-counter cough syrup products are no longer available. A corporate
decision, which involved Mr. Langlois, was made after 1998, the year TechniLab
and Rougier became corporately related. Rougier had a greater share of the
over-the-counter cough syrup market with its brand “BALMINIL”. It was decided to
drop the over-the-counter Calmylin cough syrups in favour of Balminil. These products
were discontinued around 2000, but since they have a four year shelf life some
remnants may have still been on the market when Damylin was introduced in 2002.
[30]
Until
about the year 2000, when the Regulations changed, pharmaceutical companies used
their own sales forces to visit pharmacies. They would often resort to various
inducements. However, marketing tactics have now been restricted, with the only
inducement being credit terms. Sales are promoted at an annual show mart where
the competing companies have kiosks at which their wares are exhibited.
[31]
Sales
records were produced with respect to the various Calmylin products. It is
difficult to appreciate their significance in a vacuum, as no evidence was led
as to what percentage of the overall cough syrup market these sales
represented. Laboratoires Riva testified that in 2002, the only year in which
it was on the market before this action was instituted, its sales were only
$50,000.
[32]
Although I
am satisfied that Calmylin was better known than Damylin, the evidence
certainly does not lead to the conclusion that Calmylin was well known.
THE LENGTH OF TIME THE TRADE-MARKS HAVE
BEEN IN USE
[33]
I am
satisfied that Calmylin has been in use since at least the early 1980s, and
Damylin since 2002.
THE NATURE OF THE WARES, SERVICES OR
BUSINESS
[34]
As
aforesaid, for all intents and purposes, the original Calmylin and Damylin are
identical cough syrups.
THE NATURE OF THE TRADE
[35]
The nature
of the wares, business, and trade is identical. The product is the same and is
only available in pharmacies on a doctor’s prescription or following
consultation with a pharmacist. In some circumstances, price may also be a
factor that affects the likelihood of confusion. For instance, one is highly unlikely
to think that a watch sporting a variant of the mark “Cartier” or “Rolex”
available for purchase from a street vendor for $10 is manufactured by the real
watchmaker. However, there is no direct or deductive evidence as to the price
of Damylin and so price must be taken to be a neutral circumstance.
[36]
Codeine is
a controlled substance as per regulations under the Food and Drugs Act
and the Controlled Drugs and Substances Act. In Quebec, the only
province in which Calmylin and Damylin are currently in competition, the Regulation
Respecting the Terms and Conditions for the Sale of Medications,
R.P.Q.c.P-10, r.8.2, pursuant to the Pharmacy Act, R.S.Q., c. P-10, s.
37.1, stipulates that such substances must be kept in a location inaccessible
to the public, i.e. behind-the-counter. Even though a prescription for either
the original Calmylin or the raspberry Calmylin (as opposed to Calmylin Ace) or
Damylin is not required, they may only be sold by a pharmacist who must open a
file for the patient and, amongst other things, “make a pharmaceutical study of
the file and communicate the appropriate information concerning the correct use
of the medication.” Each product has its own Drug Identification Number printed
on the label.
[37]
As
mentioned earlier, in addition, the original and raspberry Calmylins and
Damylin may be prescribed by a medical doctor.
DEGREE OF RESEMBLANCE IN THE IDEAS
SUGGESTED
[38]
To repeat,
Calmylin may suggest a state of repose. In context, Damylin suggests nothing.
DEGREE OF RESEMBLANCE IN APPEARANCE OR
SOUND
[39]
In my
opinion, the key is the degree of resemblance between Calmylin and Damylin in
appearance or sound having “regard to all the surrounding circumstances”. In
this connection, the Court treats the opinions of the two linguistic
professors, Drs. Leblanc and Gélinas-Chebat, with caution because the degree of
resemblance between trade-marks in appearance, sounds or ideas suggested is but
one of the circumstances which must be taken into account in determining if
there is likelihood of confusion (Pierre Fabre Médicament Dicamente v.
SmithKline Beecham Corp. 2004 FC 811, [2004] F.C.J. No. 999). Nevertheless,
their evidence was helpful, particularly their differences in approach.
[40]
Ratiopharm
called Benoît Leblanc, a professor at Université du Québec à Trois-Rivières,
who holds a doctorate in linguistics. His thesis was an analysis of trade-marks
in the pharmaceutical field. He, together with doctors and pharmacists and
others, is currently on a team at the Université du Québec à Montréal which
analyzes trade-names and marks in the industry. Laboratoires Riva called Claire
Gélinas-Chebat, a professor at Université du Québec à Montréal, who obtained
her doctorate in phonetics. Together with her husband, who is a professor in
marketing, and others, she has been involved in analyzing such matters as sales
and consumer visibility of products. She is the “oralist” in the team, and has
testified about the effect of advertising, and trade-mark matters, in both the
Quebec Superior Court and this Court.
[41]
Professor Leblanc’s
studies over the years have led him to conclude that there is a reason behind
98% of the trade-mark and brand names in the pharmaceutical industry. There are
some 25 indicators, such as the name of the manufacturer, the ingredients
(often expressed in Greek or Latin), the condition to be treated, the effect of
the medicine, frequency of application, or even the name of a family member or
friend. For example, the Canadian generic pharmaceutical company Apotex often
uses the prefix “APO” to identify its products. Mention was
also made of Sinutab (sinus and tablets), “One a Day” and Vicks (a family
friend). Even after explanation, some were not as obvious to me, such as Advil.
[42]
He deduced that Damylin
was chosen to imitate Calmylin and to bring confusion to the marketplace, given
the similarity in sound of “CALM” and “DAM”. There being no pharmaceutical
reason to use the root “DAM” which is very similar to “CALM” both being short three-syllable
words having the same one vowel, the only conclusion to draw is that the
selection of “DAM” was a deliberate and successful attempt to create confusion.
[43]
Professor
Gélinas-Chebat had no need to contradict Professor Leblanc’s 98% thesis.
However, she did add, and rightly so in my opinion, that many of the reasons
for a particular trade-mark in the pharmaceutical industry are not readily
apparent and require detailed analysis. Take Vicks, for example. She thought
there was little risk of confusion because the consonants “C” and “D” are very
different in sound and in appearance and because the consonant “L” which does
not appear in Damylin should be pronounced, although the risk of indistinct
speech was recognized.
[44]
Both also engaged in
the type of minute analysis which detracts from the first impressions of an
average consumer. For instance, Professor Leblanc produced a chart showing the
position of the mouth, teeth and tongue in making certain sounds. Although the
sounds may be different, the visual appearance of the speaker is the same to
the deaf lip reader. Professor Gélinas-Chebat nuanced those remarks by pointing
out that there may be subtle differences which a deaf lip reader would pick up,
such as a flare of the nostrils and vibration of the vocal cords. Suffice it to
say that a decision has to be reached on confusion long before one has to
compare the flare of a nostril!
[45]
As mentioned earlier
in these proceedings, Laboratoires Riva’s intentions are not relevant in an
infringement action. One may intend to confuse, but not succeed; or one may in
all innocence confuse. Dr. Guy Pridham, Laboratoires Riva’s Vice-President,
testified as to the circumstances surrounding the selection of Damylin as a brand
name. The company decided in about 2000 or 2001 that there was room for a codeine-based
cough syrup. They already had a cough syrup on the market, Trialyn, which
contained the two other necessary ingredients. They chose the name in-house,
without the advice of outside marketeers. They wanted something short and
something similar to Trialyn. Calmylin was not mentioned in the examination-in-chief
or the cross-examination!
OTHER SURROUNDING CIRCUMSTANCES
[46]
Although mentioned
under The Nature of the Trade, I consider the market in which the original
Calmylin, Damylin and the other Calmylin products are, or were, marketed to be
important, as well as the fact that these products have a four-year shelf life.
The original Calmylin, the product I have called raspberry Calmylin, and
Damylin are only available behind-the-counter after consultation with a
pharmacist, or on a doctor’s prescription. The over-the-counter Calmylin
products may still have been available on some shelves when Damylin was
introduced in 2002. Calmylin Ace is only available on a doctor’s prescription.
[47]
No evidence was led
as to actual confusion, be it in the mind of a pharmacist, a medical doctor, or
the ultimate user of cough syrup. No opinion evidence by way of surveys was
led.
ANALYSIS
[48]
Just
recently, the Supreme Court of Canada handed down two companion decisions,
which serve as a clear statement of the law. Mattel Inc. v. 3894207 Canada
Inc. 2006 SCC 22, was an appeal arising from the Registrar’s decision to
accept a “Barbie’s” trade-mark and related design in association with
restaurant services. That registration had been opposed by Mattel Inc., the
manufacturer of the Barbie doll which Mr. Justice Binnie termed “an iconic
figure of pop culture.” Veuve Clicquot
Ponsardin v. Boutiques Cliquot Ltée 2006 SCC 23, [2006]
S.C.J. No. 22 (QL),
was an infringement action on the basis that the use of the word “cliquot” in
relation to women’s clothing stores would lead to the inference that the
clothing was manufactured or sold by the makers of Veuve Cliquot champagne.
[49]
The facts
of those two cases are distinguishable in that the wares and services offered
by the two parties were in different trades and in that both pitted a famous
trade-mark against one which was not widely known. If famous means a name well
known to the Court, neither Calmylin nor Damylin are famous. We are not talking
about such famous names as “Pink Panther” (Pink Panther Beauty Corp. v.
United Artists Corp., [1998] 3 F.C. 534) or “Coca Cola” (Coca Cola Co.
of Canada Ltd. v. Pepsi-cola Co. of Canada Ltd. [1942] 2 D.L.R. 657 (JCPC).
[50]
Both Mattel
and Veuve Cliquot, dealt at some length with the test to be applied
in determining the risk of confusion. If one were to carefully examine the
degree of resemblance between Calmylin and Damylin in appearance or sound, one
would readily distinguish them. However, as stated by Mr. Justice Binnie at
paragraph 20 of Veuve Cliquot:
¶ 20 The test to be
applied is a matter of first impression in the mind of a
casual consumer somewhat in a hurry who sees the name Cliquot
on the respondents' storefront or invoice, at a time when he or she has no more
than an imperfect recollection of the VEUVE CLICQUOT trade-marks, and does not
pause to give the matter any detailed consideration or scrutiny, nor to examine
closely the similarities and differences between the marks. As stated by Pigeon
J. in Benson & Hedges (Canada) Ltd. v. St. Regis Tobacco Corp., [1969]
S.C.R. 192, at p. 202:
It is no doubt true
that if one examines both marks carefully, he will readily distinguish them.
However, this is not the basis on which one should decide whether there is any
likelihood of confusion.
... the marks will not normally be seen side by side and
[the Court must] guard against the danger that a person seeing the new mark may
think that it is the same as one he has seen before, or even that it is a new
or associated mark of the proprietor of the former mark.
(Citing in part Halsbury's
Laws of England, 3rd ed., vol. 38, para. 989, at p. 590.)
[51]
Veuve
Cliquot, at
para. 21, confirms that the list of circumstances set out in section 6(5) of
the Act “is not exhaustive and different circumstances will be given different
weight in a context-specific assessment, as discussed in Mattel”, where
at paragraphs 56 and following Mr. Justice Binnie considered the qualities of
the mythical consumer who is either likely or not likely to be confused. She is
neither the “careful and diligent purchaser” nor a “moron in a hurry”. She is
the ordinary hurried purchaser. Reliance was placed on the following decision
of Mr. Justice Cattanach in Canadian Schenley Distilleries Ltd. v. Canada’s
Manitoba Distilleries Ltd. (1975), 25 C.P.R. (2d) 1 at page 5:
That does not mean a rash, careless or unobservant
purchaser on the one hand, nor on the other does it mean a person of higher
education, one possessed of expert qualifications. It is the probability of the
average person endowed with average intelligence acting with ordinary caution
being deceived that is the criterion and to measure that probability of
confusion. The Registrar of Trade Marks or the Judge must assess the normal
attitudes and reactions of such persons.
[52]
The
Supreme Court went on to note that the consumer does not approach every
purchase with the same attention or lack of attention. More care will be taken
when purchasing a more expensive item. “In the case of buying ordinary
run-of-the-mill consumer wares and services, this mythical consumer, although
of average intelligence, is generally running behind schedule and has more
money to spend than time to pay a lot of attention to details.” The standard is
not of a person who never notices anything, but rather of one who takes no more
than “ordinary care to observe that which is staring them in the face” (Coombe
v. Mendit Ld (1913), 30 R.P.C. 709). “However, as per Pink Panther,
supra, in assessing the likelihood of confusion we owe the average consumer
a certain amount of credit.” (Mattel, supra, paragraphs 57 and 58).
[53]
As no
evidence was led as to actual confusion, this leaves the Court with having to
put itself in the shoes of this mythical consumer. There are three persons who
have to be considered: the doctor, the pharmacist, and the consumer. In Ciba-Geigy
Canada Inc. v. Apotex Inc., [1992] 3 S.C.R. 120, the Supreme Court held
that the final consumer of a prescription drug must be taken into account in
determining whether the tort of passing off has been committed. Prior to then,
it had been widely thought that confusion on the part of the patient was not particularly
relevant as she could not take the drug from a store shelf but was required to
go through intermediaries, a doctor and a pharmacist. In this case, the
consumer must go through either two intermediaries, a doctor and a pharmacist
or only one, a pharmacist. The point is she has to go through an intermediary.
Both Calmylin and Damylin are behind-the-counter products. The labels may be
visible at a distance, or beneath the counter and not visible at all.
[54]
Both
doctors and pharmacists are professionals, who in the circumstances cannot be
taken to be in such a hurry as to put the health of the consumer at risk.
[55]
The doctor
has to write out a prescription. Undoubtedly, there is a wide range of medicine
available, in different formats. If syrup is to be prescribed, the doctor must
be taken to know that there are three Calmylin syrups, all codeine based, but
otherwise with different ingredients. A choice has to be made among the three.
If not, what is the pharmacist to do other than to seek clarification?
[56]
The
pharmacist will be either filling out a prescription or conferring with the
consumer. If the prescription is for Robitussin AC, and a substitution is
permitted, the pharmacist knows professionally that, of the products in issue,
only Calmylin Ace will suffice. Neither the original Calmylin, the raspberry-flavoured
Calmylin, nor Damylin will do.
[57]
If no
doctor is involved, the pharmacist knows he may sell two types of Calmylin, but
only one type of Damylin.
[58]
As
aforesaid, and limiting ourselves to the non-prescription, behind-the-counter
product, before selling either of the two Calmylin products, or Damylin, a
Quebec pharmacist must open a file and conduct a pharmacological study. Leaving
aside codeine, the original Calmylin and Damylin contain diphenhydramine
hydrochloride and ammonium chloride, while the other behind-the-counter Calmylin
product, the raspberry flavoured one, contains pseudophedrine hydrochloride and
gualifenesin. Only if the pharmacist opts for the former does a choice between
the original Calmylin and Damylin become an issue.
[59]
The doctor
and the pharmacist are professionals and less likely to be in the same hurry as
the purchaser of a mid-priced meal (Barbie) or dress (Cliquot). In Ciba-Geigy
Canada, supra, Mr. Justice Gonthier approved the following remark of
Viscount Maugham in Saville Perfumerie Ltd. v. June Perfect Ltd. (1941),
58 R.P.C. 147 (H.L.) at pp 175-6:
“It is, for example, quite a common
occurrence ... to find that retail traders are not misled while ordinary
customers are.”
[60]
The
average consumer, or customer has three choices: direct consultation with a
doctor followed by consultation with a pharmacist, consultation with a
pharmacist, or a direct purchase off the shelf. Many treatments for cough, cold
and flu symptoms are available off-the-shelf or over- the-counter. There is no
opportunity for confusion as Calmylin and Damylin are not available over the
counter.
[61]
The
consumer may or may not accept the doctor’s prescription, and the advice of a
pharmacist, including with respect to a substitute, without analysis. On the
other hand, I think it quite possible that if she consults with a doctor or
with a pharmacist, it is because she has bought an over-the-counter product
which has not relieved her symptoms. With one failure she is less likely to be
in a hurry the second time around. At the time this action was instituted, the
chances are that she would have been more familiar with Calmylin, than Damylin,
although I put no weight on the fact that Calmylin once had products on the
over-the-counter market, and even two ad campaigns going back some 10 years as
leaving an impression in her mind.
[62]
I am of
the opinion that on the balance of probabilities there is no likelihood of
confusion between Calmylin and Damylin in the mind of the average consumer,
even if hurried. Although one may imagine a scenario in which the consumer
informs the doctor or pharmacist that she once had a cough syrup ending in
“ylin” which was effective, her attention would have to be drawn to the
distinction between non-prescription and prescription medicines, to Calmylin
with its different versions, Damylin and Benilyn and perhaps others.
[63]
In my
opinion, Calmylin and Damylin do not look the same, and do not sound the same.
In this regard, I prefer the evidence of Professor Gélinas-Chebat. She
endeavoured to put herself in the shoes of those who saw or heard the words,
while Professor Leblanc was more prone to put himself in the shoes of the
manufacturer, with his observation that there is a reason behind 98% of drug
names. Professor Leblanc’s evidence brings to mind the passage in Lewis
Carroll’s “Through the Looking Glass” where, after telling the Gnat that she is
rather afraid of insects, Alice adds:
“I don’t rejoice in insects at all,” Alice explained, “because I’m rather afraid of them – at least the large
kinds. But I can tell you the names of some of them.”
“Of course they answer to their names?” the Gnat remarked
carelessly.
“I never knew them to do it.”
“What’s the use of their having names,” the Gnat said, “if they
won’t answer to them?”
“No use to them,” said Alice; “but it’s useful to the people who name them, I suppose. If not,
why do things have names at all?”
“I can’t say” the Gnat replied.
The average consumer would have neither the knowledge nor
inclination to engage in such an exercise of deductive reasoning.
[64]
I prefer
the evidence of Ms. Gélinas-Chebat that even taking into account a noisy
background, there is little likelihood of confusion between the distinctive
consonants “C” and “D”.
[65]
Be it an
infringement action or an application to the Registrar of Trade-marks to have a
mark registered, the test with respect to confusion is the same. Kellogg
Salada Canada Inc. v. Maximum Nutrition Ltd. (1992), 43 C.P.R. (3d) 349,
dealt with an opposition to the registration of Nutri-Vite for use in
association with cereal and vegetable-derived food products to be used as
breakfast food and snack food. The opponents relied on their registrations for Nutri-Max
and Nutri-Fibre for health food products. Speaking for the Federal Court of
Appeal, Mr. Justice Stone said at page 358:
The presence of a common element in trade marks
has been held to have an important bearing on the issue of confusion for, as
was stated by the Comptroller General in Re Harrods Ltds. Appl'n, supra,
at p. 70:
Now it is a well recognized principle, that has to be taken
into account in considering the possibility of confusion arising between only
two trade marks, that, where those two trade marks contain a common element
which is also contained in a number of other trade marks in use in the same
market, such a common occurrence in the market tends to cause purchasers
to pay more attention to the other features of the respective marks and to
distinguish between them by those other features.
He went on to add at page 360:
I think it may be inferred that
consumers of these products are accustomed to making fine distinctions between the
various NUTRI trade marks in the market-place, by paying more attention to any
small differences between marks. I accept the appellant's contention that the
respondent's marks are weak because they incorporated a word that is commonly
used in the trade.
[66]
I rely
also on the decision of Mr. Justice Blair of the Ontario Court of Appeal in Cochrane-Dunlop
Hardware Ltd. v. Capital Diversified Industries Ltd. (1976), 30 C.P.R. (2d)
176, where in discussing the inherent distinctiveness of trade-marks and the extent
to which they have become known he said at page 182:
It is well established that a
trade mark consisting of a striking inventive name or an original design is
inherently distinctive and is considered a strong mark. As such, it is entitled
to a wide scope of protection. This is especially so if it has become well
known through usage. On the other hand, if a mark lacks these exceptional
qualities in design or wording, it is inherently less distinctive and is
considered a weaker mark. The ambit of protection afforded to a weak mark is
much less than for a strong mark, and registration of other marks containing
comparatively small differences may be permitted.
[67]
For all
these reasons, I conclude that the plaintiff has not made out a case that its
trade-mark was infringed.
JUDGMENT
THIS
COURT ORDERS that the action be and it is hereby dismissed with costs.
“Sean Harrington”
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