Médicament v. Smithkline Beecham Corp., 2004 FC 811

Date: 20040607

Docket: T-2093-98

Citation: 2004 FC 811

Ottawa, Ontario, the 7th day of June 2004

Present:           Madam Justice Danièle Tremblay-Lamer

BETWEEN:

                                                 PIERRE FABRE MÉDICAMENT

                                                                                                                                            Applicant

                                                                           and

                                       SMITHKLINE BEECHAM CORPORATION

                                                                                                                                        Respondent

                                            REASONS FOR ORDER AND ORDER

[1]                This is an appeal from a decision by the Registrar of Trade-marks (the Registrar) dismissing the applicant's application for registration.

BACKGROUND

[2]                On December 9, 1993 the applicant filled application for registration 743,101 for trade-mark IXEL in association with anti-depressants based on proposed use in Canada through a licensee. This application was published in the Trade Marks Journal of August 24, 1994.

[3]                On November 22, 1994 the respondent filed an opposition declaration.

[4]                On September 11, 1998 the Registrar dismissed the applicant's application for registration on account of the risk of confusion between the applicant's mark IXEL and the respondent's registered trade-mark PAXIL. The applicant appealed that decision.

[5]                On March 30, 2000 Pinard J. of this Court allowed the applicant's appeal on the ground that there was no reasonable risk of confusion between the two marks.

[6]                The respondent appealed that decision. On February 13, 2000 the Federal Court of Appeal allowed the appeal. It concluded that the trial judge, and before him the Registrar, had erred as to the applicable test for determining the risk of confusion.

[14] It follows that once there is a risk of confusion in either of the country's official languages, a trade-mark cannot be registered. The particular problem with which Joyal and Strayer JJ. were confronted was the possibility that a trade-mark that does not create any confusion in a Francophone or in an Anglophone might create confusion in a bilingual person through the use of usual, distinct words in French and in English but, to someone who knew what it meant in both languages, referring to the same reality. For example, in Les Produits Freddy Inc., the word "noixelle" might mean nothing to a English-speaking person, and the word "nutella" might be meaningless to a French-speaking person, but it was not excluded that the use of either of these words would confuse a bilingual person who knew the meaning in both languages. It was solely to guard against this possibility that the test was extended to the average bilingual consumer.

[15] In short, the trial judge and, before him, the Registrar erred in transforming the third prong of the only applicable test (is there a risk of confusion in the average Francophone consumer, the average Anglophone consumer or, in some special instances, the average bilingual consumer?) into an independent test. What is more, the case at bar did not even involve a special case in which the perception of an average bilingual consumer would be relevant, in the sense that Lacombe J.A. understood it in Les Produits Freddy Inc.

[7]                The Federal Court of Appeal found that the parties were agreed that there was no risk of confusion between the marks for the average Francophone consumer. It then returned the case to this Court for it to determine whether there was a risk of confusion between the marks for an Anglophone consumer.

ANALYSIS

[8]                According to the Federal Court of Appeal in Molson Breweries, a Partnership v. John Labatt Ltd., [2000] 3 F.C. 145 (C.A.), the standard of review applicable to a decision by the Registrar of Trade-marks is that of the reasonable decision, unless new evidence is submitted to the Court that could significantly affect the Registrar's decision: in such a case, the applicable standard of review is that of the correct decision.

[9]                To determine whether the use of a trade-mark creates confusion with another mark, this Court must consider whether, as a first impression in the mind of an ordinary person with a vague memory of the other mark, the use of the two marks in the same area and in the same way is likely to give the impression that the services associated with those marks are provided by the same person, whether or not the services fall into the same general category (Miss Universe Inc. v. Bohna, [1995] 1 F.C. 614 (C.A.)).

[10]            The burden of proof required is that in civil matters, namely the balance of probabilities, which is not as high as that imposed by the Registrar, who applied the standard of [TRANSLATION] "doubt" as to confusion. In this regard, the Federal Court of Appeal said in Christian Dior S.A. v. Dion Neckwear Ltd., [2002] 3 F.C. 405 :

[10] In my view, the Registrar erred in applying a "still in doubt" standard, thereby imposing a burden on the applicant which is more onerous than the one applicable in civil proceedings. I appreciate that there is high authority for the proposition that doubt should be resolved in favour of the opponent (see Eno v. Dunn (1890), 15 App. Cas. 252 (H.L.), per Lord Watson, at page 257; Freed & Freed Ltd. v. Registrar of Trade Marks et al., [1950] Ex. C.R. 431, per Thorson P., at page 24, 25; Sunshine Biscuits, Inc. v. Corporate Foods Ltd. (1982), 61 C.P.R. (2d) 53 (F.C.T.D.), per Cattanach J., at page 55 ff.; Conde Nast Publications Inc. v. Union des éditions modernes (1979), 46 C.P.R. (2d) 183 (FCTD.), per Cattanach J., at page 188; Effem Foods Ltd. v. Export/Import Clic Inc. (1993), 53 C.P.R. (3d) 200 (F.C.T.D.), per Pinard J., at pages 77, 78). But that proposition, starting with Lord Watson in Eno, has always been couched in general terms, as a corollary to the principle that the onus was on the applicant; no one, to my knowledge, has suggested that the standard applicable in civil proceedings was not to apply or that an applicant had to demonstrate beyond doubt that confusion was unlikely. In that regard, I note that when Linden J.A. in Pink Panther Beauty Corp. V. United Artists Corp., [1998] 3 F.C. 534 (C.A.), at paragraph 12, referred to Eno and to Sunshine Biscuits, it was in support of the proposition that the onus was on the applicant, not in support of the ancillary proposition that any doubt is to be resolved in favour of the opponent.

[11]            Further, the risk must be tangible and not theoretical (Paulin Chambers Co. Ltd. v. Rowntree Co. Ltd. (1966), 51 C.P.R. 153 (Ex. Ct.)).

[12]            Accordingly, the test may be stated as follows: is it more likely than not that, as a first impression in the mind of the average Anglophone consumer with a vague memory, that there is a tangible risk of confusion between the marks IXEL and PAXIL?

Average consumer

[13]            In CIBA-Geigy Canada Ltd. v. Apotex Inc., [1992] 3 S.C.R. 120, the Supreme Court of Canada clearly established that in the case of prescribed medication, the average consumer consists of the physician prescribing the medication, the pharmacist and the patient.

[14]            Moreover, the patient in question is an informed one, since health professionals intervene before he has laid a hand on the medication he desires. The patient first has a consultation with his attending physician about the treatment available to him. The medication is purchased after the attending physician makes up a prescription. This process involves a decision by the patient, who will first discuss it with his physician before selecting one medication rather than another.

[15]            The pharmacist is a health professional who is used to prescriptions, and this reduces the risk of confusion. The pharmacist will read the physician's prescription before giving the patient the medication. If there is a problem, he will check with the physician before filing the prescription. As Pinard J. said in Novopharm Limited v. Nu-Pharm Inc. (1990), 31 C.P.R. (3d) 99:

Indeed, likelihood of confusion, in the prescriptive drug field, is not easy to establish. The nature of the trade is such that great skill and care is exercised in prescribing and dispensing the drug products. Here, the parties produce prescription drugs and supply pharmacies across the country. Pharmacists are careful professionals who are accustomed to making fine distinctions in names. They can distinguish similarly named chemicals from one another, so I would expect them to be able to distinguish two trade names or two trade marks: (see Smith, Kline & French Canada Ltd. v. Novopharm Ltd. (1983), 72 C.P.R. (2d) 197 (Ont. H.C.J.) and Hoffman La Roche Ltd. v. Apotex Inc. (1983) 72 C.P.R. (2d) 183 (Ont. H.C.J.). The evidence of the pharmacists who swore affidavits for the plaintiff and who were cross-examined on their respective affidavits is certainly no evidence to the contrary.

[16]            The patient, for his part, will have the benefit of advice given freely by the pharmacist. The risk of confusion will then be less likely than in the case of impulse buying.

[17]            To decide whether the trade-marks create a tangible risk of confusion, the Court will have to take all the circumstances into account, including the factors to be considered set out in subsection 6(5) of the Trade-marks Act, R.S.C. 1985, c. T-13 (the Act), which reads as follows:

[18]            The onus will be on the applicant to establish that no reasonable risk of confusion existed between the trade-marks in question at the date of the Registrar's decision, namely September 11, 1998, the relevant date for the opposition based on paragraph 12(1)(d) of the Act (Park Avenue Furniture Corporation v. Wickes/Simmons Bedding Ltd., [1991] F.C.J. No. 546 (Q.L.).

1.         Distinctiveness of marks

[19]            The first point to be considered is the well-established nature of the mark. A trade-mark consisting of a unique or invented word has greater inherent distinctiveness, and deserves extensive protection (Pink Panther Beauty Corp. v. United Artists Corp., [1998] 3 F.C. 534 (C.A.)).

[20]            IXEL and PAXIL are unique words which have no connection with everyday language. These words both possess inherent distinctiveness. Accordingly, this test does not favour either of the parties.

2.          Extent to which marks have become known and period of use

[21]            Although the evidence showed that since 1997 PAXIL has been the most widely sold anti-depressant in Canada, this evidence cannot favour the respondent since it did not show that its use could be attributed to the latter.

[22]            Section 50 of the Act provides that the use of a trade-mark by the holder of a licence may only be regarded as use of the mark by the owner if the latter exercises some control, direct or indirect, over the characteristics and quality of the products with which the mark is used.

[23]            Before the Registrar, no admissible evidence was filed that the mark PAXIL had been used in Canada by the respondent. It did not show that it exercised the effective control required by the Act over the product's quality and nature.

[24]            The respondent did not correct this discrepancy in the appeal at bar. Mr. Sahai's statements to this effect are hearsay and cannot be accepted by the Court.

[25]            In his cross-examination Mr. Sahai admitted he had no personal knowledge of how PAXIL is manufactured, who manufactures it or in what way the respondent exercises its control over the characteristics or quality of the product with which the mark is associated. Consequently, it was unable to present evidence that it exercised control over the product with which the mark is associated.

[26]            Accordingly, the fact that PAXIL is the most widely sold anti-depressant in Canada cannot operate in the respondent's favour.

3.          Type of wares

[27]            IXEL and PAXIL relate to identical wares. The fact that the two marks are used in association with two anti-depressant medications increases the risk of confusion (Conde Nast Publications Inc. v. Gozlan Brothers Ltd. (1980), 49 C.P.R. (2d) 250 (F.C.T.D.)). This factor favours the respondent.

4.          Nature of business

[28]            The two medications, two anti-depressants, will be sold in the same way: on a physician's prescription and purchased from a pharmacist. Although the nature of the business is identical, the fact remains that in the field of prescription medications, the risk of confusion is lessened since the nature of the transaction is such that the products will be delivered by meticulous professionals accustomed to making distinctions between the names of various products (Novopharm Limited v. Nu-Pharm Inc., supra). This factor favours the respondent.

5.          Degree of similarity of marks

[29]            The degree of similarity has to be analysed in terms of appearance, sound and ideas. The submission of expert opinions in linguistics is admissible to present evidence of similarity (Coca-Cola Ltd. v. Brasseries Kronenbourg, une société anonyme (1994), 55 C.P.R. (3d) 544).

[30]            However, since the question is one of general impression, the comparison must be made in general terms: the marks should not be dissected. Accordingly, the Court should treat linguistic expert opinions with caution since their function is precisely that of dissecting words syllable by syllable, letter by letter. The average consumer with an imperfect memory of the marks will not undertake such an exercise. The Court must therefore analyse the linguistic expert opinions in light of this. In this connection, the Federal Court of Appeal said in Park Avenue Furniture Corp. v. Wickes Simmons Bedding Ltd., supra:

I agree with the appellant that marks are to be considered in their entirety. On this very point, H.G. Fox says the following:

In applying these tests the first principle to be invoked is that the marks are to be looked at as totalities and not as dissected items. The idea of each mark, that is, the net impression left by the mark as a whole upon the mind is to be considered. It is the mark taken in its entirety that is to be examined and a decision then arrived at whether such mark is likely to cause confusion with one already registered . . . The true test is whether the totality of the mark proposed to be registered is such that it is likely to cause mistake or deception or confusion in the minds of persons accustomed to the existing trade mark. It is the combination of the marks as a whole that is to be regarded and the effect or idea of the whole that is to be compared. (My emphasis.)

Ideas

[31]            As regards the ideas suggested, there is no risk of confusion since the marks are distinctive and suggest no idea. PAXIL, like IXEL, is not found in a dictionary and refers to nothing in either English or French.

Appearance

[32]            The parties admitted there was no risk of confusion for the average Francophone consumer.

[33]            Since the marks have the same visual appearance in English and in French, I consider that this question is settled. Accordingly, the only decision necessary is as to whether there is a risk of confusion in phonetic terms.

Sound

[34]            What do the experts say in this regard?

Prof. Reich

[35]            Prof. Reich, an expert witness for the respondent, identified four factors affecting the risk of confusion in terms of sound:

            (a) the number of syllables;

            (b) the intonation;

            (c) the degree of similarity of the first syllable;

            (d) the degree of similarity of the last syllable.

[36]            After analysing these four factors, Prof. Reich stated that the marks PAXIL and IXEL have significant similarities. The two marks consist of two syllables. He noted that in English the intonation is placed on the first syllable of each mark; in his opinion, the phonetic transcription of these marks is: (pak'scl) and (wk'scl). The pronunciation of the last vowel is represented by a schwa in each mark. He stated that most Anglophone Canadians will pronounce the second syllable in the same way.

[37]            Prof. Reich concluded that PAXIL and IXEL are very similar marks and that confusion between the two marks by the average Anglophone consumer is inevitable.

[38]            He further noted that in addition to this similarity, the two marks are used for products of the same type, which creates the possibility that a consumer might make a "slip of the tongue" and ask for a different product. This would accordingly increase the risk of confusion.

Prof. Hosington

[39]            Prof. Hosington, the expert witness for the applicant, noted that the emphasis was placed on the first syllable in both cases. She said that the releasing "P" at the start of PAXIL is its unique sound, which cannot be confused with the "I" of IXEL.

[40]            Prof. Hosington stated that there are regions of Canada where the second syllable will not be pronounced in the same way. Thus, in the Ottawa Valley region, in the Maritime provinces and in Newfoundland, PAXIL could be pronounced (pak'swl), so the schwa would not be there. However, in her opinion the pronunciation of the second syllable is of lesser importance as that syllable would often be swallowed by the speaker.

[41]            I attach little evidentiary value to the evidence of Prof. Barbaud since the Registrar decided he was not an expert in English. I also do not accept the expert opinion of Prof. Roberge, since his instructions were to analyse the risk of confusion from the standpoint of the average bilingual consumer, not the standpoint of the average Anglophone consumer.

[42]            In my opinion, the expert opinion of Prof. Reich was lacking in objectivity for the following reasons. First, Prof. Reich examined none of the differences between the marks. He mentioned in passing that the first syllable in the two marks is different, but did not make any analysis of the impact which that difference might have on the risk of confusion. Further, he did not analyse the sound of the first syllable, though the explosive "P" is noticeable and especially important as the courts have recognized that the emphasis should be placed on the first syllable (Sarah Coventry Inc. v. Abrahamian et al. (1985), 1 C.P.R. (3d) 238 (F.C.T.D.); Syntax (Visa) Inc. v. E.R. Squibb Sons Inc. (1992), 39 C.P.R. (3d) 564 (Trade Marks Opposition Board)).

[43]            Finally, he did not deal with the impact caused by the fact that the intonation is placed on the first syllable in English and that the last syllable is often swallowed by the speaker. This seems to me an important factor to consider, since the first syllable is so different in the two marks.

[44]            I reject Prof. Reich's proposition regarding the "slip of the tongue". The first syllable in each of the marks is so different that I do not consider there is any risk of a "slip of the tongue". Further, this test has never been accepted by the courts in analysing risks of confusion.

[45]            The respondent maintained that Prof. Hosington's expert opinion should be disregarded because her specialty is medieval English rather than contemporary English. It further submitted that Prof. Hosington changed her affidavit after that of Prof. Reich was filed, which affects her credibility.

[46]            I do not share this view. Pinard J. accepted Prof. Hosington as an expert witness and that conclusion was not challenged. Further, I do not consider that the fact that she changed her affidavit affects her credibility. On the contrary, I think it is more honest of her to have identified her mistake and wanted to correct it.

[47]            Consequently, I attach greater evidentiary weight to her expert opinion. Thus, I accept that the first syllable of PAXIL, which is the attack of the word, carries great force with its releasing "P" consonant. Accordingly, the first syllable of PAXIL cannot be phonetically confused with the first syllable of IXEL. On the second syllable, I accept that all the experts agreed that the second portion of the two words is an unaccentuated syllable. This gives greater importance to the first syllable.

[48]            Finally, as I have said earlier, the expert opinions of the linguists are of limited value as they do not deal with all the factors which this Court must take into account in assessing the risk of confusion. Thus, none of the experts considered the impact of the first impression or the consumer's inaccurate memory on the risk of confusion, since these are psychological and not linguistic factors. In my view, the value of the expert opinions lay simply in indicating where the emphasis should be placed, and the way in which the words should be pronounced.

[49]            In the circumstances, I feel that phonetically the risk of confusion is not likely for the average consumer. Even accepting that the last syllable is pronounced in the same way in both cases, the first syllable of the marks, on which the Anglophone consumer will place the emphasis, is so different that phonetically the degree of similarity remains low.

[50]            After considering the evidence in the record, the fact that the nature of the prescription medication business reduces the risk of confusion and the low degree of similarity between the marks, I conclude that as a first impression in the mind of an ordinary Anglophone individual with a vague memory of the other mark, it is more likely than not that the use of the two marks in the same region and in the same way will not entail any tangible risk of confusion.

[51]            The Court dismisses the respondent's opposition. It directs the Registrar to proceed to register the IXEL mark which is the subject of application No. 743101; with costs.

                                               ORDER

THE COURT ORDERS that the respondent's opposition be dismissed. The Registrar will proceed to register the IXEL mark which is the subject of application No. 743101; with costs.

Certified true translation

Suzanne M. Gauthier, C Tr, LLL

                                     FEDERAL COURT

                              SOLICITORS OF RECORD

DOCKET:                                                               T-2093-98

STYLE OF CAUSE:                                               PIERRE FABRE MÉDICAMENT

v.

SMITHKLINE BEECHAM CORPORATION

PLACE OF HEARING:                                         Montréal, Quebec

DATE OF HEARING:                                           April 21, 2004

REASONS OF:                                                       Madam Justice Danièle Tremblay-Lamer

DATED:                                                                  June 7, 2004

APPEARANCES:

Julie Desrosiers                                                          FOR THE APPLICANT

Chantal Desjardins

Robert MacDonald                                                    FOR THE RESPONDENT

Monique Couture

SOLICITORS OF RECORD:

FASKEN, MARTINEAU, DUMOULIN                 FOR THE APPLICANT

Montréal, Quebec

GOWLING, LAFLEUR, HENDERSON LLP          FOR THE RESPONDENT

Ottawa, Ontario