Date: 20101119
Docket: A-111-10
Citation: 2010 FCA 313
CORAM: NADON J.A.
SHARLOW J.A.
LAYDEN-STEVENSON J.A.
BETWEEN:
GLAXO
GROUP LIMITED
Appellant
and
APOTEX INC., APOTEX
FERMENTATION INC.,
CANGENE - CORPORATION, NOVOPHARM LIMITED,
PHARMASCIENCE INC., RANBAXY
PHARMACEUTICALS CANADA INC.,
RATIOPHARM INC., SANDOZ CANADA INC., TARO
PHARMACEUTICALS
Respondents
and
REGISTRAR OF TRADE-MARKS
Respondent
Heard at Ottawa, Ontario, on November
17, 2010.
Judgment delivered at Ottawa,
Ontario, on November
19, 2010.
REASONS FOR JUDGMENT BY: LAYDEN-STEVENSON
J.A.
CONCURRED
IN BY: NADON
J.A.
SHARLOW
J.A.
Date: 20101119
Docket: A-111-10
Citation: 2010 FCA 313
CORAM: NADON
J.A.
SHARLOW
J.A.
LAYDEN-STEVENSON
J.A.
BETWEEN:
GLAXO GROUP LIMITED
Appellant
and
APOTEX INC., APOTEX FERMENTATION INC.,
CANGENE - CORPORATION, NOVOPHARM LIMITED,
PHARMASCIENCE INC., RANBAXY
PHARMACEUTICALS CANADA INC.,
RATIOPHARM INC., SANDOZ CANADA INC., TARO
PHARMACEUTICALS
Respondents
and
REGISTRAR OF TRADE-MARKS
Respondent
REASONS FOR JUDGMENT
LAYDEN-STEVENSON J.A.
[1] Glaxo Group Limited (Glaxo) appeals from the judgment of
Justice Barnes of the Federal Court (the judge) in which he struck Canadian
Trade-mark Registration No. 687,313 (the GSK Mark) from the Register of
Trade-marks. The reasons for judgment are reported as 2010 FC 291, 81 C.P.R.
(4th) 459.
[2] The GSK Mark
concerned a two-tone purple colour combination applied to the surface of
disk-shaped inhalers known as ADVAIR DISKUS. The judge concluded that the
consumers of the inhalers – physicians, pharmacists and patients – did not
associate the colour and shape with one source. More specifically, he found
that patients generally associated the GSK Mark with a therapeutic use, not a
source, and that no physician or pharmacist associated the GSK Mark and a
single source.
[3] Glaxo argues
that the judge erred by failing to hold the respondents to the proper burden of
proof, by selecting the wrong test for distinctiveness and by improperly
applying the test to the facts. Despite the articulate and capable submissions
of Glaxo’s counsel, I am of the view the appeal must be dismissed.
[4] It is not
disputed that the judge turned his mind to the presumption of validity and
acknowledged that the respondents bore the burden of showing otherwise on a
balance of probabilities (reasons at para. 5). The judge concluded that the
respondents met their burden and established that the GSK Mark is not
distinctive (reasons at para. 43). While Glaxo is correct that the judge
expressed doubt about the strength of its evidence, he did so in the context of
a comparison between Glaxo’s evidence and that of the respondents.
[5] Moreover, in Emall.ca
Inc. (c.o.b. Cheaptickets.ca) v. Cheap Tickets and Travel
Inc., [2009] 2 F.C.R. 43, 68 C.P.R. (4th) 381 at para. 12 (C.A.), this
Court held that the presumption of validity simply means that an application
for expungement will succeed only if an examination of all of the evidence
presented establishes that the trade-mark was not registrable at the relevant
time. Glaxo does not suggest that the judge did not examine all of the evidence
before arriving at his determination. Consequently, its argument cannot
succeed.
[6] I am also not
persuaded that the judge applied the wrong test for distinctiveness. A
trade-mark is actually distinctive if the evidence demonstrates that it
distinguishes the product from others in the marketplace: Astrazeneca AB v. Novopharm
Ltd., 2003 FCA 57, 24 C.P.R. (4th) 326 at para.16. A critical factor is the
message given to the public: Philip Morris Inc. v. Imperial Tobacco Ltd.
(1985), 7 C.P.R. (3d) 254 (F.C.T.D.), aff’d (1987), 17 C.P.R. (3d) 289
(F.C.A.). Distinctiveness is to be determined from the point of view of an
everyday user of the wares in question and the trade-mark must be considered in
its entirety and as a matter of first impression: Molson Breweries v. John
Labatt Ltd., [2000] 3 F.C. 145, 5 C.P.R. (4th) 180 at para. 83 (F.C.A.).
[7] Glaxo
characterizes the judge’s reference to the “use” consumers make of the GSK Mark
as a flawed application of the distinctiveness test. I disagree with that
interpretation of the judge’s reasons. The judge neither devised nor applied a
new test. Glaxo’s suggestion to the contrary constitutes a misinterpretation of
the manner in which the judge utilized the word “use”. The judge’s statement
must be read in the context in which it was written, that is, examining the
process of connecting a product to its source. To be distinctive, the relevant
consumers must distinguish the source’s product from the wares of others, based
on the source’s trade-mark. Taken in context, the judge’s comments demonstrate
that it is the act of relating a trade-mark to its source that
establishes the requisite consumer “use”. If one substitutes the word “associate”
for the word “use” – which is equally consistent with the judge’s reasoning – Glaxo’s
argument evaporates. Accordingly, this argument fails.
[8] The judge’s
application of the test to the facts turns on his appreciation and assessment
of the evidence and his resulting factual determinations. The judge’s reasons
contain a detailed and comprehensive review and analysis of the evidence. Glaxo
has not demonstrated any palpable and overriding error in this respect. Rather,
it effectively seeks to reargue its case without pointing to any specific
instance where the judge’s appreciation or assessment of the evidence is
palpably wrong. Absent palpable and overriding error, which has not been
established, this argument must also fail.
[9] For these
reasons, I would dismiss the appeal with costs.
"Carolyn
Layden-Stevenson"
“I
agree
M.
Nadon J.A.”
“I
agree
K.Sharlow
J.A.”
FEDERAL COURT OF APPEAL
NAMES OF COUNSEL AND
SOLICITORS OF RECORD
DOCKET: A-111-10
APPEAL FROM A JUDGMENT OF THE FEDERAL
COURT DATED March 12, 2010. NO. T-2240-07
STYLE OF CAUSE:
PLACE OF HEARING: Ottawa,
Ontario
DATE OF HEARING: November 17, 2010
REASONS FOR JUDGMENT BY: LAYDEN-STEVENSON J.A.
CONCURRED IN BY: NADON J.A.
SHARLOW J.A.
DATED: November 19, 2010
APPEARANCES:
|
Mr. Robert A. MacDonald
Mr.
Grant W. Lynds
|
FOR
THE APPELLANT
|
|
Ms. Carol Hitchman
Mr.
Christopher Tan
|
FOR
THE RESPONDENTS
|
SOLICITORS OF RECORD:
|
Gowling Lafleur Henderson LLP
Ottawa, Ontario
|
FOR THE APPELLANT
|
|
Gardiner Robert LLP
Toronto,
Ontario
|
FOR
THE RESPONDENTS
|
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