Date: 20000413
Docket: T-257-98
| IN THE MATTER OF an appeal pursuant to Section 56 of the Trade-marks Act, R.S.C. 1985, c. T-13 from a decision of the Registrar dated December 15, 1997, rejecting the opposition by Apotex Inc. to Canadian Trade-mark application No. 722-545 for the mark WHITE TABLET DESIGN by Monsanto Canada Inc. (filed in the name of Searle Canada Inc.) |
BETWEEN:
APOTEX INC.
Appellant
AND:
MONSANTO CANADA, INC. and
REGISTRAR OF TRADE-MARKS
Respondents
REASONS FOR JUDGMENT
ROULEAU, J.
[1] This is an appeal from a decision of the Registrar of Trade-marks dated December 15, 1997, which rejected the appellant"s Opposition to Canadian Trade-mark Application No. 722,545 filed by the respondent Monsanto Canada, Inc. on February 11, 1993. The application was to register a trade-mark consisting of:
| 1. The trade-mark is shown in the attached drawing and consists of the colour white applied to the whole of the visible surface of the tablet. The representation of the tablet shown in dotted outline does not form part of the trade-mark. |
[2] The application was based on use in Canada by Searle Canada Inc. since at least as early as August 25th , 1986, in association with pharmaceutical preparations, namely tablets containing 200 mg of misoprostol as the active ingredient. The application was advertised in the Trade-marks Journal on October 13, 1993. Apotex Inc. filed a Statement of Opposition on December 13, 1993, opposing the application on the following grounds:
| (a) the Application does not comply with s. 30 of the Trade-marks Act in the following respects: |
| (i) the alleged trade-mark is not a trade-mark; |
| (ii) the alleged trade-mark has not been used with the wares referred to in the Application since the date claimed; and |
| (iii) the Application does not contain an accurate representation of the alleged trade-mark. |
| (b) the Applicant is not the person entitled to the registration of the trade-mark pursuant to s. 16(1) of the Act in that at the date of first use, it was confusingly similar with trademarks namely, white tablets that had been previously used in Canada by the Opponent; and |
| (c) the proposed trade-mark is not distinctive of the Applicant in that it does not distinguish the wares of the Applicant from those of others. White tablets were and are, at all material times, common to the trade and had been used by others so that the wares of the Applicant cannot be distinguished from others. |
[3] Searle Canada Inc. filed a Counterstatement dated May 3rd , 1994, denying the grounds of opposition. An amended application was subsequently filed on September 8th, 1995, wherein the wares covered by the application as approved and advertised, namely 200 mg of misoprostol was revised to read 200 mcg of misoprostol. In 1994 Monsanto Canada, Inc. acquired the assets of Searle Canada Inc. and the application for registration of the proposed trade-mark was transferred to the respondent"s name on April 28, 1995.
[4] By decision dated December 15, 1997, the Registrar of Trade-marks rejected Apotex"s opposition stating his reasons as follows:
| The evidence establishes that the applicant has always sold its 200 microgram dosage of misoprostol under the trade-mark CYTOTEC in a white, hexagonal tablet. The tablet is scored in the middle on both sides with a line and is lightly scored on one side with the word SEARLE above the middle line and the numerals 1461 below it. The opponent contends that sales of the applicant"s tablets in that form do not constitute use of the applied for trade-mark because of the addition of the word SEARLE and the numerals. However, in view of the fact that the indicia SEARLE and 1461 are only lightly scored on one side of the tablet and are barely legible, it seems likely that the white shape of the tablet would stand out as its dominant feature. Thus, the public would, as a matter of first impression, perceive use of the actual table as also being use of the tablet"s white shape alone . . . |
. . .
| The opponent submitted that the drawing does not comply with Section 30(h) because the applicant effectively eliminated any shape restriction for its mark by including the statement that the tablet shown in dotted outline does not form part of the mark. The opponent contended that such a statement means that the applicant is claiming the color white "per se" as its trade-mark apart from the tablet itself. |
| Although the statement referred to by the opponent is somewhat ambiguous and confusing, the initial portion of the description of the trade-mark in the application clearly limits the mark to the whole of the visible surface of the tablet. The statement referred to by the opponent appears to be simply an indication that the applicant is not claiming the tablet as its trade-mark but only the shape of the tablet as it defines the limits of the claim to the color white. At the oral hearing, the applicant"s agent indicated that the statement simply means that the applicant is not claiming rights in hexagonal tablets "per se". Given the ambiguity in the statement, however, it should not have been included in the description of the mark although it was apparently only included to satisfy a practice requirement of the Examination Division . . . |
. . .
| The applicant"s application is narrowly restricted to the specific drug misoprostol in a specific dosage and it appears that no one else is selling that drug in any form much less in the form of a white, hexagonal tablet. Furthermore, the Clarke affidavit evidences significant sales of the applicant"s tablet for a number of years. Finally, the applicant has distributed advertising materials which promote the color and shape of the applicant"s tablets. Thus, in accordance with the opposition decision in Burroughs Wellcome Inc. , the evidence suggests that the applicant"s trade-mark can distinguish the applicant"s specific product from other pharmaceutical products. Unlike the situation in Novopharm Ltd. v. Searle Canada Inc. (1995), 60 C.P.R. (3d) 400 at 404 (T.M.O.B.), the evidence does not establish that other pharmaceutical manufacturers sell drugs in the form of the applicant"s tablet for the treatment of the same or similar medical conditions for which the applicant"s drug is prescribed. |
. . .
| In the present case, whatever monopoly the applicant may have is for the drug misoprostol and not for the shape of the tablet. The hexagonal shape was not dictated by the teachings of any patent or any functional requirements. The evidence suggests that the applicant"s tablet could have been produced in any number of shapes. |
[5] Apotex now appeals from that decision on the grounds that the Registrar erred in rejecting its opposition since the respondent"s trade-mark application failed to meet the requirements of the Trade-marks Act ; erred in failing to apply the criteria in the Act for the registration of a distinguishing guise once it was determined that the alleged trade-mark included the shape of the tablet; and, erred in finding that the colour and shape of the tablet was distinctive.
[6] After carefully reviewing the parties" written submissions and considering the oral arguments presented at the hearing before me, I am satisfied that the appeal from the Registrar"s decision should be allowed.
[7] First, paragraph 30(h) of the Trade-Marks Act provides that a trade-mark application must contain a drawing of the trade-mark and such number of accurate representations of the mark as may be prescribed. The onus is on the applicant for a mark to show its compliance with this requirement of the legislation. The drawing submitted must be a meaningful representation of the applicant"s mark in the context of the written description appearing in the application and must enable the determination of the three-dimension limits of the tablet to which the colour is applied. The rationale behind these statutory requirements is that a trade-mark registration is a monopoly and must therefore, be precise in terms of its scope. As stated in by this Court in Calumet Manufacturing Ltd. v. Mennen Inc . (1991), 40 C.P.R. (3d) 76 at 87:
| It is the mark so depicted in the drawing, reproducible with a certificate of registration, which then provides the notice to the world of the owner"s proprietary interest in the trade mark and which forms the evidentiary basis for actions of infringement or for expungement. Useful as photographs and sample of a trade mark, including a distinguishing guise, may be upon application for registration, to ensure the drawing is a reasonable representation of the trade mark claimed, in my view, those do not form part of the trade mark for registration or for other purposes under the Act. |
[8] In the present case, I agree with Apotex that the respondent"s trade-mark application is confusing and ambiguous and that this is the result of the presence of both dotted lines, which have been disclaimed, and solid lines which have not been disclaimed, in the representations of the tablets. Although the application disclaims the hexagonal shape of the tablet, the Registrar of Trademarks failed to take this disclaimer into account in his decision nor does he indicate which part of the shape of the tablet was claimed as the trade-mark and which part was disclaimed. In fact, the impugned decision appears to assume that the trade-mark was for the colour and shape of the tablet, even though Monsanto"s application states that it is not claiming rights in hexagonal tablets. Subsequently however, in its Reply to the Notice of Appeal and the evidence filed, the respondent does rely on the hexagonal shape of the tablet and the colour as being the trade-mark. There is considerable doubt in my mind therefore whether Monsanto"s trade-mark application complies with the requirements of the Trade-Marks Act.
[9] In any event, it is my view that the fundamental issue here is whether the trade-mark in question is distinctive.
[10] The term "distinctive" is defined in section 2 of the Trade-Marks Act as follows:
| "distinctive", in relation to a trade-mark, means a trade-mark that actually distinguishes the wares or services in association with which it is used by its owner from the wares or services of others or is adapted so to distinguish them; |
[11] In Philip Morris Inc. v. Imperial Tobacco Ltd. (1985), 7 C.P.R. (3d) 254 at p. 270, this Court held that three conditions must be met in order to prove distinctiveness:
| . . . (1) that a mark and a product (or ware) be associated; (2) that the "owner" uses this association between the mark and his product and is manufacturing and selling his product; and, (3) that this association enables the owner of the mark to distinguish his product from that of others. |
[12] Whether a trade-mark satisfies these three requirements is a question of fact to be determined by looking at all of the circumstances of a particular case. In making this determination, the most critical factor to be taken into account is the message that the trade-mark actually conveys to the public. This principle was stated by Strayer J., as he then was, in Royal Doulton Tableware Ltd. v. Cassidy"s Ltd., [1986] 1 F.C. 357 at pp. 370-71 as follows:
| It is to be noted that a distinctive trade mark is one which links e.g., goods with a vendor so as to distinguish them from the goods of other vendors. It is not distinctive if it simply distinguishes one design of goods from another design of goods even though if one had special trade knowledge one might know that these two kings of goods are sold respectively by two different vendors. Such a concept of distinctiveness would run counter to a basic purpose of the trade mark which is to assure the purchaser that the goods have come from a particular source in which he has confidence . . . |
| In the final analysis the critical factor according to these cases is the message given to the public. |
(emphasis added)
[13] The onus resting on an applicant for registration of a trade-mark therefore is to establish that it has chosen a particular design as a distinguishing feature of its product and that its product has become known in, and acquired a reputation in, the minds of the consuming public by reason of that distinguishing feature. Unless an applicant is able to adduce evidence which demonstrates this fact, it is not entitled to registration of the mark in question. In Oxford Pendaflex Canada Ltd. v. Korr Marketing Ltd. (1982), 64 C.P.R. (2d) (S.C.C.), Estey, J. made the following observations at p. 7:
| As to the immediate issue here, some guidance is to be found in the comment by Russell L.J. in Roche Products Ltd. et al v. Berk Pharmaceuticals Ltd., [1973] R.P.C. 473, at p. 482: |
| "Now, in this as in all other passing off cases, the basic question is whether, directly or indirectly, the manner in which the goods of defendant are presented to the relevant consumers is such as to convey to the minds of the latter the impression that they are the goods of the plaintiff. In an "appearance" or get-up case it is not enough simply to say that the former are very like the latter. It must be established that consumers have, by reason of the appearance of the goods of the plaintiff, come to regard them as having some one trade source or providence, whether manufacturing or marketing, though it matters not that they have no idea at all of the identity of that trade source or provenance." |
| It is to be noted that in the first part of the observation of Russell L.J. there seems to be a requirement that the purchasing public be left with the impression that the goods of the defendant are the goods of the plaintiff. The next part of the paragraph makes it clear, however, that all that need be left in the mind of the purchaser is the idea that all of the pills (in that case), by reason of their shape, size and mode or marking, came from "one trade source". |
(emphasis added)
[14] Here, because the proposed trade-mark is the colour and shape of the wares, Monsanto has the onus of proving that the "get-up", that is the appearance of the tablet, is recognized by the public as distinctive of its wares. It is therefore incumbent upon the respondent to show that the colour white, applied to a hexagonal tablet, distinguishes its tablet from other white and hexagonal tablets sold in Canada. In this regard, it is not sufficient for the respondent to establish that Canadians know that Monsanto"s misoprostol is sold in a white tablet or a white and hexagonal tablet. Rather, it must show that physicians, pharmacists or patients can and do use the proposed trade-mark in choosing whether to prescribe, dispense or request Monsanto"s misoprostol product. In Novopharm Ltd. v. Bayer Inc. , supra, Evans., J. stated as follows:
| First, the burden of establishing the distinctiveness of a mark rests on the applicant, both in the opposition proceeding before the Registrar and on an appeal to this Court. Thus, Bayer must establish on a balance of probabilities that in 1992, when Novopharm filed its opposition to the application, ordinary consumers associated dusty rose, round extended-release tablets of the size of the 10 mg ADALAT tablet, with Bayer, or a single source of manufacture or supply . . . |
| Second, the "ordinary consumers" to be considered for this purpose include not only physicians and pharmacists, but also the "ultimate consumers", that is the patients for whom ADALAT tablets are prescribed and to whom they are supplied, even though their only access to nifedipine is through a physician"s prescription: Ciba-Geigy Canada Ltd. v. Apotex Limited, [1992] 3 S.C.R.. 120. |
| In Ciba-Geigy the Court held that the elements of the tort of passing-off were as applicable to pharmaceutical products as to any other. Accordingly, it was relevant to consider whether the "get-up" of the plaintiff"s goods had acquired a distinctiveness that would lead patients to identify that "get-up" with a single source, so that they were likely to be confused into thinking that another"s product, with a similar appearance to that of the plaintiff, emanated from the same source as the plaintiff"s. |
. . .
| Third, while I accept that the colour, shape and size of a product may together be capable in law of constituting a trade-mark, the resulting mark is, as a general rule, likely to be weak: Smith Kline & French Canada Ltd. v. Registrar of Trade-marks (1987), 9 F.T.R. 129, 131 (F.C.T.D.). |
| In this case, pink round small tablets are commonplace in the pharmaceutical market. This means that Bayer has a heavy burden to discharge in proving on the balance of probabilities that in 1992 those properties had a secondary meaning, so that ordinary consumers associated the tablets with a single source. The fact that, when Novopharm filed its objection, ADALAT were the only extended-release nifedipine tablets on the market is in itself insufficient to establish a secondary meaning. |
| Fourth, it is not fatal to an application that consumers may also use means other than the mark for identifying the product with a single source. Thus, while pharmacists rely mainly on the brand name and other identifying indicia on the stock bottles and packaging containing the product, or the inscription on the tablets, which is not part of the mark, if there is evidence that to any significant degree they also recognized the product by its appearance (excluding the markings on the tablet because they are not part of the mark), this may be sufficient to establish the distinctiveness of the mark. |
[15] Applying these principles to the evidence now before me, I am unable to conclude that the colour and shape of Monsanto"s 200 mcg misoprostol tablet are distinctive of the product. Misoprostol is a medicine used to protect the gastro-intestinal system of arthritis patients against damages caused by drugs used to treat arthritis. In other words, it is used to prevent gastric and duodenal ulcers. The evidence is clear that, both prior to and at the date of opposition, manufacturers had distributed and sold hundreds of white pharmaceutical tablets, several of which are used in the treatment of conditions which are concurrent or associated with gastric ulcers. Furthermore, there are other six sided tablets on the market that are white, namely Inderide and Silindac. Without the markings "Searle 1461", which are not claimed as part of the trade-mark in question, it would not be possible to identify and distinguish the respondent Monsanto"s white hexagonal misoprostol tablets from any other white, hexagonal tablet on the market. The respondent has not adduced any evidence which clearly establishes, on a balance of probabilities, that a significant number of consumers associate the appearance of its product with a single source. Accordingly, it has failed to establish the distinctiveness required for a valid trade-mark.
[16] In my view, the Registrar failed to apply the established principles of law with respect to the issue of distinctiveness. Indeed, he appears to have had virtually little regard for the legal tenets established by the jurisprudence. In the same manner, his findings of fact can only be considered perverse, given that there was simply no evidence before him to substantiate a finding that the respondent"s product has obtained recognition or a reputation in the mind of the consuming public as a result of its appearance of get-up.
[17] For these reasons the appeal is allowed. Costs to the appellant.
JUDGE
OTTAWA, Ontario
April 13, 2000
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