Apotex Inc. v. Ciba-Geigy Canada Ltd., docket T-2483-97

Date: 20000414

Docket: T-2483-97

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 September 17, 1997, rejecting the Opposition by Apotex Inc. to Canadian Trade-mark Application No. 630-536 for the mark TABLET DESIGN filed by Ciba-Geigy Canada Ltd.

BETWEEN:

     APOTEX INC.

     Appellant

AND:

     CIBA-GEIGY CANADA LTD. and

     REGISTRAR OF TRADE-MARKS

     Respondents

     REASONS FOR JUDGMENT

ROULEAU, J.

[1]      This is an appeal from the decision of the Registrar of Trade-marks dated September 17, 1997, rejecting the appellant"s Opposition to Canadian Trade-mark Application No. 630,536 filed by the respondent, Ciba-Geigy Canada Ltd. ("Ciba").

[2]      On April 25, 1989, Ciba filed an application to register a trade-mark described as "a light pink colour applied to the whole of the visible surface of the tablet, as shown in the drawings and in the specimens affixed to the form of application" in association with "pharmaceutical preparations, namely diclofenac sodium" and based on proposed use. The application was revised on February 7, 1991, to state that:

"the trade-mark is shown in the attached drawing and consists of a light pink colour applied to the whole of the visible surface of the tablet as shown in the drawings. The drawing is lined for the colour pink. The tablet shown in dotted outline does not form part of the trade-mark."

    

[3]      Apotex filed a Statement of Opposition against the application on October 17, 1991, on the grounds that the applied for mark was not a trade-mark; the applied for trade-mark had not been used with the wares referred to in the application since the date claimed; the application did not include a drawing of the trade-mark by the applicant; and, the alleged trade-mark was not distinctive of the respondent Ciba. The respondent filed a Counterstatement on January 13, 1992. At the hearing before the Registrar of Trade-marks, the appellant"s opposition against application no. 630,536 noted above, and the opposition of Novopharm Ltd. against Ciba"s application no. 630,537 were heard together. By decision dated September 17, 1997, the Registrar rejected both oppositions, stating his reasons as follows:

In the instant proceeding, the applicant"s evidence is supportive of its case while the same cannot be said of the opponent"s evidence. In my view, the applicant"s assessment of the opponent"s evidence, found at p. 64 of the applicant"s written argument, is fair comment:

. . . the Opponents have not identified any pharmaceutical product with an arguably similar colour and shape which has been sold or marketed in Canada by anyone other than the Applicant, at any date, which either contains diclofenac or is interchangeable therewith. The Opponents" sell diclofenac in yellow and brown tablets which are not interchangeable with Applicant"s VOLTAREN SR 75 or 100 mg tablets. The Opponents" witnesses have admitted that a patient with a prescription for diclofenac cannot possibly receive product other than one containing diclofenac of equal strength.

. . . The Opponents have not even attempted to be specific or otherwise quantify sales or promotion for any products relied on by them. There is no evidence at all that any products relied on by the Opponents were available at the relevant dates and sold in such quantities to be relevant to the issues herein.

I would add that some of the opponent"s evidence and argument were directed to the desirability of allowing manufacturers of generic pharmaceuticals to market their wares in the same or similar appearance to that of the original manufacturer. Such evidence and arguments had little relevance to the issues before me.

The evidence in the instant case leads me to conclude that (i) the applicant has met the onus on it to show that, on the balance of probabilities, the applied for mark would not have been confusing with any tablets sold by the opponent at the material date October 31, 1985, and that (ii) the applicant"s pink TABLET DESIGN, application no. 630,537, had acquired a certain measure of distinctiveness with the average consumer and with pharmacists and doctors by the material date August 13, 1993. Thus, the second and third grounds of opposition are unsuccessful.

The related opposition by Apotex Inc. is against Ciba-Geigy"s application no. 630,536 for the mark pink TABLET DESIGN for diclofenac sodium (in a 75 mg dosage). The Apotex opposition was heard consecutively with Novopharm"s opposition.

     . . .

Two notable differences in the application being opposed are that (i) the shape of TABLET DESIGN application no. 630,536 appears to be less common for pharmaceutical tablets that the round, biconvex shape of TABLET DESIGN application no. 530,537, and (ii) application no. 630,536 is based on proposed use in Canada. Another difference is that the description of the mark in application no. 630,536 neglects to refer to specimens of the mark which were in fact filed together with the application. However, the opponent Apotex does not appear to have been prejudiced by the applicant"s oversight nor did Apotex specifically take issue with the omission in the description of the mark. Otherwise, the pleadings, issue and evidence were essentially identical in each case, and the applicant and opponents were represented by the same agents in each case. In particular, the pleadings by Apotex in the statement of opposition are questionable, the evidence filed by Apotex does not go far in supporting its case and the applicant"s evidence is sufficient to meet the onus on it to prove its case on the balance of probabilities. Thus, the opponent Apotex Inc."s opposition to application no. 630,536 is rejected for essentially the same reasons, discussed above, that Novopharm"s opposition to application no. 630,537 was rejected.

[4]      Apotex now appeals from that decision on the grounds that the Registrar erred by finding that the opposition should be rejected "for essentially the same reasons" as the rejection of application 630,537 without reviewing the evidence on the various issues; by finding that the application included a drawing of the trade-mark, when the drawing of the tablet was not to form part of the trade-mark and there were no specimens referred to in the application as advertised; and, the Registrar erred by placing weight on the fact that the triangular tablet shape is less common for pharmaceutical tablets, when the application is for colour alone.

[5]      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.

[6]      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.

[7]      In the present case, I agree with Apotex the respondent"s trade-mark application is confusing and ambiguous. The drawing contained in the application shows a dotted line, meaning that the triangular shape is not part of the trade-mark. In addition, the written description states "the tablet shown in dotted outline does not form part of the trade-mark". However, the written description also states that the trade-mark consists of "a pink colour applied to the whole of the visible surface of the tablet as shown in the drawings". In addition, the written description does not accurately reflect the triangular and bi-convex nature of the specimen submitted with the application.

[8]      As a result of all these factors, it is unclear whether the application in question relates to a shape along with a colour or simply the colour alone. There is considerable doubt in my mind therefore, whether Ciba"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. 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;

[10]      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.

[11]      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)

[12]      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)

[13]      Here, because the proposed trademark is the colour and shape of the wares, Ciba 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 pink, applied to a triangular tablet, distinguishes its tablet from other pink and triangular tablets sold in Canada. In this regard, it is not sufficient for the respondent to establish that Canadians know that Ciba"s 75 mg diclofenac product is sold in a pink tablet or a pink and triangular 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 Ciba"s diclofenac 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.

[14]      Applying these principles to the evidence now before me, I am unable to conclude that the colour and shape of Ciba"s 75 mg dosage diclofenac sodium tablets are distinctive of the product as there is simply no evidence from any consumer, pharmacist or doctor that the colour or the colour and shape distinguish the Ciba pills from other pills. On the other hand, there was uncontradicted evidence before the Registrar that there are other pink, triangular tablets on the market and that there are a number of pink tablets sold in Canada which have been available since 1989. Although Ciba relies on evidence relating to sales figures and promotional material, it is well established that impressive sales figures alone do not satisfy the burden which an applicant for a trade-mark bears of proving distinctiveness.

[15]      I am satisfied therefore, that the respondent Ciba 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 products 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 14, 2000