A High Distinctiveness Threshold for the Trade-mark Registration of Get-Ups for Prescription Pharmaceutical Products

In its recent decision, Apotex Inc v Registrar of Trade-Marks, the Federal Court of Canada (Court) struck a colour-and-shape trade-mark from the Trade-mark Register for lack of distinctiveness. Glaxo Group Limited (Glaxo) registered a mark comprising dark and light purple colours applied to the visible surfaces of a disc-shaped asthma inhaler (Mark). Glaxo also owns the registered trade-marks ADVAIR and DISKUS, which are used on the inhaler package. Several generic drug manufacturers sought a court order to strike out the registration of the Mark on the ground that it was not distinctive of Glaxo’s inhaler. The central issue was whether the relevant consumers of the inhaler, being physicians, pharmacists and patients, would recognize the Mark by its appearance (without labels and packaging) and, to any significant degree, would associate it with a single source. The Court held that, with respect to the marketing of prescription drugs, evidence showing that the relevant consumers relate the Mark to a single trade source is insufficient to establish distinctiveness. A finding of distinctiveness in this sector would require proof that these relevant consumers use the Mark to make their decisions, respectively, to prescribe, dispense, and request the product. The Court found that in the prescription medications sector the significance of colour and shape when related to purchasing choices and brand recognition is less obvious because the initial purchasing choices are usually made by, or on the advice of, professional intermediaries. Because doctors and pharmacists do not base their decisions on appearance and have no reason to associate appearance with a single trade source, and because ultimate consumers are significantly influenced by the professional advice, the distinctiveness of a colour-and-shape mark in this context is inherently weak. The use of such a mark on a pharmaceutical product that is always found in association with a well-known trade-name, as was the case here, further diminishes any distinctiveness in the mark. The Court concluded that the Mark was not the primary characteristics by which Glaxo distinguished its inhaler from those of its competitors or, more importantly, by which its relevant purchasers made their choices. The Mark was therefore not distinctive. Glaxo has appealed the decision to the Federal Court of Appeal. For the full text of the reasons for judgment, visit: http://decisions.fct-cf.gc.ca/en/2010/2010fc291/2010fc291.html Summary by: Janet Chong