Canada’s Trademark Opposition Board Finds Trademarks Consisting of the Product Appearance for Asthma Inhalers Lack Distinctiveness

On April 28, 2017, Canada’s Trademark Opposition Board (Board) refused Boehringer Ingelheim’s (BI) trade-mark applications for the product appearance or “get-up” of its asthma medications inhaler after concluding that the appearance of the inhaler was not distinctive (Canadian Generic Pharmaceutical Association v Boehringer Ingelheim Pharma GmbH & Co. KG, 2017 TMOB 47). The distinctiveness of get-ups for pharmaceutical products has previously been addressed by the Federal Court of Canada in Apotex Inc v Registrar of Trade-Marks, 2010 FC 291, as previously reported in the E-TIPS® newsletter.

Under section 2 of the Trade-marks Act, “distinctive” means that a trademark actually distinguishes the goods and services it is associated with from the goods and services of others or is adapted so to distinguish them. The Opponent, Canadian Generic Pharmaceutical Association (CGPA), challenged the distinctiveness of BI’s marks, arguing that relevant consumers would not associate the colour and shape of the inhaler (without markings) with a single source. Citing the Supreme Court of Canada decision in Ciba-Geigy Canada Ltd v Apotex Inc, [1992] 3 SCR 120, the Board determined that the relevant consumers were physicians, pharmacists and patients.

The Board agreed with CGPA, finding that physicians and pharmacists use the appearance of the inhaler (without markings) as an indicator of therapeutic use or medication type, rather than source. Additionally, patients tend to associate inhaler appearance with use or medication, but rarely know the source. The Board concluded that the appearance of the inhaler was not indicative of source, therefore the marks were not distinctive, even though the colour and shape combinations for the inhalers were unique in the marketplace.

This decision confirms the difficulty of demonstrating distinctiveness for a pharmaceutical product’s appearance or get-up (see also AstraZeneca AB v Novopharm Ltd, 2003 FCA 57).