Federal Court Finds Pfizer’s Blue Diamond-Shaped Pill Not Distinctive

On April 20, 2015, the Federal Court of Canada (Court) released its decision in Pfizer Products Inc v Canadian Generic Pharmaceutical Association, 2015 FC 493, dismissing the appeal of Pfizer Products Inc (Pfizer) from a decision of the Trade-mark Opposition Board (Board) that refused Pfizer’s trademark registration application for the design of a three-dimensional blue diamond-shaped tablet because the mark was not distinctive.

Pfizer had applied to register a design mark for a three-dimensional blue diamond-shaped tablet for use in association with a pharmaceutical preparation for the treatment of sexual dysfunction. The design is used by Pfizer for its VIAGARA® product. The application was opposed by the Canadian Generic Pharmaceutical Association (CGPA).

The Board found that, for a design mark of a pharmaceutical tablet to be distinctive, it must be distinctive among patients, pharmacists, and physicians. During the opposition, Pfizer filed evidence of marketing and sales of VIAGARA. The Board concluded that the evidence demonstrated that the mark was distinctive among patients, but not among pharmacists and physicians.

The Court found that the test for distinctiveness of a pharmaceutical tablet does not require that distinctiveness be established for patients, pharmacists, and physicians. Rather, the Court stated that it must look at whether the evidence establishes recognition, to any significant degree, among any group or groups of ordinary consumers of the mark. The Court found that the whole constituency of consumers must be examined, but that there is no requirement to establish distinctiveness separately for each sub-group of that constituency.

Upon review of the evidence filed with the Board and with the Court on appeal, the Court determined that the limited use which physicians, pharmacists and patients may make of the appearance of the Viagra pill for identification purposes is not enough to establish the distinctiveness required for a valid trademark.