VIAGRA blue diamond trade-mark not distinctive – Federal Court

On April 20, 2015 Justice Russell released his Judgment and Reasons in a trademark matter involving Pfizer’s attempt to register trade-mark application No. 1,244,118, for the colour blue applied to the whole of the visible surface of the tablet shown in the following figures in association with a pharmaceutical preparation for the treatment of sexual dysfunction:

Pfizer’s registration of the application was opposed by the Canadian Generic Pharmaceutical Association on the basis that the applied-for mark was not distinctive.  On January 23, 2013 the Trade-marks Opposition Board refused Pfizer’s trademark on the basis that Pfizer has failed to demonstrate that the mark was distinctive as of March 2006 (see here). In refusing the registration, the Opposition Board held that while Pfizer has established that the mark was distinctive among patients, it had failed to show on a balance of probabilities, that the mark was distinctive among physicians and pharmacists. More particularly, the Board held that Pfizer had not established that the mark was one of the “primary characteristics” used by physicians and pharmacists to distinguish VIAGRA from other drugs when prescribing or dispensing.

Pfizer then commenced an appeal of the Opposition Board’s decision to the Federal Court, pursuant to section 56 of the Trade-marks Act. Unlike a true appeal, section 56 allows a party to adduce new evidence that was not before the Opposition Board.

 Mark distinctive to whom?

Justice Russell started his analysis by considering the decision of Justice Barnes in Apotex Advair Diskus, a case dealing with a mark for a purple inhaler that he held had provided a detailed consideration of the issues before him. Following this decision, which was affirmed on appeal, Justice Russell concluded that distinctiveness need not be established for each of the physician, pharmacists and patient subgroups, so long as Pfizer could demonstrate a significant degree of recognition amongst the whole constituency of consumers, including physicians, pharmacists and patients.

Mark is not distinctive to patients

Applying the whole constituency approach, Justice Russell held that the Opposition Board had erred in holding that the mark was distinctive to patients as the Opposition Board has had not considered whether the mark was distinctive to “any significant degree”.  Evidence that “at least some patients” referred to VIAGRA as the “little blue pill” was not sufficient to establish distinctiveness among patients.

Justice Russell further held that since the mark was always used in conjunction with the visible marking of “Pfizer” on the surface of the tablet, Pfizer had failed to establish that a substantial body of patients would associate the mark, without the “Pfizer” marking, with a single source.

Mark is not distinctive to physicians

Justice Russell rejected the Pfizer’s evidence that the mark was distinctive to physician because there was no evidence that any physician had been shown a blue diamond tablet without the “Pfizer” stamping on it, and no doctor would connect an unmarked blue-diamond tablet with source:

If Viagra tablets are always marked and have “Pfizer” on them, then surely a blue, diamond-shaped tablet without such markings could not be a Pfizer pill and could not be associated with a single source.

Mark is not distinctive to pharmacists

Justice Russell held that the Board had erred in requiring the mark be a “primary characteristic” and by limiting the identification process to dispensing choices.  The proper test is whether pharmacists connect the product’s appearance, without the “Pfizer” marking, to a significant degree to a single source.  Justice Russell held that the evidence did not establish that the applied for mark, without the “Pfizer” stamp associated with a single source outside the dispensing context.  Nor did Pfizer’s new evidence establish distinctiveness:

In my view, this evidence simply tells us that Mr. Brown knew in 2006 what a Viagra pill looked like, that he thought the shape unique and that appearance played some role in his dealings with customers. It does not establish that appearance on its own, and without the markings and packaging, to any significant degree was used or recognized by Mr. Brown or other pharmacists as any indication of source.

Justice Russell concluded 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 trade-mark.

Justice Russell’s Judgment and Reasons may be found here.