Pfizer Products Inc. v. Canadian Generic Pharmaceutical Association

Pfizer Products Inc. v. Canadian Generic Pharmaceutical Association
Court (s) Database
Federal Court Decisions
Date
2015-04-20
Neutral citation
2015 FC 493
File numbers
T-733-13
Decision Content
Date: 20150420
Docket: T-733-13
Citation: 2015 FC 493
Ottawa, Ontario, April 20, 2015
PRESENT: The Honourable Mr. Justice Russell
BETWEEN:
PFIZER PRODUCTS INC.
Applicant
and
CANADIAN GENERIC PHARMACEUTICAL ASSOCIATION
Respondent
JUDGMENT AND REASONS
I. INTRODUCTION [1] This is an appeal under s. 56(1) of the Trade-marks Act, RSC 1985, c T-13 [Act] of the Trade-marks Opposition Board’s [Board] decision, dated January 23, 2013 [Decision], which refused Pfizer Products Inc.’s [Pfizer or Applicant] trade-mark application, No. 1, 244, 118, pursuant to s. 38(8) of the Act.
II. BACKGROUND [2] The Applicant applied to register the trade-mark, Viagra Tablet Design, on January 19, 2005. The registration was based on the Applicant’s use of the trade-mark in Canada since at least as early as March 1999 in association with a pharmaceutical product used for the treatment of sexual dysfunction.
[3] An official action was issued on April 29, 2005. The Examiner requested that the Applicant amend the drawing to show the tablet in a dotted outline and remove the statement “colour is claimed as a feature of the trade-mark.” The Applicant complied with the request. The amended trade-mark, Miscellaneous Three Dimensional Design [Mark], was advertised for opposition purposes in the Trade-marks Journal of October 5, 2005. An erratum was published on May 17, 2006.
[4] The Canadian Generic Pharmaceutical Association [CGPA or Respondent] filed a statement of opposition to the application on March 6, 2006. The parties filed written submissions, and an oral hearing was held in May 2012.
III. DECISION UNDER REVIEW [5] On January 23, 2013, the Board refused the Applicant’s trade-mark pursuant to s. 38(8) of the Act. The Board concluded that it was not satisfied, on a balance of probabilities, that the Mark was distinctive in accordance with s. 38(2)(d) of the Act. Before reaching its conclusion, the Board rejected each of the other grounds of opposition. Only the issues raised by the parties will be discussed; these issues include the Board’s findings regarding the compliance of the application and the distinctiveness of the Mark.
A. Compliance of the Application [6] At the opposition hearing, CGPA argued that the application did not comply with s. 30(h) of the Act because the drawing did not include the markings on the tablets, and it was impossible to tell whether the Mark was two or three dimensional and what variety of shapes, sizes and colours the Mark included.
[7] The Board said that there was no requirement that the markings of a tablet be included in the drawing: Novopharm Ltd v Eli Lilly and Co (2004), 45 CPR (4th) 254 at 282, [2004] TMOB no 173 (QL)(TMOB). Notwithstanding the lack of requirement, the Board found that the markings were only lightly scored on the tablets and were minor in nature.
[8] The Board also said that it was not fatal to an application to have a drawing which includes both dotted and solid lines: Novopharm Ltd v Pfizer Products Inc, [2009] TMOB no 181 (QL) at para 27. The Board found that there was no ambiguity in the drawing: “the drawing and description clearly show that the claimed colour will be applied to the six sides of a three dimensional diamond shaped tablet with width, height and depth as opposed to a two dimensional figure lacking depth” (Decision at para 54). The Board also noted that the application was in compliance with the Canadian Intellectual Property Office, Practice Notice: “Three-dimensional Marks” (December 6, 2000) because the description indicated that the Mark was to apply to the “whole of the visible surface of the tablet shown in the attached drawings” (Decision at para 54). Further, the Board said that the Applicant was not required to attach a disclaimer to the drawing because “disclaimers often give rise to ambiguity” (Decision at para 56, citing Novopharm Ltd v Pfizer Products Inc, above, at para 30).
[9] The Board concluded that the drawing and description complied with s. 30(h) of the Act because the limits of the Mark were clearly defined.
B. Distinctiveness of the Mark [10] The Board said that the material date for assessing the distinctiveness of the Mark was March 6, 2006, the date that the statement of opposition was filed.
[11] At the opposition hearing, CGPA argued that the colour and shape of the Mark did not distinguish the wares. The Board found that CGPA had met its initial evidentiary burden because the evidence showed that there was a high number of blue and/or multi-sided pills in the marketplace in 2005 and 2006. The Board found that this led to the conclusion that at least some of those pills had been actively marketed in Canada at the material date. As a result, the Applicant had the legal onus to establish, on a balance of probabilities, that the Mark distinguished the Applicant’s wares from the wares of others.
[12] The Board said that three conditions must be satisfied to establish that a mark distinguishes wares (Philip Morris Inc v Imperial Tobacco Ltd (1985), 7 CPR (3d) 254 at 270, [1985] FCJ no 1231 (QL)(FCTD) [Philip Morris], aff’d (1987) 17 CPR (3d) 289 (FCA): “(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.” To be distinctive, consumers must relate or associate the trade-mark with the source of the wares: Glaxo Group Limited v Apotex Inc, 2010 FCA 313 at para 7 [Apotex FCA]. The Board said that this test required that the Applicant show that physicians, pharmacists and patients recognize the Mark as a trade-mark and not just as an ornamental or functional element of the product: Novopharm Ltd v Bayer Inc, [2000] 2 FC 553 at para 73, 179 FTR 260 [Novopharm], aff’d (2000) 264 NR 384, 9 CPR (4th) 304 (FCA) [Novopharm FCA]; Novopharm Ltd v Astra Aktiebolag (2000), 6 CPR (4th) 101 at 112, [2000] TMOB no 35 (QL).
(1) Applicant’s Use of the Mark [13] At the opposition hearing, CGPA argued that there was no evidence to support the conclusion that use of the Mark by Pfizer Canada Inc. enured to the Applicant. The Board said that it was satisfied by the evidence that there was both a 1986 and a 2006 licensing agreement in place such that the use of the Mark enured to the Applicant under s. 50 of the Act. The Board did not draw an adverse inference from the fact that the 2006 licensing agreement had not been produced because there is no requirement that a licensing agreement be in writing. The Board also noted that CGPA could have confirmed further details about the licensing agreement on cross-examination if it believed that issues remained outstanding.
[14] The Board also accepted the evidence that the total sales of Viagra in Canada had exceeded $470 million in 2006, with over 850,000 prescriptions for Viagra having been filled in both 2005 and 2006. The Board cautioned, though, that “impressive sales figures alone do not satisfy the burden on an applicant for a trade-mark of proving distinctiveness” (Decision at para 85, quoting Novopharm Ltd v Astra Aktiebolag (2000), 187 FTR 119, 6 CPR (4th) 16 at 25 [Astra], aff’d 2001 FCA 296 [Astra FCA]). The Board was satisfied that the Applicant had used the Mark to create an association with its product.
(2) Distinctiveness among Patients [15] The Board said that while not determinative of use, advertising and reputation could result in a finding of distinctiveness: Bojangles’ International LLC v Bojangles Café Ltd, 2006 FC 657 at para 29. The Board noted that the only direct evidence from a patient who had taken Viagra came from Viagra’s brand manager, Marc Charbonneau. The Board said that Mr. Charbonneau’s evidence could not be representative of patients generally due to his position.
[16] The Board considered the evidence regarding the marketing and sales of Viagra, as well as the evidence from physicians and pharmacists regarding patients’ perceptions of the Mark. The Board said that the evidence supported a finding that many patients had been exposed to Viagra advertising and that some patients referred to Viagra as a “little blue pill.” This led the Board to conclude that the Mark had a reputation among at least some consumers. The Board concluded that the Mark was distinctive among patients because the evidence showed that patients associate the Mark with the wares.
(3) Distinctiveness among Pharmacists [17] The Board said that the Applicant was required to establish that the colour and shape were the “primary characteristics” by which pharmacists distinguished the wares from others: Apotex Inc v Registrar of Trade Marks, 2010 FC 291 at para 34 [Apotex], aff’d Apotex FCA, above. The Board accepted the fact that no pharmacist would identify a medication solely by reference to colour, shape and size, but said that this was not fatal to the application: Novopharm, above, at para 79. The Board said that while three of the pharmacists who provided evidence said that they were familiar with the appearance of Viagra and knew that it was manufactured by a single source, a unique and recognizable design is not sufficient for distinctiveness: Apotex, above, at para 13. The Federal Court and Federal Court of Appeal’s jurisprudence has established that pharmacists must relate the trade-mark to their dispensing decisions: Apotex FCA, above, at para 7. The Board found that pharmacists used various characteristics to distinguish the wares including: Drug Identification Numbers; the name of the drug and the dosage; and, the Universal Product Code found on the packaging.
[18] Earlier in its Decision, the Board addressed the admissibility of the expert evidence of Dr. Ruth Corbin. Dr. Corbin is a survey expert who conducted a survey relating to pharmacists’ recognition of the Mark in 2002.
[19] The Board considered the four criteria for the admissibility of expert evidence in R v Mohan, [1994] 2 SCR 9: relevance; necessity in assisting the trier of fact; absence of any exclusionary rule; and, from a properly qualified expert. The Board concluded that Dr. Corbin’s evidence was not relevant to the assessment of the distinctiveness of the design on March 6, 2006. The Board acknowledged that, on cross-examination, Dr. Corbin said that the 2002 results were relevant to 2006 because the awareness of a well-marketed product increases as the product becomes entrenched. Dr. Corbin said that even if another blue diamond-shaped pill had been introduced between 2002 and 2006, the distinctiveness of the Mark would be the same or increased. However, the Board found that Dr. Corbin’s answers were inconsistent with the Board’s own understanding of the survey. The Board concluded that Dr. Corbin’s evidence was not relevant to the issue of distinctiveness and declined to address CGPA’s other objections to Dr. Corbin’s evidence.
[20] The Board said that had it admitted Dr. Corbin’s survey, it would have supported the fact that pharmacists associated the Mark with Viagra tablets manufactured by one company. However, the Board concluded that it was not satisfied that the evidence showed that pharmacists primarily rely on colour and shape in making dispensing decisions. In fact, the evidence led to a finding that pharmacists primarily use other means to distinguish the wares. The Board concluded that it was not satisfied that the Mark was distinctive among pharmacists.
(4) Distinctiveness among Physicians [21] The Board considered the evidence of three doctors in relation to the distinctiveness of the Mark among physicians. The Board found that Dr. Weiss’ evidence was not applicable to physicians generally given his role in developing and giving presentations funded by Pfizer. The Board also found that Dr. Perlin’s evidence was not applicable to physicians generally given her evidence that she does not watch television, does not look at advertising in medical journals, and has never seen a Viagra advertisement in a newspaper or magazine. Dr. Schiffman’s evidence was that he was aware of the appearance of Viagra and that Viagra is manufactured by Pfizer. However, his evidence was that he does not associate the Mark with a single source because he said that he would not identify a blue-diamond tablet as Viagra because “[i]t could be anything” (Decision at para 98). The Board concluded that it was not satisfied that the evidence established that the Mark was distinctive among physicians.
(5) Conclusion on Distinctiveness [22] The Board concluded that the Applicant had not established, on a balance of probabilities, that the Mark was distinctive among physicians and pharmacists as of March 6, 2006. The Board said that the Applicant had failed to establish that “a significant number of physicians and pharmacists relate the Mark to prescribing and dispensing of the Wares” (Decision at para 100). The opposition succeeded because the Applicant had failed to establish distinctiveness in relation to patients and physicians and pharmacists.
IV. ISSUES [23] The Applicant raises two issues in this proceeding:
1. Whether the new evidence on appeal would have had a material effect on the Board’s Decision; and
2. Whether the Mark should have been held to be distinctive under s. 38(2)(d) of the Act.
V. STANDARD OF REVIEW [24] The Supreme Court of Canada in Dunsmuir v New Brunswick, 2008 SCC 9 [Dunsmuir] held that a standard of review analysis need not be conducted in every instance. Instead, where the standard of review applicable to a particular question before the court is settled in a satisfactory manner by past jurisprudence, the reviewing court may adopt that standard of review. Only where this search proves fruitless, or where the relevant precedents appear to be inconsistent with new developments in the common law principles of judicial review, must the reviewing court undertake a consideration of the four factors comprising the standard of review analysis: Agraira v Canada (Public Safety and Emergency Preparedness), 2013 SCC 36 at para 48.
[25] The Applicant submits that the Court is required to assess the new evidence to determine whether it would have materially affected the Decision. The Applicant says that material evidence is that which is “substantial and significant” when evaluated on the basis of quality and not quantity. The Decision is entitled to deference if the new evidence: adds nothing of probative significance; is merely repetitive of existing evidence; is irrelevant; makes assumptions without specific support; or, was filed only to support the Board’s Decision: JTI-Macdonald TM Corp v Imperial Tobacco Products Limited, 2013 FC 608 at paras 23-24; Scott Paper Limited v Georgia-Pacific Consumer Products LP, 2010 FC 478 at paras 41-49 [Scott Paper]; Vivat Holdings Ltd v Levi Strauss & Co, 2005 FC 707 at para 27 [Vivat Holdings]. The Applicant also submits that where the Board has noted an absence of information or a deficiency, new evidence that responds to the cited deficiency may be considered and may result in a review of the correctness of the decision: Mövenpick Holding AG v Exxon Mobil Corporation, 2011 FC 1397 at para 54; Advance Magazine Publishers Inc v Farleyco Marketing Inc, 2009 FC 153 at paras 93-95, 98.
[26] The Applicant submits that the standard of review for questions of law is correctness, no matter the materiality of new evidence: Engineers Canada v Rem Chemicals, Inc, 2014 FC 644 at paras 27, 58 [Engineers Canada].
[27] The Respondent submits that the Decision regarding distinctiveness should be reviewed on a standard of reasonableness: Mattel, Inc v 3894207 Canada Inc, 2006 SCC 22 at para 10 [Mattel]; John Labatt Ltd v Molson Companies Ltd (1990), 36 FTR 70, 30 CPR (3d) 293, aff’d (1992), 144 NR 318, 42 CPR (3d) 495 (FCA). The Respondent submits that if the parties have submitted new, material evidence, the Court is required to consider the entire record and decide for itself whether the Applicant has demonstrated an entitlement to the registration: see Astrazeneca AB v Novopharm Ltd, 2003 FCA 57 [Astrazeneca]; Mattel, above, at para 40; Novopharm FCA, above, at paras 4-6.
[28] I will address the applicable standard of review in my analysis of the issues.
VI. STATUTORY PROVISIONS [29] The following provisions of the Act are applicable in this proceeding:
Definitions
Définitions
2. In this Act,
2. Les définitions qui suivent s’appliquent à la présente loi.
[…]
[…]
“distinctive”
« distinctive »
“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;
« distinctive » Relativement à une marque de commerce, celle qui distingue véritablement les marchandises ou services en liaison avec lesquels elle est employée par son propriétaire, des marchandises ou services d’autres propriétaires, ou qui est adaptée à les distinguer ainsi.
[…]
[…]
“trade-mark”
« marque de commerce »
“trade-mark” means
« marque de commerce » Selon le cas :
(a) a mark that is used by a person for the purpose of distinguishing or so as to distinguish wares or services manufactured, sold, leased, hired or performed by him from those manufactured, sold, leased, hired or performed by others,
a) marque employée par une personne pour distinguer, ou de façon à distinguer, les marchandises fabriquées, vendues, données à bail ou louées ou les services loués ou exécutés, par elle, des marchandises fabriquées, vendues, données à bail ou louées ou des services loués ou exécutés, par d’autres;
[…]
[…]
“use”
« emploi » ou « usage »
“use”, in relation to a trade-mark, means any use that by section 4 is deemed to be a use in association with wares or services;
« emploi » ou « usage » À l’égard d’une marque de commerce, tout emploi qui, selon l’article 4, est réputé un emploi en liaison avec des marchandises ou services.
[…]
[…]
Statement of opposition
Déclaration d’opposition
38. (1) Within two months after the advertisement of an application for the registration of a trade-mark, any person may, on payment of the prescribed fee, file a statement of opposition with the Registrar.
38. (1) Toute personne peut, dans le délai de deux mois à compter de l’annonce de la demande, et sur paiement du droit prescrit, produire au bureau du registraire une déclaration d’opposition.
Grounds
Motifs
(2) A statement of opposition may be based on any of the following grounds:
(2) Cette opposition peut être fondée sur l’un des motifs suivants :
(a) that the application does not conform to the requirements of section 30;
a) la demande ne satisfait pas aux exigences de l’article 30;
(b) that the trade-mark is not registrable;
b) la marque de commerce n’est pas enregistrable;
(c) that the applicant is not the person entitled to registration of the trade-mark; or
c) le requérant n’est pas la personne ayant droit à l’enregistrement;
(d) that the trade-mark is not distinctive.
d) la marque de commerce n’est pas distinctive.
[…]
[…]
Decision
Décision
(8) After considering the evidence and representations of the opponent and the applicant, the Registrar shall refuse the application or reject the opposition and notify the parties of the decision and the reasons for the decision.
(8) Après avoir examiné la preuve et les observations des parties, le registraire repousse la demande ou rejette l’opposition et notifie aux parties sa décision ainsi que ses motifs.
Appeal
Appel
56. (1) An appeal lies to the Federal Court from any decision of the Registrar under this Act within two months from the date on which notice of the decision was dispatched by the Registrar or within such further time as the Court may allow, either before or after the expiration of the two months.
56. (1) Appel de toute décision rendue par le registraire, sous le régime de la présente loi, peut être interjeté à la Cour fédérale dans les deux mois qui suivent la date où le registraire a expédié l’avis de la décision ou dans tel délai supplémentaire accordé par le tribunal, soit avant, soit après l’expiration des deux mois.
[…]
[…]
Additional evidence
Preuve additionnelle
(5) On an appeal under subsection (1), evidence in addition to that adduced before the Registrar may be adduced and the Federal Court may exercise any discretion vested in the Registrar.
(5) Lors de l’appel, il peut être apporté une preuve en plus de celle qui a été fournie devant le registraire, et le tribunal peut exercer toute discrétion dont le registraire est investi.
VII. ARGUMENT A. Applicant (1) Proper Issues before the Court [30] As a preliminary issue, the Applicant argues that the only issue properly before the Court is the Board’s finding regarding the distinctiveness of the Mark. The Applicant says that if the Respondent wanted to argue that the Decision should be set aside on other grounds, it was obligated to raise these issues in its notice of appearance or by commencing its own application: Minister of National Revenue v Larsson (1997), 216 NR 315 at paras 27-28 (FCA); Autodata Ltd v Autodata Solutions Co, 2004 FC 1361 at paras 23-27 [Autodata].
[31] The Applicant says that the following issues are inappropriately raised in the Respondent’s evidence: the Board’s decision regarding a motion for the recusal of the hearing officer; the merits of the Corbin survey; and the impact of Pfizer’s post-2006 advertising. The Applicant says that it is unable to respond to the evidence and the issues it raises without knowing how the Respondent intends to address the issues.
(2) Distinctiveness [32] The Applicant says that the Board erred in its application of the test for distinctiveness by requiring that distinctiveness be established among patients, physicians, and pharmacists. The Applicant says that establishing distinctiveness among patients should be sufficient. The Board also erred in its application of the “consumer use” requirement in dealing with physicians and pharmacists. Further, the new evidence establishes distinctiveness among physicians and pharmacists.
[33] The Applicant submits that the test for distinctiveness is “whether a clear message has been given to the public that the wares with which the trade-mark is associated and used are the wares of the trade-mark owner and not those of another party” (Applicant’s Record at 12868). The legal test for distinctiveness is not unique to the pharmaceutical context and is the same test that is used in all other industries: Ciba-Geigy Canada Ltd v Apotex Inc, [1992] 3 SCR 120 at 152 [Ciba-Geigy]; Astrazeneca, above, at paras 18-20; Smith Kline & French Canada Ltd v Canada (Registrar of Trade Marks), [1987] 2 FC 633 at 635-636, 9 FTR 129; Novopharm, above, at para 77, aff’d Novopharm FCA, above. Three conditions must be met to establish distinctiveness: (i) the mark and the ware must be associated; (ii) the owner of the mark must use the association between the mark and its product; and (iii) the association must enable the owner to distinguish its product from that of others: Oxford Pendaflex Canada Ltd v Korr Marketing Ltd, [1982] 1 SCR 494 at 502 [Oxford Pendaflex]; Philip Morris, above, at 270; Havana House Cigar & Tobacco Merchants Ltd v Skyway Cigar Store (1998), 147 FTR 54, 81 CPR (3d) 203 at 222-223 [Havana House Cigar]; Act, s. 2. Distinctiveness does not require evidence of exclusive use: Molson Breweries v John Labatt Ltd, [2000] 3 FC 145, 252 NR 91 at para 48 (CA) [Molson Breweries].
[34] The Applicant acknowledges that it had the burden of establishing that consumers associated the appearance of the drug with the manufacturer, or a single source of manufacture or supply, on a balance of probabilities, on March 6, 2006, the date the opposition was filed: Novopharm, above, at para 72. The Applicant says it must show that the Mark is distinctive among pharmaceuticals used to treat erectile dysfunction despite the fact that CGPA displaced its evidentiary burden in relation to the relevant marketplace of all pharmaceutical products. The Applicant submits that the new evidence shows that the Mark is distinctive even if the marketplace includes all pharmaceuticals because there is no other blue, diamond-shaped tablet.
[35] The Applicant submits that the new evidence would not have materially affected the Board’s Decision regarding distinctiveness among patients. The Respondent’s evidence is repetitive of the evidence that was before the Board. As the new evidence merely confirms the previous findings, the Board’s findings regarding the distinctiveness among patients either should be entitled to deference and upheld as reasonable, or confirmed as correct.
[36] The Applicant submits that a finding of distinctiveness among patients should have been sufficient to establish that the Mark is distinctive. The Board erred in law in requiring the Applicant to show that the Mark was distinctive among patients, physicians, and pharmacists. The legal test requires that a trade-mark be distinctive among ordinary consumers of the wares. In the context of pharmaceutical products, these consumers may include patients, pharmacists or physicians. The Applicant also says that courts have phrased the distinctiveness test as requiring distinctiveness among patients, physicians, or pharmacists: Astra FCA, above, at paras 45-46; Novopharm Ltd v Ciba-Geigy Canada Ltd, [2000] FCJ No 508 (QL) at para 13 (TD).
[37] The Applicant says that the Board’s reliance on Novopharm, above, is misplaced. In Novopharm, the Court not only found that there was insufficient evidence to show distinctiveness in any of the three categories of consumers but also suggested that distinctiveness may have been established had there been strong enough evidence of distinctiveness among pharmacists alone.
[38] Requiring that distinctiveness be established among every group in the supply chain of a pharmaceutical product is inconsistent with the application of the distinctiveness test in other contexts: Cross-Canada Auto Body Supply (Windsor) Limited v Hyundai Motor America, 2007 FC 580 at para 31, aff’d 2008 FCA 98. A finding of distinctiveness among patients should be sufficient to establish distinctiveness because the Act seeks to protect end consumers.
[39] The Applicant submits that if the Court finds that distinctiveness must be established among all three categories of consumers, then the new evidence on this appeal would have materially affected the Board’s Decision. As a result, the Court must review the Board’s findings on distinctiveness among physicians and pharmacists on a standard of correctness. The direct evidence from physicians and pharmacists shows that they associated the blue, diamond-shaped tablet with Viagra and knew that it came from one source.
[40] The Applicant also says that Dr. Corbin’s survey should have been admitted to demonstrate the Mark’s distinctiveness among pharmacists. The Board said that had the Corbin survey been admissible, it would have supported a finding that pharmacists recognized the Mark as being associated with Viagra and one manufacturing company. Even if the Board was not prepared to accept that the survey showed distinctiveness in 2006, the survey should still have been admitted as evidence of distinctiveness in 2002. The Respondent’s new evidence regarding the merits of the survey is speculative and does not establish why the survey is inapplicable to market conditions in 2006.
[41] The Applicant further submits that the Board erred in applying a “consumer use” requirement in its analysis of whether the Mark was distinctive among physicians and pharmacists. This test required the Applicant to establish that physicians use the Mark in making prescription decisions and that pharmacists use the Mark in making dispensing decisions. The Act only requires that an owner use its Mark to distinguish its wares. There is no requirement that a consumer also use the Mark. This test creates an impossible burden in the pharmaceutical context because the decisions of physicians and pharmacists are heavily regulated.
[42] The “consumer use” requirement comes from a misinterpretation and misapplication of previous case law. In a number of cases at the Federal Court in 2000, Justice Rouleau relied on Novopharm, above, as the foundation for the requirement that consumers must “use” the shape and colour of a pharmaceutical product in making decisions: Apotex Inc v Monsanto Canada Inc (2000), 187 FTR 136 at para 14, 6 CPR (4th) 26; Novopharm Ltd v Ciba-Geigy Canada Ltd (2000), 6 CPR (4th) 224 at 232 (FCTD); Astra, above, at para 13; Apotex Inc v Ciba-Geigy Canada Ltd, above, at para 13. The Applicant says that this is a misreading of Novopharm, above, in which the Court applied the usual distinctiveness test which only requires that ordinary consumers associate the mark with a single source.
[43] The Applicant acknowledges that the Federal Court of Appeal has upheld cases where the consumer use requirement is mentioned, but it says that the Federal Court of Appeal has never expressly endorsed the consumer use requirement. Rather, in upholding the cases, the Federal Court of Appeal has articulated the same distinctiveness test: whether “relevant consumers…distinguish the source’s product from the wares of others, based on the source’s trade-mark”: Apotex FCA, above, at para 7.
[44] The Applicant says that the evidence establishes that physicians and pharmacists use the Mark to the fullest extent possible within the limits of their professional obligations. There is evidence that physicians understood references to patients’ requests for the “little blue pill” as references to Viagra, which could lead to prescribing decisions. There is also evidence that pharmacists sometimes use the Mark as part of their check that the proper medication is being dispensed.
B. Respondent (1) Issues before the Court [45] The Respondent submits that it was not required to file a cross-appeal of the Decision or to provide its grounds for challenging the Decision in its notice of appearance. The Respondent says that the appeal is of the Decision, not the reasons for the Decision: Act, ss. 38(8), 56; Federal Courts Rules, SOR/98-106, r. 301; Ratiopharm Inc v Pfizer Canada Inc, 2007 FCA 261 at para 6. Further, the Federal Court Rules do not require a listing of grounds in a notice of appearance: see Form 38A. The Respondent says that it is entitled to file evidence to address any issue that was before the Board: Société anonyme des bains de mer et du cercle des étrangers à Monaco, société anonyme v Monte Carlo Holdings Corp, 2012 FC 1528 at para 14; Autodata, above, at paras 24-27; Perka v The Queen, [1984] 2 SCR 232 at 240.
(2) Compliance with the Act [46] The Respondent submits that Pfizer’s trade-mark application was not compliant with s. 30(h) of the Act. The new evidence establishes that the markings on the Viagra tablets are not minor. The evidence of physicians and pharmacists confirmed that the markings are used to identify Viagra when prescribing, dispensing, and educating patients.
[47] The Respondent also submits that the Board erred in its determination of the sufficiency of the drawing. The drawing must be precise enough to allow the public to accurately assess its limits: Astra, above, aff’d Astra FCA, above; Novopharm Ltd v Ciba-Geigy Canada Ltd, above, aff’d Astra FCA, above. The drawing in Pfizer’s trade-mark application is ambiguous because it shows both dotted and solid lines. It is also not clear if the shape is part of the Mark. The Respondent submits that the Board erred by relying on decisions in which the drawings were determined not to be ambiguous because, in those cases, the applications contained disclaimers which resolved the ambiguity: Novopharm Ltd v Pfizer Products Inc, above; Astra, above.
(3) Distinctiveness [48] The Respondent submits that the test for distinctiveness is whether the appearance conveys to the consumer, in the ordinary course of trade, that the product emanates from one particular source. Distinctiveness is not established if the consumer perceives the appearance to convey either the identity of the drug or erectile dysfunction medication generally.
[49] The test for distinctiveness requires that the Applicant demonstrate that a significant proportion of “physicians, pharmacists and patients understand the appearance of the drug to indicate the source of the drug when they select the brand of drug they are prescribing, dispensing or consuming”: see Eli Lilly and Company v Novopharm Ltd, 2006 FC 843 at paras 92-94; Apotex, above, at paras 5, 8-13, aff’d Apotex FCA, above; Novopharm, above, at paras 72-73; Eli Lilly and Co v Novopharm Ltd (2000), [2001] 2 FC 502 at para 31, 195 DLR (4th) 547 (CA) [Eli Lilly FCA]; Ciba-Geigy, above, at 157. The Applicant has failed to establish distinctiveness among a significant proportion of patients, physicians and pharmacists because none of the physicians and pharmacists who provided evidence was speaking for anyone other than him or herself.
[50] The Respondent also submits that the relevant marketplace is all pharmaceutical products in Canada: see Novopharm, above, at para 78; Astra, above, at para 14; Novopharm Ltd v AstraZeneca AB, 2003 FC 1212 at paras 8(4), 17, 20. Novelty does not establish distinctiveness and the Applicant was required to show more than that the tablet’s appearance is different from other drugs on the market: Royal Doulton Tableware Limited v Cassidy’s Ltd (1984), [1986] 1 FC 357, 1 CPR (3d) 214 at 224-226 (TD) [Royal Doulton]; Eli Lilly & Co v Novopharm Ltd (1997), 130 FTR 1, 147 DLR (4th) 673 [Eli Lilly], aff’d Eli Lilly FCA, above; Novopharm, above. Distinctiveness is not established by showing that a drug has been widely promoted and has appeared in advertising: Eli Lilly, above. Showing that physicians, pharmacists and patients recognize, or can describe the appearance of the drug, does not establish that these consumers associate source significance to that appearance. Distinctiveness is also not established by showing that customers associate the shape with the trade-name of the product.
[51] The Respondent also says that the Applicant’s arguments regarding the “consumer use” requirement have already been rejected by the Federal Court and the Federal Court of Appeal: Apotex, above, at paras 8-13, aff’d Apotex FCA, above, at paras 2-3, 6-7. The Mark must inform the consumer of the source of the product in order to function as a distinctive trade-mark. A consumer “uses” the appearance to identify the source of a product by associating the appearance with a single source.
[52] The Respondent submits that the new evidence makes clear that the Applicant has not established that use by Pfizer Canada Inc. enured to the Applicant. The new evidence establishes that the Applicant’s evidence regarding the licensing agreement before the Board was inadmissible hearsay and not supported by the documentary evidence. The Applicant refused to produce any further documents regarding the licensing agreement. This leads to the inference that there are no documents to support the Applicant’s claim that the Mark was the subject of a 1986 licensing agreement.
[53] The Respondent further submits that there is no evidence to establish that patients use the appearance of the drug to distinguish the wares. The evidence from physicians and pharmacists establishes that patients use “little blue pill” to refer to erectile dysfunction medication, not to a specific brand of medication. Further, patients do not associate the Mark with one source because they know that generics often resemble originating brands of a medicine. Patients were also aware that there was a counterfeit tablet that resembled the Viagra tablet.
[54] The Respondent submits that there is no new material evidence to warrant re-opening the Board’s findings regarding distinctiveness among physicians. The new evidence is merely repetitive of what was before the Board. Further, the Respondent submits that the evidence is clear that no competent physician would consider the source of the drug in deciding whether to prescribe Viagra. Physicians prescribe solely on the basis of therapeutic concerns and would never identify a tablet by its appearance.
[55] The Respondent also submits that the Applicant has failed to establish how its new evidence regarding distinctiveness among pharmacists is materially different from the evidence that was before the Board. There is accordingly no reason to revisit the Board’s findings on this issue. The evidence is clear that no competent pharmacist would use the Mark as the basis for distinguishing among products for dispensing purposes. The evidence from the pharmacists was that the appearance of a tablet is indicative of the medication, not the source, because all brands adopt the same appearance for the same medication.
[56] The Respondent says that the new evidence supports the Board’s finding that the Corbin survey was not relevant to market conditions in 2006. The new evidence before the Court establishes even more clearly that there was a change in the marketplace from 2002 to 2006: five new blue tablets were introduced between 2002 and 2006; look-alike counterfeit Viagra was available; Pfizer had reduced its marketing efforts surrounding Viagra; and the demographics of pharmacists changed during this time period. In addition, the Corbin survey is so flawed that its conclusions are not supportable, even if it were admissible.
VIII. ANALYSIS A. What is Before the Court? (1) The Centrality of Distinctiveness [57] The parties disagree as to what is properly before the Court in this appeal under s. 56(1) of the Act.
[58] There is considerable complexity in assessing whether some of the issues raised by the Respondent, and to which the Applicant objects, are stand-alone issues or simply part of a full response to the central issue of distinctiveness, or were raised in the Applicant’s own evidence. In addition, the relevant jurisprudence on this point is not entirely clear. While the Court does not shy away from these difficulties, they cannot be resolved – if they need to be resolved at all in this appeal – until the Court has addressed the central issue of distinctiveness. Both parties have made it clear in their materials and in their presentations before me at the oral hearing that distinctiveness of the blue, diamond-shaped pill as of 2006 is at the heart of this appeal.
(2) The Dispute over Distinctiveness [59] Before I come to the Board Decision and the evidence before me in this appeal, I think it would help to set out as simply as possible my understanding of the dispute between the parties as to how the jurisprudence requires distinctiveness to be assessed for the blue, diamond-shaped pill that the Applicant seeks to register as a trade-mark.
[60] Reduced to basics, and I will come to subtleties later, the Applicant says that the test for distinctiveness is met for this Mark if it can demonstrate, on a balance of probabilities and at the material time (2006), an association between the Mark and a single source of manufacture in the minds of either physicians, pharmacists or patients. This association is the same for all trade-marks and there is no heightened test just because the Mark happens to be the appearance of a pharmaceutical. The Applicant says that the Board erred by (a) requiring association in the minds of all three groups – physicians, pharmacists and patients – and (b) applying a heightened test to the effect that when considering physicians and pharmacists, the Applicant was required to demonstrate that the appearance of the blue, diamond-shaped pill