Descriptive element does not necessarily preclude registration

The Trademarks Opposition Board (TOB) released last month its decision in Synthélabo v Sabex Inc (TOB 2005-01-17, August 5 2004). In ruling that the mark SAB-BETAXOLOL for pharmaceutical products is not descriptive of the goods to which it applies, the TOB confirmed that a mark made up in part of descriptive elements may still be registered if it also contains distinctive elements.

Sabex Inc applied to register SAB-BETAXOLOL as a trademark for pharmaceutical products, namely ophthalmic drops for the treatment of glaucoma. Synthélabo (part of the pharmaceutical group Sanofi-Avantis) opposed the application on the grounds that the mark is descriptive of the nature or quality of the goods to which it applies and is thus precluded from registration under Section 12(1)(b) of the Trademarks Act.

Synthélabo filed evidence proving that betaxolol is an international common denomination for an active ingredient for anti-hypertension products. Synthélabo claimed that the registration of SAB-BETAXOLOL as a trademark would prevent the scientific community in general, and medical laboratories and pharmacies in particular, from using the generic term betaxolol in Canada to refer to the said active ingredient.

The TOB rejected the opposition and ruled that SAB-BETAXOLOL is not clearly descriptive of the goods to which it applies. The TOB noted that the evidence made it clear that betaxolol is a descriptive or generic term referring to a pharmaceutical product for the treatment of hypertension. However, the TOB referred to the well-established principle that:

"a mark can be registered with a clearly descriptive component or components as long as there is sufficient registrable matter apart from the clearly descriptive component[s] to render the mark in its entirety registrable."

The TOB held that in the present case a disclaimer of the right to the exclusive use of the word betaxolol was not required, even if it would normally be considered unregistrable, since it is a component of a hyphenated name. No evidence had been filed that would tend to show that the 'SAB' component, which appears to be an abbreviation of Sabex's name, is devoid of distinctive character.

Accordingly, the TOB concluded that, as a whole, SAB-BETAXOLOL is not clearly descriptive and does not deprive third parties of the right to use the name betaxolol to describe legitimately pharmaceutical products containing that active ingredient.

Synthélabo also submitted that if Sabex's product does not contain betaxolol, then SAB-BETAXOLOL is deceptively misdescriptive. However, Sabex amended its statement of goods during the proceedings to read "pharmaceutical products, namely ophthalmic drops for the treatment of glaucoma and having betaxolol as an ingredient". Consequently, the TOB did not have to address that issue. It nonetheless concluded that even if the application had not been amended to specify that the goods contain betaxolol, it would not have considered SAB-BETAXOLOL to be deceptively misdescriptive. Following the ruling in A Lassonde & Fils Inc v General Foods Inc ((1985), 6 CPR (3d) 72, TOB), a presumption of fair use of a trademark should apply to a situation such as this, particularly where the opponent has failed to adduce evidence that would point to the applicant's use or intention to use its mark in a deceptive manner.

The TOB rejected three other grounds of opposition claimed by Synthélabo for the following reasons:

• Synthélabo failed to file any evidence that would lead to the conclusion that Sabex is not entitled to use of the mark SAB-BETAXOLOL;
  
  
• the mark SAB-BETAXOLOL cannot be said to be the name of the goods in any language; and
  
  
• lack of distinctiveness could no longer be claimed after the descriptiveness claim failed.

Catherine Bergeron, Léger Robic Richard, Montreal