Pfizer's blue diamond-shaped pill not found to be distinctive

In Pfizer Products Inc v Canadian Generic Pharmaceutical Association (2015 FC 493), on appeal to the Federal Court, Pfizer’s application for the Viagra tablet design has been found to not be distinctive under Section 38(2)(d) of the Trademarks Act, and therefore not registrable.

The application related to a three-dimensional blue diamond-shaped tablet used in association with a pharmaceutical product used for the treatment of sexual dysfunction.

In order to find distinctiveness in the appearance of a pharmaceutical tablet, the court found that it must look at whether the evidence establishes recognition, to “any significant degree”, among any group or groups of “ordinary consumers” of the proposed mark. That is, it does not need to be distinctive to all of the relevant groups - physicians, pharmacists and patients.

However, it was found that:

• due to the nature of pharmaceutical products, the reality is that physicians will only have the opportunity to associate the tablet when prescribing (perhaps in describing the tablet to patients or in providing samples or educational materials);

• pharmacists will only have the opportunity to associate the tablet when dispensing; and

• patients will only have the opportunity to associate the tablet when requesting or purchasing.

In the end, the court was not convinced that any of the groups would associate the blue, diamond-shaped unmarked Viagra pill with a single source.

Chantal Saunders, Beverley Moore and Adrian J Howard, Borden Ladner Gervais LLP, Ottawa