Pill refused combination colour-shape mark

Canada

In Astrazeneca AB v Novopharm Ltd, the Federal Court of Appeal has ruled that "a yellow colour applied to the whole of the visible surface of a round tablet" containing a blood pressure medication is not sufficiently distinctive to be registrable as a trademark.

Astrazeneca applied for registration of the colour-shape trademark for use in association with a drug containing the active ingredient felodipine, which is sold as Plendil. Novopharm opposed the registration on the grounds that its tablets and the tablets of others had become sufficiently known to negate the distinctiveness of Astrazeneca's mark.

The registrar of trademarks refused registration on the grounds that the mark does not distinguish Astrazeneca's product from those of others. According to the registrar, there are "at least some other yellow tablets for the treatment of hypertension that are available in the marketplace" and all drugs used to treat the same condition should be considered whether or not they contain the same active ingredient.

An appeal to the Federal Court, Trial Division was dismissed. The additional evidence Astrazeneca filed on appeal did not have a material effect on the issue of distinctiveness. The court was of the view that "colour and shape do not distinguish the tablets from other yellow, round tablets".

The Federal Court of Appeal affirmed, stating that the Trial Division had applied the correct standard of review and that the registrar had already considered much of the new evidence.

By opposing Astrazeneca's trademark application, Novopharm assumed the burden of showing that other tablets had become sufficiently known to negate the distinctiveness of Astrazeneca's mark. In the court's view, Novopharm showed that "[t]here are numerous yellow tablets sold in Canada and used in the treatment of hypertension", some of which are round, and there was no showing by Astrazeneca that the colour and shape of its tablets have the effect of distinguishing its product from those of others.

John Macera, Macera & Jarzyna - Moffat & Co, Ottawa

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