Shape and colour of Viagra tablet held to be devoid of distinctive character

On November 28 2008 the Hong Kong registrar of trademarks has rejected Pfizer Products Inc's application to register a three-dimensional mark consisting of the shape and colour of the Viagra tablet (a blue diamond tablet) in respect of pharmaceutical preparations, despite the long and substantial pre-application use of the shape and colour applied for.

Pfizer submitted that the distinctive character of its mark lies in the elongated diamond shape with rounded corners and in the colour blue.

Following Henkel KGAA v Office for Harmonization in the Internal Market (Case T-335/99), the registrar held that although the criteria for assessing the distinctive character of three-dimensional marks are no different from those applicable to other categories of trademarks, a three-dimensional trademark consisting of the shape of the goods themselves is not necessarily perceived by the relevant consumers in the same way as a word mark, a figurative mark or a three-dimensional mark which consists of a sign that is independent from the appearance of the goods it denotes.

Further, the registrar held that consumers are used to seeing medicine tablets with a colour and in geometric shapes with no sharp corners for easy swallowing. He was not convinced that the Viagra tablet departed significantly from the norm or custom of the pharmaceutical sector. Therefore, he held that consumers were likely to see Pfizer's mark simply as the appearance of the product itself or a representation of a medicine tablet found on the packaging of the product, rather than as a trademark indicating trade origin. The registrar also observed that when it comes to choosing pharmaceutical preparations, consumers are not generally in the habit of making assumptions about the trade origin of those goods on the basis of their shape and/colour in the absence of any graphic or word element. The mark was thus held to be devoid of any distinctive character and not registrable on a prima facie basis.

The registrar went on to consider the evidence of use filed by Pfizer to support its claim that the shape of its blue diamond tablet should be allowed registration on the basis of acquired distinctiveness.

Pfizer’s evidence indicated that the shape had been consistently used for some six and a half years before the date of application. The registrar recognized that the sales figures were substantial. However, quoting Bach and Bach Flower Remedies Trademarks ([2000] RPC 513), the registrar held that:

use of a trademark does not of itself prove that the mark is distinctive; and
he had to consider how the mark was actually presented to customers.

The registrar examined the advertisements, promotional materials, press coverage and newspaper and magazine articles submitted by Pfizer, and observed that the mark applied for was invariably used with distinctive elements such as 'Pfizer', 'Viagra' or the Chinese mark for 'Viagra'. The registrar observed that while he was mindful of the decision of the European Court of Justice in Société des Produits Nestlé SA v Mars UK Ltd (Case C-353/03, which concerned the HAVE A BREAK mark), in which it was held that there was no bar to a mark acquiring a distinctive character as a result of its use as part of another trademark, he considered that consumers were likely to perceive:

the words 'Pfizer', 'Viagra' and the Chinese mark for 'Viagra' as the indicators of trade origin to identify the pharmaceutical products concerned; and
the mark applied for as an illustration of the appearance of the goods.

The registrar also observed that Pfizer’s VIAGRA-branded sildenafil citrate was not sold loose, but in a box of four tablets, and that the mark applied for did not appear on the packaging box. Therefore, in making the decision to purchase, the relevant consumers were not in a position to see directly the shape and/or colour of the tablets in question, thereby enabling them to attribute to that shape and/or colour the function of indicating the product’s trade origin.

Other evidence submitted by Pfizer included:

gift items featuring the blue diamond tablet, which were distributed to promote the Viagra product; and
photographs of Pfizer’s booths at medical conventions and congresses around the world.

The registrar held that such evidence was insufficient or irrelevant to the question of whether the blue diamond tablet had acquired distinctiveness in Hong Kong, as:

the scale of distribution of the gift items was not proved and the gift items bore the mark VIAGRA; and
the medical conventions and congresses were not held in Hong Kong.

Pfizer also submitted survey evidence in the form of statutory declarations made by nine doctors in Hong Kong testifying that they recognized the blue diamond tablet and associated it with Pfizer. However, the registrar held that weight could not be placed on the survey, as the following was not clear:

how the interviewees were selected;
how many people were invited to take part in the survey;
what the responses of the interviewees were;
at what place and over what period of time the survey was conducted;
the exact instructions given to the interviewees; and
what relationship, if any, the nine doctors had with Pfizer.

Apart from the criticism on the technical part of the survey, the registrar held that the nine statutory declarations merely showed that the nine doctors surveyed associated the blue diamond tablet with Pfizer. Following Société des Produits Nestlé SA v Unilever plc ([2002] EWHC 2709, which concerned the shape of the Viennetta ice cream dessert), the registrar held that:

mere recognition and association with one trader is insufficient; and
it must be shown that the relevant consumers have come to recognize the shape applied for as a badge of origin.

The registrar further observed that the relevant consumers in this case were not limited to medical professionals, but also included the general public. As the survey covered only a small number of specialist customers (ie, nine doctors), it failed to establish that the mark applied for had come to distinguish the pharmaceutical products of a particular undertaking in the perception of a significant proportion of the relevant consumers.

The registrar also regarded as irrelevant the fact that the shape of the Viagra tablet has been accepted for registration as a trademark in Australia, China, the European Union, Japan, Ireland, New Zealand and the United Kingdom. The registrar thus held that:

the shape of the blue diamond tablet was devoid of any distinctive character in respect of pharmaceutical preparations; and
the evidence submitted by Pfizer was insufficient to establish that the mark had acquired distinctiveness through long and substantial use.

Rebecca Lo, Rebecca Lo & Co, Hong Kong

Shape and colour of Viagra tablet held to be devoid of distinctive character

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