Trademark registration for purple inhaler revoked

Canada
In Apotex Inc v Registrar of Trademarks (2010 FC 291, March 12 2010), the Federal Court of Canada has found that a Canadian trademark registration owned by Glaxo Group Limited (GSK), which consisted of dark and light purple colours applied to portions of the visual surface of an inhaler, was invalid as lacking distinctiveness. 
 
Canadian jurisprudence has established that product colour and shape, often referred to as 'get-up', can be registered as a trademark provided that the get-up has acquired distinctiveness as of the date of the application. 

Normally, a mark is registrable if it serves to indicate the source of goods. The court appears to have raised the threshold in establishing distinctiveness of the get-up of prescription pharmaceutical products by requiring that the get-up of a drug product trigger a purchasing decision, and not merely indicate the source of such products. In particular, the court held that:

[w]hat is required is that physicians, pharmacists and patients relate the trademark to a single source and thereby use the mark to make their prescribing, dispensing and purchasing choices.”
 
GSK’s expert witnesses, including physicians and pharmacists, testified that they have come routinely to draw a strong association between the appearance of the purple inhaler’s get-up and GSK as the source of the inhaler. However, the witnesses also provided evidence that the GSK inhalers are never marketed without a label including the word marks ADVAIR and DISKUS, which are owned by GSK for use in association with the same purple inhalers. With the exception of one physician who testified that he relied mostly on colour and shape, and that the label played a minor role in identifying the purple inhaler, the court held that the evidence conclusively established that:
 
no prudent physician or pharmacist would rely upon the colour or shape of an inhaler to exercise a professional judgment about the product and few patients would make a choice based solely on the appearance of an unlabelled inhaler.”
 
As such, the commercial distinctiveness of the get-up was inherently diminished by the fact that drug purchasing decisions are never made by consumers based on product appearance, but rather by professionals or on the advice of professionals. Based on the evidence adduced, the court held that:
 
colour and shape are not the primary characteristics by which Glaxo distinguishes the Advair Diskus inhaler from the wares of its competitors or, more significantly, by which its purchasers make their choices.
 
The court also noted that GSK did not affix any trademark indicia or ownership notice pertaining to the purple design mark, and thereby doubted whether GSK itself regarded the get-up as a trademark at all.
 
This case exemplifies the particular circumstances which may be taken into account when the distribution of a product is highly regulated. As GSK promptly filed an appeal of this decision, it will be interesting to see what position the Federal Court of Appeal may take on these issues, which are highly relevant to the pharmaceutical industry.

Gordon Zimmerman, Daniel Brinza, Chris Watson, Borden Ladner Gervais LLP, Toronto

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