Pfizer’s application for the Viagra Tablet Design has been found to not be distinctive under s. 38(2)(d) of the Trade-marks Act, and therefore not registrable, on appeal to the Federal Court. 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 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); that pharmacists will only have the opportunity to associate the tablet when dispensing; and that 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.