A recent decision of the Federal Court concluded that a registered trade-mark consisting of the colours dark purple and light purple applied to an asthma inhaler was not distinctive and expunged the registration.
The Glaxo Group Limited ("Glaxo") obtained a trade-mark registration in Canada for the trade-mark shown below:
The trade-mark consists of the colours dark purple and light purple applied to the visible surface of the inhaler (the "Trade-Mark"). The drawings are lined for the colours dark purple and light purple.
Apotex Inc. and other pharmaceutical companies (the "Applicants") brought proceedings in the Federal Court to expunge the registration of the Trade-Mark. Applicants are manufacturers of generic medications with an interest in the production and sale of products that closely resemble brand name medications. The Judge concluded that this was sufficient to give them standing.
The burden of showing, on the balance of probabilities, that the Trade-Mark did not actually distinguish Glaxo’s wares from the wares of others was on the Applicants. Whether a trade-mark is distinctive is a question of fact which is determined by reference to the message it conveys to an ordinary consumer.
The ADVAIR DISKUS Inhaler
The Judge said there was no question that Glaxo had developed a marketing strategy around its ADVAIR DISKUS inhaler which uses a consistent design theme. This was said to be evident from its advertising and packaging. Glaxo had also spent millions of dollars promote its ADVAIR DISKUS inhaler in advertising and promotional campaigns. The ADVAIR DISKUS inhaler is a successful product for Glaxo with sales revenue exceeding $600,000,000 between 1999 and 2007.
When the ADVAIR DISKUS inhaler is dispensed to the public, it is contained within a box labelled as an ADVAIR DISKUS inhaler, which also sets out information about Glaxo, dosage, storage, ingredients and the like. The inhaler is similarly labelled on the front and the back. The Trade-Mark was not referred to in a trade-mark notice or the like.
The Relevant Consumers
The relevant constituency of consumers of the inhaler includes physicians, pharmacists and patients. The Judge said that the issue was whether on the date of filing of the application for the Trade-Mark, all of these groups would, to any significant degree recognize the Trade-Mark by its appearance (excluding labels and packaging) and associate that get-up with a single source. In stating this issue, the Judge referred to a previous decision, but the test from that case required the reference be made to physicians, pharmacists or patients.
The Judge said that in the realm of prescription medications, the significance of colour and shape to purchasing choices and brand identification is less obvious because the initial choices are made on an informed basis by physicians and pharmacists. The Judge noted that professional intermediation is also an influential but not an exhaustive component of consumer decision-making. Prescription medications are, after all, not purchased on impulse.
Purchasing Decision Evidence
The Applicants filed a significant amount of evidence from the physicians and pharmacists to the effect that they were not strongly influenced by product shape and colour and had no reason to associate it with a single source. The Judge also found that distinctiveness of a mark based on colour and shape may be diminished by its association with a registered trade name.
The Applicant also filed evidence from physicians to the effect that, patients as a general rule do not attribute much significance to the appearance of pharmaceutical products including inhalers, but suggested that they are more concerned about the functionality, dosage and effectiveness.
To the extent that the ultimate consumer makes a purchasing decision, they will also be significantly influenced by the prescribing and dispensing advice provided to them and undoubtedly by associating products with well-known trade names.
After considering this evidence, the Judge found that colour and shape are not the primary characteristics by which Glaxo distinguishes its ADVAIR DISKUS inhaler from the wares of its competitors, or more significantly by which its purchasers make their choice. Although a few patients may make an association between the Trade-Mark and a single source, this evidence was insufficient to support Glaxo’s contention that a substantial body of patients would do so.
The result in this case is surprising since it appears that the Judge found that at least some consumers associated the Trade-Mark and a single source, which should have been sufficient to maintain the registration. In addition, it is difficult to see how a Trade-Mark can be diminished by its use in association with a registered trade name. We understand the decision is under appeal.