A recent decision of the Federal Court refused to provide trademark protection for the colour and shape of the VIAGRA little blue pill.
On January 19, 2005, Pfizer Products Inc. (Pfizer) applied to register a trademark, for the VIAGRA TABLET DESIGN (the "Mark") based on its use in Canada since at least as early as March 1999 in association with a pharmaceutical preparation for the treatment of sexual dysfunction (the "Wares"). The drawings and description of the trademark are shown below:
Colour was claimed as a feature of the trademark. The trademark consisted of the colour blue as applied to the whole of the visible surface of the tablet shown in the drawings.
The Canadian Generic Pharmaceutical Association (CGPA) opposed the application and an oral hearing was held in May 2012.
The Trademark Opposition Board (the "Board") refused the application. The Board concluded that the Mark was not distinctive as required by the Trademarks Act. The Board said that the relevant test required that the Pfizer show that physicians, pharmacists and patients recognized the Mark as a trademark and not just as an ornamental or functional element of the product.
The Board considered the evidence regarding the marketing and sales of Viagra, as well as the evidence from physicians and pharmacists regarding patients' perceptions of the Mark. It was found that the evidence supported a finding that many patients had been exposed to Viagra advertising and that some patients referred to Viagra as the "little blue pill". The Mark had a reputation among at least some consumers. The Board concluded that the Mark was distinctive among patients because the evidence showed that patients associate the Mark with the Wares.
However, the Board concluded that Pfizer had not established that the Mark was distinctive among physicians and pharmacists. Pfizer failed to establish that a significant number of physicians and pharmacists relate the Mark to prescribing and dispensing of the Wares. The opposition succeeded because the Applicant had failed to establish distinctiveness in relation to patients and physicians and pharmacists.
Pfizer appealed this decision to the Federal Court. Pfizer filed additional evidence as it was entitled to. Pfizer argued that the Board erred in its application of the test for distinctiveness by requiring that distinctiveness be established among patients, physicians, and pharmacists. Pfizer said that establishing distinctiveness among patients should be sufficient. New evidence was also filed to attempt to establish distinctiveness among physicians and pharmacists.
The trial judge set out a useful summary of a number well established general principles relating to distinctiveness:
a) In order to establish the distinctiveness of the proposed Mark, the onus was on Pfizer to establish: (i) that the Mark and the Wares were associated; (ii) that Pfizer used the association between the Mark and the Wares; and (iii) that the association enabled Pfizer to distinguish its Wares from those of others;
b) A trademark indicates the source of a particular product so that consumers know what they are buying and from whom and only a distinctive mark will allow the consumer to identify the source of the product;
c) Distinctiveness is the quality that allows consumers to reference the trademark to distinguish the origin of a product and is the very essence and cardinal requirement of a trademark;
d) The critical question is what the trademark actually conveys to the consumer.
e) For the appearance of the product itself, in this case consisting of the blue, diamond-shaped pill, to be distinctive, the appearance must convey information concerning the source of the Wares.
After a lengthy review of the existing case law the judge agreed with Pfizer that establishing distinctiveness among patients should be sufficient. In considering the distinctiveness of the appearance of a pharmaceutical tablet, the Board or a court must look at whether the evidence establishes recognition, to "any significant degree," among patients or physicians and pharmacists as the "ordinary consumers" of the Mark.
The Trademark Act law applies to the pharmaceutical industry in the same way as it does to all other industries. Pfizer was required to adduce sufficient evidence to establish that, on a balance of probabilities, consumers associate the Mark with a single source of manufacture to a significant degree. The consumers of Viagra include physicians, pharmacists, and patients. If Pfizer demonstrated a significant degree of recognition among any of these consumers, Pfizer would establish that the Mark was distinctive.
The judge then concluded that the Board was wrong in law in failing to consider whether distinctiveness amongst patients satisfied the requirement for distinctiveness, irrespective of whether the Mark was distinctive for physicians and pharmacists. In addition, the Board was also wrong in law in not considering whether distinctiveness amongst patients was established "to any significant degree," and was unreasonable in failing to provide a sufficient evidentiary justification for finding distinctiveness amongst patients.
When the judge reviewed all of the relevant evidence it was found that Pfizer failed to establish that a substantial body of patients associated the blue, diamond-shaped unmarked Viagra pill with a single source. A similar conclusion was reached concerning physicians and pharmacists. As a result the appeal was dismissed.
This decision may assist those who wish to attempt to protect pharmaceutical tablets as it provides a roadmap, albeit lengthy. But the fact remains that it is very difficult to obtain protection.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.