The recent decision of the Federal Court of Canada in
Apotexv.Registrar of Trade-marks and Glaxo
Group Limited (March 12, 2010) continues a line of cases that
restricts the use of "get-up" (which refers to colour,
shape of packaging, etc.) as a trademark in respect of prescription
Glaxo Group Limited had obtained a trademark registration for
the dark and light purple colours as applied to certain portions of
the visible surface of an inhaler. Apotex and other generic drug
manufacturers instituted proceedings to strike out this trademark
registration on the ground that it was not distinctive. The
evidence showed that Glaxo also owned registrations for the
trademarks "Advair" and "Diskus", which were
each used in relation to the same inhaler: when dispensed to the
public, the inhaler is packaged in a box labelled with the
"Advair" and "Diskus" trademarks, along with
dosage and storage details and information about Glaxo.
Justice Barnes rejected Glaxo's argument that
distinctiveness could be established from the fact that physicians,
pharmacists and patients drew an association between the appearance
of Glaxo's get-up and Glaxo as the source of the inhaler.
Instead, the Court held that the trademark had to trigger a
purchasing decision and not merely indicate source: "What is
required is that physicians, pharmacists and patients relate the
trade-mark to a single source and thereby use the mark to make
their prescribing, dispensing and purchasing choices." While
Justice Barnes accepted that there is nothing inherently
objectionable about a unique combination of product shape and
colour being classified as a trademark, he found that in the realm
of prescription medications, the significance of colour and shape
to purchasing choices and brand identification is less obvious
because of the involvement of physicians and pharmacists in the
purchasing decision. Specifically, the Court observed that "in
the context of a market where purchasing decisions are usually made
by professionals or on the advice of professionals, the commercial
distinctiveness of such a mark [a mark based on colour and/or
shape] will be inherently more difficult to establish."
The Court also considered that the prescription product would be
sold to consumers with a label affixed; and the Court expressed the
presumption that consumers would be heavily reliant upon the
printed information in drawing conclusions about source. The Court
found that the distinctiveness of a mark based on colour and shape
may be diminished by its association with a registered trade name.
The Court also noted that no notice was given of the trademark or
its ownership on the product packaging or the inhaler itself,
perhaps raising the question whether the get-up was viewed by the
rights holder as a trademark at all.
On the basis of the foregoing findings, Justice Barnes 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." Finding the trademark to the get-up to lack
distinctiveness, he ordered that the registration for the Glaxo
trademark be struck from the register.
Although this decision is not the first to blaze a trail on the
subject of "size, shape and colour" trademarks in the
pharmaceutical field, this decision paves the way for generic drug
manufacturers to make look-alike inhalers, which will have the
effect of precluding recognition by consumers when the non-branded
product is dispensed. Glaxo has appealed to the Federal Court of
The decision highlights the challenges facing prescription drug
manufacturers – as well as manufacturers in other
industries – wishing to use combinations of colour,
shape, size and words to indicate product source. The case
underscores the importance of reinforcing (i) with consumers, the
association between such features and a particular source and (ii)
with a court, the association between such features and the
purchasing decision. Manufacturers would be well-advised to seek
strategic input from their trademark advisers concerning their
marketing and branding initiatives, including proposed packaging
and labelling, both before and after product launch to maximize the
chances that the get-up will be seen to serve as a trademark.
The content of this article does not constitute legal advice
and should not be relied on in that way. Specific advice should be
sought about your specific circumstances.
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A recent Saskatchewan Court of Queen's Bench decision allowed a court-appointed receiver to sell and transfer intellectual property rights free and clear of encumbrances, finding that a license to use improvements of an invention was a contractual interest and not a property interest.
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