Date: 20030204
Docket: A-668-01
Neutral citation: 2003 FCA 57
CORAM: STONE J.A.
BETWEEN:
ASTRAZENECA AB
Appellant
(Applicant)
and
NOVOPHARM LIMITED
and
THE REGISTRAR OF TRADE-MARKS
Respondents
(Respondents)
Heard at Toronto, Ontario, on January 13, 2003.
Judgment delivered at Ottawa, Ontario, on February 4, 2003
REASONS FOR JUDGMENT BY: STONE J.A.
CONCURRED IN BY: ROTHSTEIN J.A.
MALONE J.A.
Date: 20030204
Docket: A-668-01
Neutral citation: 2003 FCA 57
CORAM: STONE J.A.
BETWEEN:
ASTRAZENECA AB
Appellant
(Applicant)
and
NOVOPHARM LIMITED
and
THE REGISTRAR OF TRADE-MARKS
Respondent
(Respondents)
REASONS FOR JUDGMENT
[1] This is an appeal from an order of Kelen J. dated October 30, 2001 dismissing the appellant's appeal from the Registrar of Trade-marks decision dated March 9, 2000 refusing the appellant's application for registration of a yellow tablet design as a trade-mark pursuant to the Trade-marks Act, R.S.C. 1985, c. T-13 (the "Act").
[2] In paragraph 2 of the appellant's trade-mark application there appears the following description of the mark in issue:
The trade-mark is shown in the attached drawing and consists of a yellow colour applied to the whole of the visible surface of a tablet, as also shown on the specimen tablets filed with the application. The tablet itself shown in dotted outline does not form part of the trade-mark.
The application then avers that the trade-mark had been "used in Canada in association with the general wares comprising the following wares
/pharmaceutical preparations, namely, felodipine/
since at least as early as March 1994".
[3] The appellant's drug, sold under the trade-mark PLENDIL contains the therapeutically active chemical substance "felodipine" which is only available by prescription, is used in the treatment of high blood pressure and is normally consumed chronically by patients in various dosage forms including 2.5 mg yellow tablets. These tablets are not interchangeable with other anti-hypertensive pharmaceutical tablets. The appellant markets its "felodipine" tablets to pharmacies in boxes enclosing tablets in sheets of blister bubbles within which are encased the yellow, round 2.5 mg tablets. A "DIN" number, "PLENDIL", "felodipine extended release tablets", "2.5 mg" and "Astra" are written on each blister. Markings are engraved on either side of each tablet including the number "2.5". Other dosage forms of the same drug are similarly sold by the appellant but in colours other than yellow, i.e. pink 5 mg tablets and brown 10 mg tablets. Pharmacists are supplied by the appellant with a product brochure and monograph.
[4] By a statement of opposition filed pursuant to subsection 38(2) of the Act on February 6, 1996, later amended, the respondent opposed registration of the mark on six discrete grounds. The appellant filed a counterstatement dated April 4, 1996. Each of the grounds advanced in the statement of opposition was considered and rejected by the Registrar of Trade-marks in his decision of March 9, 2000, save for the sixth ground which was based on the provisions of paragraph 38(2)(d) of the Act. This ground in the statement of opposition reads:
The Opponent bases its opposition on the grounds provided in s. 38(2)(d) in that the trade-mark is not distinctive in that it does not distinguish and is not adapted to distinguish the wares of the applicant from those [of] others. Yellow tablets were and are at all material times common to the trade and had been used by others so that the wares of the applicant are and cannot be distinguished from others, inter alia, the tablets of:
There then followed a listing of some 21 pharmaceutical tablets as well as the names of the respective manufacturers.
Proceeding before the Registrar
[5] Affidavit evidence was filed before the Registrar by both sides in the opposition proceedings together with transcripts of cross-examination on those affidavits.
[6] The Registrar found on the evidence that as of the date of the opposition "there are at least some other yellow tablets for the treatment of hypertension that are available in the market place" and that at least a few of these were "yellow tablets". The Registrar disagreed with the appellant's contention that in determining the issue of distinctiveness of the mark only anti-hypertensive tablets that contained the active ingredient felodipine should be considered. It was his view that the tablets supplied for the treatment of the same medical condition could be considered even though such tablets do not contain that active ingredient. The Registrar found on the evidence that the appellant's mark did not, in fact, distinguish the appellant's wares from those of others. It was his view that the low level of sales of the appellant's 2.5 mg yellow tablets combined with failure on the part of the appellant to educate the public (physicians, pharmacists and patients) as to the trade-mark status of the tablets yellow colour was fatal. As he put it at page 10 of his reasons, "Typically all anyone sees at the time of sale is a box bearing the trade-mark PLENDIL and the name Astra. The yellow tablets are not visible and there is no representation of the yellow tablet on the box". The Registrar was of the further view that alleged attempts by the appellant to educate the public through its brochures and product monographs did not have that effect. He concluded for these reasons that the appellant's mark was not "distinctive".
Proceeding in the Trial Division
[7] An appeal from the decision of the Registrar to the Trial Division was brought pursuant to section 56 of the Act. In that proceeding the appellant filed additional evidence in the form of an affidavit of Adam Pignataro, a Toronto pharmacist. The respondent itself filed five additional affidavits. All of the affiants were cross-examined; the transcripts are in the record before this Court. By his order dated October 30, 2001, Kelen J. dismissed the appeal with costs.
[8] At the outset, Kelen J. addressed the appropriate standard by which the Registrar's decision of March 9, 2000 was to be reviewed, and concluded on the basis of this Court's jurisprudence that the appropriate standard was generally that of "reasonableness simpliciter" unless the additional evidence filed on the appeal to the Trial Division would have materially affected the Registrar's decision in which event the standard would become one of correctness: Molson Breweries, a Partnership v. John Labatt Ltd., [2002] 3 F.C. 145 (C.A.). See also, Novopharm Ltd. v. Bayer Inc., [2000] 2 F.C. 553 (T.D.); Novopharm Ltd. v. Ciba-Geigy Canada Ltd.; Novopharm Ltd. v. Astra Aktiebolag (2001), 15 C.P.R. (4th) 327 (F.C.A.). Kelen J. was of the view that as the additional evidence before him would not have materially affected the Registrar's decision on the issue of distinctiveness, that decision was to be reviewed for "reasonableness simpliciter". He was of the further view that even if "correctness" were the appropriate standard of review, the evidence did not establish that the colour and shape of the appellant's tablets were "distinctive" as that term is defined in section 2 and used in section 12 of the Act because, as he put it, "colour and shape do not distinguish the tablets from other yellow, round tablets".
[9] Kelen J. then had regard to decided cases in which courts had considered whether colour and shape appearance of a pharmaceutical tablet, by themselves, establish "distinctiveness". He concluded from this review that a heavy burden rested on the appellant in this regard, and that the appellant had not discharged that burden. It was his view that, "The fact that Astra has used this colour and shape in association with its felodipine tablets, and that pharmacists recognized the colour and shape of the tablets inside the packaging is not enough". He was of the further view that the evidence fell short of establishing "that the colour and shape have been used with felodipine to the extent that pharmacists associate the colour and shape with a single source". Finally, Kelen J. turned for guidance to the English decision in Hoffman-Laroche and Company v. D. D. S. A. Pharmaceuticals Ltd., [1972] RPC 1 (C.A.), and then concluded at paragraph 17 of his reasons:
I would follow the reasoning of the English Court of Appeal and conclude that the ordinary appearance of Astra's yellow round tablets are not so distinctive as to attribute them to one manufacturing source or provenance but for the packaging. Pharmacists will, first and foremost, check the markings on the outer packaging and the inner packaging sleeve containing the tablets in blister bubbles. It is the packaging which makes the drug distinctive, not the colour and shape. Accordingly, the Registrar's decision is reasonable.
Issues
[10] The appellant questions the choice of standard of review by the Trial Division. They also raised five discrete sub-issues with respect to distinctiveness, namely, that Kelen J. erred (1) in failing to find that the mark was inherently distinctive, (2) in considering wares other than filodipine in assessing the distinctiveness of the mark, (3) in effectively finding that the respondent had met its evidential burden of establishing that the other tablets were known sufficiently to negate the distinctiveness of the mark, (4) in improperly elevating the burden on the appellant of showing that the mark had a secondary meaning by imposing a "heavy burden", (5) in failing to appreciate that pharmacists rely on the colour and shape of the appellant's tablets to confirm the brand and, accordingly, that the trade-mark's usage and distinctiveness had been established. These individual sub-issues dovetail into one another to such an extent that they may be conveniently considered together in addressing whether the mark was "distinctive".
Relevant statutory provisions
[11] The relevant statutory provisions are found in sections 2, 12 and 38 of the Act. Section 2 of the Act contains the following definitions of "trade-mark" and "distinctive":
|
"trade-mark" means (a) a mark that is used by a person for the purpose of distinguishing or so as to distinguish wares or services manufactured, sold, leased, hired or performed by him from those manufactured, sold, leased, hired or performed by others, (b) a certification mark, (c) a distinguishing guise, or (d) a proposed trade-mark;
"distinctive", in relation to a trade-mark, means a trade-mark that actually distinguishes the wares or services in association with which it is used by its owner from the wares or services of others or is adapted so to distinguish them; |
"marque de commerce" Selon le cas: a) marque employée par une personne pour distinguer, ou de façon à distinguer, les marchandises fabriquées, vendues, données à bail ou louées ou les services loués ou exécutés, par elle, des marchandises fabriquées, vendues, données à bail ou louées ou des services loués ou exécutés, par d'autres; b) marque de certification; c) signe distinctif; d) marque de commerce projetée.
"distinctive" Relativement à une marque de commerce, celle qui distingue véritablement les marchandises ou services en liaison avec lesquels elle est employée par son propriétaire, des marchandises ou services d'autres propriétaires, ou qui est adaptée à les distinguer ainsi.
|
Paragraphs 12(1)(a) and (b) and subsection 12(2) read:
|
12. (1) Subject to section 13, a trade-mark is registrable if it is not (a) a word that is primarily merely the name or the surname of an individual who is living or has died within the preceding thirty years; (b) whether depicted, written or sounded, either clearly descriptive or deceptively misdescriptive in the English or French language of the character or quality of the wares or services in association with which it is used or proposed to be used or of the conditions of or the persons employed in their production or of their place of origin;
(2) A trade-mark that is not registrable by reason of paragraph (1)(a) or (b) is registrable if it has been so used in Canada by the applicant or his predecessor in title as to have become distinctive at the date of filing an application for its registration. |
12. (1) Sous réserve de l'article 13, une marque de commerce est enregistrable sauf dans l'un ou l'autre des cas suivants_: a) elle est constituée d'un mot n'étant principalement que le nom ou le nom de famille d'un particulier vivant ou qui est décédé dans les trente années précédentes; b) qu'elle soit sous forme graphique, écrite ou sonore, elle donne une description claire ou donne une description fausse et trompeuse, en langue française ou anglaise, de la nature ou de la qualité des marchandises ou services en liaison avec lesquels elle est employée, ou à l'égard desquels on projette de l'employer, ou des conditions de leur production, ou des personnes qui les produisent, ou du lieu d'origine de ces marchandises ou services;
(2) Une marque de commerce qui n'est pas enregistrable en raison de l'alinéa (1)a) ou b) peut être enregistrée si elle a été employée au Canada par le requérant ou son prédécesseur en titre de façon à être devenue distinctive à la date de la production d'une demande d'enregistrement la concernant.
|
Paragraph 38(2)(d) of the Act reads:
|
(2) A statement of opposition may be based on any of the following grounds: ... (d) that the trade-mark is not distinctive. |
(2) Cette opposition peut être fondée sur l'un des motifs suivants: ... d) la marque de commerce n'est pas distinctive. |
ANALYSIS
Standard of review
[12] The issue here is not that Kelen J. ignored the recent jurisprudence of this Court, referred to above, in selecting the appropriate standard of review but that he misapplied the jurisprudence in concluding that the additional evidence adduced by the appellant in the Trial Division would not have materially affected the decision of the Registrar on the issue of distinctiveness. The appellant argues that some of the additional evidence would have had a material affect on that issue and here refers to evidence contained in Mr. Pignataro's affidavit. It would seem, however, that much of the evidence in this affidavit was also before the Registrar, and that some of it is in the nature of hearsay from unidentified "patients" and "physicians", rendering it of less value than if it had been based on information of individual patients or individual physicians as well as the belief therein of the deponent.
Distinctiveness
[13] While the second issue consists of several sub-issues it raises a single question, namely, whether tablets other than the appellant's 2.5 mg tablets, marketed in an appearance similar to the appellant's tablets on the relevant date, precludes registration of the claimed trade-mark on the basis that those tablets render the appellant's mark non-distinctive.
[14] It has been well stated that, "the essence of a protectable trade mark and the foundation of trade mark law...is and always has been distinctiveness. 'Distinctiveness means some quality in the trade mark which earmarks the goods so marked as distinct from those of other producers of such goods'": H.G. Fox, Canadian Law of Trade Mark, 3rd ed. (Toronto: Carswell, 1972), at 25. See also Western Clock Company v. Oris Watch Company, Ltd., [1931] Ex. C.R. 64, per Audette J. at 67; United Artists Corp. v. Pink Panther Beauty Corp., [1998] 3 F.C. 534 (C.A.), at 548.
[15] The need for a mark to be "distinctive" has been a prominent feature of Canadian trade-mark law for many years, and was apparently borrowed from United Kingdom legislation. Canadian statutory law was overhauled in 1953 pursuant to the Trade Marks Act, S.C. 1953, c. 49 following upon the filing of the Report of Trade Mark Law Revision Committee dated January 20, 1953 with the Secretary of State, a committee that was chaired by Harold G. Fox, Q.C. The report is reproduced in H. G. Fox, Canadian Law of Trade Marks, 2nd ed. (Toronto: Carswell, 1956), at 1142 et seq. It recommended a number of changes in Canadian legislation including a recasting of the "trade-mark" and "distinctive" definitions.
[16] The definition of "distinctive" now appearing in section 2 of the Act is directly traceable to Dr. Fox's report. By that definition a mark is "distinctive" either if it "actually distinguishes" the wares or services in association with which it is used by its owner from the wares or services of others or "is adapted so to distinguish them". A mark actually distinguishes by acquiring distinctiveness through use, resulting in distinctiveness in fact. A mark that is "adapted so to distinguish" is one that does not depend upon use for its distinctiveness because it is inherently distinctive. A coined or invented word mark falls into this category: Standard Coil Products (Canada) Ltd. v. Standard Radio Corp., [1971] F.C. 106 (T.D.), at 115; The Molson Companies Limited v. Carling O'Keefe Breweries of Canada Limited, [1982] 1 F.C. 175 (T.D.), at 278-79.
[17] The function of a trade-mark is of particular importance in assessing its distinctiveness. The teachings of the case law in this respect must be noted. Thus in Standard Coil, supra, at 117, Cattanach J. stated:
The function of a trade mark has been defined in numerous cases as being "to give an indication to the purchaser or possible purchaser as to the manufacture or quality of the goods, to give an indication to his eye of the trade source from which the goods came, or the trade hands through which they pass on their way to the market". (See Bowen, L.J., in Powell's Trade Mark (1894), 11 R.P.C. 195 at p. 200).
To the same effect Gwynne, J., said in Partlo v. Todd (1888), 17 S.C.R. 196 at p. 212, "The right which a manufacturer has in his trade mark is the exclusive right to use it for the purpose of indicating where and by whom or at what manufactory the article to which it is attached was manufactured".
The object of a trade mark is to identify the wares of a particular trader and if a trade mark does that then I think it is immaterial whether the same article of commerce is not being put on the market by other trades. If the mark identifies the wares of a particular trader then it will automatically distinguish the wares of that trader from all others when such traders are non-existent but subsequently become existent.
[18] The mark in dispute consists of the appearance of the tablets, a combination of colour and shape. It is this combination that must be considered. Colour alone has not been viewed as inherently distinctive: Wal-Mart Stores Inc. v. Samara Brothers Inc., 54 USPQ2d 1065 (2000) (U.S. Sup. Ct.), at 1068, where it was also made clear that "color could be protected as a trademark but only upon a showing of secondary meaning". Such was the case with respect to a soluble capsule containing a drug in pellet form one-half of the capsule being coloured and the other half transparent, and the pellets being in one of two or more colours, in Smith, Kline and French Laboratories v. Stirling-Winthrop Group Ltd., [1976] R.P.C. 511 (H.L.), a case that admittedly arose under a differently worded definition of "distinctive" in the United Kingdom legislation.
[19] The sixth ground of objection, that "the trade-mark is not distinctive", implicates the whole of "distinctive" as defined in section 2 of the Act. The parties are in agreement that to be "distinctive" in this statutory sense the applicant for registration must satisfy the tripartite test enunciated by Rouleau J. in Phillip Morris v. Imperial Tobacco Ltd. (1985), 7 C.P.R. (3d) 254 (F.C.T.D.), at 270. By objecting on this ground, the respondent assumed the burden of showing on the evidence that the tablets relied upon by that party had become known sufficiently to negate the distinctiveness of the appellant's mark: Motel 6, Inc. v. No. 6 Motel Ltd. et al., [1982] 1 F.C. 638 (T.D.), at 653. It does seem that the respondent satisfied this evidential burden by its affidavit evidence which included the affidavits of Roger Daher and Luigi Longo, paragraphs 7 of which state that, "There are numerous yellow tablets sold in Canada and used in the treatment of hypertension", some of which were round and biconvex.
[20] The question remains whether the mark was distinctive as of the date of opposition, a showing that must be made out by the appellant: Re Andres Wines and E. And J. Gallo Winery, [1976] 2 F.C. 3 (C.A.); Park Avenue Furniture Corporation v. Wickes/Simmons Bedding Ltd. (1991), 37 C.P.R. (3d) 413 (F.C.A.). Proof of actual distinguishment is not an easy burden to discharge as it depends on a showing that the mark has through use over time become identified by the public with a single source, i.e. the appellant's 2.5 mg tablets. To come within the section 2 definition, the appellant had either to establish that the mark "actually distinguishes" or that it is "adapted so to distinguish" the appellant's wares from those of others.
[21] The evidence would appear to fall short of establishing that the mark is "adapted as to distinguish" in the sense that, like an invented or coined word, the mark is inherently distinctive and, as such, by its very nature the proper subject matter for registration quite apart from use. The appellant adduced evidence before the Registrar that the appearance of the tablets is "arbitrary", that it is not dependent upon the active ingredient and that it was chosen "for marketing reasons and to be distinctive". However, there is no showing that the arbitrariness of colour and shape had the effect of distinguishing the appellant's wares from those of others. As noted above, colour alone does not normally possess that quality. Nor would it seem that the combination of colour and shape in this case had that effect in the pharmaceutical products market in Canada.
[22] Nor would the evidence appear to establish that the combination of colour and shape of the appellant's tablets had the effect of "actually distinguishing" the appellant's wares from those of others. Counsel points out that as the appellant's tablets were the only hypertensive prescription drug in the Canadian market place that contained the active ingredient "felodipine", it readily distinguishes that drug from other prescription drugs because none of the others relied upon contained that active ingredient. There was thus no possibility of some other drug being substituted for the PLENDIL 2.5 mg tablet. Indeed, "felodipine" is identified in the trade-mark application as the "wares" in association with which the trade-mark had been used in Canada since 1994. The appellant maintains from this that both the Registrar and Kelen J. erred in this respect by expanding the relevant market to all round and yellow tablets for the treatment of hypertension rather than restricting it to "felodipine" wares. Indeed, the respondent adduced some evidence of other non anti-hypertensive yellow and round tablets in the Canadian pharmaceutical market, and asserts that the relevant comparison market is all pharmaceutical pills including other yellow and round anti-hypertensive tablets. However, it is to be noted that the active ingredient as such is not claimed by the appellant as the trade-mark. The trade-mark sought to be registered is the colour and shape, or appearance, of the 2.5 mg tablets that happens to contain the active ingredient. In order to bring its application within this branch of the "distinctive" test in section 2, the appellant had, therefore, to show that through use over time the colour and shape of its tablets actually distinguishes them from tablets of other manufacturers.
[23] The appellant here relies on evidence filed by it before the Trial Division, special emphasis being placed on evidence contained in the Pignataro affidavit to the effect that the availability of other yellow tablets in Canada containing other ingredients is of no moment because "a pharmacist would not be considering any of such yellow tablets as none of them could be dispensed pursuant to prescription which directs 'felodipine'". This evidence suffers from the fact that later in the same affidavit Mr. Pignataro conceded that, "Of course, the pharmacist will not rely solely on colour and shape, but will ensure that other indications of brand (such as the information on a PLENDIL compliance pack), are what they should be for the PLENDIL brand". The significance of this concession is apparent from the cross-examination of this witness on the point (transcript, July 21, 2000, at p. 28):
Q. I take it in terms of proper pharmaceutical practice, you would never identify PLENDIL 2.5 milligram on the basis of colour and shape alone, would you?
A. I would use other factors.
Q. Right, and those other factors would include the markings; is that correct?
A. The markings, the box,
Q. The DIN?
A. The DIN, sure.
"DIN" being an acronym for the "Drug Identification Number" that is assigned by the Director pursuant to subsections C.01.014.(1) and C. 01.005.(1) of the Food and Drug Regulations, C.R.C. c. 870, for use in association with drugs sold in dosage form. Moreover, the respondent's witness Roger Daher swore in paragraph 12 of his affidavit of October 30, 1996 that, "Features such as shape and other markings such as words and numbers are integral parts of the identification without reference to which there can be no identification", testimony that was not disturbed on cross-examination.
[24] An issue identical to that which arises in this appeal came before the Trial Division in Novopharm Ltd. v. Bayer Inc., supra, with respect to the active ingredient "nifedipine" for the treatment of high blood pressure and angina and marketed under the brand name ADALAT. The drug was sold in Canada in the form of extended release tablets containing different dosages, the tablets being dusty rose in colour and round in shape with biconvex sides. Again, as in the present case, the drug was available in Canada only on prescription and was not interchangeable for drugs of another manufacturer for treating the same condition. The Registrar determined that this colour and shape rendered the mark distinctive. Evans J. disagreed. The gist of Evans J.'s reasoning on the point is found in paragraphs 78 and 79:
In this case, pink round small tablets are commonplace in the pharmaceutical market. This means that Bayer has a heavy burden to discharge in proving on the balance of probabilities that in 1992 those properties had a secondary meaning, so that ordinary consumers associated the tablets with a single source: Standard Coil, supra, at p. 123. The fact that, when Novopharm filed its objection, ADALAT were the only extended-release nifedipine tablets on the market is in itself insufficient to establish a secondary meaning: Cellular Clothing Co. v. Maxton & Murray, [1899] A.C. 326 (H.L.), 346; Canadian Shredded Wheat Co. v. Kellogg Co. of Canada Ltd., [1939] S.C.R. 329.
Fourth, it is not fatal to an application that consumers may also use means other than the mark for identifying the product with a single source. Thus, while pharmacists rely mainly on the brand name and other identifying indicia on the stock bottles and packaging containing the product, or in the inscription on the tablets, which is not part of the mark, if there is evidence that to any significant degree they also recognized the product by its appearance (excluding the markings on the tablet because they are not part of the mark), this may be sufficient to establish the distinctiveness of the mark.
The judgment was upheld on appeal in Novopharm Ltd. v. Bayer Inc. (2000), 9 C.P.R. (4th) 304 (F.C.A.), where Strayer J.A. stated that "[a]s distinctiveness is essentially an issue of fact" it was open to Evans J. "to come to his own conclusion as to whether this colour of dusty rose as applied to a pill had acquired distinctiveness". That view is in harmony with one that was expressed by Cattanach J. in Standard Coil, supra, at 115, that "it becomes a question of fact if the trade mark actually distinguishes the wares". That conclusion may be comparable with the view held in the field of patent law that a finding of "infringement" in its statutory sense "is essentially one of fact": Consolboard Inc. v. MacMillan Bloedel (Saskatchewan) Ltd. [1981] 1 S.C.R. 504, at 514.
[25] Although, unlike subsection 12(2) of the Act, the definition of "distinctive" in section 2 does not use the term "become distinctive" (secondary meaning), the use of the term "actually distinguishes" connotes the same general concept, i.e. distinctiveness that is acquired through use of a mark over a period of time, a question that turns largely on findings of fact. Findings of that nature ought not to be interfered with on appeal unless they were based on some palpable and overriding error which affected Kelen J.'s assessment of the facts: Stein v. The Ship "Kathy K", [1976] 2 S.C.R. 802, at 808; N.V. Bocimar S.A. v. Century Insurance Co. of Canada, [1987] 1 S.C.R. 1247, per Le Dain J. at 1249-50; Housen v. Nikolaisen, 2002 SCC 33, at paragraph 10. Nothing in the record indicates that Kelen J. committed an error of this kind in making his factual determinations and, particularly, in finding as a matter of fact that the mark was not distinctive.
[26] It would appear that here as well the appellant's attempt at establishing the appearance of its 2.5 tablets as a trade-mark foundered for lack of sufficient evidence that the public including pharmacists identified this appearance with the appellant's tablets and with the tablets of no other manufacturer. As already indicated, a showing that appearance has become distinctive is not easy to satisfy. In the present case, as we have seen, the evidence did not satisfy either the Registrar or Kelen J. that appearance alone has acquired distinctiveness by identifying the 2.5 mg tablets with the appellant without assistance from information found on the outer box, the name "PLENDIL" and the markings on the tablets themselves. To be sure, the yellow colour of the 2.5 mg tablets distinguished them from the appellant's 5 mg pink tablets and 10 mg brown tablets containing the same active ingredient, but was found on the evidence not to have become distinctive of the 2.5 mg tablets in the Canadian pharmaceutical market. No basis in law appears for interfering with that conclusion.
[27] For the foregoing reasons, the appeal should be dismissed with costs.
"A.J. STONE"
J.A.
"I agree
Marshall Rothstein J.A."
"I agree
B. Malone J.A."
FEDERAL COURT OF APPEAL
NAMES OF COUNSEL AND SOLICITORS OF RECORD
DOCKET: A-668-01
STYLE OF CAUSE: ASTRAZENECA AB v. NOVOPHARM LIMITED ET
AL
PLACE OF HEARING: Toronto
DATE OF HEARING: January 13, 2003
REASONS FOR JUDGMENT : STONE J.A.
CONCURRED IN BY: ROTHSTEIN J.A
MALONE J.A.
DATED: February 4, 2003
APPEARANCES:
Gunars A. Gaikis
Nancy Pei
FOR THE APPELLANT
Carol Hitchman
Paula Bremner
FOR THE RESPONDENT
SOLICITORS OF RECORD:
Gunars A. Gaikis
SMART & BIGGAR
438 University Avenue, Suite 1500
Toronto, Ontario
M5G 2K8
FOR THE APPELLANT
Carol Hitchman
HITCHMAN & SPRIGINGS
80 Richmond Street West
Toronto, Ontario
M5H 1T1
FOR THE RESPONDENT