Pfizer Products Inc. v. The Canadian Generic Pharmaceutical Association, 2015 FC 493 (Russell, J.)
April 20, 2015
Andrew Shaughnessy, Nicole Mantini, and Laura Redekop for the Applicant
Andrew Brodkin, Richard Naiberg, and Michel Shneer for the Respondent
At the heart of this appeal was the distinctiveness of Pfizer’s trade-mark application for the design and of its “little blue pill”, Viagra sildenafil.
The case is a section 56 appeal arising out of a decision of the Trade-Marks Opposition Board (“TMOB”) to refuse an application for registration of Pfizer’s trade-mark, Viagra Tablet Design, on the basis that the mark was not distinctive in accordance with s. 38(2)(d) of the Act, on a balance of probabilities, in relation to patients and physicians and pharmacists.
The material date of determination of the mark’s distinctiveness was acknowledged by both parties to be March 6, 2006, the date upon which the Respondent filed its Notice of Opposition with the TMOB.
At the crux of the distinctiveness dispute in this case were two questions of principle:
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Whether the consumer group in whose minds the get-up and trade-mark would be required to find association with a single source manufacture was conjunctive (doctors, pharmacists, and patients) or disjunctive (doctors, pharmacists, or patients); and
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Whether Pfizer needed to demonstrate that relevant consumer group relied upon the appearance of the mark and its source connection when they prescribe, disburse, or request the pharmaceutical, and to what extent.
After thoroughly reviewing the case law, the Court held that the relevant consumer group includes doctors, pharmacists, and patients, and while the Applicant is required to establish distinctiveness “to any significant degree” among the consumers, there was no burden to establish distinctiveness among each group of consumers independently of one another.
Ultimately, the Court held that the appeal failed on the issue of distinctiveness, finding in part that the TMOB erred in law by “failing to consider whether patient identification of appearance with source occurred “to any significant degree”, and further holding that the evidence adduced on appeal (some of which was new, and had not been before the TMOB) was insufficient to establish distinctiveness as of the material date.
The appeal was dismissed with costs awarded in favour of the Respondent.
By: Bria M. Brown, Carscallen LLP