Digests

Pierre Fabre Médicament v. SmithKline Beecham Corp.

T-2093-98

2004 FC 811, Tremblay-Lamer J.

7/6/04

17 pp.

Appeal from decision by Registrar of Trade-marks dismissing applicant's application for registration (application No. 743101), filed on December 9, 1993 for trade-mark "Ixel" in association with anti-depressants--On November 22, 1994 respondent filed opposition declaration based on s. 12(1)(d) of Trade-marks Act--On September 11, 1998 Registrar dismissed applicant's registration on account of risk of confusion between mark "Ixel" and respondent's registered trade-mark "Paxil", but decision reversed on appeal on ground no reasonable risk of confusion between two marks--Appeal brought by respondent from that decision allowed on ground trial Judge and Registrar erred as to applicable test for determining risk of confusion--In case at bar, applicable test whether more likely than not that, as first impression in mind of average Anglophone consumer with vague memory (parties agreed no risk of confusion for average Francophone consumer) there was tangible risk of confusion between marks "Ixel" and "Paxil"--According to S.C.C., in case of prescri-bed medication average consumer consists of physician prescribing medication, pharmacist (who is used to prescriptions) and patient (who first consulted his attending physician)--Factors to be considered in analysing risk of confusion set out in s. 6(5) of Act--Applicant must establish no reasonable risk of confusion between trade-marks in question at date of Registrar's decision--(1) "Ixel" and "Paxil" unique words which have no connection with everyday language--Marks both possess inherent distinctiveness--(2) S. 50 of Act provides use of trade-mark by holder of licence can only be regarded as use of mark by owner if latter exercises some control, direct or indirect, over characteristics and quality of products with which mark used--Before Registrar, no admissible evidence filed that mark "Paxil" used in Canada by respondent--Latter did not show exercised effective control required by Act over product's quality and nature and did not correct this deficiency in appeal at bar--Accordingly, fact "Paxil" most widely sold anti-depressant in Canada cannot operate in respondent's favour--(3) "Ixel" and "Paxil" relate to identical wares--Fact two marks used in association with two anti-depressant medications increases risk of confusion--Factor favours respondent--(4) Although nature of business identical, fact remains that in field of prescription medications risk of confusion lessened since nature of transaction such that products will be delivered by meticulous professionals accustomed to making distinctions between names of various products--This factor favours applicant--(5) Degree of similarity to be analysed in terms of appearance, sound and ideas--As regards ideas suggested, no risk of confusion since marks distinctive and suggest no idea--Since marks have same visual appearance in English and French, this question (of appearance) settled (parties acknowledged no risk of confusion for average Francophone consumer)--As regards phonetics, since question one of general impression, comparison should be made in general terms: accordingly, Court should treat expert opinions with caution since their function precisely that of dissecting words--Expert opinions of limited value as do not deal with all factors which Court must take into account in assessing risk of confusion--Thus, none of experts considered impact of first impression or consumer's inaccurate memory on risk of confusion, since these are psychological and not linguistic factors--Value of expert opinions lay simply in indicating where emphasis should be placed, and way in which words should be pronounced--Phonetically, risk of confusion not likely for average consumer--More likely than not use of two marks in same region and in same way will not entail tangible risk of confusion--Opposition dismissed--Trade-marks Act, R.S.C., 1985, c. T-13, ss. 6(5), 12(1)(d) (as am. By S.C. 1990, c. 20, s. 81).