TRADE MARKS |
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Apotex Inc. v. Monsanto Canada, Inc.
T-257-98
Rouleau J.
13/4/00
12 pp.
Appeal from Registrar's decision rejecting appellant's opposition to Monsanto's application for registration of trade mark consisting of colour white applied to whole of visible surface of hexagonal tablet containing 200 mcg of misoprostol as active ingredient (used to protect gastro-intestinal system of arthritic patients against damage caused by drugs used to treat arthritis)--Appeal allowed--Onus on applicant for mark to show its compliance with Act, s. 30(h) requirement--Drawing submitted must be meaningful representation of applicant's mark in context of written description appearing in application and must enable determination of three-dimension limits of tablet to which colour applied--In present case, respondent's trade mark application confusing and ambiguous as result of presence of dotted lines, which have been disclaimed, and solid lines which have not been disclaimed, in representations of tablets--Although application disclaimed hexagonal shape of tablet, Registrar neither taking disclaimer into account, nor indicating which part of shape of tablet was claimed as trade mark and which part disclaimed--Impugned decision appeared to assume trade mark was for colour and shape of tablet, even though Monsanto's application stated not claiming rights in hexagonal tablets--Subsequently, however, in reply to notice of appeal and evidence filed, respondent did rely on hexagonal shape of tablet and colour as being trade mark--Considerable doubt whether Monsanto's trade mark application complying with requirements of Act--Fundamental issue whether trade mark in question distinctive--Not sufficient for respondent to establish that Canadians know that Monsanto's misoprostol sold in white tablet or white and hexagonal tablet; must show physicians, pharmacists and patients can and do use proposed trade mark in choosing whether to prescribe, dispense or request Monsanto's misoprostol product--Court unable to conclude colour and shape of Monsanto's 200 mcg misoprostol tablet distinctive of product--Evidence clear that, both prior to and at date of opposition, manufacturers had distributed and sold hundreds of white pharmaceutical tablets, several of which have similar use--Also evidence other white hexagonal tablets on market--Respondent has not adduced any evidence clearly establishing, on balance of probabilities, that significant number of consumers associate appearance of its product with single source--In conclusion, Registrar failed to apply established principles of law with respect to issue of distinctiveness--Appears to have had little regard for legal tenets established by case law--Furthermore, findings of fact perverse, given that simply no evidence to substantiate finding that respondent's product has obtained recognition or reputation in mind of consuming public as result of its appearance or get-up--Trade-marks Act, R.S.C., 1985, c. T-13, ss. 2 "distinctive", 30(h).