GLAXO GROUP LIMITED Appellant v. APOTEX INC., APOTEX FERMENTATION INC.,, 2010 FCA 313
Opinion
Federal Court of Appeal Cour d'appel fédérale Federal Court of Appeal Cour d'appel fédérale Date: 20101119 Docket: A-111-10 Citation: 2010 FCA 313 CORAM: NADON J.A. SHARLOW J.A. LAYDEN-STEVENSON J.A. BETWEEN: GLAXO GROUP LIMITED Appellant and APOTEX INC., APOTEX FERMENTATION INC., CANGENE - CORPORATION, NOVOPHARM LIMITED, PHARMASCIENCE INC., RANBAXY PHARMACEUTICALS CANADA INC., RATIOPHARM INC., SANDOZ CANADA INC., TARO PHARMACEUTICALS Respondents and REGISTRAR OF TRADE-MARKS Respondent Heard at Ottawa, Ontario , on November 17, 2010. Judgment delivered at Ottawa, Ontario , on November 19, 2010.
REASONS FOR JUDGMENT BY: LAYDEN-STEVENSON J.A. CONCURRED IN BY: NADON J.A. SHARLOW J.A. Date: 20101119 Docket: A-111-10
Citation: 2010 FCA 313 CORAM: NADON J.A. SHARLOW J.A. LAYDEN-STEVENSON J.A.
BETWEEN: GLAXO GROUP LIMITED Appellant and APOTEX INC., APOTEX FERMENTATION INC., CANGENE - CORPORATION, NOVOPHARM LIMITED, PHARMASCIENCE INC., RANBAXY PHARMACEUTICALS CANADA INC., RATIOPHARM INC., SANDOZ CANADA INC., TARO PHARMACEUTICALS Respondents and REGISTRAR OF TRADE-MARKS Respondent REASONS FOR JUDGMENT LAYDEN-STEVENSON J.A. [ 1 ] Glaxo Group Limited (Glaxo) appeals from the judgment of Justice Barnes of the Federal Court (the judge) in which he struck Canadian Trade-mark Registration No. 687,313 (the GSK Mark) from the Register of Trade-marks.
The reasons for judgment are reported as 2010 FC 291 , 81 C.P.R. (4th) 459 . [ 2 ] The GSK Mark concerned a two-tone purple colour combination applied to the surface of disk-shaped inhalers known as ADVAIR DISKUS. The judge concluded that the consumers of the inhalers physicians, pharmacists and patients did not associate the colour and shape with one source.
More specifically, he found that patients generally associated the GSK Mark with a therapeutic use, not a source, and that no physician or pharmacist associated the GSK Mark and a single source. [ 3 ] Glaxo argues that the judge erred by failing to hold the respondents to the proper burden of proof, by selecting the wrong test for distinctiveness and by improperly applying the test to the facts.
Despite the articulate and capable submissions of Glaxos counsel, I am of the view the appeal must be dismissed. [ 4 ] It is not disputed that the judge turned his mind to the presumption of validity and acknowledged that the respondents bore the burden of showing otherwise on a balance of probabilities (reasons at para. 5). The judge concluded that the respondents met their burden and established that the GSK Mark is not distinctive (reasons at para. 43).
While Glaxo is correct that the judge expressed doubt about the strength of its evidence, he did so in the context of a comparison between Glaxos evidence and that of the respondents. [ 5 ] Moreover, in Emall.ca Inc . ( c.o.b. Cheaptickets.ca ) v. Cheap Tickets and Travel Inc ., 2008 FCA 50 (CanLII) , [2009] 2 F.C.R. 43 , 68 C.P.R. (4th) 381 at para. 12 (C.A.) , this Court held that the presumption of validity simply means that an application for expungement will succeed only if an examination of all of the evidence presented establishes that the trade-mark was not registrable at the relevant time.
Glaxo does not suggest that the judge did not examine all of the evidence before arriving at his determination. Consequently, its
argument cannot succeed. [ 6 ] I am also not persuaded that the judge applied the wrong test for distinctiveness. A trade-mark is actually distinctive if the evidence demonstrates that it distinguishes the product from others in the marketplace: Astrazeneca AB v . Novopharm Ltd ., 2003 FCA 57 , 24 C.P.R. (4th) 326 at para.16. A critical factor is the message given to the public: Philip Morris Inc. v. Imperial Tobacco Ltd . (1985), 7 C.P.R. (3d) 254 (F.C.T.D.) , affd (1987), 17 C.P.R. (3d) 289 (F.C.A.) .
Distinctiveness is to be determined from the point of view of an everyday user of the wares in question and the trade-mark must be considered in its entirety and as a matter of first impression: Molson Breweries v. John Labatt Ltd ., 2000 CanLII 17105 (FCA) , [2000] 3 F.C. 145 , 5 C.P.R. (4th) 180 at para. 83 (F.C.A.) . [ 7 ] Glaxo characterizes the judges reference to the use consumers make of the GSK Mark as a flawed application of the distinctiveness test. I disagree with that
interpretation of the judges reasons. The judge neither devised nor applied a new test. Glaxos suggestion to the contrary constitutes a misinterpretation of the manner in which the judge utilized the word use. The judges statement must be read in the context in which it was written, that is, examining the process of connecting a product to its source. To be distinctive, the relevant consumers must distinguish the sources product from the wares of others, based on the sources trade-mark.
Taken in context, the judges comments demonstrate that it is the act of relating a trade-mark to its source that establishes the requisite consumer use. If one substitutes the word associate for the word use which is equally consistent with the judges reasoning Glaxos argument evaporates. Accordingly, this argument fails. [ 8 ] The judges application of the test to the facts turns on his appreciation and assessment of the evidence and his resulting factual determinations. The judges reasons contain a detailed and comprehensive review and analysis of the evidence.
Glaxo has not demonstrated any palpable and overriding error in this respect. Rather, it effectively seeks to reargue its case without pointing to any specific instance where the judges appreciation or assessment of the evidence is palpably wrong. Absent palpable and overriding error, which has not been established, this argument must also fail. [ 9 ] For these reasons, I would dismiss the appeal with costs. "Carolyn Layden-Stevenson" J.A. I agree M. Nadon J.A. I agree K.Sharlow J.A. FEDERAL COURT OF APPEAL
NAMES OF COUNSEL AND SOLICITORS OF RECORD DOCKET: A-111-10 APPEAL FROM A JUDGMENT OF THE FEDERAL COURT DATED March 12, 2010. NO. T-2240-07 STYLE OF CAUSE: PLACE OF HEARING: Ottawa, Ontario DATE OF HEARING: November 17, 2010 REASONS FOR JUDGMENT BY: LAYDEN-STEVENSON J.A. CONCURRED IN BY: NADON J.A. SHARLOW J.A. DATED: November 19, 2010 APPEARANCES : Mr. Robert A. MacDonald Mr. Grant W. Lynds FOR THE APPELLANT Ms. Carol Hitchman Mr. Christopher Tan FOR THE RESPONDENTS SOLICITORS OF RECORD : Gowling Lafleur Henderson LLP Ottawa , Ontario FOR THE APPELLANT
Gardiner Robert LLP Toronto, Ontario FOR THE RESPONDENTS
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