Distinctiveness of A Colour and Shape Trade-mark
By Catherine M. Dennis Brooks
The Federal Court of Appeal recently considered the issue of the distinctiveness of a trade-mark consisting of a two-tone colour combination applied to the outside of a disk-shaped inhaler. The trade-mark depicted below consisted of the colours dark purple and light purple applied to the surface of an inhaler used to administer pharmaceuticals. The Federal Court of Appeal upheld the Federal Court’s decision to expunge the registration.
In 2004 Glaxo Group Limited (“Glaxo”) filed a trade-mark application for the mark and it proceeded to registration in 2007. The registration was challenged by a collection of generic pharmaceutical companies on the basis that it lacked distinctiveness. The Federal Court expunged the registration, finding that consumers of the inhaler did not associate its colour and shape with Glaxo as the sole source of the product, but rather associated it with therapeutic use.
Glaxo appealed this decision but was unsuccessful, with the Federal Court of Appeal rejecting all of its grounds for appeal.
The Federal Court of Appeal confirmed that the test to determine the distinctiveness of a trade-mark is whether it distinguishes the product from others in the marketplace and that a critical factor is the message given to the public. Distinctiveness is to be determined from the point of view of an everyday user of the product. The Court of Appeal held that in order for a mark to be distinctive, “the relevant consumers must distinguish the source’s product from the wares of others based on the source’s trade-mark”. In support of its claim regarding the distinctiveness of its mark, Glaxo pointed to the millions of dollars in advertising it spent to promote the product, the unique appearance of the product, and affidavits from patients, doctors, and pharmacists regarding the use of the appearance of the product to distinguish the Glaxo inhaler from others. The Court of Appeal, in reviewing the case, noted that the lower court assessed the evidence, including evidence that the trade-mark ADVAIR (the trade-mark used on the packaging) was the prominent mark with which consumers, doctors, and pharmacists associated the source of the product, and considered that there was no indication on the product packaging or on the inhaler itself that Glaxo was the source of the product, as well as the fact that the colour and shape of the inhaler was not featured prominently in its advertising. The Court of Appeal concluded and that the lower court properly applied the test for distinctiveness and found that the registered mark was not distinctive. Finding no error in the lower court’s judgment, the Court of Appeal dismissed the appeal.
Glaxo has sought leave to appeal to the Supreme Court of Canada.
Though the matter is still under appeal, the Federal Court’s decision confirms that the ambit of protection given to colour and shape trade-marks in Canada is quite limited. The owner of a mark consisting of colour and shape should ensure that its packaging, advertising and marketing materials feature the colour and shape and associate this colour and shape with the brand name and the source of the product. Such precautions, as well as the use of proper trade-mark ownership notices on products and packaging, should help to make consumers aware of the source of the product and would be useful evidence when trying to demonstrate distinctiveness in relation to colour and shape trade-marks.