The recent Federal Court of Appeal decision in Thorkelson v Pharmawest Pharmacy Ltd. overturned an earlier Federal Court decision which ordered the expungement of the trademarks CANADADRUGS.COM and CANADA DRUGS. On appeal, the court found that the evidence was not capable of establishing that the trademarks in issue were clearly descriptive or deceptively misdescriptive of the character or quality of the services provided by the online phramacy business controlled by the Appellant.
The Federal Court judge who ordered the expungement was found to have decided the case on the basis of his own interpretation of the meaning of the words “Canada” and “drugs” when used in association with an online pharmacy business, as well as the inferences he drew, without any evidence, about what consumers would or would not understand.Â The Appeal Court in setting aside the expungement concluded that the phrase “Canada Drugs” did not have any known meaning at the time of the earlier decision and accordingly, was not “clearly descriptive” or “deceptively misdescriptive” under Section 12 (1) (b) of the Trade-marks Act. To come within the prohibition under section 12 (1) (b), the trademark must initially be found to be descriptive and then be found to mislead the public as to the character of the quality of the wares. The test applied is whether the general public in Canada would be misled concerning the product with which the trademark is associated.