In reasons issued late last year, the Federal Court of Appeal has upheld a decision to expunge a trademark registration obtained by Glaxo Group Limited (“Glaxo”) for two-tones of the colour purple as applied to the visible surface of an asthma inhaler. The decision raises interesting questions both about primary and secondary marks, and about the amount of evidence necessary to support a finding that a mark is distinctive.

By way of background, Glaxo registered its mark (depicted right, below) in May of 2007. A collection of generic drug manufacturers brought a Federal Court application to expunge the mark about 6 months later, alleging that the mark was not distinctive.

In its decision, the Federal Court concluded that for the mark to be distinctive the constituency of consumers for the inhaler (including physicians, pharmacists and patients) must relate the trade-mark to a single source, and thereby use the mark to make their prescribing, dispensing and purchasing choices. In market sectors where purchasing decisions are made by or on the advice of professionals, commercial distinctiveness of such marks will be inherently more difficult to establish: such persons will make purchasing or prescription decisions based on the specific properties of the product, and not on the packaging or marks associated with those products.

However, the Court went further to suggest that the distinctiveness of a mark based on colour and shape may also be diminished by its association with a registered trade-name, noting that “where a pharmaceutical product is always used in direct association with a well-known word-mark, the risk of customer confusion will be diminished, if not entirely absent, where a look-alike product is presented for purchase with a different brand name.”

In this case, because the Glaxo inhaler was always labelled with other indicators of source, the Court concluded that Glaxo’s evidence was not sufficient to support its claims the mark was distinctive – largely because it had adduced only a small amount of evidence regarding the extent to which the mark, independent of other factors, served to lead the relevant constituency to decisions about prescribing, dispensing and purchasing.  The Court concluded that while colour and shape may help patients identify what is inside the device, they do not necessarily serve as a signifier of source – and in any event, do not play this function at the point of sale.

This decision was upheld at the Federal Court of Appeal: there, in a brief decision the Court stated that it could not identify any palpable or overriding errors in the underlying decision to merit disturbing the lower court’s findings.

This case provides a stark reminder of the challenges associated with adducing evidence to support the use and distinctiveness of marks that are constantly used in tandem with other indicators of source – whether other marks, trade names or the like.  In such cases, it may prove difficult to establish the extent to such mark serves to act as an indicator of source, separate and apart from those other indicators – and this will be particularly true where the mark in question may be viewed as a secondary indicator (whether for reasons of design, the means by which the target constituency selects products, or otherwise).

Glaxo has now sought leave to appeal to the Supreme Court of Canada. We’ll keep you posted on the progress of the case.