Written By Dominique T. Hussey, L.E. Trent Horne and Jeilah Y. Chan
Trademark protection for the shape and colour of pharmaceutical products remains elusive. Even if the appearance of a tablet or inhaler is unique, a trademark registration will be rejected without evidence that physicians, pharmacists and patients relate the trademark to a single source and use the mark to make prescribing, dispensing and purchasing choices.
Boehringer Ingelheim manufactures an asthma medication called SPIRIVA®, administered by an inhaler device with a unique appearance. This device is gray with a green release button, and is oval in shape.In 2006, Boehringer Ingelheim filed trademark applications for the get-up of its inhaler. The applications were opposed by the Canadian Generic Pharmaceutical Association. The primary issue was whether the appearance of the inhaler, without other indicia, was distinctive of Boehringer Ingelheim.
For a trademark to be distinctive, consumers must associate the trademark with a particular source. In the context of shape and colour trademarks for pharmaceutical products, a distinctive trademark requires that physicians, pharmacists and patients relate the trademark to a single source and, as a result, use the mark to make prescribing, dispensing and purchasing choices.
On the evidence, the Opposition Board was satisfied that the colour and shape combination of the inhaler was unique. But uniqueness did not amount to distinctiveness as the get-up itself was not associated with a single source.
When prescribing asthma medication, the Board found that physicians wrote out the brand name of the medication, but never its colour or shape. The appearance of the inhaler was not a factor in the prescribing decision; rather the efficacy and safety of the medication governed.
As for pharmacists, it was not enough to establish that pharmacists knew what the product looks like. Pharmacists must connect the product's appearance (without other markings) to a single source. The Board was not satisfied that the shape and colour of the inhaler alone, without other markings, identified either the product or its source to a significant degree.
Finally, patients were not concerned with the source of their inhalers. They were mostly concerned with the purpose of the inhalers, how well they work, dosage and side effects. To the extent patients attributed any significance to appearance, it was associated with the medication and its therapeutic effect, not the source of the product.
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