A Debate over the Descriptive Character of the Trade-Mark
Transcription
A Debate over the Descriptive Character of the Trade-Mark
1 A DEBATE OVER THE DESCRIPTIVE CHARACTER OF THE TRADE-MARK SABBETAXOLOL By Catherine Bergeron* LEGER ROBIC RICHARD, Lawyers ROBIC, Patent & Trademark Agents Centre CDP Capital 1001 Square-Victoria – Bloc E – 8th Floor Montréal, Québec, Canada H2Z 2B7 Tel.: (514) 987-6242 - Fax (514) 845-7874 [email protected] –www.robic.ca The Trade-marks Opposition Board (the “T.M.O.B.”) recently had to decide whether the trade-mark SAB-BETAXOLOL, for pharmaceutical products, namely ophthalmic drops for the treatment of glaucoma, is clearly descriptive of the nature or quality of these wares, thus unregistrable pursuant to paragraph 12(1)(b) of the Trade-marks Act (Synthélabo v. Sabex Inc., rendered by Jennifer McKay, member of the T.M.O.B. on August 5, 2004; released January 17, 2005) To sustain this main ground of opposition, the opponent filed evidence to the effect that BETAXOLOL is an International Common Denomination for an active ingredient for anti-hypertension products which can be used by anyone and cannot be appropriated by any one person. Said evidence also put forward that should one person be entitled to obtain a monopoly on the term BETAXOLOL, such as the trade-mark SAB-BETAXOLOL, the scientific community in general and medical laboratories and pharmacies would be prohibited from using the generic word BETAXOLOL in Canada to refer to said active ingredient. In deciding that the trade-mark SAB-BETAXOLOL is not clearly descriptive, the T.M.O.B. referred to the following well established principle : As noted above, it is clear from the evidence filed that betaxolol is a descriptive or generic term referring to a pharmaceutical product for the treatment of hypertension. The applicant’s mark, however, is not simply BETAXOLOL but rather SAB-BETAXOLOL. As noted above, it is well established that a mark can be registered with a clearly descriptive component or components as long as there is sufficient registrable © LEGER ROBIC RICHARD / ROBIC, 2005. * Lawyer with the law firm LEGER ROBIC RICHARD, g.p. and of the patent and trademark agency firm ROBIC, g.p. Publication 293.021. 2 matter apart from the clearly descriptive component components to render the mark in its entirety registrable. (p.7) In the present case, a disclaimer of the right to the exclusive use of the word betaxolol was not required, even if it would normally be considered unregistrable, since it is a component of hyphenated words. No evidence has been filed which would tend to show that the SAB component, which appears to have been coined from an abbreviation of the applicant’s name, is devoid of distinctive character. Thus, the T.M.O.B. concluded that, as a whole, the trade-mark SABBETAXOLOL is not clearly descriptive and does not deprive third parties of the right to use the word betaxolol to legitimately describe pharmaceutical products containing that active ingredient. The opponent also submitted that if the applicant’s product does not contain betaxolol, then the trade-mark SAB-BETAXOLOL is deceptively misdescriptive. Given that the applicant amended its statement of wares during the proceeding to read “pharmaceutical products, namely ophthalmic drops for the treatment of glaucoma and having betaxolol as an ingredient”, the T.M.O.B. did not have to address said issue. It nonetheless concluded that, even if the application had not been amended to specify that the wares contain betaxolol, it would not have considered the trademark SAB-BETAXOLOL to be deceptively misdescriptive of the applied for wares; a presumption of fair use of a trade-mark should apply to a situation such as this, particularly so where the opponent has failed to adduce evidence which would point to the applicant’s use or intention to use its trade-mark in a deceptive manner. (A. Lassonde & Fils Inc. v. General Foods, Inc. (1985), 6 C.P.R. (3d) 72, T.M.O.B.) As for the three other grounds of opposition relied upon by the opponent, they were all rejected by the T.M.O.B. for the following reasons : 1) the opponent failed to file any evidence which would lead to the conclusion that the applicant could not have been satisfied of its entitlement to use of the mark SAB-BETAXOLOL; 2) the trade-mark SAB-BETAXOLOL cannot be said to be the name of the wares in any language; and 3) given that the main ground of opposition has been rejected (i.e. descriptiveness), the ground of opposition based on the opponent’s allegation that the applicant’s trademark is not distinctive is also rejected. 3 ROBIC, un groupe d'avocats et d'agents de brevets et de marques de commerce voué depuis 1892 à la protection et à la valorisation de la propriété intellectuelle dans tous les domaines: brevets, dessins industriels et modèles utilitaires; marques de commerce, marques de certification et appellations d'origine; droits d'auteur, propriété littéraire et artistique, droits voisins et de l'artiste interprète; informatique, logiciels et circuits intégrés; biotechnologies, pharmaceutiques et obtentions végétales; secrets de commerce, know-how et concurrence; licences, franchises et transferts de technologies; commerce électronique, distribution et droit des affaires; marquage, publicité et étiquetage; poursuite, litige et arbitrage; vérification diligente et audit; et ce, tant au Canada qu'ailleurs dans le monde. La maîtrise des intangibles. ROBIC, a group of lawyers and of patent and trademark agents dedicated since 1892 to the protection and the valorization of all fields of intellectual property: patents, industrial designs and utility patents; trademarks, certification marks and indications of origin; copyright and entertainment law, artists and performers, neighbouring rights; computer, software and integrated circuits; biotechnologies, pharmaceuticals and plant breeders; trade secrets, know-how, competition and anti-trust; licensing, franchising and technology transfers; e-commerce, distribution and business law; marketing, publicity and labelling; prosecution litigation and arbitration; due diligence; in Canada and throughout the world. Ideas live here. COPYRIGHTER IDEAS LIVE HERE IL A TOUT DE MÊME FALLU L'INVENTER! LA MAÎTRISE DES INTANGIBLES LEGER ROBIC RICHARD NOS FENÊTRES GRANDES OUVERTES SUR LE MONDE DES AFFAIRES PATENTER R ROBIC ROBIC + DROIT +AFFAIRES +SCIENCES +ARTS ROBIC ++++ ROBIC +LAW +BUSINESS +SCIENCE +ART THE TRADEMARKER GROUP TRADEMARKER VOS IDÉES À LA PORTÉE DU MONDE , DES AFFAIRES À LA GRANDEUR DE LA PLANÈTE YOUR BUSINESS IS THE WORLD OF IDEAS; OUR BUSINESS BRINGS YOUR IDEAS TO THE WORLD