A Debate over the Descriptive Character of the Trade-Mark

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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.
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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.
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