T-565-84
Smith Kline & French Canada Ltd. (Appellant)
v.
Registrar of Trade Marks (Respondent)
INDEXED AS: SMITH KLINE & FRENCH CANADA LTD. V.
CANADA (REGISTRAR OF TRADE MARKS)
Trial Division, Strayer J.—Ottawa, March 4 and
12, 1987.
Trade marks — Registration — Appeal from Registrar's
refusal to register "distinguishing guise" consisting of
coloured coating applied to appellant's tablet "Tagamet",
brand name for cimetidine — Appellant claiming exclusive use
of guise in specific shape, colour and coating — Whether such
characteristics permissible elements of distinguishing guise —
Distinguishing guise defined as "shaping of wares or their
containers" or "mode of wrapping or packaging wares" —
Absence of authorities as to what constitutes "distinguishing
guise" within meaning of Act — "Wrapping" and "packag-
ing" to be given ordinary meaning, i.e. separate covering or
container not part of wares themselves — Coating adhering to
pill and inseparable therefrom — Not constituting "mode of
wrapping or packaging" — Tablets distinguished from capsule
containing pellets — Appeal dismissed — Trade Marks Act,
R.S.C. 1970, c. T-10, ss. 2, 36(1), 56.
CASE JUDICIALLY CONSIDERED
DISTINGUISHED:
Smith Kline & French Inter-American Corporation v.
H.T. Chiefetz et al. (1964), 46 C.P.R. 86 (Que. S.C.).
COUNSEL:
R. G. McClenahan, Q.C. and Robert A. Mac-
Donald for appellant.
D. Aylen, Q.C. and R. Kelly for respondent.
SOLICITORS:
Gowling & Henderson, Ottawa, for appellant.
Deputy Attorney General of Canada for
respondent.
The following are the reasons for judgment
rendered in English by
STRAYER J.: This is an appeal under section 56
of the Trade Marks Act [R.S.C. 1970, c. T-101
from a decision of the Registrar of Trade Marks
refusing, pursuant to subsection 36(1) of that Act,
the registration of a "distinguishing guise". This
appeal was heard together with the appeal in
T-567-84 [[1987] 2 F.C. 633] which was from a
decision of the Registrar of Trade Marks refusing
registration of a trade mark in respect of the same
product of the appellant.
The appellant filed application number 462,697
on December 10, 1980 seeking to register a distin
guishing guise. This guise was described in the
application, after several amendments in response
to issues raised by the Examiner, as follows:
The distinguishing guise consists of a light green coloured
coating applied to the outside of a circular biconvex tablet as
shown in the attached drawing lined for the colour green. A
specimen of the tablet, showing the features constituting the
distinguishing guise is affixed to this application. The applicant
makes no claim to the shape of the tablet per se or the coating
per se used in association with "pharmaceutical preparations
and substances in tablet form, containing cimetidine, for the
treatment and prophylaxis of gastrointestinal disorders", but
claims the right to the exclusive use of the distinguishing guise
in the specific shape, colour and coating, limited to the wares
described earlier in this paragraph.
In a decision dated January 24, 1984 the Registrar
held that a guise as so described "does not consti
tute a distinguishing guise as defined in Section 2
of the Trade Marks Act" and he refused the
application. Unfortunately, he gives no reasons for
his refusal. One can only deduce these from vari
ous concerns raised by the Examiner which he
describes in his decision. The principal concerns of
the Examiner appeared to have been:
(1) That colour as applied as a coating for a pill
is not "a mode of wrapping or packaging wares"
as referred to in the definition of "distinguishing
guise" in section 2 of the Trade Marks Act;
(2) That the applicant was relying on a combi
nation of characteristics to establish the distin
guishing guise, whereas the definition of "distin-
guishing guise" in section 2 requires it to be
either "a shaping of wares or their containers"
or "a mode of wrapping or packaging", but not
both; and
(3) That even if it were a "distinguishing guise"
as defined in the Act, it would not be register-
able because of paragraph 13(1)(b) of the Trade
Marks Act which allows registration of such a
guise only if its exclusive use "is not likely
unreasonably to limit the development of any art
or industry".
It was agreed by counsel that item (3) was not in
issue before me and I shall therefore not deal with
it.
Pertinent evidence before me included affidavits
which demonstrated that the tablet in question is
"Tagamet", the appellant's brand name for cimeti-
dine. Its tablets, once compressed, are film-coated
with a thin green film. The film contains no essen
tial ingredient of the tablet but is used to distin
guish the product from other products and "to
provide a wrapper or container for the medicament
in an appropriate dosage form". There was also
evidence before the Registrar as to the volume of
sales of "Tagamet" for six months in 1977 and the
years 1978-1980. According to this affidavit
during this three and one-half year period the sales
in Canada totalled some 70 million dollars. Other
affidavits from doctors and pharmacists were
introduced before the Registrar to support a claim
of distinctiveness. Given the disposition which I
intend to make of this application, I need consider
these affidavits no further.
I have concluded that I should not disturb the
finding of the Registrar to the effect that the
subject-matter of this application cannot come
within the definition of "distinguishing guise" in
section 2 of the Trade Marks Act. It will be noted
that in its final form, the description of the guise
whose registration is sought states that the appli
cant claims its exclusive use
... in the specific shape, colour and coating, limited to the
wares described earlier ....
that is, all three elements form part of the claimed
guise.
The definition of "distinguishing guise" in sec
tion 2 of the Act is as follows:
2....
•
"distinguishing guise" means
(a) a shaping of wares or their containers, or
(b) a mode of wrapping or packaging wares
the appearance of which is used by a person for the purpose of
distinguishing or so as to distinguish wares or services manufac
tured, sold, leased, hired or performed by him from those
manufactured, sold, leased, hired or performed by others;
While I am not convinced that an applicant should
be precluded from claiming as part of his monopo
ly elements described in both (a) and (b) of the
definition, I need not decide that matter here. For
this application to succeed, the applicant must
establish that each of the elements of the monopo
ly which he seeks are permissible elements of a
"distinguishing guise". I am unable to conclude
that the green film adhered to the outside of the
pill, which is inseparable from the pill and is
consumed with the pill, can be regarded as a
"mode of wrapping or packaging" of wares as
would be required in part (b) of the definition.
There appears to be a dearth of authority on this
point but in examining numerous dictionary defini
tions of "wrapping" and "packaging" the view is
reinforced that these words ought to be given the
meaning attached to them in ordinary usage. That
is, they must be taken to refer to the use of a
separate covering or container which is not part of
the "wares" itself. The definition of "package" in
section 2, while not directly relevant, and while not
exhaustive, is at least consistent with this interpre
tation of "packaging". I have considered the cases
cited by the appellant but none of them appear to
be determinative of the matter. Many of them
involve passing off actions which are not directly
relevant to the question of what is a registrable
"distinguishing guise" as defined in the Act. Many
of them relate to trade marks and thus again are
not directly relevant to what is registrable as a
"distinguishing guise". Counsel did refer me to one
case, Smith Kline & French Inter-American Cor
poration v. H.T. Chiefetz et al. (1964), 46 C.P.R.
86 (Que. S.C.) where at page 90 St-Germain J.
issued an injunction against the manufacture, sale,
etc. of a pharmaceutical product, described there-
in, which apparently would be regarded as infring
ing a registered "distinguishing guise". The prod
uct as described therein involved capsules which,
in one case were brown on one end and transparent
on the other, and in the other case had one green
end, the other end being transparent. I have no
further information about the registration of that
"distinguishing guise". It is notable, however, that
what was involved there was a capsule in which
were placed multi-coloured pellets. I need not
decide whether that "distinguishing guise" was
properly registered but it may well be that a
capsule, which is a covering separate from its
contents, can be viewed as a "mode of wrapping or
packaging wares" in the pharmaceutical context.
That is not the kind of product in issue in the
present case.
I am therefore dismissing the appeal. I would
only add that I do not find the form of the
Registrar's decision to be very satisfactory. Rather
than a lengthy recitation of the history of the
application, it would be much more fair to the
parties and useful to this Court on appeal if the
reasons for the Registrar's own decision were set
out clearly.
You are being directed to the most recent version of the statute which may not be the version considered at the time of the judgment.