A recent decision of the Federal Court refused to protect colours applied to product packaging in the context of a claim for passing off on the basis that the use of colour was primarily functional.
The Facts
The action involved claims of patent infringement, passing off and copyright infringement between two competing businesses. Both parties sold pill dispensing products primarily used in nursing home facilities. The products consisted of a bottom tray covered by a clear plastic cover. This note will be limited to the passing off claim.
The claim for passing off related to an alleged trade mark referred to as the Container Sealing Sheet Design that had been used in association with a container sealing sheet for a pill dispenser to sort and segregate pills, tablets or capsules. The trade mark consisted of colour applied to the surface of a sealing sheet as shown below
On the lower portion of seven rows, the colour pink was applied to the first column (from the left), the colour green was applied to the second column, the colour yellow was applied to the third column, and the colour white was applied to the fourth column.
The defendants admitted that that it printed and distributed a colour scheme that was virtually identical to the plaintiff’s colour scheme when it started to carry on business but said that it made only a limited run of labels bearing the original colour scheme and that they were distributed solely for testing purposes. The defendants’ current colour scheme was not in issue.
The plaintiff claimed that the defendants had “wrongfully directed public attention to their business, services and wares in such a way as to cause or be likely to cause confusion in Canada at the time they commenced so to direct attention between their businesses, wares and services and those of the plaintiff”, contrary to paragraph 7(b) of the Trademarks Act. More specifically, it was claimed that: (1) by virtue of its extensive advertising and sales, the Container Sealing Sheet Design Mark had become well and favourably known to pharmacists, nurses and nursing home employees and the public in respect of its pill dispenser and had become distinctive and (2) the continued use of the trade mark applied to the top surface of the container-sealing sheets for use with the defendants’ product was likely to lead members of the public to the inference that either the business or wares of the defendants was associated with plaintiff’s container-sealing sheets and the plaintiff’s pill dispenser or that the plaintiff endorsed or otherwise approved of the business, services and wares of defendants.
The Decision
Was the Container Sealing Sheet Design a trade mark?
The parties agreed this was the first issue to be assessed. The trial judge referred to previous case law that had established that paragraph 7(b) was the equivalent statutory expression of the common law tort of passing off, with one exception: in order to use paragraph 7(b) a person must prove that they have a valid and enforceable trade mark, whether registered or unregistered. This is different from a common law action of passing-off where a litigant need not rely on a trade mark to succeed.
The judge said that the evidence showed that the Container Sealing Sheet Design was primarily functional. The colour code had been adopted primarily or entirely to identify a specific moment of the day when the pill(s) contained in a blister must be taken. The colours did not serve as an identifier of the soured of the product.
This conclusion is consistent with a number of previously decided cases that have refused protection to tablets and pills in a pharmaceutical context.
Did the Defendants Use the Alleged Trade Mark?
The judge said that not only must the plaintiff show that it owned the alleged trade mark but it must show that the defendants used that trade mark within the meaning of the Trade-marks Act. In this regard the judge found that handing out of free samples of a product without subsequent distribution of the product in the marketpalce did not amount to trade mark use, and therefore did not trigger the application of paragraph 7(b) of the Trade-marks Act.
Did the Defendants Direct Public Attention To Its Business In Such A Way As To Cause Confusion With That Of the Plaintiff?
There was no evidence of confusion and the judge was not convinced that pharmacists or health professionals responsible for the smooth running of healthcare facilities would be confused by a colour scheme, especially when the respective trade names of the parties were printed clearly on the reverse side of the container-sealing sheet.
The Judge’s Conclusion
The judge concluded that in light of the above the defendants had not directed public attention to their wares, services or business in such a way as to cause or be likely to cause confusion in Canada within the meaning of paragraph 7(b) of the Trade-marks Act. The plaintiff had not demonstrated any of the elements necessary to succeed in an action in passing off: i.e., a trademark with a reputation, a misrepresentation causing or likely to cause confusion, and damages resulting from such misrepresentation and confusion. Allowing the plaintiff to succeed in its passing off claim would not only be contrary to trade marks legislation, but also to healthy competition in the Canadian market.
Comment
The judge dismissed all of the plaintiff’s claims against the defendants and this may have influenced the decision concerning the passing off claim. The common law action for passing off has always been applied with some flexibility to achieve a just result between the parties. It seems that this flexibility is being lost in the application of the statutory equivalent cause of action under paragraph 7(b).
John McKeown
Goldman Sloan Nash & Haber LLP
480 University Avenue, Suite 1600
Toronto, Ontario M5G 1V2
Direct Line: (416) 597-3371
Fax: (416) 597-3370
Email: mckeown@gsnh.com
These comments are of a general nature and not intended to provide legal advice as individual situations will differ and should be discussed with a lawyer.