SECTION 45 PROCEEDINGS
TRADE-MARK: VERAMIL
REGISTRATION NO.: 311,443
On April 17, 1996, at the request of Novopharm Limited, the Registrar forwarded a Section 45
notice to Monsanto Canada, Inc., the registered owner of the above-referenced trade-mark
registration.
The trade-mark VERAMIL is registered for the following wares: "Coronary dilating agent".
In response to the Registrar's notice, the registrant furnished the affidavit of Paul D. Farr,
Distribution Manager of the Searle Canada division of Monsanto Canada, Inc. Both parties filed
a written submission and were represented at an oral hearing.
The requesting party's main argument concerning the evidence is that any use of the trade-mark
VERAMIL is not use in the normal course of trade. It submits that one of the indicia that
suggests that it is not use in the normal course of trade is that the product monograph submitted
in evidence is for products identified as ISOPTIN or ISOPTIN SR and not VERAMIL and that,
consequently, the name VERAMIL has not been approved under the Food and Drugs Act and
regulations for use with the wares. It adds that this suggests that any use of VERAMIL cannot be
commercial usage; it adds that another indicia, is that the registrant has not even stated that the
use was in the normal course of trade; the words it has used are "in the ordinary course of its
business" .
As for the shipping orders attached as exhibits, it submits that none refer to the trade-mark
VERAMIL but that they refer to several products including several ISOPTIN products. Another
indicia is that the registrant has not provided any evidence in the form of price lists or purchase
orders which would show that it offers a product under the trade-mark VERAMIL. It also
submits that the Farr affidavit is in respect of the 80mg tablets and that as stated in paragraph 6 of
the affidavit, not all of the tablets are sold in cardboard sleeves being stamped with the trade-mark
and furthermore, the wares in cardboard sleeves with the trade-mark stamped thereon are only
sold to a segment of the
market, i.e., wholesalers and larger pharmacies and
there is no evidence
that when the wares reach the end users (hospitals, pharmacists, patients, etc.) the trade-mark
VERAMIL is associated with the wares.
The requesting party then submits that
when all of this is taken into consideration, then just a
mere stamping of the trade-mark VERAMIL on cardboard sleeves is not a bona fide use of the
trade-mark in the normal course of trade.
On the other hand, the registrant
submits that the evidence shows use of the trade-mark in the
normal course of trade and pursuant to Section 4(1) of the Trade-marks Act.
Counsel for the
registrant relies on a Section 45 decision I rendered in March 1993, regarding the present trade-
mark and which was in respect of Section 45 proceedings instituted at the
request of the same
requesting party. The decision was to maintain the trade-mark. She submits that since that
decision there has been no change in the case law concerning "use" and considering
that the
evidence filed previously is almost identical to the evidence furnished by Mr.
Farr, and considering
that the issues raised by the requesting party are the same, she submits that
there is no basis upon
which these arguments can now be accepted.
Having considered all
submissions of the parties and
having reviewed the evidence, I conclude
that the evidence contains sufficient facts to permit me to conclude that the
trade-mark
VERAMIL was in use in Canada in association
with the registered wares during
the relevant
three-year period.
The affiant, Mr. Farr, in paragraph 2 states that the
registrant markets pharmaceutical
preparations throughout Canada and that one of the pharmaceutical preparations
is a coronary
dilating agent (the registered wares). He then refers to the 80mg formulation as "Searle tablets"
in bottles of250
tablets and that during the period from April 1991 to April 1995, approximately
fifty percent of "Searle tablets" were sold in
bottles of 250 tablets and in excess of seventy-five
percent were sold in cardboard sleeves stamped with the trade-mark as shown by
Exhibit C, i.e.,
an imprint of the stamp. He provides sales figures for the period January 1994
to December 1994
and for the period January 1995 to March 1995 which represent sales of the wares sold in
cardboard sleeves bearing the trade-mark VERAMIL. He has attached copies of shipping orders,
and he indicates that the "Searle tablets" that were sold in cardboard sleeves stamped with the
trade-mark VERAMIL are listed thereon as "Isoptin 80mg tabs".
Notwithstanding the able arguments of the requesting party, I am of the view that the evidence
shows use of the trade-mark VERAMIL in the normal course of trade in association with
"coronary dilating agent" (the registered wares) during the relevant period.
I agree with the requesting party that the product monograph attached as Exhibit A is for
"ISOPTIN" and that nowhere is the trade-mark VERAMIL mentioned. However, as I stated in
my decision of March 29, 1993, the fact that VERAMIL may not have received approval under
the Food and Drugs Act and regulations is not a relevant consideration in a Section 45
proceeding. I find the case Lewis Thomson & Sons Ltd. v. Rogers, Bereskin & Parr, 21
C.P.R.(3d) 483 (F.C.T.D.) to be authority in this regard.
I also agree with the requesting party that only a portion of the 80mg "SEARLE tablets" are sold
in sleeves stamped with the trade-mark, and that such are only shipped to wholesalers and larger
pharmacies and that there is no evidence of an association between the mark and the wares when
the wares are sold to the end users. However, as properly argued by the registrant, when the
wares in cardboard sleeves stamped with the trade-mark are sold to wholesalers and larger
pharmacies, which are the registrant's customers, such use is in compliance with the Trade-marks
Act. As stated in Lin Trading Co. Ltd. v. CBM Kabushiki Kaisha also trading as Japan CBM
Corp. et al., 21 C.P.R.(3d) 417 at page 421:
"I simply cannot agree with the appellant's position that sales "in the ordinary course of trade" can
exist only if shown to have occurred along the entire chain referred to by Mr. Justice Heald, ending
with an ultimate consumer. As I have already said, the Manhattan Industries case does not appear to
lay down any such requirement. .
The requesting party relies on the case Ciba-Geigy Canada Ltd. v. Apotex Inc., Ciba-Geigy
Canada Ltd. v. Novopharm Ltd., 44 C.P.R.(3d) 289, in stating that the "final consumer" of the
product must be taken into account in determining whether there was use of the trade-mark in the
normal course of trade. However, as properly pointed by the
registrant, that case was a "passing-
off” action, and therefore it is
irrelevant to the issue to be decided in the
Section 45 proceeding.
The registrant in this case,
has described its normal course of trade with respect to the trade-mark
and the wares and, in my view, there is nothing in the Trade-marks Act which
prohibits the
registrant from marketing the registered wares as it has chosen to do. As
stated in Phillip Morris
Inc. v. Imperial Tobacco Ltd., 17 C.P.R.(3d) 237, sales to wholesalers are sales
in the normal
course of trade.
Furthermore, the
fact that the registrant only sells to a segment of the market
does not prevent the sales from being sales in the normal course of trade.
There is no clear
evidence indicating that the sales in cardboard sleeves stamped with the
trade-mark were not sales
in the normal course of trade. Furthermore, as stated in Institut National
des Appellations
d'Origine des Vins et Eaux-de-Vie v. Registrar of Trade Marks, 71 C.P.R.(2d)
1 (F.C.T.D.), it is
not up to the Court or Registrar to establish standards as to which is the
normal course of trade.
It is clear in this case that some of
the wares "coronary dilating agents" when sold to wholesalers
and larger pharmacies, are sold in cardboard sleeves having the trade-mark
VERAMIL stamped
thereon. Concerning the fact that the registrant's name does not appear on the
cardboard sleeve,
such is
irrelevant as the Trade-marks Act does not require the name of the registrant
to appear in
association with the trade-mark. The
fact that the bottles for the tablets may bear the trade-mark
of another entity may affect the distinctiveness of the registrant's mark,
however, distinctiveness
is not an issue to be considered in the present proceeding.
Concerning the fact that price lists
listing the trade-mark have not been furnished is not
determinative of the issue. As stated in Lewis Thomson, supra, there is no particular type
of
evidence that must be filed in response to a Section 45 notice. In my view, as long as the
registrant has provided sufficient facts concerning the use of the trade-mark,
and as long as the
use appears to be bona fide, that is all that is required. Concerning the shipping order documents
submitted as exhibits, as stated in the Farr affidavit, the product identified as "Isoptin
80mg tabs"
was sold in
cardboard sleeves having the trade-mark stamped thereon. In my view, such use of
the trade-mark appears to comply with Section 4(1) of the Trade-marks Act.
Consequently, in view of the evidence furnished, I conclude that it appears that the trade-mark
was in use in the normal course of trade in association with the registered wares during the
relevant period. In the circumstances, I conclude that the trade-mark registration ought to be
maintained on the register.
Registration No. 311,443 will be maintained in compliance with the provisions of Section 45(5) of
the Trade-marks Act.
DATED AT HULL, QUEBEC, THIS 8TH DAY OF JULY
D. Savard
Senior Hearing Officer
Section 45 Division
1997.