Ciba-Geigy Canada Ltd. v. Novopharm Ltd.
T-2582-93
Gibson J.
2/12/93
17 pp.
Application for interim injunction restraining defendant from directing public attention to appearance of its diclofenac slow release tablets and business so as to cause confusion between its tablets and business and plaintiff's "Voltaren SR" brand diclofenac slow release tablets -- Plaintiff manufacturing "Voltaren SR", trade name for diclofenac, non-steroidal anti-inflammatory drug with analgesic and antipyretic properties, in two dosages -- Indicated for symptomatic treatment of rheumatoid arthritis and osteoarthritis, including degenerative joint disease of hip -- Some users regular repeat purchasers -- Since 1989 marketing "Voltaren SR 75" in light pink, triangular biconvex tablet form -- Sales exceeding 60 million dollars -- "Voltaren SR 100" marketed in darker pink, round, biconvex tablet form -- Sales exceeding 150 million dollars -- Colour, shape and size selected to distinguish products from other slow release, equivalent dosages of diclofenac -- Products deliberately marketed in manner that associates appearance with plaintiff -- Hundreds of thousands of product samples distributed -- Information leaflets prominently displaying products indicating appearance of tablets assuring manufactured by plaintiff -- Defendant manufacturing diclofenac slow release products in same dosages, shape, size, colour as applicant's -- Plaintiff alleging passing-off within prohibition in Trade-marks Act, s. 7(b) -- Application allowed -- Application of tri-partite test in Turbo Resources Ltd. v. Petro Canada Inc., [1989] 2 F.C. 451 (C.A.) -- (1) Plaintiff's claim not frivolous or vexatious -- Plaintiff making conscientious effort to develop product identity through shape, size, colour of its products -- Defendant entering same market with look-alike products because believing entitled to do so and satisfied some market advantage will flow to it from so doing -- Serious issue to be tried -- Plaintiff may be able to establish necessary components of passing-off action: existence of good will, deception of public due to misrepresentation, actual or potential damage -- (2) Given potential importance of product identification in prescription drug industry, plaintiff could not be adequately compensated in damages if passing-off established and defendant permitted to make significant market penetration with look-alike products in interim -- (3) Defendant submitting reapproval by governmental authorities of same products in different get-up could be time-consuming process; entry into provincial drug formularies could be significantly delayed with resultant delay in market entry; failure to fulfil sales commitments would damage reputation and introduction of look-alikes could be perceived as public convenience -- Defendant entering market with look-alike products knowing applicant would defend get-up and product identification, related goodwill -- Plaintiff taking all reasonable steps to advise defendant of position and concern to protect market position -- Additional factor of preserving status quo considered -- Trade-marks Act, R.S.C., 1985, c. T-13, s. 7(b).