Candrug Health Solutions Inc. v. Thorkelson

Candrug Health Solutions Inc. v. Thorkelson

The CANADA DRUGS and CANADADRUGS.COM marks are, on first impression by the ordinary Canadian online consumer, clearly descriptive of pharmaceuticals from Canada and deceptively misdescriptive because consumers would be misled as to the origin/dispensing of the drugs; the registrant failed to prove acquired distinctiveness by the filing dates, therefore the registrations were invalid under s.18(1)(a) and ordered expunged under s.57 of the Trade-marks Act.

Citation
2007 FC 411
Parties
Applicant (initial): Candrug Health Solutions Inc.; Applicant (sole): Pharmawest Pharmacy Ltd.; Respondent/registered Owner: Kris Thorkelson
Court
Federal Court
Jurisdiction
Canada
Judgment Date
19 April 2007
Procedural Posture
Application to Expunge Trade Mark Registrations / Final Judgment (reasons for Judgment)
Outcome
Canadian Trade-mark Registration Nos. TMA581,915 and TMA581,899 for CANADA DRUGS and CANADADRUGS.COM struck from the Trade-mark Register; costs awarded to Applicant.
Legal Topics
Registrability, Distinctiveness, Descriptiveness, Deceptive Misdescription, Expungement
Source Language
English
Intellectual Property Trade Marks Law Unfair Competition Registrability Distinctiveness Descriptiveness Deceptive Misdescription Expungement

Case Brief

Summary, issues, holding and outcome

More case intelligence is available

Unlock the full research layer for this judgment.

Full judgment text Legal principles 3 Authorities cited 13 Party arguments 2 Amounts and remedies 5
Sign in to unlock

Parties

Candrug Health Solutions Inc.

Applicant (initial)

Pharmawest Pharmacy Ltd.

Applicant (sole)

Kris Thorkelson

Respondent/registered Owner

Procedural Posture

Application to Expunge Trade Mark Registrations / Final Judgment (reasons for Judgment)

Legal Issues

  1. 1 Whether CANADA DRUGS and CANADADRUGS.COM are clearly descriptive or deceptively misdescriptive contrary to s.12(1)(b) of the Trade-marks Act
  2. 2 Whether the marks are distinctive or have acquired distinctiveness under s.12(2) so as to avoid invalidity under s.18(1)(a) and s.18(1)(b)

Ratio Decidendi

The CANADA DRUGS and CANADADRUGS.COM marks are, on first impression by the ordinary Canadian online consumer, clearly descriptive of pharmaceuticals from Canada and deceptively misdescriptive because consumers would be misled as to the origin/dispensing of the drugs; the registrant failed to prove acquired distinctiveness by the filing dates, therefore the registrations were invalid under s.18(1)(a) and ordered expunged under s.57 of the Trade-marks Act.

Court Disposition

Canadian Trade-mark Registration Nos. TMA581,915 and TMA581,899 for CANADA DRUGS and CANADADRUGS.COM struck from the Trade-mark Register; costs awarded to Applicant.

Orders

  • Registrations TMA581,915 and TMA581,899 (CANADA DRUGS; CANADADRUGS.COM) are expunged from the Trade-mark Register pursuant to s.57 of the Trade-marks Act.
  • Costs awarded to the Applicant (Pharmawest Pharmacy Ltd.).