Parke, Davis & Co. v. Empire Laboratories Ltd.

Parke, Davis & Co. v. Empire Laboratories Ltd.

The coloured gelatin sealing bands perform a functional sealing purpose (supported by evidence including the appellant's prior U.S. patent) and therefore cannot serve as valid trade marks; the appellant also failed to prove the necessary distinctiveness, reputation and reliance for passing off; accordingly the appeal is dismissed.

Citation
[1964] SCR 351
Parties
Plaintiff Appellant: Parke, Davis & Company; Defendant Respondent: Empire Laboratories Limited
Court
Supreme Court of Canada
Jurisdiction
Canada
Judgment Date
23 March 1964
Procedural Posture
Intellectual Property Appeal (trade Marks) / On Appeal From the Exchequer Court of Canada to the Supreme Court of Canada; Final Judgment
Outcome
Appeal dismissed with costs
Legal Topics
Trade Mark Functionality, Trade Mark Infringement, Passing Off, Relevance of Patent Evidence, Injunctions
Source Language
English
Intellectual Property Trade Marks Passing Off Trade Mark Functionality Trade Mark Infringement Relevance of Patent Evidence Injunctions

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Parties

Parke, Davis & Company

Plaintiff Appellant

Empire Laboratories Limited

Defendant Respondent

Procedural Posture

Intellectual Property Appeal (trade Marks) / On Appeal From the Exchequer Court of Canada to the Supreme Court of Canada; Final Judgment

Legal Issues

  1. 1 Whether coloured gelatin bands around pharmaceutical capsules are valid trade marks or are functional and therefore unregistrable
  2. 2 Whether evidence of a prior United States patent is relevant to the functionality question
  3. 3 Whether the plaintiff proved passing off (distinctiveness, reputation, reliance)

Ratio Decidendi

The coloured gelatin sealing bands perform a functional sealing purpose (supported by evidence including the appellant's prior U.S. patent) and therefore cannot serve as valid trade marks; the appellant also failed to prove the necessary distinctiveness, reputation and reliance for passing off; accordingly the appeal is dismissed.

Court Disposition

Appeal dismissed with costs

Orders

  • Appeal dismissed with costs.
  • No permanent relief granted to appellant (no injunction, no damages or account ordered).