Ciba-Geigy Canada Ltd. v. Apotex Inc., [1992] 3 SCR 120, is a Supreme Court of Canada judgment on trademark law and more specifically the issue of passing off. Ciba-Geigy brought an action against Apotex and Novopharm, alleging that their versions of the prescription drug metoprolol were causing confusion to the public due to their similar appearance to Ciba-Geigy's version of the drug Lopresor. On appeal to the SCC, the issue was whether a plaintiff is required to establish that the public affected by the risk of confusion includes not only health care professionals but also the patients who consume the drugs in a passing off action involving prescription drugs of a similar appearance. The Supreme Court held affirmatively on this question.
Background
Ciba-Geigy is a pharmaceutical laboratory which has manufactured and sold metoprolol tablets in Canada under the trade name "Lopresor" since 1977. Metoprolol is a prescription drug generally prescribed for hypertension. After Apotex obtained licenses to manufacture and sell metoprolol in Canada, its version of the tablets have had the same get-up (shape, size and colour) as those of Ciba-Geigy since 1986. Novopharm, another respondent joined in the action also manufactured tablets with the same get-up. The three drugs have been designated interchangeable pharmaceutical products by Ontario law, which means that a pharmacist may give a patient any one of them as long as the prescription does not specify no substitution. In June 1986 the Ciba-Geigy brought passing-off actions against Apotex and Novopharm, alleging that its metoprolol tablets have a unique get-up by reason of their size, shape and colour and that this get-up has become associated with its product. In order to establish that Apotex and Novopharm were engaged in passing off by confusing the public with their products, Ciba-Geigy needed to prove that the customers of these drugs were likely to be misled by the similarity of the products.
At the trial level, Ciba-Geigy failed to establish that the customers, namely physicians and pharmacists that prescribe or dispense metoprolol, were confused in choosing the brand of metoprolol to give to patients due to the similar appearance of the tablets. For this reason, the Supreme Court of Ontario refused to issue an interlocutory injunction because Ciba-Geigy failed to show that there was a "serious issue" to be tried. At the Court of Appeal, Ciba-Geigy argued that the customers affected by the passing-off should include ultimate consumer of the prescribed drug as they are likely to be confused by the similar appearance of the products in question. The Court of Appeal rejected its argument and dismissed the appeal.
Reasons of the court
The unanimous judgment of the Supreme Court was delivered by Justice Gonthier. The Court allowed the appeal and held that a plaintiff in an action for the alleged passing-off of a prescription drug must establish that the conduct complained of is likely to result in the confusion of physicians, pharmacists or patients/customers in choosing whether to prescribe, dispense or request either the plaintiff's or the defendant's product. Therefore, patients are considered to be part of the relevant public in a passing-off action as they are the ultimate consumers of the drugs.
General principles of passing off
The Court concluded three necessary components of a passing-off action from previous case law: the existence of goodwill, deception of the public due to a misrepresentation and actual or potential damage to the plaintiff. In order for a manufacturer to succeed in a passing off action, he or she had to show that its product had acquired a secondary meaning with its customers and that the competing product was likely to create a risk of confusion in the public mind. The confusion can arise from both wilful as well as negligent or careless misrepresentation by the manufacturer.
Purposes of the passing off action
The Court stated that the purpose of a passing-off action is to protect all persons affected by the product, which include the persons who manufacture or market the products, on the one hand ("the manufacturers"), and on the other to those for whom the products are intended, the persons who buy, use or consume them ("the customers").