The Federal Court (per Pallotta J.) held that Biogen’s and Samsung’s use of the mark BYOOVIZ in association with an ophthalmologic drug infringes Novartis’s trademark registration for BEOVU, and granted a permanent injunction preventing further use of the mark.
Novartis is the owner in Canada of a trademark registration for BEOVU for use in association with ophthalmological pharmaceutical preparations. Novartis had used this trademark for at least three years in Canada in association with an anti-VEGF biologic drug used to treat age-related macular degeneration (“AMD”). In March 2022, Biogen received authorization from Health Canada to market an anti-VEGF drug for treating AMD using the name BYOOVIZ, which product was manufactured by Samsung. Novartis immediately sued Biogen and Samsung for trademark infringement, passing off, and depreciation of goodwill in its trademark.
The Court undertook a thorough analysis of the issue of confusion and held, based on the facts in this case, that the defendants’ use of BYOOVIZ was likely to cause confusion. Four main points arose from this decision that could be of interest to trademark owners in the pharmaceutical industry.
First, the Court found that the relevant consumer in this case included patients who were administered these drugs, in addition to prescribing physicians and dispensing pharmacists. This turned out to be an important factor in the confusion analysis. Although the patients receiving these particular drugs were elderly and ophthalmologists had significant influence on what medications were used in their treatment, the Court nevertheless found that these patients exercised sufficient control over which medications they would receive. As such, patients were sufficiently involved in decision-making that they were included within the relevant consumers for purposes of assessing the likelihood of confusion.
Second, the Court noted the degree of resemblance between the two marks in terms of how they look, the ideas they convey, and how they are pronounced. On these points, the defendants had sought to rely on a linguistic expert to explain the differences between the two marks, especially with their pronunciations. However, the Court gave little weight to this evidence, mainly because the expert was not familiar with how the two marks were actually encountered by the relevant consumers during treatment.
Third, having found that there is a likelihood of confusion, the Court held that the defendants had infringed Novartis’ trademark registration. As well, Novartis was successful on its passing off claim because the likelihood of confusion meant the defendants had misrepresented that their biosimilar product was in some way associated with Novartis. However, the Court declined to find depreciation of goodwill under section 22 of the Trademarks Act because that section specifically requires use of the same trademark as registered, or “something so closely akin to it so as to be understood as the other party’s mark.” In this case, the defendants BYOOVIZ mark did not meet this strict criterion.
Fourth, the Court granted a permanent injunction preventing the defendants from using the BYOOVIZ mark in association with their biosimilar product even though it could take up to one year for Health Canada to approve a new mark for the defendants’ biosimilar product. The Court refused to suspend the operation of the injunction because the defendants had failed to seek the necessary stay. Novartis was also awarded $20,000 as nominal damages.
Update: Samsung and Biogen filed an appeal on January 22 (Court File No. A-26-24) and brought a motion for a stay of the judgment pending appeal. The motion will be heard in writing in the next few weeks.