In a recent decision, the Federal Court found that Novartis AG and Novartis Pharmaceuticals Canada Inc.'s (collectively, Novartis) rights in the BEOVU mark were violated. Novartis brought an application for trademark infringement, passing off, and depreciation of goodwill against Biogen, Inc.; Biogen MA Inc.; Biogen Canada Inc. (collectively, Biogen); and Samsung Bioepis Co., Ltd. (Samsung) for their use of the BYOOVIZ mark. The court concluded that Biogen and Samsung infringed the BEOVU mark and engaged in passing off through their use of the BYOOVIZ mark.
Novartis uses the BEOVU mark in association with an anti-vascular endothelial growth factor (anti-VEGF) biologic drug used to treat various eye disorders and diseases. Biogen and Samsung use the BYOOVIZ mark in association with a different anti-VEGF biologic drug used to treat the same conditions. BYOOVIZ is a biosimilar to a different anti-VEGF drug marketed by Novartis, LUCENTIS, not BEOVU. Samsung manufactures BYOOVIZ and Biogen markets it in Canada.
There were four issues in this case: (i) whether there was trademark infringement, (ii) whether there was passing off, (iii) whether there was depreciation of goodwill, and (iv) what remedies are appropriate.
(i) Trademark Infringement
To determine whether Biogen and Samsung's use of the BYOOVIZ mark infringes the BEOVU trademark, the Court assessed whether the marks were confusing. Whether two marks are confusing is based on the first impression of a casual consumer somewhat in a hurry, with an imperfect recollection of the mark alleged to be infringed (in this case, the BEOVU mark). Who the casual consumers are and when the first impressions occur were contentious issues in this case.
Regarding the casual consumers, the Court found that the physicians who prescribe and administer the drug, the pharmacists who dispense the drug, and the patients who receive the drug were relevant consumers. Therefore, the confusion analysis must be considered from all three perspectives. Despite Biogen's and Samsung's arguments to the contrary, the Court found that patients can exercise sufficient control over whether they receive a particular anti-VEGF drug to constitute relevant consumers for the confusion analysis. While most patients cannot choose which anti-VEGF drug they are administered, they can choose whether to consent to treatment after being told the name of the drug to be administered.
Regarding the first impressions, the Court held that the first impressions in the confusion analysis occur when the casual consumers first encounter the impugned mark. This means that first impressions do not necessarily line up with a person's use of the impugned mark and do not include any information the relevant consumers may learn following their first encounters. In this case, the first impressions of the BYOOVIZ mark include not only doctors' and pharmacists' first encounters with it when purchasing the drug, but they also include the patients' first encounters with the mark when their doctors orally tell them the name of the drug. Further, the first impressions do not take into account anything about BYOOVIZ that may be explained to a patient subsequent to them first learning about it.
Once the Court established who the relevant casual consumers were and when the first impressions occurred, it conducted its confusion analysis using the five factors listed in s. 6(5) of the Trademarks Act, as well as other surrounding circumstances. The Court found that the factors favoured Novartis and a likelihood of confusion. There was a high degree of resemblance between the BEOVU and BYOOVIZ marks, particularly in sounding, and the marks were used in association with the same goods, anti-VEGF drugs. The Court held that there was high likelihood of confusion from the patients' perspective, and Novartis had also established a sufficient likelihood of confusion from the doctors' and pharmacists' perspectives.
(ii) Passing Off
Following on from its findings on trademark infringement, the Court found that Biogen and Samsung had engaged in passing off. Novartis established that there was goodwill in its BEOVU mark, that there was misrepresentation in Biogen and Samsung's use of a confusingly similar mark, and that Novartis has suffered actual or potential damage because of loss of control of the BEOVU mark.
(iii) Depreciation of Goodwill
In contrast, the Court held that there was no depreciation of goodwill in the BEOVU mark caused by Biogen and Samsung's use of the BYOOVIZ mark. Depreciation of goodwill under s. 22 of the Trademarks Act requires the depreciating use to be of the registered trademark in issue, in this case, the BEOVU mark. This can be established even if the impugned mark is not identical to the registered mark. To do so, Novartis must establish that Biogen and Samsung's use of the BYOOVIZ mark evokes a link, connection, or mental association in the consumer’s mind with the BEOVU mark or that the casual observer would recognize the BYOOVIZ mark as the BEOVU mark. The Court found that Novartis had not established either scenario.
(iv) Appropriate Remedies
Having found that Biogen and Samsung had infringed the BEOVU mark and engaged in passing off, the Court awarded some of Novartis' requested remedies and denied others.
The Court denied Novartis' request for declaratory relief, since there was no evidence that a declaration that Novartis owns the BEOVU mark and that it is valid would have any practical benefit or utility. The Court also refused Novartis' request that the application to register the BYOOVIZ mark be struck out, because Novartis did not demonstrate that the application had been made in bad faith. Finally, the Court refused to grant Novartis an injunction covering persons in addition to Biogen and Samsung, including all affiliated companies, officers, employees and licensees.
The Court awarded Novartis $20,000 in compensatory damages and an injunction to prevent Biogen and Samsung from using the BYOOVIZ mark, or any other trademark confusingly similar to the BEOVU mark, in association with drugs to treat eye disorders and diseases. Finally, the Court ordered Biogen and Samsung to either deliver up or destroy all goods, packaging, labels, and advertising materials in violation of that injunction.
This case serves as a good reminder that the confusion analysis must be conducted from the perspective of the relevant consumer(s) which, in the case of pharmaceutical products, can include pharmacists, doctors and patients. It is also notable that marks with a high degree of resemblance in sounding may be found confusing, despite only a moderate degree of similarities in appearance and ideas suggested.
Novartis AG v Biogen Inc, 2024 FC 52
