On January 24, 2024, in Novartis AG v Biogen Inc., 2024 FC 52, the Federal Court of Canada (the Court) released its decision finding that use of the trademark BYOOVIZ in association with a prescription ophthalmologic drug to treat age-related macular degeneration infringes Novartis’ registered trademark BEOVU, also used in association with a drug to treat age-related macular degeneration.
The respondents received authorization to market their drug under the name BYOOVIZ. Novartis commenced this application for trademark infringement, passing off, and depreciation of goodwill before the respondents started selling the BYOOVIZ drug in Canada, but the respondents had started selling the BYOOVIZ drug by the time of the hearing.
The Court conducted a confusion analysis and concluded that there was a likelihood of confusion between the respondents’ BYOOVIZ trademark and Novartis’ BEOVU trademark. The Court determined that the relevant consumers for the purpose of assessing the likelihood of confusion were patients, physicians, and pharmacists. The Court held that, even though patients relied on their physicians to select, purchase, and administer the drug, the patient can exercise at least the choice to refuse administration, and this choice is sufficient to make patients relevant consumers.
When considering the degree of resemblance between the marks, the Court noted that, “[a]s coined words, there is uncertainty regarding how the terms are pronounced, and the evidence in this case demonstrates there is variability and/or subjectivity regarding how the terms would be sounded”. The Court held that this variability increases the likelihood of confusion.
The Court granted a permanent injunction preventing the respondents from using the BYOOVIZ trademark, or any other trademark or trade name that is confusingly similar to the registered BEOVU trademark, in association with pharmaceutical preparations for use in ophthalmology or for prevention and treatment of ocular disorders and diseases. In granting the injunctive relief, Justice Pallotta noted that the respondents did not ask for a stay of injunctive relief, nor had they established that injunctive relief should be stayed for a period of time on the basis that Health Canada must approve a new name and that process could take a year.
The Court declined to award nominal damages of $100,000, instead awarding $20,000.
The respondents have appealed the decision and brought a motion for a stay of the judgment pending appeal.
Summary By: Michelle Noonan
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