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Novartis AG is the owner of a Canadian trademark registration for BEOVU for use in relation to pharmaceutical preparations for treating neovascular age-related macular degeneration. Samsung Bioepis Co., Ltd. (Samsung) manufactures a similar drug in Canada under the trademark BYOOVIZ. The drug is commercialized in Canada by Biogen MA Inc. and its related companies.
In an earlier decision on January 12, 2024, the Federal Court found that Samsung's and Biogen's use of BYOOVIZ violated Novartis' rights in the BEOVU mark, amounting to trademark infringement and passing off.
The Federal Court of Appeal has now dismissed the appeals filed by Samsung and Biogen challenging the injunction granted by the Federal Court that barred them from using the trademark BYOOVIZ in Canada.
A central issue in the appeal was whether patients should be considered relevant consumers in a confusion analysis. Samsung and Biogen argued that only ophthalmologists and pharmacists were relevant and took the position that the Federal Court erred in considering the patient, as the ultimate end-user of the drug, as a relevant consumer for the likelihood of confusion analysis. The Federal Court of Appeal agreed with the Federal Court that patients do exercise some choice in the selection of drugs, as they are told the drugs' brand names, they provide consent for the administration of the drugs, they may see the names on syringes or packaging, and they can refuse treatment or, in some cases, pay out-of-pocket for alternatives.
In dismissing the appeal, the Federal Court of Appeal also emphasized that the sounding of the marks is another important factor to take into consideration as drug names are communicated orally between health care professionals, their staff and patients. Although ophthalmologists and pharmacists may be capable of noticing small differences between drug names, the Court noted that confusion was still likely, especially from a patient perspective.
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