Federal Court of Appeal Confirms Patients Are Relevant Consumers in a Trademark Confusion Analysis for Competing Pharmaceutical Products
In Novartis AG v. Biogen 2024 FC 52 the plaintiff successfully sued for infringement of its registered trademark and passing off for a pharmaceutical preparation for ophthalmology and pharmaceutical preparations for prevention and treatment of ocular disorders and diseases.
The Appeal
Biogen Inc. appealed to the Federal Court of Appeal. 2025 FCA 212 They argued in substance that the application judge erred in her “likelihood of confusion” analysis:
- by treating patients as relevant consumers;
- by failing to consider the consumer attitudes of ophthalmologists and pharmacists, which are characterized by specialized knowledge and heightened attention; and
- her consideration of the surrounding circumstances.
The determination of whether a likelihood of confusion exists is a fact-finding and inference-drawing exercise, and appellate courts generally defer to the trial judge’s fact findings and inferences, unless the facts and inferences were based on an error of law or constituted a palpable or overriding error of fact. A palpable and overriding error must be obvious and could determine the outcome.
The Statutory Framework
The Court set out the statutory framework to determine whether infringement has occurred. A trademark is infringed where any person who is not otherwise entitled to do so under the Trademarks Act sells, distributes or advertises any goods or services in association with a confusing trademark or trade name.
A trademark is “confusing” with another if the use of both trademarks in the same area would be likely to lead to the inference that the goods or services associated with those trademarks are manufactured, sold, leased, hired or performed by the same person.
The test for confusion is a matter of first impression in the mind of a casual consumer somewhat in a hurry who sees the mark, at a time when they have no more than an imperfect recollection of the prior trademarks, and do not pause to give the matter any detailed consideration or scrutiny, nor examine closely the similarities and differences between the marks. This test is hypothetical and the appropriate perspective is to consider a mythical casual consumer. However, there is flexibility to incorporate surrounding circumstances in delineating the mythical consumer.
In determining whether trademarks are confusing, courts must have regard to all the surrounding circumstances. These surrounding circumstances include, but are not limited to,
- the inherent distinctiveness of the trademarks or trade names and the extent to which they have become known;
- the length of time the trademarks or trade names have been in use;
- the nature of the goods, services or business;
- the nature of the trade; and
- the degree of resemblance between the trademarks or trade names, including in appearance or sound or in the ideas suggested by them.
The assessment is context-specific and different circumstances will be given different weight.
Were Patients Relevant to the Confusion Analysis
The Judge concluded after considering general principles of trademark law, that patients were relevant consumers of the drugs in issue. This was the case, even when patients do not ask for a specific medication, which occurs most of the time. They are informed of the ophthalmologists’ choice of drug, and consent to being injected with the drug that is identified by its trademark.
The Appellate Court agreed with the Judge. Patients had a choice and should be considered in this context. This conclusion was supported by strong policy reasons that patients should have the protection of the Act. Whether the choice was great or small, easily exercised or not, changed nothing.
In addition, the Judge’s determination was based on findings of fact and entitled to deference. They reflect no palpable and overriding error.
The Consumer Attitudes of Ophthalmologists and Pharmacists and the Surrounding Circumstances
The Judge considered the different perspective of health care professionals and that they could perceive smaller differences in drug name trademarks. The Court said the appellants were asking it to reweigh this evidence. But as no palpable and overriding error was shown this was not appropriate.
The appellants’ arguments concerning the surrounding circumstances were said to be without merit because they either misinterpreted the Judge’s reasons or sought a reweighing of the evidence in the absence of errors of law or palpable and overriding errors.
Comment
The decision clarifies that in the context of competing pharmaceutical products patients have a choice and should be considered. This conclusion is supported by strong policy reasons that patients should have the protection of the Act. In addition, this approach in consistent with the concern that in this context that care must be taken to prevent the possibility of confusion.
This article is of general nature and is not intended to provide specific legal advice as individual situations will differ. Specialist advice should be sought about your specific circumstances.