Too Byosimilar? Federal Court Finds Trademark for BYOOVIZ Infringes BEOVU

For many Canadians, pharmaceutical names are an alphabet soup. Biogen’s BYOOVIZ and Novartis’s BEOVU trademarks are classic examples of drug brand names comprised of coined words. Despite being different drugs with different active ingredients, the Federal Court of Canada^[1] (the “Court”) recently held that BYOOVIZ was confusing with BEOVU in part because they treat the same condition (a form of macular degeneration). Although the trademarks look very different, they may sound similar when spoken out loud by a doctor or pharmacist to a patient.

The Court held that even if patients have minimal exposure to the trademarks and little influence on the purchasing decision, usually made by doctors and pharmacists, patients are still a relevant consumer for a trademark confusion analysis. In the past, decisions were made primarily on the basis of the relevant market being pharmacists and physicians.

BEOVU and BYOOVIZ

Novartis owns a trademark registration for BEOVU, which it uses in association with its drug for treating wet AMD, an eye disease that can blur vision. Novartis has a second drug, LUCENTIS, which is also used for treating wet AMD, but it uses a different active pharmaceutical ingredient. Both drugs are injected into the eye by an ophthalmologist.

Biogen’s BYOOVIZ drug is also for treating wet AMD. It is a biosimilar to LUCENTIS, using a different active pharmaceutical ingredient from BEOVU, the asserted trademark.

LUCENTIS and BYOOVIZ were generally preferred by physicians and provincial health plans over BEOVU for treating wet AMD because they had fewer side effects. Doctors would only be inclined to recommend BEOVU if other drugs did not work, or on patient request.

The Confusion Analysis

This is an interesting case where the marks seem more alike when spoken than when written. It also stands out as being a case that is more patient-centred rather than pharmacist or physician-centred, as is often the case with drug trademarks.

The Court held that all consumers must be considered in the confusion analysis: physicians, pharmacists and patients. Although patients usually rely on health-care professionals to choose and administer the drug, patients have interactions with the trademark and must consent to being injected with that drug. In this case, even though it was unlikely that patients would request a drug not recommended by a doctor (or covered by insurance), patients had autonomy to make this decision if they insisted. Since patients could influence the drug choice, even if it was unlikely, they must be considered in the confusion analysis.

While different drugs, BEOVU and BYOOVIZ would be considered essentially identical to the ordinary patient and are administered in the same way. The differences in the terms were overshadowed by their similarity – a suggestion of “sight” (Vu and Viz) and both beginning with the letter “B”. In some pronunciations, “Beo” and “Byo” could be considered the same (e.g., being pronounced “bio”).

The Court held that expert linguistic evidence was not necessary to determine this similarity because casual consumers have no particular skills or knowledge, and Biogen’s expert could not speak to the special knowledge or interpretation of an ophthalmologist or pharmacist.

The phonetic similarity was important because patients primarily learn what drug they are receiving by health-care professionals telling patients the drug’s brand name orally.

Conclusions – Damages and an Injunction

The Court awarded $20,000 in nominal damages for trademark infringement, despite Novartis not having any evidence of lost sales. The Court also granted an injunction against Biogen, permanently enjoining it from using the BYOOVIZ.

The Court did deny a claim of trademark depreciation under s. 22 of the Trademarks Act, as the trademarks were not similar enough to qualify under that section.

The Court did not appear to highly prioritize the commercial effect of the injunction and the availability of the biosimilar BYOOVIZ, as the injunction could keep Biogen’s biosimilar off the market for a year because of the regulatory process to adopt a new drug name.

The Trademarks & Branding Group at Aird & Berlis LLP is made up of experienced trademark experts available to provide tailored advice and guidance on effectively managing branding updates and protections. Please contact a member of the group if you have any questions or require assistance in regards to trademark infringement.