Federal Court of Appeal Dismisses Opposition Appeal Concerning Similar Drug Trade-marks
NPS Pharmaceuticals, Inc. v. Biofarma Société par Actions Simplifée, 2010 FCA 8
(Létourneau, Noël and Trudel JJ.A.)

January 12, 2010

David J. McGruder for the Appellant, NPS Pharmaceuticals, Inc. (“NPS”)
Louis Gratton for the Respondent, Biofarma Société par Actions Simplifée (“Biofarma”)

This was an appeal by NPS of the Federal Court’s decision affirming the Opposition Board’s rejection of NPS’ PREOS trade-mark application (the “Application”). The proposed use Application was filed on May 6, 2002, claiming drugs for preventing or treating osteoporosis and bone metabolism-related disorders.  Biofarma opposed the Application alleging, among other things, that the Application was confusing with its proposed use PROTOS application, filed April 7, 1999, for an osteoporosis prevention or treatment drug. The Board found the Application confusing with Biofarma’s mark.

NPS filed new evidence on appeal to the Federal Court (the “Court”). The new evidence was an affidavit from an NPS expert, Dr. Munro, regarding his qualifications to opine on the French pronunciation of the parties’ marks. Dr. Munro gave evidence on NPS’ behalf before the Board on the similarities of NPS’ and Biofarma’s trade-marks. The Board gave little weight to Dr. Munro’s evidence, as his evidence incorrectly dissected the parties’ marks. Accordingly, the Court ruled the new evidence would not have changed the Board’s decision. Therefore, reasonableness was the appropriate standard of review.
NPS raised the following issues before the Court.

1. The Board did not consider the differences between the parties’ product descriptions in their respective trade-mark applications versus what products would ultimately be sold under the parties’ trade-marks. The Court ruled the Board correctly applied the law addressing that issue.
    
2. The Board ignored that Biofarma may use another trade-mark (PROTELOS) to sell its drug. The Court found the Board considered this issue, and correctly decided what mark Biofarma ultimately used was irrelevant since the PROTOS application was in good standing
    
3. The Board failed to consider that prescription drug consumers are careful to purchase the correct product, reducing the likelihood of confusion. The Court held the Board did consider this issue, ruling that the relevant consumers include doctors, pharmacists and patients,  and that the possibility of a prescription error is not directly related to the likelihood of confusion as to the product’s source, the latter being the relevant issue.
    
4. The Board did not give the proper weight to NPS’ linguistics expert’s (Dr. Munro) evidence on the low level of resemblance between the marks. The Court found the Board properly considered Dr. Munro’s evidence, accepting all of his evidence except his evidence on sound, which was correctly rejected since his evidence dissected the marks in a manner that the average consumer would not.
    
5. The Board erroneously considered Biofarma’s drug error evidence contained in an affidavit addressing other matters. The Court ruled NPS was not prejudiced because the Board did not rule on the admissibility of the drug error evidence. It was unnecessary for the Board to rule on the drug error evidence’s admissibility since that evidence was unnecessary to assess confusion.

The Federal Court of Appeal upheld the Court’s decision and dismissed NPS’ appeal with costs, as there was no error in the Court’s decision. The Court of Appeal noted NPS raised essentially the same arguments before the Board, the Court and the Court of Appeal.

By: Lorraine M. Fleck, Hoffer Adler LLP