Pharmaceutical brand names are chosen under real constraints: regulators screen proposed drug names for safety confusion, which narrows the available field before trademark confusion is even considered. Novartis AG v. Biogen Inc., 2024 FC 52, shows that narrowing does not make two drug names automatically safe from each other under the Trademarks Act.
Two Drugs, One Condition, Two Similar Names
Novartis holds a Canadian registration for BEOVU, used with an anti-VEGF biologic approved to treat neovascular age-related macular degeneration, commonly called wet AMD. In March 2022, Health Canada authorized Samsung and Biogen to market a biosimilar anti-VEGF drug for the same condition under the name BYOOVIZ. Novartis took the position that the two names, used for closely related ophthalmic drugs prescribed by the same specialists to the same patients, were confusingly similar.
The Court's Confusion Analysis
Applying the statutory confusion factors under the Trademarks Act, the Federal Court agreed with Novartis, finding a likelihood of confusion between BYOOVIZ and BEOVU. The Court's reasoning gave real weight to the fact that both drugs are prescribed by ophthalmologists for the same eye condition, which the Court treated as increasing, not decreasing, the risk that the marks could be mistaken for one another in a clinical or pharmacy setting.
The Remedy: An Injunction, Not the Full Damages Sought
The Court granted a permanent injunction preventing Biogen and Samsung from using BYOOVIZ, or any other confusingly similar mark, for pharmaceutical preparations in ophthalmology or for treating ocular disorders. On damages, the Court declined Novartis's request for $100,000 in nominal damages, awarding $20,000 instead, a reminder that a confusion finding does not automatically translate into a large damages award in Canada. The respondents sought and obtained an expedited appeal with a stay of the order, underscoring how much commercial weight rode on the outcome for a product already in market.
Why This Matters Beyond Pharma
The case is a useful illustration for any business operating in a tightly regulated, expert-driven market, not only pharmaceuticals, that regulatory name clearance and trademark clearance are two separate hurdles, and clearing one does not clear the other. A name that survives a safety-confusion review can still infringe an existing registered mark if the goods or services, and the customers who encounter them, overlap closely enough.
We regularly advise clients bringing a new product to the Canadian market on clearing a proposed name against the trademark register before launch, not after a competitor's counsel raises the objection.