Date: 20090219
Docket: T-593-08
Citation: 2009 FC 172
Ottawa, Ontario, February 19,
2009
PRESENT: The Honourable Mr. Justice Lemieux
BETWEEN:
NPS PHARMACEUTICALS, INC.
Applicant
and
BIOFARMA, SOCIÉTÉ PAR ACTIONS SIMPLIFIÉE
Respondent
REASONS FOR JUDGMENT AND JUDGMENT
Introduction and
Background Facts
[1]
This
proceeding by NPS Pharmaceuticals, Inc. (NPS) is an appeal, pursuant to section
56 of the Trade-Marks Act (the Act), from a decision dated
January 8, 2008, rendered by Annie Robitaille, a member of the Trade-Marks
Opposition Board (the Board Member) acting on behalf of the Registrar of
Trade-Marks refusing, based on the opposition of Biofarma, Société par Actions
Simplifiée (Biofarma), to NPS’ application dated May 6, 2002, with a
priority date of November 7, 2001 based on a corresponding US application, to
register the trade-mark PREOS for a proposed use in association with
“pharmaceutical preparations for the prevention or treatment of osteoporosis;
and pharmaceutical preparations for the prevention or treatment of bone
metabolism-related disorders or diseases”.
[2]
The
central issue in this case piths, in terms of confusion, NPS’ PREOS against
Biofarma’s PROTOS, which is also a proposed trade-mark.
[3]
In
his written memorandum, counsel for the Applicant submitted the Member of the
Opposition Board erred:
1) In applying
the statutory test of confusion by failing to take into account all the
surrounding circumstances, as mandated by subsection 6(5) of the Act, in
that she gave no weight at all to two circumstances which he argues are
important in the context of the present case, namely: (1) the differences
between the actual wares of the parties as distinct from the broad description
of them in their respective trade-mark applications; and, (2) the likelihood
Biofarma will, in fact, not even proceed to use the mark on which it relies in
the opposition proceeding but will use a different mark for its osteoporosis
product – the mark PROTELOS.
2) A second
error by the Opposition Board Member is her application of the statutory test
for confusion in that she failed to consider what degree of care would be taken
by purchasers of the kind of wares at issue by ignoring the principle that
particular care is taken by purchasers of prescription drugs, lessening the
likelihood of confusion.
3) The Board
Member also erred in her consideration of the evidence by failing to give
proper weight to the evidence of the Applicant’s expert in linguistics that the
degree of resemblance between the trade-marks at issue is low, evidence which is
credible on its face and is uncontradicted.
4) She failed to
exclude from consideration, Biofarma’s evidence on the issue of drug error,
which in his submission, was clearly inadmissible and prejudicial to
NPS.
[4]
As
the basis of its opposition, Biofarma invoked paragraph 16(3)(b) of the Act to
block NPS’ trade-mark application for the registration of its PREOS mark.
Subsection 16(3) is headed “proposed marks” and reads:
|
Trade-marks Act ( R.S., 1985, c. T-13 )
Proposed
marks
16. (3) Any
applicant who has filed an application in accordance with section 30 for
registration of a proposed trade-mark that is registrable is entitled,
subject to sections 38 and 40, to secure its registration in respect of the
wares or services specified in the application, unless at the date of
filing of the application it was confusing with
(a) a
trade-mark that had been previously used in Canada
or made known in Canada by any other person;
(b) a
trade-mark in respect of which an application for registration had been
previously filed in Canada by any other person; or
(c) a
trade-name that had been previously used in Canada
by any other person.
[My emphasis.]
|
|
Loi
sur les marques de commerce (
L.R., 1985, ch. T-13 )
Marques
projetées
16.
(3) Tout requérant qui a produit une demande selon l’article 30 en vue de
l’enregistrement d’une marque de commerce projetée et enregistrable, a
droit, sous réserve des articles 38 et 40, d’en obtenir l’enregistrement à
l’égard des marchandises ou services spécifiés dans la demande, à moins
que, à la date de production de la demande, elle n’ait créé de la confusion
:
a)
soit avec une marque de commerce antérieurement employée ou révélée au Canada
par une autre personne;
b) soit
avec une marque de commerce à l’égard de laquelle une demande
d’enregistrement a été antérieurement produite au Canada par une autre
personne;
c)
soit avec un nom commercial antérieurement employé au Canada par une autre
personne.
[Je
souligne.]
|
[5]
As
a matter of convenience, it is also useful, at this time, to cite the
provisions of subsection 6(5) of the Act which lists the non-exhaustive
statutory factors for the determination of confusion:
|
Trade-marks
Act ( R.S., 1985, c.
T-13 )
What to be
considered
6. (5) In
determining whether trade-marks or trade-names are confusing, the court or
the Registrar, as the case may be, shall have regard to all the surrounding
circumstances including
(a) the
inherent distinctiveness of the trade-marks or trade-names and the extent to
which they have become known;
(b) the length
of time the trade-marks or trade-names have been in use;
(c) the nature
of the wares, services or business;
(d) the nature
of the trade; and
(e) the degree
of resemblance between the trade-marks or trade-names in appearance or sound
or in the ideas suggested by them.
[My emphasis.]
|
|
Loi
sur les marques de commerce ( L.R., 1985, ch. T-13 )
Éléments
d’appréciation
6. (5)
En décidant si des marques de commerce ou des noms commerciaux créent de la
confusion, le tribunal ou le registraire, selon le cas, tient compte de
toutes les circonstances de l’espèce, y compris :
a)
le caractère distinctif inhérent des marques de commerce ou noms commerciaux,
et la mesure dans laquelle ils sont devenus connus;
b)
la période pendant laquelle les marques de commerce ou noms commerciaux ont
été en usage;
c)
le genre de marchandises, services ou entreprises;
d)
la nature du commerce;
e)
le degré de ressemblance entre les marques de commerce ou les noms commerciaux
dans la présentation ou le son, ou dans les idées qu’ils suggèrent.
[Je
souligne.]
|
[6]
Biofarma
relied on paragraph 16(3)(b) of the Act since it had filed with
the Canadian Intellectual Property Office (CIPO), a trade-mark application on
April 7, 1999 to register the trade-mark PROTOS for proposed use in
association with “a pharmaceutical preparation for the prevention or treatment
of osteoporosis”. This application has been allowed but not yet registered
because its PROTOS product is not yet authorized to be marketed in Canada under
a notice of compliance issued by the Minister of Health, pursuant to the Food
and Drug Act, although a New Drug Submission (NDS) had been submitted to
Health Canada on January 7, 2004 to obtain such an NOC presumably based on
clinical trial results in Europe where the product is authorized to be marketed
through Biofarma’s subsidiary Les Laboratoires Servier (Servier) under the name
PROTELOS. Biofarma also applied on November 20, 2002 to register, based
on proposed use, the trade-mark PROTELOS in Canada in
association with the same wares as its sister PROTOS. The PROTELOS application
has also been allowed but not yet to be registered, lacking the
necessary NOC to begin sales in this country. More will be said in these
reasons about the PROTOS/PROTELOS issue.
[7]
NPS’
PREOS product is in the same situation as the Biofarma products; it has not
obtained market authorization, in an NOC, to market its product in Canada. It has yet
to file an NDS to obtain the NOC since PREOS is still undergoing clinical
trials albeit in the last phase – phase III of that process.
[8]
NPS’
case before the Opposition Board Member was presented through the affidavit
evidence of:
·
Thomas
Heath, Vice President, Marketing and Sales of NPS who clearly stated his
company intended to use the trade-mark PREOS in Canada in
association with a pharmaceutical preparation it had developed for the
treatment of osteoporosis. He generally described the product as a recombinant
hormone administered to the patient by means of self injection in a once a
day dosage packaged in a cartridge of 100 micrograms. He said the procedure
for a patient self administering PREOS consisted of a number of steps which
required user training. He explained where PREOS was in its clinical trials.
[Emphasis mine.]
·
Dr.
David Kendler is the Director of the Osteoporosis Research Centre in Vancouver and a
professor since 1991 in UBC’s Faculty of Medicine. He has run PREOS’ clinical
trials and has served on Servier Canada’s Advisory Board regarding its PROTOS
product and its Canadian regulatory approval process. His
affidavit, upon which he was not cross-examined, touched upon three issues: (1)
The differences between the PREOS and PROTOS products as to their active
ingredient, formulation, administration route, dosage indications (i.e. the
different type of patients who would be prescribed one or the other of the two
products), the length of treatment and the amount of patient instructions and
follow-up care. For PREOS, he reaffirmed the characteristics described by Mr.
Heath. For PROTOS, he said it takes the form of yellow granules comprising strontium
renalate packaged in individual sachets containing a single two-gram dose of
the drug. The patient simply mixes the contents of a sachet with water and then
drinks the suspension; (2) He also discussed prescription practices in Canada in response
to Biofarma’s evidence. He concluded in all of the circumstances, he had
described, “the possibility of medical error resulting from wrong medication
being dispensed to the patient would be virtually nil”; and, (3) He also provided
evidence of the marketing in Europe of the Servier strontium renalate osteoporosis
product under the trade name PROTELOS which is identical to the one to be
marketed by Servier Canada under PROTOS.
·
Dr.
Murray J. Munro, a Ph.D in linguistics, whose mandate was to provide linguistic
expert opinion on the degree of resemblance, in French and English, between
PREOS and PROTOS in appearance, sound or in the ideas suggested by them. Based
on his analysis of the similarities and differences between the two proposed trade-marks,
his opinion was the trade-marks “produce an overall impression that is
significantly different, in terms of their appearance, sound and ideas
suggested by them”. He was further of the opinion “the likelihood is very low
that speakers of English or French would confuse the two marks, insofar as the
degree of resemblance is concerned”. He was cross-examined on his affidavit and
was accepted by the Board Member as an expert in linguistics in both languages,
except for the pronunciation of the marks in French.
·
Jeannine
Summers, a trade-mark paralegal with the Applicant’s trade-mark law firm who
placed on the record information of her searches on the CIPO Database.
[9]
Biofarma’s
evidence was put forward through the affidavit evidence from:
·
Michael
Sumpter is Director General of Servier Canada Inc., a wholly-owned subsidiary
of Biofarma. He states Servier Canada will be marketing in Canada, under the
PROTOS trade-mark, its pharmaceutical osteoporosis preparation. He filed as an
exhibit Health Canada’s acknowledgment of the filing of its NDS for
an NOC in association with PROTOS. He asserts PREOS and PROTOS belong to the
same therapeutic class of osteoporotics and will have the same
therapeutic indication as “they are both designed to prevent or treat
osteoporosis”. He says the distribution channels for the two products will also
be identical as they will be prescribed by the physicians and distributed in
drugstores. He opined on the similarity of the marks in terms of length,
similar prefixes, identical suffixes and phonetics all leading in his view to
confusion which he said was confirmed by “many contacts with physicians and
pharmacists in Canada and elsewhere”. Another part of his affidavit
addressed the issue of prescription and interpretive errors and, in support of
this, he appended a number of exhibits from the Ordre des pharmaciens du Québec
as well as documents pulled from Health Canada’s website on the formation of a
working group to review and analyse issues relating to Look-alike/Sound-alike
health products names with a view recommending an appropriate course of action
to reduce the potential for confusion between products. Much of his evidence
was challenged as hearsay.
·
Gina
Petrone is a trade-mark agent since 1992 and currently at the employ of the
respondent’s law firm. She deposed to her searches using the software
NameReporter to search the CIPO Database.
[10]
On
appeal before this Court, only one new affidavit was produced, that of Dr. Munro
who deposed, on behalf of NPS, his expertise in the area of the pronunciation
of the marks in the French language.
The contested decision
[11]
By
decision dated January 8, 2008, the Board Member concluded there would be a
likelihood of confusion as to the source of the osteoporosis product in the use
of PROTOS and PREOS:
68 As indicated above, the Applicant
bears the legal onus of establishing on a balance of probabilities that its
application complies with the requirements of the Act. The presence of an onus
on the Applicant means that if a determinate conclusion cannot be reached once
all the evidence is in, then the issue must be decided against the Applicant
[see John Labatt supra].
69 In applying the test for
confusion, I have considered that it is a matter of first impression and
imperfect recollection. In view of my conclusions above, I find that the
Applicant has failed to discharge the legal burden upon it to show that,
on the balance of probabilities, there is no reasonable likelihood of confusion
as to the source of the parties' wares. Accordingly, the s. 16(3)(b)
ground of opposition succeeds. [Emphasis mine.]
[12]
She
discussed, however, a second ground of opposition, non distinctiveness of
PREOS, advanced by Biofarma. She concluded: “As no evidence of use of the PROTOS mark
has been adduced in the present case, Biofarma failed to discharge the initial
burden upon it”. Biofarma, before this Court, did not challenge this finding.
[13]
In
her decision, she described the proceedings and summarized the evidence. She
disregarded Mr. Sumpter’s evidence in his Exhibit “G”, the search reports based
on the Register, because he had not conducted those searches himself and noted
the other objection based on hearsay. In particular, she discarded his personal
opinion on the likelihood of confusion between the marks “as it is up
to the Registrar to make such determination after review of all relevant
circumstances.” Her conclusion, on this point, was not challenged before me.
[14]
She
then analysed paragraph 16(3)(b) ground of opposition. She noted Biofarma’s
trade-mark application in 1999 for PROTOS and concluded “that
application having not been abandoned by the Opponent, the latter has satisfied
its initial burden with regard to this first ground of opposition”, adding, “Because
of this evidence by the Opponent, the Applicant [NPS] must establish on a
balance of probabilities that there is no reasonable likelihood of confusion
between [PREOS and PROTOS].”
[15]
She
set out the test of confusion which governed her analysis:
38 The test for confusion is one of
first impression and imperfect recollection. Section 6(2) of the Act indicates
that use of a trade-mark causes confusion with another trade-mark if the use of
both trade-marks in the same area would be likely to lead to the inference
that the wares or services associated with those trade-marks are manufactured,
sold, leased, hired or performed by the same person, whether or not the wares
or services are of the same general class.
39 In applying the test for confusion,
the Registrar must have regard to all the surrounding circumstances,
including those listed at s. 6(5) of the Act, namely: (a) the inherent
distinctiveness of the trade-marks and the extent to which they have become
known; (b) the length of time the trade-marks have been in use; (c) the nature
of the wares, services or business; (d) the nature of the trade; and (e) the
degree of resemblance between the trade-marks in appearance or sound or in the
ideas suggested by them. This list is not exhaustive and different weight
will be attributed to different factors according to the context. [Emphasis
mine.]
[16]
She
referred to the Supreme Court of Canada’s decision in Mattel, Inc. v. 3894207 Canada Inc., [2006] 1 S.C.R. 772 (Mattel);
and Veuve Clicquot Ponsardin v. Boutiques Cliquot Ltée et
al, [2006] 1 S.C.R.
824 (Veuve Clicquot) “ for a thorough discussion of the general principles
that govern the test for confusion”.
[17]
She
next listed the factors set out in subsection 6(5) of the Act and
analyzed them individually. On the first factor of inherent distinctiveness,
she concluded each mark was distinctive because neither mark had an
identifiable meaning as a whole, nor could either be found in French or
English dictionaries and there was no evidence they had become known in Canada
since there was no evidence of use or promotion of either mark in
Canada. On the second factor of length of time each trade-mark had been used
in Canada, she held that: “As neither of the marks is used or known in Canada, this
factor does not favour either party.” Before this Court, neither the
Applicant nor the Respondent sought to disturb these two findings.
[18]
She
then embarked upon her analysis of the next two listed factors in
subsection 6(5) of the Act – (c) the nature of the wares … and
(d) the nature of the trade. She first stated: “Considering the type of
wares and the nature of the trade, I must compare the Applicant's statement
of wares with the statement of wares in the application referred to
by the Opponent. However, those statements must be read with a view to
determining the probable type of business or trade intended by the
parties rather than all possible trades that might be encompassed by the
wording. The evidence of the parties' actual trades is useful in this
respect.”
[19]
She
continued by finding “the trade-marks under review cover identical wares:
pharmaceutical preparations for the prevention or
treatment of osteoporosis”, adding, “The opposed application also covers
pharmaceutical preparations for the prevention or treatment of other bone
disorders or diseases, namely, pharmaceutical preparations for the prevention
or treatment of bone metabolism-related disorders or diseases.”
[20]
She
found the PREOS and PROTOS products “are both to be prescribed by physicians
and distributed in drugstores”, adding, “They
will both likely be indicated for primarily the elderly, although the PREOS
product is likely to be indicated for severe osteoporosis whereas the PROTOS
product is likely to be indicated for a broader population of osteoporosis
patients, not just severe cases of osteoporosis.”
[21]
She considered
Dr. Kendler’s evidence on the actual differences
between the products. She referred to the contention that doctors and
pharmacists would understand that these are very different products in terms of
physical form, dosage and mode of administration and so would the patients
because they would understand the difference between a product that includes an
injector pen which must be injected through the skin (PREOS) and an oral
suspension product (PROTOS).
[22]
She responded to these contentions by stating:
46 … While I acknowledge the fact that
there is some authority for the Applicant's contention that the risk of
confusion is lessened in the field of prescription medications since the
nature of the transaction is such that the products are delivered by meticulous
professional accustomed to making distinctions between the names of various
products, I disagree with the Applicant's approach, as this is not the proper approach
to be taken.
47 As stressed above, I must compare
the Applicant's statement of wares with the statement of wares in the
application referred to by the Opponent. As indicated above, both marks
cover identical wares and are intended to travel through the same channels of
trade. The pharmaceutical preparations described in both of the Applicant's and
the Opponent's applications are neither restricted to prescription drugs
only, nor restricted in their physical form, dosage and mode of administration
and the Applicant chose not to amend its application to so limit itself
(the whole as noted during Mr. Sumpter's cross-examination, cf. transcript
pages 75 to 81). It is also well established that even in the case of
prescribed medication, the average consumer consists of the physician
prescribing medication, the pharmacist and the patient. [Emphasis mine.]
[23]
To buttress her conclusion she referred to Cyanamid
Canada Inc. v. Smith Kline & French Canada Ltd. (1983), 23 C.P.R.
(3d) 189, at paragraph 9; Novartis Pharmaceuticals Canada Inc. v. Apotex
Inc. (1999), 86 C.P.R. (3d) 259, at page 263; and, ICN Pharmaceuticals,
Inc. v. Unger (2007), 53 C.P.R. (4th) 148, cases decided by the
Opposition Board. She concluded the third and fourth factors favour Biofarma.
[24]
In
her view, the test for the fifth factor – the degree of resemblance between the trade-marks in appearance or
sound or in the ideas suggested by them – was a matter of first impression and
the trade-marks “should not be dissected or subjected to a microscopic analysis
with a view to assessing their similarities and differences”, citing Justice
Denault in Pernod Ricard v. Molson Breweries (1992),
44 C.P.R. (3d) 359, at p. 369.
[25]
She
first noted and accepted Dr. Munro’s evidence neither mark had an identifiable
meaning as a whole, neither being found in commonly used French or English dictionaries.
[26]
She
reviewed Dr. Munro’s evidence and said: “I consider there to be a fair degree
of resemblance in terms of appearance between the marks of the parties”
referring to his evidence on the “initial letters "PR" and the same
pair of final letters "OS" that are visually and phonetically the
same.” She also accepted his evidence the marks had the same number of
syllables and the same stress pattern on the syllables, the marks were almost
the same length in terms of letters and the marks did not suggest any idea,
save for the unit "OS", that may suggest a connection with
bone and osteoporosis.
[27]
She next analyzed Dr. Munro’s evidence as to the similarities and
the differences between the marks in sound and his conclusion there were
some similarities between the marks in sound because of the differences in
articulation of the letters "E" and "O" and differences in
the presence of the "T" sound in PROTOS but not in PREOS; the production
of the "T" sound requires the speaker to move the tongue to the top
of the mouth to block the airstream. She then rejected his evidence on this
aspect stating:
“I am not detailing all of Mr. Munro's findings since most of
his opinion consists in a dissection of the marks, which is not the proper
approach to be taken to determine the likelihood of confusion between the marks
of the parties, as stated by Madam Justice Tremblay-Lamer in Pierre Fabre Médicament v. SmithKline Beecham Corp. (2004),
35 C.P.R. (4th) 23 (F.C.), at pages 31 and 34 (Pierre Fabre).” [Emphasis
mine.]
[28]
She also stated there was a parallel between the case at hand and
a case decided by the Opposition Board in Frank W. Horner
v. Abbott Laboratories (1985), 6 C.P.R. (3d) 142, at p. 144 and
concluded: “… on this fifth factor, I consider there to be a fair degree of
resemblance between the marks of the parties. Thus, the fifth factor favours
the Opponent.”
[29]
Under
the heading “Additional surrounding
circumstances”, she analyzed three additional circumstances: (1) the state of
the Register; (2) whether Biofarma will in fact use the PROTOS mark; and, (3)
the issue of drug errors.
[30]
I will not
summarize her analysis and findings on the subject of the state of the Register
since neither party challenged her decision on that issue.
[31]
On the issue
whether Biofarma will in fact use PROTOS in Canada in the sale of its
osteoporosis drug for which it had filed an NDS identifying PROTOS as the trade
name for its marketing, she said NPS had contended in argument “that there
is another relevant circumstance in assessing confusion in this case, namely,
it is questionable whether the Opponent will in fact proceed to use the PROTOS
mark in Canada” alleging it was more likely that Biofarma will in fact use
PROTELOS whose registration in Canada has also been allowed and its proposed
use is for the same product as PROTOS.
[32]
She
referred to the evidence and specifically an answer Mr. Sumpter gave in
cross-examination where he described the PROTELOS application for registration
in Canada was being based on “proposed option to use” meaning that Biofarma
would register the trade-mark PROTELOS in Canada and then have the right to
chose to use it or not. NPS also relied on the fact Biofarma’s osteoporosis
product was being marketed in Europe under PROTELOS.
[33]
The
Board Member decided the point stating:
64 Mr.
Sumpter's affidavit, testimony and responses to undertakings all confirm that
the Opponent still intends to use the PROTOS mark in Canada. Mr. Sumpter has also confirmed that the Opponent, through
its subsidiary Servier, still maintains an intention to use the PROTELOS mark
in Canada. It may well be that the Opponent
will choose one or the other mark when it will start commercializing its
product in Canada. This does not affect the present
opposition though as the trade-mark application for the PROTOS mark is still in
good standing. [Emphasis
mine.]
[34]
Finally,
she considered the issue of drug errors referring to Mr. Sumpter’s affidavit
where he discusses drug errors and she quotes from NPS’ submissions “that the
possibility of errors in prescribing or dispensing of drugs is not directly
related to the likelihood of confusion as to the source of the product, which
is the issue for decision in this case.” She then ruled:
66
While I agree with the Applicant, I wish to refer to the Trade-marks Opposition
Board's decision in SmithKline Beecham Corp. v. Pierre Fabre Médicament
[1988] T.M.O.B. 141, which discussed whether particular care should be
exercised in applying the statutory standard fixed by s. 6(2) of the Act
in the pharmaceutical field at paragraphs 20 and 21: …. [Emphasis mine.]
[35]
A
review of those two paragraphs and of the analysis contained therein, in
respect of prescription drugs, shows its thrust to be that the possibility of
errors in the prescribing and dispensing of pharmaceutical products is not
directly related to the likelihood of confusion as to the source of the
products which is the statutory standard to be applied recognizing that in
the application of that standard, particular care should be exercised in its
application in the pharmaceutical field. [Emphasis mine.]
[36]
After
setting out her analysis, she concluded:
67 Having
regard to the foregoing and particularly in view of the passages above quoted
and underlined, I do not need to rule on the admissibility of Exhibits
"K" to "N" that were attached to the Sumpter affidavit.
Health Canada's test to determine if there is
confusion between two drug names differs from the test for confusion under the
trade-mark law regime and is not binding upon the Registrar. [Emphasis mine.]
Analysis
(a) The standard
of review
[37]
For
the reasons which become evident in the next few paragraphs, the standard of
review, applicable in judicial review analysis, may have some relevance to
section 56 appeals from decisions of the Registrar.
[38]
As
is now well known, the Supreme Court of Canada, in Dunsmuir v. New
Brunswick,
2008 SCC 9, reformed the standard of review analysis in judicial review
proceedings by, in particular, reducing from three to two the number of
standards rolling into the unreasonableness standard the now defunct standard
of patent unreasonableness.
[39]
At
paragraph 62 of Dunsmuir, Justices Bastarache and LeBel held that a full
standard of review analysis was unnecessary where the jurisprudence had
determined, in a particularly satisfactory manner, the degree of deference to
be accorded a particular category of question.
[40]
The
jurisprudence of the Supreme Court of Canada and the Federal Court of Appeal have
clearly fixed the standard of review in a case such as this one which involves
the interpretation and application of the statutory test of confusion, set out
in subsection 6(5) of the Act.
[41]
Justice
Binnie, on behalf of the Supreme Court of Canada, in Mattel, Inc. v. 3894207
Canada Inc., [2006] 1 S.C.R. 772, at paragraphs 40 and 41, (a pre-Dunsmuir
decision) where he wrote:
40 Given,
in particular, the expertise of the Board, and the "weighing up"
nature of the mandate imposed by s. 6 of the Act, I am of the view that despite
the grant of a full right of appeal the appropriate standard of review is
reasonableness. The Board's discretion does not command the high deference
due, for example, to the exercise by a Minister of a discretion, where the standard
typically is patent unreasonableness (e.g. C.U.P.E. v. Ontario (Minister of
Labour), [2003] 1 S.C.R. 539, 2003 SCC 29, at para. 157), nor should the
Board be held to a standard of correctness, as it would be on the
determination of an extricable question of law of general importance (Chieu
v. Canada (Minister of Citizenship and Immigration), [2002] 1 S.C.R. 84,
2002 SCC 3, at para. 26). The intermediate standard (reasonableness) means,
as Iacobucci J. pointed out in Ryan, at para. 46, that "[a]
court will often be forced to accept that a decision is reasonable even if it
is unlikely that the court would have reasoned or decided as the tribunal
did." The question is whether the Board's decision is supported by reasons
that can withstand "a somewhat probing" examination and is not
"clearly wrong": Southam, at paras. 56 and 60.
41 The
foregoing analysis of the proper standard of review is consistent with the
jurisprudence [page797] of the Federal Court of Appeal: see in particular Molson
v. Labatt, per Rothstein J.A., at para. 51; Novopharm, per
Strayer J.A., at para. 4; Polo Ralph Lauren Corp. v. United States Polo
Assn. (2000), 9 C.P.R. (4th) 51, per Malone J.A., at para. 13, and Isaac
J.A., at para. 10; Christian Dior, S.A. v. Dion Neckwear Ltd., [2002] 3
F.C. 405, 2002 FCA 29, per Décary J.A., at para. 8, and Purafil, Inc.
v. Purafil Canada Ltd. (2004), 31 C.P.R. (4th) 345, 2004 FC 522, per
MacKay D.J., at para. 5. [Emphasis mine.]
[42]
In
Mattel, Justice Binnie referred to, with approval, Justice Rothstein’s
decision, when he was a member of the Federal Court of Appeal, in Molson
Breweries v. John Labatt, [2000] 3 F.C. 145, at paragraph 51 which focussed
on the impact of new evidence introduced on appeal might have on the standard
of review:
[51]
I think the approach in Benson & Hedges and McDonald's
Corp. are consistent with the modern approach to standard of review. Even
though there is an express appeal provision in the Trade-marks Act to
the Federal Court, expertise on the part of the Registrar has been recognized
as requiring some deference. Having regard to the Registrar's expertise, in the
absence of additional evidence adduced in the Trial Division, I am of the
opinion that decisions of the Registrar, whether of fact, law or discretion, within
his area of expertise, are to be reviewed on a standard of reasonableness simpliciter.
However, where additional evidence is adduced in the Trial Division that would
have materially affected the Registrar's findings of fact or the exercise of
his discretion, the Trial Division judge must come to his or her own conclusion
as to the correctness of the Registrar's decision.
[43]
In
the present case, only one piece of new evidence was introduced on appeal – the
affidavit of Dr. Munro, dated May 13, 2008, to which he appends a copy of the
affidavit which was before the Opposition Board, dated February 9, 2005. The
sole purpose of Dr. Munro’s fresh affidavit on appeal is to provide evidence of
his qualification to give expert evidence relating to the pronunciation of the
marks at issue in the French language. This new affidavit does not alter, in
any way, the previous evidence he gave in his February 9, 2005 affidavit.
[44]
When,
pursuant to section 56 of the Act, new material is introduced before
this Court, an assessment must be made by the Court of the materiality of the
new affidavits in terms of its potential impact on the Registrar’s decision or,
as my colleague Justice Harrington recently put it in Scotch Whisky
Association v. Glenore Distillers International Ltd., 2008 FC 425, at
paragraph 14: “… the Court must determine whether additional evidence would
have affected the decision”.
[45]
In
this case, I am satisfied, even if I accept Dr. Munro is qualified as an expert
in the French pronunciation of the marks at issue, his fresh evidence would not
lead to a change in the Registrar’s decision because the Board Member gave
little weight to Dr. Munro’s evidence on the similarities and differences
between the marks on sound considering it was a dissection of the marks which
is not the proper approach, citing my colleague Justice Tremblay-Lamer’s
decision in Pierre Fabre. Counsel for the Applicant did not show me how
Dr. Munro’s evidence on French pronunciation would disturb the Opposition
Board’s entire French or English considerations on the issue.
[46]
The
finding the new evidence could not have affected the Registrar’s decision means
the deferential standard of reasonableness applies.
[47]
I
return to Dunsmuir to further explore what the reasonableness standard
encompasses:
47 Reasonableness
is a deferential standard animated by the principle that underlies the
development of the two previous standards of reasonableness: certain questions
that come before administrative tribunals do not lend themselves to one
specific, particular result. Instead, they may give rise to a number of
possible, reasonable conclusions. Tribunals have a margin of appreciation
within the range of acceptable and rational solutions. A court
conducting a review for reasonableness inquires into the qualities that make a
decision reasonable, referring both to the process of articulating the
reasons and to outcomes. In judicial review, reasonableness is concerned mostly
with the existence of justification, transparency and intelligibility within
the decision-making process. But it is also concerned with whether the
decision falls within a range of possible, acceptable outcomes which are
defensible in respect of the facts and law.
…
49 Deference
in the context of the reasonableness standard therefore implies that courts
will give due consideration to the determinations of decision makers. As
Mullan explains, a policy of deference "recognizes the reality that, in
many instances, those working day to day in the implementation of frequently
complex administrative schemes have or will develop a considerable degree of
expertise or field sensitivity to the imperatives and nuances of the
legislative regime": D. J. Mullan, "Establishing the Standard of
Review: The Struggle for Complexity?" (2004), 17 C.J.A.L.P. 59, at
p. 93. In short, deference requires respect for the legislative choices to
leave some matters in the hands of administrative decision makers, for the
processes and determinations that draw on particular expertise and experiences,
and for the different roles of the courts and administrative bodies within the
Canadian constitutional system. [Emphasis mine.]
[48]
In
Mattel, Justice Binnie expressed the standard of reasonableness in this
way at paragraphs 10 and 91:
10 On
this appeal, the Board's decision should be upheld unless it is shown to be
unreasonable. On the admissible evidence, the Board was not shown to be clearly
wrong in its decision that the respondent restauranteur has established that it
is not likely that prospective consumers will draw the mistaken
inference. I would therefore affirm the reasonableness of the decision of
the Board to accept registration of the respondent's trade-mark and dismiss the
appeal.
…
91 The
Board held that, notwithstanding the fame of the appellant's trade-mark, it was
satisfied by the respondent that there was no likelihood of confusion in the
marketplace having regard to all the surrounding circumstances. In the absence
of fresh evidence to shed further light on the correctness of this conclusion,
I would not be prepared to say that in reaching its conclusion the Board was
unreasonable. [Emphasis mine.]
[49]
Justice
LeBel in Mattel wrote a short concurring judgment which I cite:
93 LeBEL J.:— I
agree that Mattel's appeal should be dismissed. The Trade-marks Opposition
Board at the Canadian Intellectual Property Office had to weigh a number of
factors in its assessment of the distinctiveness of the two marks. Its decision
was entitled to deference, but had to be reasonable. On the facts of this case,
as demonstrated by the analysis of the legal and factual issues in the reasons
of Binnie J., I agree that the decision of the Board was indeed reasonable
((2002), 23 C.P.R. (4th) 395). [Emphasis mine.]
(b) Discussion and conclusions
[50]
Before
considering NPS’ arguments, a few more references to Mattel are
appropriate:
1) At paragraph
6, Justice Binnie explained that: “Confusion is a defined term, and s.
6(2) requires the Board (and ultimately the court) to address the likelihood that in areas where both trade-marks are used,
prospective purchasers will infer (incorrectly) that the wares and services … are
nevertheless supplied by the same person.” At paragraph 24, he writes: “If … it is
not likely that even casual consumers will make a connection [between the
source], then the [appellant-opponent's] marks have received the protection to which
the law entitles them.”
2) The onus in
on the Applicant for registration, here NPS, to establish the absence of
likelihood of confusion but the Board was only required to deal with potential
sources of confusion that, in the Board’s view, have about them an air of
reality.
3) At paragraph
36 of Mattel, he stressed: “The determination of the likelihood of confusion
requires an expertise that is possessed by the Board … in greater measure than
is typical of judges. This calls for some judicial deference to the Board's
determination …” At paragraph 37, he wrote: “What this means in practice is that the
decision of the …. Board should not be set aside lightly considering the expertise
of those who regularly make such determinations.”
4) Noting the
statutory test for confusion of “all the surrounding circumstances” with the
five listed factors not being exhaustive, he wrote at paragraph 54: “… different
circumstances will be given different weight in a context-specific assessment.”
[51]
With
these principles in mind, I now turn to NPS’ arguments, noting the uniqueness
of this case in that the opposing marks are not actually in use in Canada
because, as noted, neither drug has been issued an NOC by Health Canada. The Board
Member was dealing with the application by NPS to register PREOS in the proposed
use of its osteoporosis drug, which was opposed by Biofarma’s osteoporosis drug
under the proposed name of PROTOS, which trade name has been allowed, but as
noted, cannot be registered until it is actually used (marketed) in Canada.
This is why the first two enumerated factors in section 6(5) of the Act
are neutral since each proposed mark was distinctive, (1) neither having any
meaning as a whole, and (2) there was no evidence they had become known in
Canada since there was no evidence of promotion. As to second factor of length
of time in use, there had been no use yet. As noted, neither party sought to
disturb these first two findings by Member Robitaille.
(1) No ruling on admissibility
[52]
In
my view, there is no merit to the argument NPS was prejudiced because the Board
Member did not rule on the admissibility of certain exhibits in Mr. Sumpter’s
affidavit. A decision on that point was not necessary because she concluded
this evidence was not material to the question she had to answer, namely: Would
such evidence establish that the actors in the prescription drug field would be
confused as to the source of the drug i.e. confused that PROTOS was supplied by
NPS? In the circumstance, the fact she did not specifically mention Exhibit “J”
as not being inadmissible is of no consequence.
(2) Dr. Munro’s evidence
[53]
I
reach the same conclusion on the lack of merit to the argument the Board Member
did not take proper account of Dr. Munro’s evidence. She accepted his evidence
on appearance for the prefixes (PR) and suffixes (OS) being visually and
physically the same. She accepted his evidence on the number of syllables and
stress patterns on them and the two proposed trade-marks were almost the same
length in terms of letters. She also accepted his evidence neither marks
suggested an idea save for the unit “OS” that may suggest a connection with
bone and osteoporosis.
[54]
However,
she rejected his evidence on sound because his evidence was not the way that
this factor should be analysed being a dissection of the proposed marks which
would never be undertaken by the average consumer. In my view, the facts and
the jurisprudence supports the Board Member’s determination that there was a
fair degree of resemblance between the marks. The use of the words “fair
degree” is important because it indicates this factor had some but not great
weight in her weighing of all of the relevant factors.
(3) PROTOS or PROTELOS
[55]
Contrary
to the submissions by counsel for NPS, the Board Member specifically considered
his submission whether it was more likely than not that Servier Canada would
select PROTOS to market its osteoporosis product once an NOC had been issued.
She specifically acknowledged “it may well be that the opponent will choose one
or the other mark when it will start commercializing its product in Canada” but that
this did not affect the opposition because PROTOS was still in good standing.
In my view, the Board Member did not commit any error in reaching the
conclusion she did. She relied on the answers of Mr. Sumpter that Servier
Canada still intends to use PROTOS when its NOC is issued and has a right to do
so because its application has been allowed and registration will be automatic
upon filing a declaration of use. NPS has a remedy should PROTELOS be chosen.
It will have a right to bring an expungement application under section 57 of
the Act. The Member’s ruling is reasonable in the circumstances.
(4) The actual differences in the PREOS
and PROTOS
[56]
Counsel
for NPS argues the Board Member erred by failing to take into account the
surrounding circumstance that the PREOS product is different than the PROTOS
product in a number of significant ways. He submitted the Board Member treated
the wares as identical because of the description contained in the statement of
wares in the application for registration.
[57]
It
is true that under the heading “additional circumstances”, the Board Member
Robitaille did not analyze the actual differences between the two products
which are not yet on the market in use in Canada. I find this
argument to be more one of form than substance because the Board Member did her
analysis on this point in her consideration of the nature of the wares. She
ruled that the trade-marks under review covered identical wares, “pharmaceutical
preparations for the prevention or treatment of osteoporosis”. She specifically
referred to Dr. Kendler’s evidence on the actual differences between the
products and on how a patient would differentiate between an injector pen and
an oral suspension.
[58]
However,
in her view, the Applicant’s approach was not the proper one which she
explained at paragraph 47 of her reasons which are quoted at paragraph 22 of
these reasons. In her opinion, the proper approach was to compare the NPS’
statement of wares in its application for registration with Biofarma’s
statement of wares for PROTOS.
[59]
NPS’
counsel argues in so doing the Board Member erred, citing Andrés Wines Ltd. v. Vina Concha Y Toro S.A., (2001) 13 C.P.R. 4th 110 (Andrés
Wines), a case where the Applicant sought to expunge the Respondent’s
registered mark TRIO used in association with “wine” on the basis that it was
confusing with its mark “TRIUS” for wine which had a prior registration date.
[60]
With
respect, I do not think Andrés Wines is helpful to NPS. Its section 57
expungement action was dismissed. Under the factors, nature of wares and nature
of trade, Justice Dubé considered that fact that both wares were wine with
TRIUS, a Canadian wine sold only in Ontario in its own stores or in
LCBO’s ordinary sections and TRIO, a Chilean wine sold in VINTAGES sections.
Justice Dubé stated geographic origin was an important factor in consumer
choice. Despite these differences, he ruled that the nature of trade and trade
factors strongly favoured TRIO. In contrast in this case, the Board Member
ruled the wares were identical and the channels of trade were identical. I
recognize that in Andrés Wines, Justice Dubé did discuss also, under other
surrounding circumstances, TRIUS was only sold in Ontario, while TRIO
was sold across Canada and could not be sold side by side. He also
took into account the fact there were seven other registered wine trade-marks
with the syllables “TRI”. I consider the analysis under this heading as largely
duplicates of what had been discussed before in his judgment.
[61]
In
sum, Andrés Wines does not deal with the point decided by the Board
Member in terms of the importance in comparing the relative statements of wares
in the context of applications for registration of wares in proposed use rather
than in actual use.
[62]
The
Board Member’s approach is sanctioned in Mattel, at paragraphs 53 and 74
of Justice Binnie’s reasons. At paragraph 53, he wrote:
53 The appellant argued that the
courts below erred in looking at the respondent's actual operations rather than
at the terms set out in its application for the proposed trade-mark. It is
quite true that the proper focus is the terms of the application, because what
is at issue is what the registration would authorize the respondent to do, not
what the respondent happens to be doing at the moment. Still, the appellant
itself led a great deal of evidence (as is the practice) about the actual
operation of the respondent's restaurants, including many photographs, numerous
sample menus and clippings of various advertisements. In these circumstances,
it is not surprising that the Board and the applications judge felt it
appropriate to comment on the respondent's operation, based largely on the
evidence the appellant itself had adduced. That said, I do not think the Board
or the courts below were under misapprehension about the nature of the dispute.
The terms of the respondent's application ("restaurant services, take-out services,
catering and banquet services") were referred to by both the Board and the
applications judge, and reading their respective reasons as a whole, I do not
think they misapprehended the question before them.
[63]
The
last sentence of his paragraph 74 reads: “It is important to keep in mind, as
the appellant says, that the issue is not the scope of the respondent's
existing business but the scope of protection it seeks by its trade-mark
application.”
[64]
All
of the above considerations led me to conclude the Board Member did not err but
rather adopted the correct approach.
(5) The prescription drug issue
[65]
Counsel
for NPS argues the Board Member did not take into account the principle that
particular care is taken by purchasers where the wares are prescription drugs
thus lessening the likelihood of confusion. Referring to Mattel, at
paragraph 58, he states that it is well established that the more care and
attention is taken by a consumer in some purchasing decisions than others,
reduces the likelihood of confusion. He relies on Justice Mahoney’s decision in
William
H. Rorer, (Canada) Ltd. v. Johnson &
Johnson
(1980), 48 C.P.R. (2d) 58 (Rorer)
for the proposition that in prescription drug cases, the risk of confusion is
minimal because of the nature of the trade.
[66]
In considering counsel for the Applicant’s argument on this
point, the Board Member’s reasons must be considered in their entirety. The
Board Member dealt with the issue in two places in her reasons.
[67]
The first reference is under the heading “nature of the wares and
the nature of the trade”. She notes at paragraph 44 of her reasons the two trade-marks PREOS and PROTOS cover the identical wares
"pharmaceutical preparations for the prevention or treatment of
osteoporosis"; they are both prescription drugs and distributed in
drugstores and they will both likely be indicated primarily for the elderly. At
paragraph 46, she wrote: “The Applicant contends that medical professionals,
namely doctors and pharmacists, would understand that these are very distinct
products.” She also mentioned the Applicant’s argument patients would certainly
understand the difference between a product that includes an injector pen and
must be injected through the skin from one taken by oral suspension.
[68]
She then wrote:
“While
I acknowledge the fact that there is some authority for the Applicant's
contention that the risk of confusion is lessened in the field of prescription
medications since the nature of the transaction is such that the products are
delivered by meticulous professional accustomed to making distinctions between
the names of various products, I disagree with the Applicant's approach, as
this is not the proper approach to be taken.”
[69]
That approach has already been
discussed in these reasons: What is required is a comparison between the
statements of wares in the applications for registration but stressing once
again both marks cover identical wares which are intended to travel through the
same channels of trade. She commented in the last sentence at paragraph 47 of
her reasons: “It is also well established that even in the case of prescribed
medication, the average consumer consists of the physician prescribing
medication, the pharmacist and the patient.”
[70]
Without citing any case law in support
of the proposition that patients are included in the average consumer of
prescription drugs, the Board Member was undoubtedly referring to the Supreme
Court of Canada’s decision in Ciba-Geigy Canada Ltd. v. Apotex Inc., [1992] 3
S.C.R. 120 (Ciba-Geigy), where
Justice Gonthier in a passing-off action which focused on the identical get-up
(shape, colour and size) of two prescription drugs, specifically held patients
are included within the ambit of consumers of such prescription drugs and
therefore could be affected by confusion in relation to the two drugs. Justice
Gonthier observed that in a summary judgment to the action which was dismissed,
the Courts had held only confusion in the minds of physicians, dentists or
pharmacists were relevant and the Plaintiff had not established they would be
confused by the identical get-up.
[71]
He ruled that patients are to be included amongst those who may
be confused by the identical get-up on the principle that the purpose of a
passing-off action is to protect all persons affected by the product. Justice
Gonthier stated the two products involved were interchangeable on the
provincial drug lists. At paragraph 98 of his reasons, Justice Gonthier ruled:
“The prescription pharmaceutical products business is not so fundamentally
different from other areas of commercial activity that special rules should
apply to it.”
[72]
The second place where the Board Member considered the
prescription drug issue was in her discussion of drug errors, i.e. errors in
prescribing medications and errors by a pharmacist when filling the
prescription. She agreed with the Applicant, at paragraph 65 of her reasons:
“… that the possibility of errors in prescribing or
dispensing of drugs is not directly related to the likelihood of confusion
as to the source of the product, which is the issue for decision in this case.”
[My emphasis.] She amplified her thinking by referring to the SmithKline Beecham Corp. v. Pierre Fabre Médicament case, a 1998 decision of the
Opposition Board, cited at [1998] T.M.O.B. No. 141, for the
proposition the standard of confusion in cases involving pharmaceuticals is not
different than that applicable to other wares and for the further proposition
that the essential question to be determined is expressly related to the source
of the product.
[73]
Moreover, counsel for the
Applicant’s reliance on the Rorer case is misplaced as it was decided
before Ciba-Geigy.
[74]
Based on the reading of the Board Member’s
decision as a whole, I conclude she did consider the reaction of physicians and
pharmacists in the mix of factors which she was required to balance leading to
her determination as a matter of first impression and imperfect recollection
the Applicant had failed to discharge the legal burden upon it to show
that, on a balance of probabilities, there is not reasonable likelihood
of confusion as to the source of the parties’ wares. [Emphasis mine.]
[75]
Taken as a whole, her decision is reasonable
and is defensible both in fact and law. For these reasons, this appeal is
dismissed.
JUDGMENT
THIS COURT
ORDERS AND ADJUDGES that this appeal is
dismissed with costs, fixed at the upper level of the units, in Column IV of
the Tariff.
“François
Lemieux”
______________________________
Judge
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