In NPS Pharmaceuticals v. Biofarma (2009 FC 172), the Federal Court upheld the Trade-marks Opposition Board’s (“the Board”) decision to dismiss NPS Pharmaceuticals’ (“NPS”) application to register the mark PREOS based on proposed use in association with pharmaceutical preparations for the treatment of certain bone diseases. Biofarma, Société par Actions Simplifiée (Biofarma), whose proposed marks PROTOS and PROTELOS had been accepted, but not yet registered, in association with nearly identical wares, opposed the application.

Proposed marks are registrable pursuant to section 6(3) of the Trade-marks Act (the Act). The Court ruled that the Board had acted reasonably in finding that NPS had failed to show its proposed mark was not confusing under section 6(5) of the Act. Specifically, the Court held that the Board had not erred in rejecting expert evidence concerning the sound of the mark, when comparing the statements of wares or in disregarding the fact that Biofarma had applied for two marks for the same ware. The Court also confirmed that the perceptions of patients, and not only those of professionals, are to be considered when assessing confusion with respect to pharmaceuticals.

On appeal, the Court adopted the reasonableness standard of review in accordance with Dunsmuir v. New Brunswick (2008 SCC 9). Although new evidence was adduced on appeal – namely an affidavit that NPS provided to establish its expert’s qualification to give evidence regarding the marks’ pronunciations in French – the Board would have given it little weight in light of Pierre Fabre Médicament v. SmithKline Beecham [(2004), 35 C.P.R. (4th) 23 (F.C.)],which held that a confusion analysis should not proceed by dissecting the marks sound by sound, something the average consumer would never do.

With respect to the Board’s treatment of NPS’ expert evidence, the Court held that the Board Member had been correct to accept the expert’s comments regarding the physical, visual, and notional similarities of the marks, but not those comparing their sounds, given the above. NPS also argued that, because Biofarma had applied for both PROTOS and PROTELOS based on the same proposed use, the Board should have considered which mark Biofarma was more likely to use, and then compare it to PREOS. Here too, the Court found that the Board had been reasonable because even if Biofarma ultimately used PROTELOS, NPS could simply apply for expungement of PROTOS under section 57 of the Act.

With respect to the possibility of confusion between PREOS and PROTOS, NPS argued that their respective wares were in fact different: whereas PREOS was to be administered by injector pen, PROTOS was to be administered by oral suspension. This, however, was not specified in the statements of wares, which the Board Member had considered to be the proper comparators. The Court agreed, favourably citing Mattel v. 3894207 Canada (2006 SCC 22 at para. 53), where Binnie J. had said: “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.” Moreover, the Board had not erred in not affording more weight to NPS’ contention that purchasers pay particular attention when purchasing drugs, reducing the risk of confusion: again, the statement of wares were identical and, in keeping with Ciba-Geigy Canada Ltd. v. Apotex ([1992] 3 S.C.R. 120), the perceptions of patients, and not only those of professionals, must be considered. The Court concluded that the Board had sufficiently considered the perceptions of professionals, and had been reasonable in finding that NPS had failed to establish that confusion between the proposed marks was unlikely.