Trademark Confusion in Healthcare: Why Patients Matter in the Analysis
Introduction
When it comes to trademark disputes in the pharmaceutical industry, the question of who counts as the relevant consumer can make or break a case. A recent decision of the Federal Court of Appeal in Samsung Bioepis Co., Ltd. v. Novartis AG (2025 FCA 212) sheds light on this issue. The Court confirmed that patients are relevant consumers in assessing the likelihood of confusion between drug trademarks, even when patients do not purchase the drug themselves.
This ruling is critical for brand owners and generic manufacturers alike. It underscores that trademark law protects not only prescribers and pharmacists but also the ultimate end-user, the patient.
Background of the Case
Novartis owns the registered trademark BEOVU, used for an anti-VEGF drug treating age-related macular degeneration. Samsung and Biogen marketed a competing drug under the trademark BYOOVIZ. Novartis claimed infringement and passing off under the Trademarks Act, arguing that BYOOVIZ was confusingly similar to BEOVU.
The Federal Court agreed, granting an injunction and awarding nominal damages of $20,000. On appeal, Samsung and Biogen argued that the judge erred by including patients in the confusion analysis.
The Legal Test for Confusion
Under section 6 of the Trademarks Act, the test for confusion is based on the first impression of in the mind of a casual consumer somewhat in a hurry who has only an imperfect recollection of the prior mark ([para. 9]). Courts must consider all surrounding circumstances, including:
- Inherent distinctiveness
- Length of use
- Nature of goods and trade
- Degree of resemblance ([para. 10])
Are Patients Relevant Consumers?
The appellants argued that patients should be excluded because they do not encounter the trademark “as used by the trademark owner” ([para. 82]). The Court rejected this, stating:
“If the latter part of this test … was once good law, it is no longer. … in applying s. 6(2) the prospective consumers are not actually required to encounter the trademark as used by the owner.” ([para. 89])
Why Patients Matter
The Court endorsed the application judge’s reasoning that patients are relevant because:
- They are told the brand name of the drug administered.
- They sign consent forms.
- They can refuse treatment upon hearing or seeing the trademark.
- In some clinics, they can choose between drugs ([paras. 34–35]).
As the Court put it with reference to the trial judge’s decision:
“Patients are clearly affected by the ophthalmologist’s choice of medication, she stated, and while the funding models vary from province to province, the drug is purchased for the patient’s benefit and use, injected into the patient’s body at regular intervals, and the patient can be switched to a different drug. Patients know what medication they are on by its brand name. In her view, a patient who is told the name of the anti-VEGF drug they will receive is a relevant consumer, and entitled to protection from confusion. .” ([para. 38])
The Court agreed, citing strong policy reasons from Ciba-Geigy:
“Whether the choice is great or small, easily exercised or not, does not change anything” And, “that patients were relevant consumers for purposes of the confusion test”. ([paras. 95–96])
Consumer Attitude and Sensitivity
Novartis submitted that patients are a sensitive population, generally over 70, and having a range of anxieties and and a diagnosis that could lead to blindness among other health challenges. ([para. 43]).
While the application judge did not find evidence that patients are more likely to be confused due to age or anxiety, she rejected the claim that patients are “informed consumers” simply because they consult a doctor:
“The application judge found that the evidence did not establish patients would approach a decision about anti-VEGF drugs with reduced care or attention, or that they were more likely to be confused due to their sensitive nature or their age. However, she disagreed with the appellants that patient confusion is less likely because patients must consult with their doctor before they are given anti-VEGF medication, and are therefore deemed to be informed. The application judge held that the evidence did not establish that the ordinary patient is equipped with knowledge or awareness that would lessen the likelihood of confusion on first impression.” ([para. 48])
Other Factors Considered
The Court also weighed:
- Inherent distinctiveness: BEOVU is a coined word, entitled to greater protection ([para. 99]).
- Nature of goods and trade: Both drugs are used in identical contexts ([para. 101]).
- Degree of resemblance: BEOVU and BYOOVIZ share similar letters, syllables, and sound patterns. Oral communication was deemed especially important because patients often hear the drug name spoken by their doctor ([paras. 62–64]). “She concluded that the spoken trademark is an important way consumers encounter the trademarks in question, and the predominant way patient consumers encounter the trademarks in question .” [para. 64]
Key Takeaways for Brand Owners
- Patients count: Even if they do not purchase the drug, patients are relevant consumers for trademark confusion analysis.
- Sound matters: Oral communication of drug names is important.
- Policy focus: Trademark law aims to protect all end-users, reinforcing consumer protection principles.
Conclusion
This decision confirms that in healthcare trademark disputes, the analysis goes beyond prescribers and pharmacists. Patients, the ultimate end-users, are entitled to protection from confusion.
Want to Read the Full Case?
You can access the case, Samsung Bioepis Co., Ltd. v. Novartis AG, 2025 FCA 212 here.
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Updated December 2025
