Osteoporosis Marks a Bone of Contention: NPS Pharmaceuticals v. Biofarma


The Federal Court recently issued its judgment in NPS Pharmaceuticals, Inc v. Biofarma, Société Par Actions Simplifiée.   This case was an appeal by NPS from a decision of the Trade-marks Opposition Board, which had refused NPS’s application to register PREOS, on the basis that it was confusing with Biofarma’s prior application for PROTOS.   Both marks were associated with osteoporosis medications.

The Board analyzed the facts with respect to the criteria laid out in Section 6(5) of the Trade-marks Act and also considered the issue of drug errors and whether or not Biofarma would actually use the PROTOS mark.   When considering the nature of the wares and the channels of trade for the two marks, the Board found that although the PREOS and PROTOS drugs would be administered in very different forms (PREOS being self injected and PROTOS being dissolved in a glass of water) and could be aimed at different groups of patients, the description of the wares in the applications for both drugs covered identical wares and were not limited as to physical form, dosage and mode of application.   The Board also found a “fair degree of resemblance” between the marks, rejecting the “microscopic analysis” by NPS regarding the differences in appearance and sound of the marks.   On the issue of possible drug administration errors, the Board held that this was not directly relevant to the issue of confusion.   In addition, the Board found that Biofarma was entitled to rely on its allowed application for PROTOS (which was in good standing) to oppose PREOS, despite uncertainty surrounding whether the PROTOS mark would ever be used in Canada.   Based on all the factors considered, the Board held that the PREOS mark was confusing with PROTOS.

NPS alleged that the Opposition Board had failed to take into account or give appropriate weight to some of the factors to be considered in determining confusion (as set out in the Trade-marks Act).   In particular, NPS argued that the Board had not adequately considered (1) the differences between the actual wares of the parties (as distinct from the description of the wares in the respective trade-mark applications), (2) the degree of care that would be taken by consumers of prescription drugs, (3) the differences in appearance and sound of the marks, (4) the remote chance of drug error, and (5) the likelihood that Biofarma would use a different mark, PROTELOS, rather than PROTOS for its product.

The Federal Court found that the Board’s treatment of each factor in the confusion analysis was reasonable.   In particular, the Court confirmed that the Board had adopted the correct approach in considering the scope of protection sought by the trade-mark application (rather than merely the narrower scope of the likely form of use of the wares) when looking at the possibility of confusion between the nature of the wares.   The Court also commented that even though the wares in this case were administered by physicians, consumer perceptions must still be included in the confusion analysis in prescription drug cases.   In addition, the Court reiterated previous findings that the probability (or in this case, improbability) of drug errors is not directly related to the likelihood of confusion as to the source of the wares.   As a result, the Court determined that the Board’s finding of confusion between NPS’ PREOS and Biofarma’s PROTOS was reasonable, and so dismissed the appeal.