Decision

Samsung Bioepis Co., Ltd. v. Novartis AG, 2025 FCA 212

Justice Boivin; Justice Woods; Justice Laskin - 2025-11-28

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The judgment in question (2024 FC 52) enjoins the appellants and their licensees from using their trademark BYOOVIZ in association with a drug for use in ophthalmology and the prevention and treatment of ocular disorders and diseases, and awards the respondents $20,000 in nominal damages. The application judge granted this relief after concluding that the appellants’ use of the BYOOVIZ trademark violated rights of Novartis in its registered trademark BEOVU under s. 20(1) (trademark infringement) and s. 7(b) (passing off) of the Trademarks Act. The appellants seek to have this judgment set aside. The cross-appellants seek to have the remedy varied to order that Novartis be entitled to recover at its election either its damages or the appellants’ profits ... As explained below, the main appeals and the cross-appeals will be dismissed. ... If the latter part of this test from Joseph Seagram—i.e., the consumer must encounter the mark as used by the trademark owner—was once good law, it is no longer. ... In addition, the requirement is at odds with Mattel and Masterpiece, which both confirm that the test is hypothetical even though it takes the consumer’s surrounding circumstances into account. Accordingly, in applying s. 6(2) the prospective consumers are not actually required to encounter the trademark as used by the owner. ... [Regarding remedies] a change in circumstances is not a proper ground of appeal; rather, it can provide a basis for a motion to the first instance decision-maker to set aside or vary under rule 399(2)(a). For these reasons, we will dismiss the cross-appeals with costs.

Decision relates to:

 

Canadian Intellectual Property