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TMOB finds no reasonable likelihood of confusion between pharmaceutical trademarks ONVIADA and ONIVYDE

On February 6, 2020, the Trademarks Opposition Board (the Board) rejected an opposition by Ipsen Biopharm Ltd (the Opponent) to the registration of the trademark ONVIADA filed by Fujifilm Kyowa Kirin Biologics Co, Ltd (the Applicant), finding that there was no reasonable likelihood of confusion between ONVIADA and the Opponent’s trademark ONIVYDE (Ipsen Biopharm Ltd v Fujifilm Kyowa Kirin Biologics Co, Ltd, 2020 TMOB 13). The Board reasoned that although the marks resemble each other visually and will presumably be marketed and sold through the same channels of trade, they are quite different when sounded and each carry its own inherent distinctiveness as a coined term.

The registration was opposed on the ground that the Applicant was not the party entitled to registration of ONVIADA under s. 16(3) of the Trademarks Act as it was confusing with the Opponent’s trademark ONIVYDE, as well as on s. 30(d) and 30(i) grounds which were summarily dismissed (all sections refer to the Act pre-2019 amendment). The primary issue in the proceeding was whether there was a likelihood of confusion between the Applicant’s trademark ONVIADA in association with “preparations for the treatment of immunologic diseases, namely, autoimmune diseases, immunologic deficiency syndromes; pharmaceutical preparations comprising an anti-tumor necrosis factor (TNF) alpha monoclonal antibody” and the Opponent’s trademark ONIVYDE in association with “pharmaceutical preparations for the diagnosis and treatment of cancer for human use”. The Board considered each of the factors set out in s. 6(5) of the Act in its confusion analysis.

Inherent distinctiveness

The Board found that both marks had a high degree of inherent distinctiveness as they appeared to be coined terms.

Length of time the marks had been in use

No evidence was presented that either party’s trademark had been used in Canada and so this factor was noted as favouring neither party.

Nature of the goods and trade

Although there was no evidence that the specific treatment indications overlapped, the Board noted that both pharmaceuticals were for human use and made the assumption that both parties’ goods would be marketed and sold through the same channels of trade to doctors, pharmacists and patients.

Degree of resemblance

The Board found that while the marks resembled each other visually in that they both begin with “ON” and share the letters “I”, “V” and “D”, they are quite different when sounded. The striking element of each mark was noted to be the coined word comprising the entirety of each mark, as opposed to their shared first syllable. There was also found to be no resemblance in ideas conveyed as both marks are coined terms without a dictionary meaning or descriptive connotation.

After balancing all the factors, the Board concluded that there is no reasonable likelihood of confusion between the two trademarks and dismissed the s. 16(3) ground of opposition.

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