Federal Court rules proposed mark not to be dissected by sound

The Federal Court of Canada’s recent decision in NPS Pharmaceuticals v. Biofarma (2009 FC 172) is an example of how the issue of trademark law can be brought into the medical world. We are used to hearing about patent cases involving medical innovations, but this case deals with the attempt to register marks related to certain pharmaceuticals.

The main issue of the case revolves around the Trademarks Opposition Board’s decision to dismiss the application of NPS Pharmaceuticals to have the mark ‘PREOS’ registered in association with treatment of bone diseases. The application was rejected because Biofarma’s trademark application with respect to a similar mark had previously been accepted and was pending registration. Biofarma’s proposed marks of ‘PROTOS’ and ‘PROTELOS’ were seen as being too similar to NPS’ ‘PREOS’ label and therefore, NPS’ application had to be rejected in order to avoid public confusion with respect to these similar products (section 6(5) of the Trademarks Act).

It is interesting that the court was willing to accept the perspectives of both patients and professionals, who would both come into contact with these products. A large part of the debate as to whether or not NPS’ proposed mark would cause confusion came down to how consumers would be affected. On a simple visual inspection, the names ‘PREOS’ and ‘PROTOS’/’PROTELOS’ look pretty similar (especially when used as labels for similar products).

NPS argued that consumers pay more attention when purchasing pharmaceuticals, which would lead to less confusion. Based on this premise, NPS tried to submit expert evidence regarding the actual sound by sound impact of the products in question.

Although NPS failed in its argument because the court was not convinced consumers would really consider pronunciation differences when making purchases, I think the most intriguing proposition stemming from this case is how much sounds and syllables can actually affect consumers (whether or not they realize it). Trademark applications that deal with word choice, as opposed to logos and symbols, can come down to simple sound and letter debates.

Perhaps NPS’ argument was too weak to win a trademark application, but that should not take away from the fact that the issue it raises is one deserving of attention. Maybe the court should have taken the opportunity to discuss the merits of sound and/or syllable evidence when it comes to trademark applications disputes.

Non-descriptive marks that successfully distinguish one product from another are the ones that receive trademarks. Unique marks become synonymous with products and provide consumers with a sense of certainty about what they are purchasing. One of the key reasons for trademark protection is to prevent confusion when it comes to consumers purchasing various products. So, the question becomes whether or not a new trademark application will cause confusion.

I think it is a legitimate argument that words can look the same, but have very different impacts either through the words’ meanings or by how different they sound when said aloud. In close cases, similar to the NPS one, I believe sound experts do have valid opinions to contribute. While it may seem too onerous a task to have to consider each individual syllable of a mark and argue its similarity or difference to the potential new mark, it seems relevant to consider whether or not two words sound the same and, if not, would there be confusion if both words enjoyed trademark protection.

Since the issue of confusion necessarily leads to two marks being analyzed for their similarities and differences, it is only fitting that sound analysis be allowed as a factor. I would accept the argument that when consumers purchase products they interact with them visually, but sound also plays a role in marketing goods. Generally, the very reason companies desire trademark protection is because they have developed visually and aurally pleasing marks that they want people to associate with their products.

Hopefully, we will see more trademark cases involving this line of sound and syllable disputes because this is a valid issue in determining whether or not two marks will be confusing.