Federal Court applies new test to earlier ruling

In Pierre Fabre Médicament v Smithkline Beecham Corporation, the Federal Court of Canada has allowed the registration of an IXEL mark for antidepressant pills following an order from the Federal Court of Appeal to re-examine an earlier ruling. The Federal Court followed the test set out by the appellate court and determined that there was no risk of confusion between IXEL and Smithkline Beecham's (now part of the Glaxo Group) PAXIL mark used for the same type of goods.

Pierre Fabre Médicament, a pharmaceutical company established in France, had seen its initial application to register IXEL rejected by the trademark registrar following an opposition by Smithkline Beecham based on its registration for PAXIL. Upon an appeal of the registrar's decision, the Federal Court rejected the opposition and ordered the registration of IXEL.

The Federal Court of Appeal allowed an appeal of the Federal Court's decision and concluded that both the registrar and trial judge had erred with respect to the appropriate test to use to determine the risk of confusion. The appellate court stated that, once there is a risk of confusion in either of Canada's two official languages (English and French), a trademark cannot be registered. According to the court, there is only one three-step test to apply, namely is there a risk of confusion for:

• the average Francophone consumer;
  
  
• the average Anglophone consumer, and
  
  
• in some special circumstances, the average bilingual consumer.

The Court of Appeal then determined that the trial judge and registrar erred in transforming the third prong of this test into an independent test, by examining the issue from the point of view of the bilingual consumer only. Since the opposing parties agreed that there was no risk of confusion for the average Francophone consumer, the appellate court sent the case back to the Federal Court and ordered it to determine whether there was a risk of confusion between the trademarks for an Anglophone consumer.

The Federal Court has now issued its decision and has allowed the registration of the IXEL mark. It formulated the test it had to apply in the following manner:

"is it more than less probable that, as a first impression, in the mind of the average Anglophone consumer having a vague recollection, there would be a tangible risk of confusion between the trademarks IXEL and PAXIL?"

As the case involved prescription medication, the average consumer was held to include the doctor prescribing the medication, the pharmacist and the patient. The court then specified that confusion is quite difficult to establish in the field of prescription medication.

After establishing that there was little resemblance between the trademarks in appearance or ideas suggested by them, most of the court's analysis concentrated on the degree of resemblance in sound. In accordance with the conclusion drawn from Pierre Fabre's expert evidence, the court found that the first syllable of the PAXIL mark could not be confused with the first syllable of IXEL phonetically in English, a conclusion similar to the one made in its first decision on this case, which was based on the point of view of a bilingual Francophone-Anglophone consumer. Even though the second syllable for both words would seem similar in pronunciation for an Anglophone consumer, the initial syllable difference is so great that any resemblance between the two phonetically remains improbable. Hence, the final conclusion by the Federal Court has not changed with respect to its original decision, but this time, one can say that the proper language in its reasoning has been used.

Adam Mizera, Léger Robic Richard, Montreal