October 1997 Lead Newsletter Article
A downer for Prozac
For the few people in the marketing community who take Prozac, good news is at hand. It is available in a generic format. Think of it -- twice the drug at half the price.
For those who have never heard of Prozac, it is a pharmaceutical product used to treat depression. It's also prescribed for disorders such as bulimia, autism and obsessive-compulsive behavior.
Officially known as "fluoxetine hydrochloride," Prozac is considered a breakthrough drug -- before its launch, the alternative drugs had more significant side effects, and were dangerous if taken in overdose.
"Prozac" is the Eli Lilly trademark for fluoxetine. Once the patent on the drug expired, other pharmaceutical manufacturers began to market generic versions of fluoxetine. Novopharm launched a generic version that was identical in size, shape and colour as the drug sold by Eli Lilly.
Eli Lilly took Novopharm to the Federal Court of Canada seeking an injunction to prevent them from selling a version of fluoxetine that was similar in appearance. They alleged that in doing so, Novopharm was "passing off" their drug as the product of Eli Lilly.
To succeed in a passing off action, the party requesting the injunction must prove a misrepresentation. It need not be an intentional misrepresentation. The basic question is whether the public could be misled into believing that the goods or services offered by a second seller are the goods or services of the first seller.
In layperson terms, the legal issue in this particular passing off case can be expressed this way—because both drugs looked the same, would the public be confused into believing that the two brands were being sold by one manufacturer (in which case, Novopharm might be said to be passing off their product as that of Eli Lilly). The Court decided against the manufacturers of Prozac.
Both sides submitted survey evidence on the meaning attached to the appearanceof a drug by consumers. The Court was uncomfortable with the Eli Lilly survey, saying it was based upon questions that were leading and biased. The Court preferred the Novopharm survey which indicated that people do not attach much meaning to the colour of prescription medicines.
The Court noted that the appearance of capsules would not lead a customer to request Eli Lilly's product since they would not see the drug before requesting it. Evidence showed that doctors, nurses or pharmacists would not be confused by the similar appearance.
Evidence also showed that most consumers were unaware, or not greatly concerned about the brand of medication they took; most associated the appearance with the drug's effect and not with the manufacturer who produced it. The Court said a similar appearance therefore would not confuse them.
The evidence also showed that those who cared about the brand of fluoxetine taken would either request a "no substitution" prescription or specify the brand name to their pharmacist. So, the Court said that this consumer wouldn't be confused by similar appearance either.
In those instances where the consumer specifically had been taking Prozac, the evidence showed that most pharmacists would ask them if they wanted a generic version before making a switch.
The judge refused to grant the injunction, summarizing the case this way:
"I cannot conclude that (Eli Lilly) has proved, on the balance of probabilities, that (Novopharm's) sale of fluoxetine in capsules having a similar appearance to those of (Eli Lilly) would result in any significant likelihood of confusion."
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