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6 Landmark Trademark Infringement in Pharmaceuticals

Trademark Infringement Cases

This post brings you the six landmark trademark infringement cases in the area of the pharmaceutical industry.

1. Cadila Healthcare Ltd. v/s Cadila Pharmaceutical Ltd, 2001(5) SCC 73

The appellants used the ‘FALCIGO’ drug to treat cerebral malaria-Falcipharum was granted a trademark. Approximately after a year, the respondents used the word Falcitab to treat the same disease. Appellants filed a suit in district court at Vadodara seeking an injunction from using the word Falcitab.

Appellants claimed that both medicines were used for the same disease, there is a deceptive similarity in the names, and both medicines were of last resort. The respondent company contended that the word Falci, a word prefix, is taken from Falciparum malaria, which is standard practice in the pharmaceutical trade. S.C. said although both drugs are sold under prescription; however, this fact is not enough to prevent confusion. As confusion in medicinal products can be life-threatening, S.C. said the test of confusing similarity could be modified in the case of pharmaceutical drugs. Hence it was further held that the injunction is validly applicable in this case.

Key aspects:

The Hon’ble Supreme Court also laid down some factors for deciding the question of deceptive similarity depending upon the facts and circumstances of each case. These are the following factors:

a) The nature of the marks, i.e., whether the marks are word marks, label marks, composite marks
b) The degree of resemblances between the marks, phonetically similar and hence similar in idea.
c) The nature of the goods in which they are used as trademarks.
d) The similarity in the nature, character, and performance of the goods of the rival traders.
e) The class of purchasers who are likely to buy the goods bearing the marks they require on their education and intelligence and a degree of care they are likely to exercise in purchasing and/or using the goods.
f) The mode of purchasing the goods or placing orders for the goods; and
g) Any other surrounding circumstances which may be relevant in the extent of dissimilarity between the competing marks.

2. Cipla Limited v/s M.K. Pharmaceuticals MIPR 2007 (3) 170

Plaintiff manufactured “NORFLOXACIN” tablets which were oval in shape and orange in color under trademark ‘NORFLOX-400’ in blister packaging. Defendant used the same name, ‘NORFLOX-400,’ but it was not the name for which the plaintiff filed the suit; instead, the plaintiff’s contention was that defendant copied the shape, color, and blister packaging of tablets which created confusion. It is settled law that there can be no monopoly of color as no consumer asks for medicine by its color, shape, or packaging. Blister packing is prevalent, and the shape of tablets is also commonly circle or oval. Therefore injunction was not granted.

Key aspect:

Therefore it is settled from this judgment that the distinctiveness of medicine is the name and not the color, shape, or packaging, even if there is deliberate copying.

3. Neon Laboratories Ltd v/s Medical Technologies Ltd. & ors 2015(64) PTC 225 (SC)

The Appellant filed an application in 1992 for the registration of the trademark. The appellants’ trademark ‘ROFOL’ was granted in 2001, but after registration, they didn’t introduce the product in the market until 2004. In 1998 the respondent launched a drug trademarked ‘PROFOL.’ Therefore we can see that respondent had a prior user date while the Appellant had a previous registration date. The case was decided in favor of the respondent as the Respondent started manufacturing and marketing and registered and earned substantial goodwill. Hence injunction was imposed on the ‘ROFOL’ trademark. Two factors of an interim injunction are the balance of convenience and irreparable loss; both were in favor of the respondent.

Key aspects:

The Supreme Court commented in this case:

A mark should generally be a new creation; if the mark is an existing word, it should not bear descriptive characteristics relating to the product.

4. Kaviraj Pandit Durga Dutt Sharma v/s Navaratna Pharmaceutical Laboratories AIR 1965 SC 980

The Appellant sold ayurvedic pharmaceutical products under the name ‘NAVRATNAKALPA,’ and the respondent manufactured medical products under the registered trademarks’ NAVARATNA’ and ‘NAVARATNA pharmaceutical laboratories. The Appellant appealed against the decree of the District Court and also filed an Original Petition in the High Court of Travancore Cochin, making the prayer that Ayurvedic physicians ordinarily use the word ‘Navaratna’ for medicines prepared out of the nine precious stones, and it’s a generic word common to the Ayurvedic system of treatment; therefore, the plaintiff can’t claim monopoly over it.

It was held that a word that is common in use could not be appropriated by a person solely as his own unless it is established by strong and irresistible evidence that the original meaning of the word is lost and another acquired by the use of the word by the person claiming the monopoly. In these circumstances, the learned Judge rightly holds that the firm’s claim to the word being its trademark is unjustified. An injunction can’t be granted because the monopoly is not established.

5. Astra-IDL Limited v/s TTK Pharma Limited AIR 1992 Bom 35

Plaintiff filed a suit against the defendant for using the trademark ‘BETALONG,’ which is deceptively similar to the plaintiff’s mark ‘BETALOC,’ and claiming a permanent injunction. Defendant contended that he launched the product for hypertension and treatment of angina pectoris under the mark ‘BATALONG’ and filed a pending application. Defendant said the product is continuously marketed and has gained a reputation and goodwill. This drug comes under schedule ‘H’ and can be sold by a chemist holding an appropriate license. Defendant said the word BETA is very common in this trade. Lastly defendant submitted that he has been in the market since 1986, and the plaintiff filed the suit in 1988, so the plaintiff is delayed in approaching the court, and therefore he should not be entitled to interim relief.

The Court, among other things, held that:

i) The defendants’ mark was deceptively similar to the plaintiffs’ registered trademark, and the get-up, color scheme, etc., of the rival strips and cartons, were identical;
ii) That the defendants were using the infringing mark and deceptive cartons with a view to trading on the plaintiffs’ reputation and their contention that there could not be any deception since the medicines needed a doctor’s prescription was not acceptable as the defendants’ mark and phonetically similar to the plaintiffs’ mark.

Key aspects:

The court held that when schedule ‘H’ drugs are sold without a doctor’s prescription over the counter, the doctor’s prescription factor is less important, but if their packing is not similar, then the fact that its schedule ‘H’ drug is to be given due importance.

6. Wyeth Holdings Corporation Anr v Burnet Pharmaceuticals (P) Ltd 2008 (36) PTC 478

The plaintiffs were the proprietors of the registered trademark FOLVITE, registered in 1949. The defendant had initially used the mark FOLCACID for its products. Subsequently, the mark was changed to FOLV, and they wanted to register it. The plaintiff restrained the defendant from using the mark FOLV, alleging that it is visually and phonetically similar to its mark FOLVITE. The defendants pleaded that FOL in FOLVITE stands for Folic acid while the abbreviation VIT stands for vitamin, which are generic descriptions common to trade. They claimed that greater emphasis must be paid to distinctive elements when a word consists of common elements.

Consequently, in assessing where there is deceptive similarity, both sets of letters FOL and VIT must be excluded. The ‘E’ is all that remains in the plaintiffs’ mark. The defendant pleaded that the observations of the Supreme Court in Cadilla case must be confined to those cases where the competing marks are used for drugs with different compositions. The Court rejected the defendant’s contention that FOLVITE should be seen as a combination of FOL and VIT, and the Court held that its validity could not be questioned so long as the mark continues in the register. The Court also noted that the defendant had initially adopted the mark Folic acid, which is now changed to FOLV, a mark that could lead to confusion in the minds of consumers.

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