India: Trade Dress Compared In Pharma Trademark Dispute.

Last Updated: 19 May 2011
Article by Sonam Lhamu Bhutia

In a recent case, the Delhi High Court granted ad interim stay in favour of Glaxo Group Ltd & Anr (Plaintiff), thereby refraining Sunlife Sciences Pvt Ltd (Defendants) from manufacturing, selling and trading pharmaceutical preparations under the mark in question and also from using deceptively similar trade dress to that of Glaxo's during the pendency of the suit.

Glaxo Group is a well-known pharmaceutical company which has been selling pharmaceutical formulations under the marks BETNOVATE and BETNOVATE-C, CROCIN and ZINETAC/ZANTAC . They alleged that Sunlife Sciences were using the brand names B-NATE-C, CORSUN and ZEETAK which were deceptively similar to the marks used by Glaxo, not only in terms of the color scheme, get up and layout but also phonetically, to the extent of not only violating Glaxo's statutory rights but also causing confusion in the minds of the public by selling deceptively similar products.

In their written statement Sunlife Sciences raised doubts firstly, about the maintainability of the suit stating that it had not been instituted properly and was therefore liable to be rejected and as such the question of granting an ad interim stay in favour of Glaxo did not arise. Secondly, it was contended that Sunlife's office was based in Bangalore and their pharmaceutical products were not circulated in Northern India much less in Delhi and thus the Court did not have the jurisdiction to adjudicate upon the present suit.

Referring to the first issue, the Court, taking prima facie view of the matter, felt that the documents i.e. the power of attorney , which was duly notarized , and bore certificate of the notary public was enough to show that Glaxo had duly instituted the suit. The Court further said that even if the power of attorney were to be defective in nature, it could be rectified by the party later as it was just an irregularity. As with the second issue, the Court Observed that Section 134 (2) of the Trademarks Act, 1999, could be read as a proviso to normal law relating to jurisdiction of a court. According to this particular section, in case of a registered trademark , the plaintiff has the right to institute a suit at the place of its business unlike under normal Civil Law, whereby under Section 20, Code of Civil Procedure, the suit has to be instituted at the place of the defendant's residence, place of work or business or where the cause of action had wholly or partly, arisen. In the present case, the Court said that this was merely a technical objection, and since Glaxo had been carrying out its business in Delhi, it was proper that the suit had been instituted in Delhi. The fact that Sunlife Sciences contended that its office is in Bangalore did not deprive the present Court of the jurisdiction especially where it was alleged that Sunlife's pharmaceutical products were available in Delhi. Thus, referring to Sangram Singh vs. Election Tribunal, where it was observed, that a code of procedure is designed to facilitate justice and is not a penal enactment for punishment, therefore too technical interpretations of sections without room for elasticity of interpretation should be avoided, the Court dismissed the two objections.

The Court then went on to consider whether Glaxo satisfied the three requirements for grant of an ad interim injunction. These being :

  1. Does Glaxo have a prima facie case?
  2. Whether the balance of convenience is in its favour.
  3. In the event of an ad interim injunction not being granted, whether it will suffer irreparable loss.

The Court began by observing that all of Glaxo's trademarks were invented trademarks and had become highly distinctive due to long use for more than four decades. With respect to the fact that Sunshine had copied Glaxo's color scheme, getup and layout the Court said that it is an established principle of trademark law that in cases of infringement, the trade mark must be seen as a whole, the only exception being where the trademark comprises of generic element and distinctive element which includes part of the name of the salt or ailment and try to gauge the similarity to the other part of the trademark. In the present case the Court found that seeing the mark as a whole there was no difficulty in concluding that the products of Sunshine was a deceptively poor imitation of Glaxo's product.

Further, the Court stated that in trademark infringement cases , invented trademarks are not amenable to splitting and the only case where the it is split are in cases of ailments/ the drug is intended to cure or if the drug had any other feature which is related to the name of the element/ basic ingredient/ salt which is in question. Applying this principle to the present case, the Court found that Sunshine had completely copied Glaxo's marks without any justification seeing from all angles, be it from the name of the ailment or from the name of salt or from the name of chemical compound.

An important factor which the Court said should not be ignored was the fact that this was a pharmaceutical case and as per the Apex Court's indication in Cadila Health Care Limited Vs. Cadila Pharmaceuticals Ltd. the Courts must follow stringent view in such cases. The confusion which is brought upon consumers in pharmaceutical cases is not only inconvenient but is also life threatening as the consumption of spurious drugs could be fatal. The confusion therefore is against the Public interest doctrine, which outweighs everything else.

In Midas Hygiene Industries vs. Sudhir Bhatia & Ors , the Apex Court laid down that Injunction must follow where in an infringement case, there is mala fide and deliberate adoption without any justification.

In view of all of the above, the Court held that Glaxo had a prima facie case, the balance of convenience was also in its favour and it would suffer irreparable loss in case Sunshine were not restrained from using Glaxo's marks through an ad interim injunction.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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