India: Trade Marks Disputes Involving Pharma Brands in India

Last Updated: 17 June 2005
Article by Manisha Singh Nair

Preface

In Pharma Industry it is a general practice to name drugs either by its principal component or the ailment for which it is related to. The chemical names and the generic names cannot per se be registered as Trademark as they are refused under section 13 of the Trade Marks Act, 1999 but the Pharma Industry have adopted a way out by coining words which contain a part of the chemical name. This serves the purpose of identifying the drug. But the same has also given rise to Trade Mark infringement cases filed by drug companies on the ground that the product of its competitor which employs a part of the chemical name in its trade name, is deceptively similar to its own trade name. This made us to analyze Trade Marks disputes involving pharma brands. Our objective was to ascertain how impartial is the Judiciary in adjudicating TM disputes involving pharma brands. Yet another objective was to understand the efficiency of the Indian judicial system in adjudicating TM disputes. This article contains essentially a case study with appropriate comments on the march of the law as the Judges see it.

Beecham Group Plc. Vs. S.R.K. Pharmaceuticals 2004 (28) PTC391 (IPAB)

AMOXIL

LYMOXYL

(Appellants)

(Respondents)

The appellant was using the mark ‘AMOXIL’ in India since 1990. This mark was registered in India in 1972 in Class 5 in respect of Pharmaceutical goods. The respondent started using the mark ‘LYMOXYL’ in India from 1985. The respondent filed the application for registration of the mark in 1987 in India in the same class with respect to similar goods.

The appellant brought an action against the respondent stating that the mark is deceptively similar. The only difference between the two marks is in the prefix ‘LY’ and ‘M’. The rival marks are phonetically and deceptively similar and the goods are pharmaceutical goods under Sec. 12(1) of the Act.

The Intellectual Property Appellate Board (IPAB) held that the respondent dishonestly adopted the mark by copying it from the appellant who had got the mark registered long ago. Hence the respondent cannot claim honest concurrent use, by virtue of earlier use. The Appellate Board delivered a judgment prohibiting registration of the Trade Mark ‘LYMOXYL’.

Ranbaxy Laboratories Limited Vs. Anand Prasad & 4 Others 2004 (28) PTC 438 (IPAB)

FORTWIN

OSTWIN

(Appellant)

(Respondents)

The appellant was the registered proprietor of the mark ‘FORTWIN’ and had been using the mark since 1975. The respondent applied for registration of the mark ‘OSTWIN’. Both the marks related to pharmaceutical compositions in respect of treatment of bones.

The appellant brought an action against the respondent stating that the mark is deceptively similar. The IPAB held that the prefixes are ‘FORT’ and ‘OST’ while both the marks end with the suffix ‘WIN’. It was further held that since the rival goods are also pharmaceutical goods it might lead to serious consequences due to deception or confusion in the minds of the public. Hence on the possibility of harm being caused to common person the appeal was allowed.

Hoechst Aktiengesellschaft vs. Artee Minerals & Anr. 2004 (28) PTC 470 (IPAB)

ARELON

ARTEELON

(Appellant)

(Respondents)

The appellant was the registered proprietor of trademark ‘ARELON’. This mark was registered in class 5 with respect to pharmaceutical goods relating to preparation for killing weeds and destroying vermin. The respondent filed an application for registration of the mark ‘ARTEELON’ in the same class with respect to pharmaceutical goods.

The appellant opposed the application for registration of trade mark filed by the respondents on the ground that the registration of the impugned mark would be contrary to provisions of Sections 9, 11, 12(1) and 18 of the Trade and Merchandise Marks Act, 1958.

The IPAB held that the rival goods were same and the only difference was the letters ‘TE’. The Appellate Board further held that the possibility of confusion and deception is not ruled out and hence affirmed the order rejecting the application for registration filed by the respondent.

The IPAB further held that the benefit of use under Section 54 is given only in case of rectification proceedings when use of an associated trademark is deemed to be use of the registered trademark against which rectification proceedings are initiated for non-use of the mark.

Wyeth Holdings Corp. & Anr. vs. Sun Pharmaceuticals Industries Ltd. 2004 (28) PTC 423 (Bom)

PACITANE

PARKITANE

(Plaintiff)

(Defendant)

In this case the plaintiff whose former name was American Cynamid Company and who was the proprietor of the trademark ‘PACITANE’ registered the mark in Class 5 of Pharma goods. The respondent was using the mark ‘PARKITANE’ with respect to similar goods. The plaintiffs filed a suit for infringement and passing off and sought various reliefs including interim injunction against the defendant for using the mark ‘PARKITANE’.

The Court held that in both the cases the goods are similar, being pharmaceutical preparations for treatment of Parkinson’s disease, the customers buying these goods are the same and the trade channels are the same. Since the defendants did not show any search of the Register before adopting the impugned mark, prima facie adoption of the mark was not honest. Further, the Court held that despite protests, if the defendants have chosen to continue to sell the products, it cannot be said to be acquiescence by the plaintiff. Therefore the Court held that injunction is to be granted in favour of the plaintiff.

The Court further held that in case of pharmaceutical products, the test is of possibility of confusion and not probability of confusion. The plaintiffs have been in the field since 1950 and as such the balance of convenience is in their favour. The Court granted injunction in favour of the plaintiffs.

Pfizer Ireland Pharmaceuticals vs. Intas Pharmaceuticals and Another 2004 (28) PTC 456 (Del)

LIPITOR

LIPICOR

(Plaintiff)

(Defendant)

In this case the Plaintiff had applied for registration of the mark ‘LIPITOR’ in Class 5 relating to Pharma goods, a drug used for treatment of cardio-vascular diseases especially for reducing cholestrol. This mark has been in use by the plaintiff since 1947 all over the globe, but had not commenced marketing and selling its product ‘LIPITOR’ in India. The defendant adopted the mark ‘LIPICOR’ for a similar drug, which was manufactured and marketed in India by the defendants since June 2000. Therefore the plaintiff filed a suit in the court for a decree of passing off and also for payment of damages etc. It also prayed for grant of a temporary injunction in favour of the plaintiff and against the defendant.

It is assumed that the defendant did not incur any expenses towards research of the aforesaid drug and therefore it is possible for the defendant to manufacture, market and sell the same at a cheaper price than that of the plaintiff. It was further held by the Court that it is always possible for the plaintiff to be in India in the future as its application for registration is still pending in India. Therefore, the Court held that this is a fit case where an injunction, as sought for, is required to be granted.

The Court granted a temporary injunction in favour of the plaintiff and against the defendant, restraining the defendants, their directors, partners, distributors, stockists, retailers and all others acting on their behalf from manufacturing, marketing, selling, offering for sale, advertising etc. the product under the trademark ‘LIPICOR’ or any other mark which could be said to be confusingly or deceptively similar to the trade mark ‘LIPITOR’ of the plaintiff, till the disposal of the suit.

Analysis

It is evident from the above decisions that the courts in India take an impartial and objective viewpoint, guided solely by the merits of the case. It is pertinent to note that in India there is considerable growth in trademarks jurisprudence. The case review also shows that it is possible for the registrant of a trademark in India has recourse to an effective judicial remedy in the event his/her mark is infringed.

The Intellectual Property Appellate Tribunal has the powers to hear appeals from the orders of the Registrar of Trade Marks. However, the Tribunal does not have the powers to adjudicate on Trade Marks infringements. The court of first instance lies with the District Court having Jurisdiction to try the Infringement and passing off suits with respect to Trade Marks. All such appeals from the District Courts would be adjudicated by the High Court. The burden of proof lies with the plaintiff to make a case of Infringement. A suit for infringement must be filed within 3 years from the date of Infringement.

Ordinarily the relief prayed for is an interlocutory order for restraining the infringer from ceasing or desisting from the user mark. An interim injunction is granted on the basis of prima facie evidence on record. Especially when there is a continuing infringement happening it is also possible for a plaintiff to move an ex parte ad interim injunction before the injunction application is heard. Generally an ad interim injunction is granted for a limited period. It is also possible in a Trade Mark infringement suit to claim damages. The quantum of which is determined based on the damages suffered.

It is time to dispel the notion that it is difficult to enforce Intellectual Property Rights in India. The above analysis shows the impartiality of the Indian courts in adjudicating Trade Marks disputes involving pharma brands.

© Lex Orbis 2005

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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