Intellectual Property in a trade dress is easy to enforce vis-à-vis trademark. Deceptive similarity in a trade dress is more palpable than that in the trademarks. Whereas a number of parameters come into play while deciding the question of deceptive similarity in trademarks, they are not so much applicable to the trade dress. The recent case of G.D. Searle LLC & Ors V. Maiden Pharmaceuticals Ltd demonstrates the forgoing.
Facts of the case
Searle is the registered proprietor of the famous anti diarrhea drug LOMOTIL. The trademark LOMOTIL is an ‘inventive word’ derived from the term ‘Low Motility’. The drug is sold in the distinctive tradedress that consists of blue colour strip using a particular red colored font and design. Searle also claims copyright protection for the layout, get up, packaging, colour scheme, lettering and all other artistic work in its product LOMOTIL. Maiden Pharmaceuticals starting manufacturing the same pharmaceutical preparation and sold it using the same tradedress under the trademarks ‘MICROTIL’ and ‘MONOTIL’. Searle instituted infringement action against Maiden for dishonestly adopting a deceptively similar mark to pass off its goods as that of Searle.
Maiden took the commonplace defense that the drug in question is a scheduled drug that is sold only on doctor’s prescription and hence the likelihood of confusion in the minds of the prospective consumers does not arise. Searle countered this defense by stating that notwithstanding the law in India, the prescription drugs are as freely available as over- the- counter drugs. Searle prayed for permanent injunction restraining Maiden from using the impugned trademark ‘MICROTIL or ‘MONOTIL’. Through separate orders in 2002 and 2003, Delhi High Court restrained the Maiden from marketing, selling and distributing their pharmaceutical products under the trademarks MICROTIL and MONOTIL respectively.
In the instance case Maiden filed for vacation of the injunction order passed against them. According to Maiden the order should be vacated, as the impugned trademarks were phonetically dissimilar from LOMOTIL, the drug was a schedule drug and was sold on prescription. These factors obviated any chance of confusion in the minds of the prospective consumers.
Inorder to determine the question of deceptive similarity, Delhi High Court applied the test laid down by Hon’ble Supreme Court in the celebrated case of Cadila Health Care Ltd V. Cadila Pharmaceuticals Ltd 2001 PTC (21) 300(SC). First of all the Court considered phonetic similarities between the marks of both the parties. The methodology followed by the Court was similar to that in previous cases. As the term TIL was common to both the marks, the Court considered the similarities between the prefixes ‘MONO’, ‘MICRO’ and ‘LOMO’ and found them to be absolutely different. Both Searle and Maiden claimed to have derived their trademarks partly from the term ‘motility’ that means ‘movement of the bowels’. The Court was of the opinion that as motility is a common word and related to the property of the medicine, no one could claim any right to the exclusive use of the term. Having said this, the Court ruled that the impugned marks were not deceptively similar to that of Searle.
The analysis of the similar cases reveal that in such suits the common argument forwarded by the proprietor of the impugned mark is that ‘since the drug covered by the impugned trademark is a schedule H Drug and is sold on prescription, the question of deception does not arise’. The court discussed the aspect of ‘mode of purchase’ in determining whether there is a likelihood of the impugned marks being confused as the trademark of Searle. The Court ruled that since the drugs with respect to marks Searle and Maiden can be sold only on prescription of a registered medical practitioner, the chances of a doctor getting confused are very remote.
One of the strong contention of Searle in support of the injunctive relief was that the lay out, get up, packaging, colour scheme, lettering were being used by Maiden as such and this was a flagrant violation of its Intellectual Property Rights. To bolster up this argument. Searle drew the attention of the Court to the fact that majority of the population in India is illiterate and that even the prescription drugs are sold over the counter. The Court acquiesced to this argument and held that since the trade dress of Maiden is similar to that Searle, possibility of the consumers getting deceived cannot be ruled out. On an undertaking by the Maiden to change its trade dress, the Court modified the Injunction order allowing Maiden to manufacture the drug under the trademark MICROTIL and MONOTIL under a different trade dress.
A careful reading of the case reveals the contradictory reasoning adopted by the Hon’ble High Court in dealing with two different aspects of the case. On one hand the Court was of the opinion that as the drug covered by the impugned mark is a prescription drug, the likelihood of confusion on the part of the doctors is remote and on the other hand the Court accepted the argument that since even prescriptive drug in India over the counter, the chances of the consumers getting deceived by the similar trade dress is higher. This dichotomy is difficult to justify. While the Court was right is recognizing the IP in trade dress, the justification should not stem from the fact of illiteracy when the court has already discarded this argument with respect to a point in determination.
The Court instantly recognized right of Searle over the layout, get up, packaging, colour scheme letteing and other artistic work and injunction was maintained with respect to the use of the same.
© Lex Orbis 2005
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