Pharmaceutical battles in the
past and present, have hovered not merely the patent scenario,
but have found a place in the various trademark clashes as
well. The Indian Judiciary, over time has evolved its
jurisprudence to tackle the issues of infringement amongst the
similar commercial names adopted by rival companies. Vital
considerations such as the nature of the drug (being a
prescription drug or over-the-counter medication) and class of
the drug (anti-cancer, ARV, etc.) form an inextricable part of
the Court's deliberation while delivering its judgment.
Several precedents have been laid in the regard, and the courts
often revisit the dicta laid therein, to decide allegations of
infringement and passing off. The Delhi High Court, rejected
the grant of an interim injunction in Schering
Corporation & Ors v. Getwell Life Sciences India Pvt.
Ltd. [2008 (37) PTC 487 (Del.)] and Schering
Corporation & Ors v. Alkem Laboratories Ltd. [CS
(OS)730/2007], involving issues on the lines of deception and
consequent infringement .
Schering, were holders of
registered trademarks 'TEMODAL' and
'TEMODAR' in relation to the pharmaceutical
product, Temozolomide, used for the treatment of various types
of cancer. Getwell Life Sciences, used the mark
'TEMOGET' while Alkem used the name
'TEMOKEM' in respect of the same anti-cancer
formulation. Schering stated in both the suits that the marks
were deceptively similar, to their pre-existing marks. They
went on further to propound that the use of these marks
constituted an infringement upon their exclusive marks. It was
also contended that the prefix 'TEMO'
constituted an essential feature of their registered trademarks
and the same could not be appropriated by Getwell or Alkem.
They contended that the prefix 'TEMO' could
only be used by them and none other. Schering quoted a plethora
of judgments to substantiate its stand.
Both Alkem and Getwell, raising
identical rebuttals averred that 'Temozolomide'
was a generic word referring to a particular chemical compound
was publici juris. 'TEMO' being an
abbreviation of Temozolomide would, therefore, was also
publici juris. In this background, they submitted in
their respective suits that publici juris could be
adopted by anyone as a part of his trademark in respect of the
chemical compound. Further, the parties contended that the mark
was a combination of 'TEMO' and a part of their
company name, leading to TEMOKEM being Alkem' drug and
TEMOGET as Getwell' product. They contended the absence
of deceptive similarity between the marks, and that the
emphasis should be on comparing the suffixes while ignoring the
common prefix. They also spoke of the honest adoption of the
mark. The class of drugs being Schedule H, or prescription
drugs, was also propounded to be an important aspect to be
borne in mind while considering the issue of deception.
Reverting to the publici
juris contention raised by Getwell and Amken, Schering
stated that owing to the mark being well-known, the same did
not hold good. They submitted that the term
'TEMO' was only suggestive of Temozolomide and
that the same could not be regarded as a substitute or an
abbreviation of Temozolomide. In this context, they deciphered
Temozolomide as publici juris, but stated that the
term 'TEMO' could not be put in the same
The Court on being presented
with the arguments stated that in order to establish
infringement of the said registered marks, Schering would have
to bring the case within the ambit of Section 29 of the said
Act. Taking into consideration, the status of registration, the
marks being non-identical, yet being in relation to the same
goods, the Court pronounced "deceptive similarity" to
be the only deciding factor. The judge stated the all the marks
to be examples of a "portmanteau word", used to
describe a linguistic blend, namely, a word formed by blending
sounds from two or more distinct words and combining their
Comparing the marks the Court
held that the marks were non-identical in nature, bearing no
phonetic or visual similarity. The Court also suggested that
the term "TEMO" could not be used exclusively, in
view of the fact that the same is publici juris being
a clipped abbreviation of a generic word. The court also
pronounced that the addition of different suffixes created no
confusion. The drug being a Schedule H drug, and the price
difference between the products of the three pharma companies
being exorbitant, the likelihood of deception was slated to be
This judgment of the Court in
these two cases reaffirmed and reinstated the dicta laid in its
previous judgments. While, doing so, the Court seems to have
assimilated and accounted for all possible factors governing
infringement in a sector as vital as the pharmaceutical sector,
in effect rejecting Schering' plea for an interim
This article enunciates the recent, much awaited, and landmark judgment delivered on September 16, 2016 by Hon'ble Delhi High Court throwing light on the important provisions of the Copyright Act, 1962.
Department of Industrial Policy and Promotion recently issued an office memorandum pursuant to receiving representations from various stakeholders for guidance with respect to the applicability of the provisions of Section 31D of the Copyright Act, 1957.
An Invention Disclosure Form is the documentation of the invention. This is a means to document particulars of your invention and submitting it to the patent attorney who is filing your patent application.
The Patents Act 1970, along with the Patents Rules 1972, came into force on 20th April 1972, replacing the Indian Patents and Designs Act 1911. The Patents Act was largely based on the recommendations of the Ayyangar Committee Report headed by Justice N. Rajagopala Ayyangar. One of the recommendations was the allowance of only process patents with regard to inventions relating to drugs, medicines, food and chemicals.
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).