India: Schering Decided Against: Slated Deception Deficient

Last Updated: 29 August 2008

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 bracket.

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 meanings.

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 virtually nil.

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 injunction .

© Lex Orbis 2008

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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