The dicta with regard to trademark
disputes amongst pharmaceutical products was pretty much settled in
the Supreme Court decision Cadila Health Care v. Cadila
Pharmaceuticals Ltd. (2001) PTC 300 (SC). However, as parties
continue to vouch their rights in Courts, the trademark
'ELECTRAL' being the subject of the ad-interim injunction
came up for pursuance in the matter of FDC Ltd. v. Ajay G.
Piramal & Ors. [2008 (38) PTC (Del.)] FDC Ltd. carries on
its business of manufacturing medicinal and pharmaceutical
formulations under a variety of trademarks. In 1968, the company
claimed to have adopted 'Electral', with respect to 'an
oral formulation of physiologically important electrolytes in a
granular carbohydrate base.' To deal with diarrhea, dysentery,
shock, etc. They also claimed to have adopted a distinctive get up,
lay-out, artistic work etc. The word mark had been registered under
the Trade Marks Act, 1999 while the label had found registration as
under the Copyright Act, 1957 since 1972. FDC avers to be a market
leader, having considerable market share and spent considerable
sums on the promotion of the brand. They stated to have acquired
considerable goodwill and secondary meaning in relation to the
product. They also stated that they have been vigilant about their
mark and have pursued litigation in the regard in the past.
FDC averred that in February 2008,
he learnt of Piramal' product 'ELECT-ORS' to be
existent, in relation to the same medical formulation. FDC averred
that they deliberately used different colour combinations for the
prefix and suffix to emphasize 'ELECT' which was also part
of FDC's mark. The literature on the label was also thought to
be deceptively similar to that of FDC's mark. It was alleged
that they had copied the literature on FDC' product including
particulars, dosage, indications, storage etc. FDC claimed to have
provided instructions in 14 languages, while Piramal did so only in
English and Hindi. It was alleged that an infringement action
alongside passing off action had been committed.
FDC further submitted that the
generic name for the formulation was 'Oral Rehydration
Salts' (ORS) and not electrolytes. Several decisions were
relied on to depict that a mark could be laudatory, descriptive and
yet capable of protection if it has acquired a secondary meaning
through prior and consistent use. It was also urged by Piramal that
there were many manufacturers using the prefix 'Elect' and
submitted that third party defence was not a valid defence in
infringement. The Counsel of FDC argued that with respect to
pharmaceutical products, the prefix test applied and not the suffix
test. He averred that although the packaging of the two products
was different, yet deceptive similarity existed owing to phonetic
similarity in the names. As regards Piramal' argument of the
goods being available only at chemists, FDC submitted that the
question here was not with respect to Schedule H drugs
(Prescription drugs) and that the same was irrelevant to deceptive
Piramal submitted that the drugs
being WHO formulations, could not be monopolized by any single
manufacturer, and stated that the use of the active ingredient as
part of the name was a common practice amongst medicinal products.
The issue of phonetic similarity was also addressed, and both
parties presented to the Court several previously decided cases to
substantiate their stand. The Court deliberated upon several legal
provisions as well.
On the question whether the mark of
Piramal was deceptively similar to FDC's, the Court stated that
it was appropriate to compare the visual representation, and on the
examining the two, found the colour, background and graphic
representation to make Piramal' mark sufficiently distinctive
and different. As regards phonetic similarity, found the sound of
the words to be distinctive. With respect to copyright
infringement, the Court did not make any rulings since Piramal
volunteered to change the instructions and appending objectionable
material. The Court dismissing the application held that FDC had
not established a sufficient case attracting injunctive relief.
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