Legal Insights On Pharma Trademark Similarity And Confusion

Introduction

Macleods Pharmaceuticals Ltd. (Macleods Pharma), invoking its rights in the previously used trademark ‘ALRISTA', filed an infringement suit before the Delhi High Court against Alkem Laboratories Ltd. Macleods Pharma sought to prevent Alkem from manufacturing, selling, or promoting their pharmaceutical product under the trademark 'ALSITA', arguing that the trademarks ALRISTA and ALSITA are deceptively similar and likely to confuse patients and customers in the marketplace. The primary legal issue of this case revolves around the likelihood of confusion between the trademarks and the potential public health implications.

Brief Facts

1. Both Macleods Pharmaceuticals Ltd. (hereinafter referred to as the “Plaintiff”) and Alkem Laboratories Ltd. (hereinafter referred to as the “Defendant”) are Indian pharmaceutical companies based in Mumbai.
2. The Plaintiff adopted the mark 'ALRISTA' and has been using it since 2007 for their formulations which contains 'EPALRESTAT', a salt which helps in alleviating and relieving symptoms like burning pain and numbness in diabetic patients. The Plaintiff had applied for registration of their mark in Class 5 in 2007. However, due to oppositions filed by Novartis AG and Arysta Life Science Corporation, the mark stands opposed till date and thus, has not been granted registration. Inspite of this, the Plaintiff kept selling ALRISTA-branded products extensively and has invested heavily in promoting the brand over the years.
3. The Defendant is the registered proprietor of the mark ‘ALSITA' and has been using the same since 2021 for formulations containing 'SITAGLIPTIN' which is primarily used to manage and cure Type 2 diabetes.
4. The Plaintiff first became aware of the mark ‘ALSITA' in October 2023 and subsequently issued a cease-and-desist letter to the Defendant, asking them to restrain themselves from using the mark ALSITA or its variations or any mark deceptively similar to the Plaintiff's mark ‘ALRISTA'. However, the Defendant continued to use the impugned mark for their products.
5. Due to the deceptive similarity between the marks and the products being medicinal in nature, the Plaintiff filed the present suit, claiming that the potential for confusion could have disastrous health implications among the consumers of the products.

Plaintiff's Contentions

1. The Plaintiff applied for registration of the mark ‘ALRISTA' in 2007 and has been using the mark extensively and continuously since then. They have also spent over INR 2.5 Crores in the year 2023-2024 for the promotion of the said drug. However, due to oppositions filed by two companies Novartis AG and Arysta Life Science Corporation against their application, the registration was not granted. While Arysta Life Science Corporation withdrew their opposition in 2010, the registration application of the Plaintiff still stands opposed by Novartis AG and the request for amendment is pending for processing.
2. The main contention of the Plaintiff was that both medications are capable of being ‘co-prescribed' and could feasibly be prescribed together to the same patient population who suffer from any form/type of diabetes. However, since the products are used to treat two different ailments, any confusion between the marks or the medicines could have disastrous health implications on the patient.
3. Moreover, they also contended that they were the prior users of the mark ‘ALRISTA' since 2007 and the defendant's adoption of ‘ALSITA' was dishonest and an attempt to ride on the goodwill and reputation earned by the plaintiff.
4. They further claimed that even though their mark is not registered, they have a common law right in passing off as the products of both the Plaintiff and the Defendant are being sold through the same trade channel.
5. They contended that using the ALSITA mark would weaken the unique connection between Plaintiff and its products, and the balance of convenience leans in plaintiff's favor.
6. They placed reliance on the judgement of the Supreme Court case of Cadila Health Care Ltd. v. Cadila Pharmaceuticals,¹ where it was held that there should be no confusion between pharmaceutical products.

Defendant's Contentions

1. Defendant contended that the marks ‘ALRISTA' and ‘ALSITA' are not visually, structurally or phonetically similar and even the trade dress of the two products are different. Thus, there was no passing off.
2. The Defendant claimed that their registered mark ‘ALSITA' is a combination of their house name ‘ALKEM' and the Active Pharmaceutical Ingredient (API) of the product i.e. ‘SITAGLIPTIN PHOSPHATE'. Thus, the Defendant contended that ‘ALSITA' was adopted in an honest and bona fide manner and that the coining of the word was based on a common practice in the pharmaceutical industry.
3. They claimed that the application no. 4969725 for the mark ‘ALSITA' was not opposed by the Plaintiff despite being advertised in the Trademark Journal on 14th June 2021. It was submitted that the Defendant continued to use the said mark without any interruption and developed extensive goodwill and reputation in the market with respect to the said mark.
4. The Defendant pointed out that the Plaintiff has suppressed certain material facts regarding the oppositions filed by Novartis and Arysta against their application for registration and that the Plaintiff had not disclosed any details or filed any documents with respect to the same.
5. They even submitted that there were several trademarks registered with prefix ‘AL' and suffix ‘TA' in Class 5 and that these were common to the trade.

Court's Observations and Legal Issues considered

1. Consequences of similar marks of medicinal products and the importance of No-Confusion Rule
   The court endorsed previous decisions related to passing off, emphasizing the need to assess the similarity between competing marks and the likelihood of confusion or deception. It referenced the Supreme Court's guidelines from Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. and the Delhi High Court's judgment in Glenmark Pharmaceuticals v. Sun Pharma Laboratories Ltd. In evaluating a prima facie case of structural and phonetic similarity between pharmaceutical marks, the court stressed the higher risk of confusion in the medical field compared to regular consumer products. This heightened scrutiny is necessary to prevent any chance of error, as evidenced by the American case Glenwood Laboratories, Inc. v. American Home Products Corp, which highlighted the dangers of confusion in filling prescriptions. In the current case, the phonetically and structurally similar marks ALRISTA and ALSITA, prescribed to diabetic patients for different purposes, could cause critical verbal miscommunication in hospitals, particularly affecting elderly, infirm, or illiterate patients.
2. Relevance of the Anti-Dissection Rule While Comparing Marks of Medicinal Products: The defendant's contention that the ALSITA mark was legitimately derived from their trading name and the abbreviation for SITAGLIPTIN did not exempt them from the anti-dissection rule, which prevents confusion in medicinal products by requiring marks to be evaluated as a whole. The court affirmed that prior users are significantly protected under common law. Alkem's argument regarding other similar products with the same prefix and suffix was deemed less relevant, emphasizing the importance of evaluating marks in their entirety, particularly in the pharmaceutical context.

Judgment

The Hon'ble Delhi High Court, while granting an injunction against Alkem Laboratories, held that even a slight likelihood of confusion in medicinal products can be extremely hazardous and thus, should be considered carefully by the Court. The primary legal principle relevant in this case was the Anti-Dissection Rule, which emphasizes that marks should be evaluated in their entirety and should not be dissected to establish similarity. In the present case, both 'ALRISTA' and 'ALSITA' are medicinal products used to treat diabetic patients. However, both the products are used to treat different conditions. Given their similar sound and structure, there exists a high probability of confusion which could be extremely harmful, if not critical to the consumers i.e. Diabetic Patients. The Court emphasized the relevance of the anti-dissection rule in evaluating the marks in their entirety, especially in the case of Medicinal and Pharmaceutical products. Thus, the Court restrained the Defendant from making, using or selling medicinal products bearing the mark ‘ALSITA' or its variations or any mark deceptively similar to the Plaintiff's mark i.e. ‘ALRISTA'. However, the Court permitted the Defendant to sell their existing stock over the next eight weeks, and to provide specific details about this process within two weeks through an affidavit.

Author's Note

The court's decision underscores and emphasizes that patient safety is the top priority and confusion in such matters must be minimized. Despite Defendant's registrations, claims of genuine adoption of the mark and the existence of similar suffixes in the market, the Court concentrated on the likelihood and probability that people could confuse the competing trademarks which could result in disastrous public health implications. Therefore, it restrained the Defendant i.e. Alkem Laboratories from using the mark 'ALSITA' to ensure public health safety and uphold principles of fair competition and consumer protection.

Footnote

1. 2001 SCC Online SC 578

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