Pharmaceutical companies invest billions in developing and marketing drugs, while supporting the rigorous testing and regulatory approval processes required to ensure safety and efficacy of these life-saving therapies. In 2023, the pharmaceuticals industry spending exceeded 300 billion U.S. dollars globally for research and development.1 In this context, trademarks are incredibly valuable, enabling pharmaceutical businesses to use distinctive symbols or markings that help their recognition and maintain a competitive edge in the market.2 Any chance for error or mistake in a medicine's nomenclature, such as identical sound or resembling names or any similarity in trade style, packaging, etc., might affect a patient's purchasing decision, whereas the purchase of the wrong drug can be fatal3. Therefore, these trademarks not only encapsulate brand identity but also foster consumer trust and ensure legal protections that underpin market exclusivity.
In pharmaceutical industry these trademark laws have some fundamental and generic terms that are prevented from monopolization, like those that are inherently descriptive of a product's nature or function4, represents standard chemical nomenclature or those that are essential for scientific communication. For instance, in the case of Astrazeneca Uk Ltd. And Anr. vs Orchid Chemicals and Pharmaceuticals5, the Delhi High Court observed that the prefix "MERO," is derived from the medicine "Meropenem," which is deemed publici juris, and therefore no injunction can be granted to the use of the trademark 'MEROMER' against the plaintiff mark 'MERONEM' as the non-descriptive parts of the trademarks, "NEM" and "MER," were distinctly dissimilar. Further in the circumstance where a drug name becomes household vocabulary, it faces the risk of genericide, potentially making it synonymous with that category and costing companies to lose their exclusive rights to the trademark, like "aspirin" or "Band-Aid" were once legitimate brand-specific trademarks but have fallen victim to generic use.6
Further in the case where the product is easier to be identified with reference to the trademark rather than the actual name of the product,7 then trademark risks falling victim to genericide. For instance, the "Heroin" was a trademark, as in 1898 it was registered by Bayer Pharmaceuticals as a brand name for diacetylmorphine, initially marketed as a pain medication and cough suppressant8. However, by 1917 the brand lost it trademark protection and became a generic term for the drug due to common usage and recognition of the brand name over the product's technical identity. In Coca-Cola Co v. Overland Inc.9 the Court emphasised that "An originally non-generic, valid trademark becomes generic and invalid when the principal significance of the word to the public becomes the indication of the nature or class of an article, rather than the indication of the article's origin."10These unique challenges in trademark protection faced by pharmaceutical industry make them lose their unique and distinct character as generic names provide weaker recognition in comparison to arbitrary or coined marks.
Further, in the Cluett Peabody & Co. Inc.v.Arrow Apparels11, the Bombay High Court ruled that the mark must be unique and the buyer must be able to see where the items came from.12 However, if the trademark becomes generic and descriptive of the product then such mark could not be adopted since they could not acquire secondary meaning and could not be registered, as held in the case of W.N. Sharpe Ld. v. Solomon Bros Ld.13 Also in the case of Rhizome Distilleries Pvt. Ltd Vs. Union Of India & Others14, the Madras High Court said that where the trademark includes a generic term, it doesn't prevent the manufacturers from using the part that contains the generic component15. For instance, in the case F. Hoffmann-La Roche & Co. Ltd vs Geoffrey Manners & Co. Pvt. Ltd16 the court held that both the trademarks 'DROPOVIT' and the 'PROTOVIT' share common suffix 'VIT', which is descriptive in the pharmaceutical trade for vitamin products and the distinct parts of the marks 'DROP' and 'PROTO' are visually and phonetically different enough to avoid confusion, therefore, they are not similar to each other.
The Trademark Tightrope of Generic v. Unique
Generic term is a word or phrase that cannot acquire a secondary meaning because it is a general or common term for the product or service offered17 that describes a whole category of such products or services, rather than identifying a specific brand. In the case of Schering Corpn. v. Alkem Laboratories Ltd.18, the Delhi High Court observed that "the concept of 'public', for the purpose of determining whether a word is publici juris for an article or thing would depend on what that article or thing is and the meaning of the word would have to be gathered from the knowledge of the 'public' knowledgeable in the field to which the thing/mark belong, to determine whether the word is publici juris for the article or thing for which it is claimed to be publici juris." For instances phrases that contain generic word like "paracetamol" or "nimuslide" cannot be registered as these phrases are inherently descriptive of the generic chemical used in the medicine and are also the part of public domain. Therefore, to overcome this challenge, companies must create unique, distinctive names that combine scientific roots with novel linguistic elements. In the case of Dr Reddys Laboratories Limited vs Smart Laboratories Pvt Ltd.19 the court observed the generic nature of the "AZI" prefix derived from the common chemical Azithromycin, and also there is deceptive similarity between the suffixes "WAKE" and "WOK", having the same initial and terminal consonant sounds20, therefore, there is likelihood that such similarity will create confusion among the consumer as the trade channels and market is same. So, when determining the unique term, it is necessary that there is no likelihood of public confusion, misrepresentation, and there is no such deceptive similarity between the trademarks that is likely to create confusion between the consumers. To determine the similarities the court in the case of M/S S.M. Dyechem Ltd vs M/S Cadbury (India) Ltd21, identified three tests:
- whether any special aspect of the common feature was copied;
- whether the parts were put together differently to make the whole dissimilar, and
- when there are common elements, more regard must be paid to the parts that are not common.
However, these criteria were modified in the case of Cadila Healthcare Limited vs Cadila Pharmaceuticals Limited22, where the Hon'ble Apex Court established certain principles to consider while dealing with the case of passing off and to decide the existence of deceptive similarity23:
- To verify the type of marks, including composite, label, and word marks.
- To assess how similar such marks are to one another, including phonetic and ideological similarities.
- To determine whether the nature, functionality, and character of the products of the two dealers are comparable.
- To determine the consumer class that may purchase the items based on the marks they need, their level of education and intellect, and the level of caution they may use while purchasing or eating such goods.
- To verify the type of products they are utilized as trademarks for.
- To determine the method of payment when purchasing such items.
- Any further related factors that would be pertinent in the case of dissimilarity between such competitive marks.
So, to navigate the fine line between generic terms and unique trademarks there is a need of careful consideration, innovation, and legal diligence laid in the aforementioned case laws to safeguard brand identity while preventing consumer confusion.
The parties operated in unrelated industries
If the parties operate in different industries with different trade channels and consumer base then in such a case there is no likelihood of unfair advantage, harm, or dilution of the mark and therefore the Court allows for registration of such trademark24. For instance, in the case of Indian Immunologicals Ltd. v IPCA Laboratories25, the court found that while both marks derived from the generic name "amoxycillin," the addition of "Ini" to "INIMOX" and its use for veterinary products distinguished it sufficiently from "IMOX," which is used for human pharmaceuticals. Also, in the case of Corona Remedies (P) Ltd. v. Franco-Indian Pharmaceuticals (P) Ltd.26, the court ruled on trademark dissimilarity between "STIMULIV," an Ayurvedic medicine available in syrup and tablet form for liver disorders, and "STIMU-LET," an allopathic tablet prescribed for breast cancer and infertility. The court noted distinctions in packaging, trade channels, and consumer bases which reduces the likelihood of confusion.
Path Forward for Unique Nomenclature
To ensures both effective brand protection and safe medication delivery while fostering innovation in pharmaceutical nomenclature the pharmaceutical companies should employ sophisticated strategies to create distinctive trademarks. As a case in point, the companies should invent entirely new linguistic constructs which follows guidelines established by the Court. Further, they should go for a hybrid approaches i.e., to combine scientific roots with novel suffixes taking into consideration the specialised market segments within healthcare. Also, the companies should craft names that have unique sound profiles in consideration with the concept of "public knowledge", to maintain clear differentiation in packaging, trade channels, and target audiences to avoid public confusion.
Conclusion
In the pharmaceutical sector, it is crucial to balance the need for unique trademarks with legal considerations and consumers' need. The companies must develop distinctive trademarks that avoid becoming generic terms while they are legally considerate and prevent confusion among consumers. This requires balancing scientific accuracy with creative branding elements. Strong trademarks should not be descriptive and should be able to establish secondary meaning through marketing efforts. Success in this field demands creative naming, following regulations, and clearly differentiating products to ensure both legal protection and consumer trust.
Footnotes
1. Mikulic M, "Worldwide Pharmaceutical R&D Spending 2014-2030" (Statista) https://www.statista.com/statistics/309466/global-r-and-d-expenditure-for-pharmaceuticals/ accessed January 22, 2025
2. Associates A, "Importance of Pharmaceutical Trademark Aggarwals & Associates" (Aggarwals & Associates, July 3, 2023) https://aggarwalsandassociates.com/importance-of-pharmaceutical-trademark-and-its-registration/ accessed January 22, 2025
3. Nimje P, "The Need for Trademark in Pharmaceutical Industry" (Sagacious IP, May 10, 2022) https://sagaciousresearch.com/blog/the-need-for-trademark-in-pharmaceutical-industry/ accessed January 22, 2025
4. Panacea Biotec Ltd. vs Recon Ltd. AIR1997DELHI244
5. 2007 SCC OnLine Del 237
6. "Trademark Genericide: Threat to Brand's Success – Intellect Vidhya Solutions Law LLP" https://intellectvidhya.com/trademark-genericide/ accessed January 22, 2025
7. Balasubramanian S, "Trademark Genericide – Selvam & Selvam" (Selvam and Selvam, October 2021) https://selvams.com/blog/trademark-genericide/ accessed January 24, 2025
8. "Heroin Bottle" (DEA Museum) https://museum.dea.gov/museum-collection/collection-spotlight/artifact/heroin-bottle accessed January 24, 2025
9. 692 F.2d 1250
10. Rout S, "Trademark Genericide: Victims of Their Own Success?" (India, June 9, 2017) https://www.mondaq.com/india/trademark/600598/trademark-genericide-victims-of-their-own-success accessed January 22, 2025
11. 1997 SCC OnLine Bom 574
12. Mazumdar P, "Different Spectrum of Trademark Distinctiveness" (SCCOnline, 2020) http://scc-nfsu.refread.com/DocumentLink/Zhd5SZsd accessed January 24, 2025
13. WN Sharpe Ltd. v. Solomon Bros Ltd., 1915 RPC 15
14. 2012 SCC OnLine Mad 651
15. Reporter B, "Court Re-Emphasizes the Exclusion of Generic Terms from Registration" (BananaIP, August 3, 2019) https://www.bananaip.com/court-re-emphasizes-exclusion-of/ accessed January 24, 2025
16. AIR 1970 SUPREME COURT 2062
17. "Generic Terms Legally Excluded From Trademark Protection" (Justia, April 25, 2018) https://www.justia.com/intellectual-property/trademarks/strength-of-marks/generic-terms/ accessed January 27, 2025
18. 2009 SCC OnLine Del 3886
19. CS(COMM) 744/2023
20. Singh M, "Aziwok vs Aziwake: Delhi High Court Grants Interim Injunction In Light Of Rival Marks Being Closely Similar For Azithromycin" (India, March 8, 2024) https://www.mondaq.com/india/arbitration-dispute-resolution/1433790/aziwok-vs-aziwake-delhi-high-court-grants-interim-injunction-in-light-of-rival-marks-being-closely-similar-for-azithromycin accessed January 27, 2025
21. AIR 2000 SUPREME COURT 2114
22. 2001 (5) SCC 73
23. Sai Gayatri S, "Cadila Healthcare Ltd. v. Cadila Pharmaceuticals, 2001 : Case Study" (iPleaders, February 8, 2022) https://blog.ipleaders.in/cadila-healthcare-ltd-v-cadila-pharmaceuticals-2001-case-study/ accessed January 27, 2025
24. Raymond Limited v. Raymond Pharmaceuticals Pvt. Ltd., MIPR 2010 (2) 0400 11
25. 2023 SCC OnLine Mad 7753
26. 2023 SCC OnLine Bom 833
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