‘Deceptive Similarity’ in Medicinal Products

Marks registered under the statute are termed as protected marks, but even the unregistered mark attains protection by virtue of the common law remedy of passing off. The fundamental aspect on which passing off action is based is to protect the rights of the trademark holder who is prior in time to use it. Once the mark attains reputation, rival traders trail up with similar or deceptively similar marks. The parameters adopted by the court in determining whether a mark is deceptively similar differ based on the nature of goods, marks class of purchaser etc.

It is often seen that the Court adopts stringent provisions while dealing with deceptive similarity in medicinal preparations. The expression ‘deceptively similar’ is defined in section 2(1) (h) of the Trademarks Act, 1999. A mark shall be deemed to be deceptively similar to another mark, if it so nearly resembles that other mark as to be likely to deceive or cause confusion. The mark is considered as deceptively similar even if there is only a probability to cause confusion. It is not essential that it should be intended to deceive or intended to cause confusion. In medicinal products, the usual defense of the defendant is that the drugs are sold only with expert’s prescription and that the test should not pertain to ordinary customers but should be whether the pharmacists and doctors would be confused. Even though various medicines are required by law to be sold per prescription, in actual practice they are sold without any such prescription.

The Calcutta High Court in Allergan Ins v. Chetana Pharmaceuticals 2007 (34) PTC 267 (Cal.) once again bench marks the tests adopted for determining deceptive similarity in medicinal products. The court lays down stringent parameters as the two medicines are applied for are for two different vital organs.

The plaintiff/Allergan claims to be a leading manufacturer in pharmaceutical products with extensive market in several major countries of the world since 1960. Allergan’s manufactures ‘Oximelazine Hydrochlorine Solution’ which is well known for its effectiveness in providing relief for non- inference red eyes and the same is marketed under the mark ‘Oxyline’. Allergan claims to have invented and adopted the same from the year 1984 and have registered the mark in various other countries, but the application is pending in India. The allegation against Defendant /Chetana Pharmaceuticals is that they have adopted colourable imitation of the impugned mark and has marketed the product with the name ‘Oxyline’. The fundamental difference between the two products is that while one is an eye drop the other is a nasal drop. It is alleged that Chetana Pharmaceuticals have adopted the same with a view to filch international reputation of Allergan Ins.

Allergan based its contentions on the fact that the continuous use of the mark and that it being registered in other countries have enshrined property right in the mark. It is also contented that they are the primary users of the mark and that it is dangerous to allow the two marks in the market as it is likely to cause confusion not only in the mind of the consumer but also in the mind of the pharmacist too who will be offering these products to the customers.

On the other hand Chetana Pharmaceuticals contented that as far as India is concerned, they have become senior user by virtue of the fact that they had started the usage of the mark since 1985.

While rebutting the contentions of the Chetana Pharmaceuticals, Allergan contends that presently it is a settled position of law that impact of registration and reputation in one country will have the same benefit in other countries of the world even if the same is not registered in other countries for protecting intellectual properties. Further it was pointed out that Chetana Pharmaceuticals has admitted and acknowledged in writing that Allergan is the senior user and that there has been phonetic similarity in the two marks and hence the two cannot remain side by side. It was also admitted by Chetana Pharmaceuticals through a letter that if it is found that they are the subsequent users, then they shall resort to corrective action.

The court looked into the admissibility of the letter and held that the admission does not relate to law but of fact and found no reason for ignoring this letter. It was also held that presently it is a settled position of law that if the reputation of trader with any mark or name in connection with the sale of any product is acquired in one country, it will have protectable interest in other countries irrespective of factum of registration or even factual user. Mere obtaining of drug license is not a positive indication of the use of the mark. In a passing off action, the base is the actual use of the mark with sale or before sale with advertisement and publicity. Further on the deceptive similarity of medicinal products, the court held that the two medicinal products may be meant for two separate organs, but it is dangerous to keep the same and identical mark for different products for different purposes.

The Supreme Court in Cadila Health Care Ltd v. Cadila Pharmaceuticals Ltd, 2001 PTC541 (SC) had elaborately laid down the test and guidelines in an action for passing off of an unregistered mark. The present trend reflective through a catena of cases depicts that the court adopts stringent provisions in dealing with medicinal products.

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