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 similarity.
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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