Trademarks have gained paramount importance in every industry. The increasing number of litigations in the trademarks arena does prove the fact of its increasing importance.
Pharmaceutical trademarks are particularly important, since they directly relate to public health. It is common practice to name medicinal or pharmaceutical products after their generic ingredients. The chemical names and the generic names cannot be registered as Trademark as they are refused under section 13 of the Trade Marks Act, 1999 but the Pharma Industry have adopted a way out by coining words which contain a part of the chemical name. This serves the purpose of identifying the drug. However, such marks are usually considered weak or non-distinctive, since they can easily be traced back to their respective ingredients.
In the pharma industry, there is a special cause which differentiates the effects of infringement and passing off from other sectors. Any misrepresentation and deception in a mark can lead the user to make a wrong decision and it may have adverse effect on the health of the user with hazardous results.
The test applied by courts in trademark actions has traditionally been that of probability – not possibility – of confusion. The Supreme Court’s ruling in Cadila Healthcare Limited v Cadila Pharmaceuticals Limited (AIR 2001 SC 1952) was a landmark judgment. The Supreme Court held that there should be as many clear indicators as possible to distinguish two medicinal products from each another, since it is not uncommon in hospitals for drugs to be requested orally in high-pressure situations.
Previously, whether a drug was prescription-only or sold over the counter was an important factor for courts in evaluating the likelihood of confusion or deception between rival marks.
In pharmaceutical trademark cases, over the years the courts in India have taken an impartial and objective view, guided solely by the merits of the case. The decisions show that it is possible for a registrant of a trademark in India to seek recourse to an effective judicial remedy in the event his/her mark is infringed.
Ordinarily the relief prayed for is an interlocutory order for restraining the infringer from ceasing or desisting from the user mark. An interim injunction is granted on the basis of prima facie evidence on record. Especially when there is a continuing infringement happening it is also possible for a plaintiff to move an ex parte ad interim injunction before the injunction application is heard. Generally an ad interim injunction is granted for a limited period. It is also possible in a Trade Mark infringement suit to claim damages. The quantum of which is determined based on the damages suffered.
The courts seem to consider the following factors in deciding whether to grant an interim injunction in favour of a plaintiff or not:
In the field of medicine, trademark violations have been strictly dealt with because it affects the life of patients who are likely to be easily confused by similarity of names. Non-medicinal products will cause only economic loss while confusion over names of medicinal products may lead to disastrous consequences, the Delhi High Court stated last week in the judgment, Wockhardt Ltd vs Zenith Remedies Ltd. Wockhardt had alleged it had a trademark in the medicine Spasmo-Proxyvon but Zenith had copied the name and packaging design for its product Spasmo-Don.
The High Court disallowed Zenith from selling its medicine with the infringing trademark. The High Court quoted the Supreme Court case of Cadila Healthcare, which emphasised that “noting the frailty of human nature and the pressures placed by society on doctors, there should be as many clear indicators as possible to distinguish two medicinal products from each other. Many patients may be elderly, infirm or illiterate and not in a position to check the medicine handed over to them.
The High Court also observed that while examining cases in India, what has to bekept in mind is the purchaser of such goods in India who may have absolutely no knowledge of English language or of the language in which the trade mark is written and to whom different words with slight difference in spellings may sound phonetically the same. While dealing with cases relating to passing off, one of the important tests which has to be applied in each case is whether the misrepresentation made by the defendant is of such a nature as is likely to cause an ordinary consumer to confuse one product for another due to similarity of marks and other surrounding factors. What is likely to cause confusion would vary from case to case.
It further agreed with the stand of the appellants that where medicinal products are involved, the test to be applied for adjudging the violation of trade mark law may not be on a par with cases involving non-medicinal products. A stricter approach should be adopted while applying the test to judge the possibility of confusion of one medicinal product for another by the consumer. While confusion in the case of non-medicinal products may only cause economic loss to the plaintiff, confusion between the two medicinal products may have disastrous effects on health and in some cases life itself. Stringent measures should be adopted, especially where medicines are the medicines of last resort as any confusion in such medicines may be fatal or could have disastrous effects. The confusion as to the identity of the product itself could have dire effects on the public health.”
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