Facts of the case:
The apellant and the respondent are pharmaceutical companies. They had taken over the assets of the erstwhile Cadila Group after its restructuring under Sections 391 and Section 394 of the Companies Act. Under the restructuring scheme both the apellant as well as the respondent got the right to use the name ‘Cadila’ as their corporate name.
The apellant manufactured a drug named ‘Falcigo’ containing artesunate for the treatment of cerebral malaria commonly known as ‘Falicipharum’. On 07.10.1996, the Drugs Controller General granted permission to the apellant to market the said drug under the Trademark of ‘Falcigo’.
On 10.04.1997, the respondent got permission from the Drugs Controller General to manufacture a drug containing ‘Melfoquine Hydrochloride’.This drug was also used for the treatment of ‘Falcipharum Malaria’ and was being sold by the respondent under the trademark of ‘Falcitab’.
The apellant got to know about the respondent’s drug which was used for the same ailment in 1998.
The apellant filed a civil suit for injunction against the respondent from using the trademark ‘Flacitab’ on the ground that the same would be passed of as the Apellant’s drug ‘Falcigo’ for the treatment of the same disease in view of confusing similarity and deception in the names and more so because the drugs were medicines of last resort.
The respondent contended, inter alia, that the two products in question were Schedule ‘L’ drugs which could be sold only to the hospitals and clinics with the result that there could not even be a remote chance of confusion and deception.
Procedural History:
The trial court refused to grant an interim injunction.
The High Court upheld the order of the trial court.
Laws involved:
In the case of unregistered trademark, a passing off action is maintainable. The passing off action depends upon the principle that nobody has a right to represent his goods as the goods of somebody.
In other words, a man is not to sell his goods or services under the pretence that they are those of another person.
What has to be seen in the case of a passing off action is the similarity between the competing marks and to determine whether there is the likelihood of deception or causing confusion.
It is not correct to say that the diffrence in essential features is more relevant.
The principle phonetic similarity cannot be discarded when the manner in which the competing words are written are different.
Broadly stated, in an action for passing off on the basis of unregistered trademark generally for deciding the question of deceptive similarity the following factors are to be considered:
- The nature of the marks– word mark or device mark.
- The degree of resemblance between the marks- phonetical similarity and hence similar in in idea.
- Nature of the goods- whether they are identified under one class or not.
- Overall similarity with respect to the market, customers catered to
- Class of purchasers- if the customers purchasing the products belong to different classes then the scope of confusion will be very limited or almost negligible.
- Mode of purchasing- where it is through a local shop, boutique shop or through a website.
- Other relevant surrounding circumstances- this vaies from case to case.
Issue:
Whether the respondent’s trademark could be passed off as the apellant’s trademark?
Analysis:
Deceptive similarity of a mark can create a lot of confusion. However, this poses a greater threat when there is deceptive similarity between trademarks with regard to medicinal purposes. Drugs have a marked difference in the composition with completely different side effects, and therefore, the test should be applied strictly as the possibility of harm resulting from any kind of confusion by the consumer can have unpleasant if not disastrous results. The courts need to be particularly vigilant where the defendant’s drug, of which passing off is alleged, is meant for curing the same ailment as the plaintiff’s medicine but the compositions are different. The confusion is more likely in such cases and the incorrect intake of medicine may even result in loss of life or other serious health problems. Schedule ‘H’ drugs are those that can only be accessed if prescribed to one by the doctors whereas Schedule ‘L’ drugs are those which cannot be passed across the counter and therefore are sold only to the hospitals and clinics. Nevertheless, it is uncommon that because of lack of competence or otherwise, the masses at large could be confused with such trademarks especially when the marks are deceptively similar.
With regard to the present instance, although both the drugs are sold under prescription this fact alone is not sufficient to prevent confusion which is otherwise likely to occur. In view of the varying infrastructure for supervision of physicians and pharmacists of the medical profession in India due to linguistc, urban, semi-urban and rural divide across the country and with high degree of probability of even accidental negligence, strict measures to prevent any confusion arising from similarity of marks among medicines are required to be taken.
Trademark is essentially adopted to advertise one’s product with regard to one’s goods. In a way, it is an identification tool for the purchaser to identify the proprietor’s goods that later on helps in recognition of the goods via the trademark. It is at this juncture, where other people are tempted to pass off their products as that of the original owner of the mark. Hence, it is said that in a psssing off action, the plaintiff’s right is against the conduct of the defendant which leads to or is intended to lead to the deception.
Public interest would support a lesser degree of proof showing confusing similarity in the case of a trademark concerning medicinal purpose in comparison to trademarks not concerning medical purposes. Confusion regarding the former may be life threatening and not merely inconveneient. It cannnot be expected that an ordinary persosn of average intelligence and knowledge will be able to differentiate between two drugs of medicinal purpose solely on the details of the composition.
There are precedents in the English law, where the Court has upheld that while deciding on the registrability of deceptively similar marks, the entire word has to be taken into consideration. The mere similarity between either the prefix or the sufix of a word is not enough for passing off a trademark for the other. However, in such cases precedents of the English law cannot be followed since there is a notable difference between the pronounciation as well as the understanding of the words in our country as compared to theirs. While examining such cases in India it is of crucial importance to keep in mind that the literacy rate of the people is way poor and therefore, the onus of identifying between two deceptively similar marks cannot be on them.
Stringent measures should be adopted especially in case of medicines of last resort as any confusion in such medicines may be fatal or could have dire effects on public health.
Keeping in view the provisions of Section 17-B of the Drugs and Cosmetics Act, 1940, it is but proper that before granting permissionn to manufacture a drug under a brand name the authority under that Act is satisfied that there will be no confusion or deception in the market. The authorities should consider requiring such an applicant to submit an official search report from the Trade mark Office pertaining to the trademark in question which will enable the Drug Authority to arrive at a correct conclusion.
Conclusion:
The Apex Court refused to interfere with the orders of the courts below but gave directions for expeditious disposal of the suit. In the instant judegement, the Court gave the reasons for non interference with the impugned orders while setting out the principles which are to be kept in mind when dealing with an action for infrngement or passing off, especially in the cases relating to medicinal products.
[1] 2001 (21) PTC 541 SC
SUBMISSION BY: SOHINI GOSWAMI, AMITY LAW SCHOOL, AMITY UNIVERSITY, KOLKATA
DUCTUS EDGE 