An Analysis of Judicial Interpretation – Selvam & Selvam

Trademarks provide an advantage to businesses by distinguishing one’s product from others. However, it is common for infringers to use a similar mark in the industry and try to reap the goodwill that the initial user had secured over years. The pharma industry too faces the issue of similar marks being branded and sold. In this industry, the trademarks not only play a crucial role in distinguishing the marks but also ensures consumer safety. The recurring issue that we as trademark attorneys find is that the rival marks mostly end up using the common prefix or suffix due to their similarity in their active pharmaceutical ingredients (APIs), which is the core component used in its composition. This has led to a significant number of deceptively similar marks in the market.  As a result, Courts have had to address this issue from time to time. This post looks into the evolving legal stances on this matter.

The Statute:

The Trademarks Act, 1999 (‘Act’) under Section 9 stipulates that a trademark must be distinctive and should not likely cause confusion among the consumers. The Act under Section 11 of the Act prohibits the registration of the trademarks which are identical or deceptively similar to existing marks for similar goods or services. In the pharma industry, the lethal effects of using similar marks for products, make distinguishing between marks highly important.

Further, Section 13 of the Act prohibits registration of the names of chemical elements, compounds and international non-proprietary names (INNs). Accordingly any word which is commonly used and accepted as a chemical element or compound or has been declared by the World Health Organisation as an INN or any name deceptively similar thereof, cannot be registered under the Act.

The Judicial interpretation:

A landmark case addressing this issue is the 2001 Supreme Court judgement of Cadila Health Care Ltd. vs. Cadia Pharmaceuticals Ltd. The rival marks in this matter are “FALCITAB” and “FALCIGO”, both marks are used for goods dealing in the treatment of Plasmodium falciparum malaria, in this case rather than deriving the name from the APIs, the rivals have derived from the disorder, it caters to. The Supreme Court held that a stricter approach needs to be taken in case of medicinal products when assessing the possibility of confusion. The apex court laid out stringent measures and pointed out that even in case of Schedule H drugs (sold only through prescription) or Schedule L drugs (sold directly to hospitals/ clinics only), there needs to be strict comparison, and no two similar marks should be allowed as even the professionals handling such drugs can also make errors which may lead to fatalities. This sentiment can be found in this one single line of the judgement “Drugs are poisons, not sweets”.

Despite this judgement the practice of naming the marks similarly has continued in this industry. However, one contention that the industry professionals take is that deriving names from the active ingredient or relating to the disorder is done to make the medicine easily identifiable to the medical practitioners. Given that there is a large number of marks using the same prefix or suffix in this industry shows the common practice and the court’s stringent views has not stopped the players in the pharmaceutical industry from doing this.

Considering the ongoing practice of the industry, the apex court’s views in F. Hoffmann-La Roche & Co. Ltd vs Geoffrey Manners & Co. Pvt. Ltd is more suitable for the industry. In this case the rival marks are “DROPOVIT” and “PROTOVIT”. Since both the marks are using the word VIT as a common suffix which is derived from vitamin (as you can guess, their core component), the court took into account only the first half and compared the marks for similarity. The court also considered the existing 57 marks in the register, wherein VIT was the common suffix. Since the commonality was descriptive and common to both the parties, the court decided the case based on the uncommon elements of the mark and declared the marks dissimilar.

This approach stands equitable considering the unchangeable practice of the industry. Even though the marks bear the common term from their core ingredients, it is important to take into consideration the guidelines of the Cadila case along with the approach taken in the Hoffman case to determine the similarity of marks.

The courts in recent years have been following the pattern that the parts of the mark where INN word is used cannot claim any monopoly over it. The court in Schering Corporation case  in 2009 when comparing the marks TEMODAL & TEMODAR with TEMOKEM & TEMOGET all four derived from TEMOZOLOMIDE, considered the text TEMO as publici juris (belonging to the public) and no person can claim monopoly over the same. The court decided the case based on the uncommon elements of the mark. This stand was taken even in the recent case of SUN Pharma v. Hetero in 2022, where the rival marks LETROZ and LETERO derived from the INN LETROZOLE were found to be dissimilar.

Conclusion:

Indian courts have demonstrated a nuanced approach to the coexistence of similar pharmaceutical trademarks derived from active ingredients. While the distinctiveness of the marks are important in pharmaceutical products, it is imperative to note that no entity can claim exclusive rights over generic or descriptive terms especially those that are publici juris. It can be stated that when the first adopter of a core ingredient uses the generic drug’s name in their brand, they cannot stop the subsequent adopters from using the similar sounding prefix or suffix.

“The steps we take often lead back to us.”

Thus, it is important for pharma companies to restrict their usage of APIs or the disorder in their marks to enhance distinctiveness and mitigate the potential for similar marks.

Written by  Rohit Magesh