There have been many recent trademark cases (e.g. Merck Kgaa & Anr vs Abhinav and Ashok Trading, 2014- where Carbophar was held to be deceptively similar to the trademark Carbophage and a permanent injunction was granted.) surrounding infringement suits over trademarks related to medicines. Trademark law assesses similarity of marks from the lens of an ‘average man of ordinary intelligence’ who has ‘imperfect recollection’. Though a critical comparison of two trademarks may disclose points of differences, their overall similarity may have the potential to device an ordinary buyer. Unlike most other consumer goods where confusion may lead to mere inconvenience, confusion of source or product when it comes to medicines can have serious health implications. As famously put by the Supreme Court ‘Drugs are poisons, not sweets’. Moreover, unlike most consumer goods that have segregated classes of consumers, medicines are purchased by all classes of consumers. Hence many consumers of medicines may be illiterate and unexposed to branding differences. The Cadila Healthcare Limited vs Cadila Pharmaceuticals Limited decision of the Supreme Court, therefore, set the bar low for showing similarity/confusion when it comes to trademarks related to medicines. Even as early as 1963, in the Amritdhara Pharmacy vs. Satya Deo, where the medicinal preparation Lakshmandhara was held to be deceptively similar to Amritdhara, the Supreme Court was alive to the adverse implications similar trademarks related to medicines could have on public health.
Against this background, another recent case Wockhardt v Remed Healthcare will be discussed. The court granted an injunction against the defendant who was manufacturing and selling medicines under the same name as that of the plaintiff’s product. The court gave the defendant two months to take appropriate steps to cease using the impugned trade mark. This case is also useful for its discussion on non-use and delayed use of a registered trademark.
Facts and arguments
The plaintiff registered the trademark ‘Mericobal’ in 2005. However, they started actually using the mark ‘Mericobal Viva’ only in 2012. This product is recommended to people who are diabetic and those with cardiac issues. It contains – Mecobalamin (Sustained Release), ‘Folic Acid’, ‘Pyridoxine HCl’ and ‘Vitamin D3′. By 2013, the plaintiff’s product become very popular.
In March 2013, the plaintiff came to know that the defendants were manufacturing and marketing a similar product bearing the identical name ‘Mericobal’. Hence they instituted an infringement action in the High Court of Delhi.
The defendants contended that they had started using this mark in 2006. Since the plaintiff started using its mark only in 2012 (7 to 8 years after registration), they were honest users since they did not know anything about the plaintiff’s product or mark when they started using the same. Moreover, they argued that the use of Mericobal was honest as it was constructed from the first four letters of their company’s name ‘Merion’ and the remaining came from the salt compound ‘Mecobalamin’. Also, since their mark was ‘Mericobal’ and the plaintiff’s ‘Mericoabl Viva’, they were not similar and could cause no confusion.
The Court, however, categorically held Mericobal and Mericobal Viva to be phonetically substantially identical; the mere presence of ‘viva’ did not make them different. The court also discussed the adverse implications confusion surrounding medicines could have.
On the question of use and registration the court held that there can always be a gap between the actual use and date of registration of trademark. Such a gap does not automatically disentitle the registered proprietor of his rights. Therefore, when the defendant started using the mark in 2006, this was after the plaintiff had registered its mark and an inspection in the Trademark Registry would have revealed the same. Moreover, if a party was aggrieved due to non-use by a registered proprietor Section 47 could be invoked to remove the mark from the Register- “Hence, if a defendant in a suit for infringement without seeking remedies under S. 47 of the said Act is permitted to set a plea of non-use, the same will undermine the efficacy of registration and the proceedings of validity of registration u/s. 31 of the Act.” [Reference was made to Sun Pharmaceuticals Industries vs. Cipla Ltd. 2009 (39) PTC 347 (Del)]
The argument of acquiescence by the plaintiff over the defendant’s use of the mark was rejected. Quoting from the Sun Pharma v Cipla case, the court held “Moreover in a case as the present where the registered owner as well as another are both claiming user, the balance of convenience is in favour of registered user [...] The defendant before acquiring rights is deemed to have made enquiries with the Registrar and is deemed to be in the know of the mark being registered. The defendant thus has no equities in its favour. Moreover, as aforesaid the plaintiff as registered owner cannot be injuncted and two products with same mark in the pharmaceutical sector cannot be permitted.”