An action for passing-off was brought by the plaintiff in respect of a pharmaceutical trade mark which was yet to be used by it in India. The principal question was whether the plaintiff’s unregistered trademark ‘MUCOSOLVAN’ was deceptively and confusingly similar to ‘MUCOSOLVIN’. Both the marks were used on cough syrup bottles. The defendants had been injuncted from using the mark MUCOSOLVIN by an interim order by this Court and the present application was filed to vacate that order.
Justice S. Murlidhar of the Delhi High Court rejected the application, and the matter will now proceed to trial.
You can read the judgment here.
Boehringer Ingelheim Pharma Gmbh & Co. KG v. Premchand Godha and Anr.
Facts and Contentions
The plaintiff Boehringer Ingelheim Pharma Gmbh & Co. KG is a German pharmaceutical company which started business in 1885. It adopted the mark Mucosolvan in 1975 and had been continuously using the mark internationally since 1979. The plaintiff enjoyed substantial goodwill and reputation in the world market, however, the product was yet to be introduced in India at the time of suing the defendants. Evidence was produced in terms of sales figures and a hefty amount spent on promotion (running into millions of Euros). An application for registration of the plaintiff’s mark was pending at the Indian Registry. The popularity of the mark in India was demonstrated by the number of ‘hits’ the plaintiff’s website garnered from Indians.
The defendants were IPCA Laboratories and commenced use of the mark Mucosolvin on their range of cough syrups in 2011. In fact, the defendants manufactured cough syrups under the brand name “BronchoSolvin” until they changed the key ingredient to Ambroxol, and renamed the cough syrup Mucosolvin. Ambroxol is the chemical ingredient to induce mucoactive action.
In view of these facts the plaintiff alleged that the mark Mucosolvin was deceptively similar to Mucosolvan, and that the adoption and use of the mark by the defendant was dishonest. They alleged passing-off because the two marks were visually, phonetically and structurally similar, and used on the same goods. Usually, the products were sold over the counter. The use of the defendant’s mark would injure the plaintiff’s reputation. Further, the plaintiff claimed that Mucosolvan was a coined word and inherently distinctive, thereby entitled to maximum protection. The key ingredient was Ambroxol, and the plaintiff’s mark bore no resemblance to it.
To justify the genuine adoption of the mark, the defendants submitted that the mark “Solvin” had been legitimately assigned to them by another pharma company which had been using Solvin since 1980. The defendant further stated that 15 products bearing the mark Solvin had been available for over 30 years in the Indian market. The prefix “Muco” was justifiable because it was indicative of a symptom of cough and cold and was publici juris. The prefix was generic/descriptive in nature and no exclusive right could be claimed over it and mere addition of this prefix to Solvin could not be held dishonest.
Further, the defendants claimed that the plaintiff could not claim any reputation in India over its mark because it had never used the mark in India. The odds of plaintiff acquiring transborder reputation were too remote. The defendants had also contended that the plaintiffs had been aware of their product as early as 2011, yet filed a suit only in 2013. This amounted to acquiescence, and the plaintiff was barred from instituting the suit on grounds of delay.
The Court invoked the test for passing off for pharmaceutical preparations laid down in Cadilla Health Care v. Cadilla Pharmaceuticals. It observed that the competing marks were composite marks with a close degree of resemblance due to only one letter being different in each mark. They were phonetically similar and similar in idea. They were used in relation to cough syrups containing the same chief ingredient- Ambroxol, meant to treat productive coughs. The class of purchasers of both the goods was same and could be expected to have the same degree of education and intelligence. Thus, the degree of care they are likely to exercise would not be different. There would be no difference in the mode of purchasing the goods or placing the order for the goods either. In view of these determinative factors, the two marks were held to be deceptively similar. The plaintiffs were prior users of MucoSolvan owing to their worldwide use compared to the defendant’s pan-Indian use much later in 2011.
The Court observed that the plaintiff’s product was indeed available worldwide, and the SC in Milmet Oftho Industries v. Allergan Inc. had held that the mere fact that the plaintiffs were not using the product in India would be irrelevant if they were first in world market. It held that the defendant being in the same trade could not have been oblivious to the existence of the plaintiff’s product. Further, in Jolen Inc v. Doctor and company the Court had noted that “Mere advertisement in other countries is sufficient if the trade mark has established its reputation and goodwill in the country of its origin and countries where it is registered.”
Delay to bar the suit?
Regarding delay and acquiescence, the Court had held in Hindustan Pencils Pvt. Ltd. v. India Stationery Products Co. that if the Defendant was acting with the knowledge that it is violating the Plaintiff’s rights, then injunction cannot be refused, even if there is some delay in filing the suit. The Plaintiff had been able to show prima facie that the defendants’ adoption of Mucoslvin was dishonest.
To deduce infringement or passing off between trademarks used on pharmaceutical products, the Courts have always applied a stricter test. Rationale is that the consequences of public getting misled by similar/confusing name can be disastrous. There has been a longstanding opinion that while doctors and chemists may be competent enough to differentiate between similar sounding names, however, letting use of similar names allows for a margin of error which cannot be allowed at any cost.