In this post, our Spicy IP Fellowship applicant Vasundhara Majithia analyses the recent decision in Win-Medicare Private Limited v. Galpha Laboratories Limited .
It is a well-accepted proposition that passing off causes injury to both the genuine manufacturer as well as the consumer. In cases of passing off, courts usually apply the test of ‘average man of ordinary intelligence’ to adjudge the overall similarity of the products. However, unlike other goods, confusion or deception in the pharmaceutical industry can have severe health implications. We have previously blogged about this issue here. In a country like ours, where many consumers are illiterate and recognize medicines primarily on the basis of trade dress and colour schemes, the results can be disastrous. This issue was raised in the recent case of Win-Medicare Pvt. Ltd. v Galpha Laboratories Ltd. and Ors. which has been summarized below.
The plaintiff Company was engaged in the manufacturing of pharmaceutical preparations. The plaintiff manufactured microbicidal solutions, surgical scrubs, ointments, germicidal gargles, and various other pharmaceutical preparations under the trademark “Betadine” which were sold in various packaging including tubes, bottles, jars, cartons etc. The plaintiff had launched its range of medicinal preparations consisting of a Povidone-Iodine combination under this trademark in 1990.
In May 2013, the plaintiff noticed an advertisement in the Trade Marks Journal for registration of the mark Bectodine-M. The plaintiff filed an opposition. Meanwhile, the plaintiff also came across the products of defendant No. 1 in the market indicating that these products were being manufactured. The plaintiff approached the Delhi High Court for an injunction.
Contentions of the Plaintiff
First, the plaintiff contended that it had developed a distinctive trade dress for its products comprising a unique get up consisting of a white background with dark blue letters and a prominent two stripe mark accompanied by the trademark “Betadine” on the label. Due to long and extensive use, this trade dress has been associated exclusively with the plaintiff and the plaintiff has acquired tremendous goodwill in the market.
Secondly, the plaintiff argued that the mark “Bectodine” is deceptively similar to the trademark of the plaintiff. Both the marks are pronounced in a similar manner. The competing marks are deceptively similar and are not distinguishable to a person with imperfect recollection.
Thirdly, the defendants’ conduct in adopting the mark “Bectodine” was fraught with dishonesty and mala fide intent. The adoption of the mark “Bectodine” was intended solely to free ride on the enviable reputation and goodwill created by the plaintiff.
Fourthly, it was alleged that the defendants were deliberately trying to cause confusion amongst the people in the trade and the public at large by manufacturing its products under the mark “Bectodine” in packaging or trade dress comprising of similar get up, lay out, colour scheme and arrangement of features
Contentions of the Defendant
First, the defendants claimed that they had honestly and independently coined the mark Bectodine-M by taking the prefix “Bect” from Becteria and suffix “odine” from iodine for the pharmaceutical preparation containing the molecule Povidone-Iodine.
Secondly, there are more than 700 trademarks registered or pending with the common suffix “dine”.
Thirdly, the colours navy blue, sky blue, green and white for packaging are common to trade and nobody has the exclusive right to use them.
Fourthly, they had been manufacturing products under the trademark Bectodine since 2006 and since then, the mark is in extensive use throughout the country with a substantial sales turnover.
Decision of the Court
The Court first applied the test of likelihood of confusion and concluded that there was a risk of confusion. The doctrine of ‘prominent and essential feature of the trademark’ was also referred to. The Court held that where the defendant’s mark contains the essential feature of the plaintiff’s mark combined with other matter, the Court must consider the broad and essential features of the two marks to come to the conclusion about whether one mark is deceptively similar to another. They should not be placed side by side to find out if there are differences, rather, similarity has to be judged as a whole. The overall impression in the minds of the general public must be considered.
The Court next applied the anti-dissection rule. According to this rule, the conflicting composites must be compared by looking at them as a whole rather than breaking the marks up into their component parts for comparison. The rationale for this rule is that the commercial impression of a trademark on an ordinary buyer is created by the mark as a whole, not by its parts.
The Court then looked into the goodwill of the plaintiff’s name. In this context, it referred to the case of Laxmikant V. Patel v. Chetanbhai Shah & Anr. where it was held:
“A person may sell his goods or deliver his services such as in case of a profession under a trading name or style. With the lapse of time such business or services associated with a person acquire a reputation or goodwill which becomes a property which is protected by courts. A competitor initiating sale of goods or services in the same name or by imitating that name results in injury to the business of one who has the property in that name. The law does not permit any one to carry on his business in such a way as would persuade the customers or clients in believing that the goods or services belonging to someone else are his or are associated therewith. It does not matter whether the latter person does so fraudulently or otherwise.”
The Court referred to the judgement in Cadila Healthcare Ltd. Vs. Cadila Pharmaceuticals Ltd., where the Supreme Court laid down several principles with respect to trademark infringement in pharmaceuticals. It held that strict measures to prevent confusion should be taken in medicinal cases. Public interest supports that a lesser degree of proof is required to prove infringement in a pharmaceutical case if the marks are similar.
The Court also referred to the judgement in Allergan Inc. v. Milmet Oftho, 1999 PTC (19) (DB) 160 where the case of “Ocuflox” was considered. The word ‘Ocu’ was derived from Ocular and ‘Flox’ from Ciprofloxacin. The Court in this case, injuncted the use of Ocuflox on the basis of trans-border reputation and keeping in view the interest of the public, and held,
“In the interest of the public there cannot be two medicinal preparations bearing the same name from different sources and with different compositions. One must go.”
The Court held that it was beyond doubt that the defendants had knowingly adopted a deceptively similar mark as was evident from the identical trade dress, colour, and similar packaging. The ‘common to trade’ defense of the defendants was rejected in favour of prolonged use of the plaintiff and the Court granted an injunction restraining the defendants from using the trademark “Bectodine/Bectodine-M” or any other similar mark.