In its recent judgment in the case of Sun Pharmaceuticals Industries Ltd vs. Anglo-French Drugs and Industries Ltd, the High Court of Delhi had to decide on issues of similarities, confusion and deception arising in cases of pharmaceutical trademarks.
Trademarks used for pharmaceutical and medicinal preparations are generally adopted on the basis of their ingredients, the diseases they cure or the organ to which they relate to. Consequently the prefixes and suffixes of such trademarks are at times identical or similar. As a result there are chances of two trademarks being phonetically similar, thereby giving rise to disputes between proprietors alleging dishonest adoption, confusion/deception and to actions of infringement and/or passing-off. In the present case this is precisely what transpired.
The Plaintiff sought and was granted an injunction against the Defendant restraining it from using the trademark EXITOL on the grounds that it infringed the plaintiff’s registered trademark OXETOL. The plaintiffs contended that the mark EXITOL was deceptively similar on account of its “overall, structural and phonetic similarity” when compared as a whole to OXETOL and when examined from the point of view of a man of average intelligence and imperfect recollection.
The injunction so granted to the Plaintiff was subsequently set aside taking into consideration the principles laid down by the Supreme Court in the case of Cadila Healthcare Pvt. Ltd that considering the fact that drugs may be sold on prescription (being Scheduled drugs), the question as to whether confusion/deception can be said to arise between two trademarks has to be tested taking into consideration several factors which include: the nature of the marks, the degree of resemblance between the marks, the nature of the goods in relation to which they are used, the class of purchasers, the mode of purchase and all surrounding circumstances relevant insofar as the dissimilarity between the marks is concerned. Weightage to be given to each of the aforesaid factors would depend upon the facts and circumstances of each specific case and weightage cannot be given to any one of the above factors in isolation.
Whereas “OXETOL” as used by the Plaintiffs was for a medicinal preparation for specifically treating epilepsy and bipolar disorders, “EXITOL” as adopted and used by the Defendants was used specifically for treating constipation. In defending its adoption of the trade mark, the Defendant brought to the Court’s notice a number of significant and pertinent differences between the two trademarks and the medicinal products in question such as: the derivation of the marks, their word structures (prefixes), active ingredients, product forms, packaging, artwork/graphics, scheme and trade dress, disease conditions treated, prescribing doctors, the purchasers of the product, ultimate consumers and the price.
After hearing the contentions of both the parties and considering the fact that the medicinal preparations were sold on prescription and each of them were Schedule H drugs, the Court vacated and set aside the injunction previously granted to the Plaintiffs on the basis of the following:
- The two trademarks were “OXETOL” and “EXITOL”. Undoubtedly, the word TOL was prefixed by a syllable that predominantly contained ‘X’.
- The active ingredients of the two products were completely different namely Oxcarbzapine and Lacitol.
- OXETOL was sold in capsules or tablets in blister packs. EXITOL was a administered in the form of a syrup or granules.
- OXETOL was prescribed only by neurologists. EXITOL was prescribed by physicians at hospitals.
- OXETOL was used in treating epilepsy and bipolar disorders.
- EXITOL was a laxative that could be administered only to patients admitted in hospitals, prescribed by trained doctors and to be administered by trained nurses.
- Although the two marks were phonetically similar, there were visual dissimilarities in the packaging, label, artwork, graphics, scheme and trade dress.
- By themselves, the products were meant for different classes of purchasers and consumers.
- The prices of the two products were different.
- A chemist could not commit the mistake of selling the wrong drug.
Clearly, the previous understanding (Ruston & Hornsby Ltd vs The Zamindara Engineering Co) that in the case of infringement, the issue is only a comparison of the overall similarity of the two marks, has been diluted, particularly in respect of pharmaceutical trademarks. This has been replaced by various other considerations relating to the use of the rival marks in the marketplace.