FACTS OF THE CASE

Both the appellant and respondents are pharmaceutical companies.  Post the restructuring of the Cadila group under Section 391 and 394 of the Companies Act, both the companies took over the assets and business of the company and as a result of the restructuring, both the companies got the right to use the name CADILA as their corporate name. The appellant manufactured a drug named Falcigo, for the treatment of cerebral malaria which is commonly known as Falcipharum. Post the registry of the same, the Drugs Controller General (India) granted permission to the appellant on 7th October, 1996, for the use of the name for the said drug.

On 10th April, 1997, the respondents also got the permission from the Drugs Controller General (India) to manufacture a drug which was also used for the treatment of Falcipharum Malaria, to be sold under the trade mark of ‘Falcitab’ by the respondent. It is under these circumstances, that the appellant decided to file a suit in the District Court of Vadodara, in order to seek injunction against the respondent from using the trade mark Falcitab, as the drug name created a misrepresentation and confusion, similarity and deception in the minds of the consumers, relating it to the appellant’s drug Falcigo.

The defendant’s contented that the word has been derived from the prefix of the disease name, ‘Falci’ and that this was common for pharmaceuticals companies to derive a name using part of the disease’s name, for the clarity of doctors and chemists that a particular product/drug is meant for a particular disease. Also, the two products in question were Schedule L drugs which can be sold only to the hospitals and clinics, which took the question of confusion and deception out of the frame.

ISSUE

1. Whether the Defendant’s trademark, infringed the appellant’s trademark?

DECISION OF THE COURT

The trial court, on 30th May, 1998 dismissed the interim injunction application. The court was of the opinion that the two drugs differ in price, formulation and appearance and the fact that these could only be sold at hospitals and clinics, eradicate the chances of deception and confusion.

The high court upheld the judgement of the trial court. The Supreme Court did not interfere with the orders passed by the courts below but gave directions regarding expeditious disposal of the suit. In this judgment, the court gave the explanation as to the non interference and also laid down certain guidelines which are to be kept in mind while dealing with an action for infringement or passing off specially in the cases relating to medicinal products.

PRINCIPLES APPLICABLE TO SUCH CASES

The Honorable Supreme Court while refusing to interfere with the appellate order laid down certain principles which are to be observed in cases of infringement or passing off with special emphasis in matters pertaining to medicinal products. The Apex court laid emphasis on the average purchaser’s competence to distinguish between different trademarks. How he would react to certain trademarks and how he would associate the trademark with the respected goods. The court observed that it was apparent that mistakes and confusion while filing the medical prescriptions could lead to harmful effects and such mistakes should be avoided at all costs.

The court was of the opinion that no one, not even the qualified physicians are immune to these confusions and mistakes and sometimes due to some miscommunication a wrong prescription can be filled by the pharmacist. The most common culprit in this instance can be the handwriting which might not be legible or mispronunciation if the prescription is given over telephone. The court observed that the drugs have different compositions which have different effects and side effects. Any confusion in the prescription may result in certain unpleasant results. The Court held that courts must be vigilant when dealing with such cases where the drug may cure a particular ailment but its composition may not be suitable for the subject and may result in serious illness or even death. The court was of the opinion that selling medicines under prescription will not resolve the problem of confusions and said that because of the diverse circumstances across the country with respect to language and the socio-economic divide among individuals it becomes imperative for the take strict measures for prevention f any confusion which may arise from the similarity of marks in medicines.

The Drugs and Cosmetic Act, 1940 defines Spurious drugs under section 17B as an imitation or resemblance to another with the intent to deceive. Before any drug is granted permission to be manufactured the authorized established under the said act must be satisfied that the drug is neither a copy nor will it cause any confusion. An official search report must be submitted from the trademark office with respect to the trademark in question which will help the authority in arriving at a conclusion.

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The matter was delegated to the trial court after the Supreme Court laid down certain factors for deciding the question of similarity while also taking circumstances and facts of the cases into considerations. These factors are:

1. If the marks are word marks or label marks or composite marks which include both words and labels.
2. To what degree do the marks resemble each other i.e. phonetically similar and therefore similar in idea.
3. The nature of the commodity for which the trademarks are used.
4. The similarity between the two products with respect to nature, character, and performance.
5. The target audience and consumers of the products based upon their intelligence and education and proactively in purchasing the goods.
6. The different modes of procuring the goods.
7. Any other circumstances which may be relevant in the extent of non-congruency of rival products.

CONCLUSION

Therefore, the Supreme Court decided to no interfere in the given matter but gave certain direction regarding the expeditious disposal of the matter. The Supreme Court also gave relevant reasons for not interfering and also set out some principles to be considered while dealing with the matters of passing-off, specifically in cases of medicinal products.

BY- AAYUSHI CHOPRA

REFERENCES:

http://notesforfree.com/2018/01/23/trademark-case-brief-cadila-health-care-ltd-v-cadila-pharmaceuticals/

https://www.mondaq.com/india/trademark/40362/passing-off-pharmaceutical-products

https://indiancaselaws.wordpress.com/2015/08/18/cadila-health-care-ltd-v-cadila-pharmaceuticals-ltd/

https://iprlawindia.org/cadila-health-care-ltd-v-cadila-pharmaceuticals-2001-2-ptc-541-sc/