Indian Immunologicals Ltd. v. IPCA Laboratories Pvt. Ltd. & Anr.

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Introduction

An appeal was filed under Section 91 of the Trade Marks Act, 1999, requesting to revoke the order dated 10-03-2015, passed by the Deputy Registrar of Trade Marks. The Registrar had previously rejected the application for registration of the trade mark “INIMOX”. Senthilkumar Ramamoorthy, J., while setting aside the impugned order, directed that the appellant’s mark “INIMOX” shall be registered. However, the registration is subject to the condition that the mark can only be used in respect of products intended for veterinary use. It cannot be used in relation to pharmaceutical products intended for human use.

Brief Facts

Indian Immunologicals Ltd. applied for the registration of the word mark "INIMOX" on February 2, 1999, for medicinal and pharmaceutical preparations for veterinary use. However, after the application was published in the Trade Marks Journal, IPCA Laboratories Pvt. Ltd., the first respondent, filed a Notice of Opposition on February 25, 2004, against the registration of the mark "INIMOX". They claimed to have prior rights in the registered mark "IMOX" in Class 5 for medical and pharmaceutical preparations, with a use claim of October 6, 1986. Indian Immunologicals challenged the opposition proceedings, but after hearing both parties, the Registrar of the Trade Marks Registry refused registration of the mark "INIMOX".

Why was the applicant’s mark “INIMOX” refused by the Registry?

The Trade Marks Registry rejected the mark because the goods under the rival marks are used for the same purposes and the Opponent is the prior user of the mark. The Registry found that the rival marks are a combination of Amoxycillin and Cloxacillin. IPCA provided sufficient evidence to support its contentions, while Indian Immunologicals failed to do so. The Registry concluded that Indian Immunologicals adopted the "INIMOX" mark in bad faith by merely adding the letters "IN" to the word "IMOX" to ride upon the reputation earned by IPCA in respect of the "IMOX" mark. The use of "INIMOX" in the market would lead to confusion among consumers, and hence the registration of the "INIMOX" mark was refused.

Arguments by Both Parties

 Arguments put forward by the Indian Immunologicals:

1. The individuals claimed that they had been using the trademark "INIMOX" shortly after filing their trademark application on February 2, 1999. They presented evidence to demonstrate their use of the mark in the veterinary industry.

2. The competing trademarks are derived from a common API, namely Amoxycillin and Cloxacillin, which implies that the protection afforded to such a mark is limited. The differentiator, on the other hand, will allow "INIMOX" to be registered

3. Since the products sold under the "INIMOX" mark come in the form of a syringe intended for animal use, while the product under the "IMOX" mark is a capsule intended for human use, there is no overlap of trade channels or consumers. As a result, there is no possibility of confusion.

4. The term "MOX" is considered publici juris, or common to the trade.

During the hearing, the Appellant cited several case laws to support their claims. These cases include: (i) Syngenta Limited Hyderabad Chemical Supplies Limited & Deputy Registrar of Trade Marks (Icon vs. Imicon: relief was not granted); (ii) Corona Remedies Private Limited v. Franco-Indian Pharmaceuticals Private Limited (Stimuliv v. Stimu-let: relief was not granted); (iii) Orchid Chemicals & Pharmaceuticals Ltd. v. Wockhardt Limited (Meto vs. Metox: relief was not granted); Apex Laboratories Ltd. v. Zuventus Health Care Ltd. (Zincovit vs. Zinconia: relief was not granted at the interim stage); Astrazeneca UK Ltd & Anr v. Orchid Chemicals & Pharmaceuticals Ltd (Meronem v. Meromer: relief was not granted); Macleods Pharmaceuticals Ltd v. Swisskem Healthcare and another (Panderm v. Polyderm: relief was not granted); Schering Corporation & Anr v. United Biotech (P) Ltd (Netromycin v. Netmicin: relief was not granted).

Contentions put forward by IPCA:

1. The "IMOX" mark has been used previously by IPCA, while Indian Immunologicals specializes in producing vaccines and medications intended for human use.

2The point being made is that the mark "INIMOX" bears a striking resemblance to IPCA's mark "IMOX". The only difference is that the former has the additional letters "IN". Even if we consider the argument that both marks have a common generic source, the similarity between the two cannot be ignored. Therefore, it can be concluded that the mark "INIMOX" is deceptively similar to IPCA's mark "IMOX".

3. According to IPCA, Indian Immunologicals has not provided sufficient evidence to establish that the word "MOX" is commonly used and understood by the public, also known as "publici juris." IPCA argues that if the registration of "INIMOX" is allowed, it could lead to confusion and deception among the public. This is because the similarity between "MOX" and "INIMOX" could potentially mislead consumers into thinking that the products offered by Indian Immunologicals are associated with or endorsed by IPCA.

4. IPCA provided various case laws to support their claims. These included: "Associate Builders Delhi Development Authority" which deals with perversity, "Macleods Pharmaceuticals Ltd v. Union of India and Others" which deals with confusion in pharmaceutical products, "E. Griffiths Hughes v. Vick Chemical Co." which deals with the determination of rights of parties on the date of application filing, and "Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd" which emphasizes the need for greater protection in the pharmaceutical sector.

Decision and analysis

The Court found inaccuracies in the refusal order issued by the Trade Marks Registry. Despite this, the Court explored the aspect of "likelihood of confusion" by examining the similarity between the rival goods. The Court concluded that the goods sold under the rival marks are similar given that they are both pharmaceutical products. The Court evaluated the list of precedents relied upon by the parties on the aspect of the strength of a trademark derived from a generic name or API (active pharmaceutical ingredients) and held that marks that are derived from API or generic names are weaker in comparison to arbitrary or coined marks. The Court maintained that the analysis of “visual, phonetic and structural” similarity will play an important role in deciding the outcome of infringement, passing off, or proceedings involving the strength of marks under Section 11(1) of the Act.

In this legal case, the Court ruled that the trademark "IMOX" owned by IPCA was not strong enough to prevent the registration of another trademark "INIMOX". The latter was intended solely for veterinary use and there was no possibility of any confusion between the two products if "INIMOX" was not used for human consumption. The High Court's decision helped to clarify the rules around the registration of brand names derived from Active Pharmaceutical Ingredients (API) in the pharmaceutical industry. The ruling indicated that trademarks that are arbitrary or inventive are given greater weight in such cases.