To safeguard consumers, it is necessary to have clear, simplified and consistent parameters for the

comparison of marks, while avoiding the stifling of competition

Branding in the pharmaceutical industry is
a difficult issue. Restrictions on advertising
and promotion are an obvious impediment
to the building of brand recognition.
Purchase decisions are influenced not only
by consumers, but also by prescribing
doctors or pharmacists. Furthermore,
trademarks and brand names are often
chosen to reflect a drugs principal
component or the ailment it is intended to
cure. While the general principle for
determining similarity between marks is well
established marks should be compared as a
whole. It is not right to take a portion of a word
and say that because that portion of the word
differs from the corresponding portion of the
other word, there is insufficient similarity to
cause confusion court decisions in relation
to pharmaceutical marks are often
inconsistent, influenced by factors such as the
use of handwritten prescriptions and medical
abbreviations, and whether the drug is a
Schedule H drug (which can be sold only on
the written prescription of a medical
practitioner) or an over-the-counter drug.
As early as 1963, the Supreme Court took
the view that the question of similarity has to
be approached from the point of view of a
man of average intelligence and imperfect
recollection. In Amritdhara Pharmacy v Satya
De it concluded that to such a man the overall
structural and phonetic similarity of the two
names Amritdhara and Lakshmandhara is in
our opinion, likely to cause confusion. The
case concerned the respondents application to
register the mark LAKSHMANDHARA and the
appellants opposition based on its trade name
AMRITDHARA, which had been previously
registered in respect of a similar medicinal
preparation. However, the Supreme Court
subsequently took a different view in F
Hoffmann-La Roche & Co Ltd v Geoffrey
Manners & Co Pvt Ltd, finding the marks
DROPOVIT and PROTOVIT, both used on
abbreviation of the generic term
meropenem and therefore considered in
the public domain. Consequently,
AstraZeneca was held to not be entitled to
claim exclusive rights to use of the term
mero, as it was descriptive of the drug. The
Division Bench further held that because
mero was descriptive and in the public
domain, customers would tend to ignore it
and pay more attention to the uncommon
features, namely mer and nem, which were
clearly dissimilar. The court therefore
refused to restrain Orchid Chemicals from
using the mark MEROMER.
In the second case Schering
Corporation v Alkem Laboratories Ltd the
marks in dispute were TEMODAL and
TEMODAR (Schering), TEMOKEM (Alkem)
and TEMOGET (Getwell Sciences India Pvt
Ltd). All four marks derived from the active
ingredient temozolomide. The two-judge
bench agreed with the rationale of the
AstraZeneca decision and dismissed
Scherings argument that the term tem or
temo had acquired secondary meaning as a
result of its registration of the TEMODAL
and TEMODAR marks in over 100 countries
and its longstanding and uninterrupted use
of the marks. The court took the view that
merely because the molecule
TEMOZOLOMIDE may have been patented
and commercially pioneered by the
Appellants, they do not become entitled, on
the statutorily protected monopoly
disappearing, to prevent others from calling,
what the molecule is, by its gener ic name,
and such other names which are publicly
known to describe and denote it. The court
held that TEMOKEM and TEMOGET could
not be said to be either phoneticall y,
visually or in any other manner deceptively
similar to the appellants TEMODAL and
TEMODAR trademarks.
One of the defences often put forth in
vitamin preparations, so dissimilar that
there was no reasonable probability of
confusion, whether from a visual or
phonetic point of view. The terminal syllable
-vit in the two marks was both descriptive
and common to the trade, but the letters D
and P in DROPO and the corresponding P
and T in PROTO, which could not possibly
be confused in pronunciation, made the
words sufficiently dissimilar.
Despite this decision, the overall trend
of various high courts in India from 2009 to
2011 has been to apply the principle that
marks should be compared as a whole
while ascertaining whether or not they are
deceptively similar:
BOLAREN was held to be similar to
DOLAREN (Gujarat High Court, 2009).
NEUROCONTIN was held to be similar to
CONTIN (Delhi High Court, 2009).
SCALIS was held to be similar to CIALIS
(Delhi High Court, 2009).
NIMAID was held to be similar to
NIMSAID (Mumbai High Court, 2010).
SOREX was held to be similar to COREX
(Delhi High Court, 2011).
BECNATE-N and BECNATE-C were held to
be similar to BETNOVATE (Delhi High
Court, 2011).
When comparing marks, much debate has
focused on whether those parts that derive
from the ingredient name should be
ignored. The issue has, to an extent, been
settled by two Delhi High Court cases.
In the first case AstraZeneca UK Ltd v
Orchid Chemicals & Pharmaceuticals Ltd
the marks in dispute were MERONEM
(owned by AstraZeneca) and MEROMER
(owned by Orchid), both derived from the
active ingredient meropenem. The Division
Bench of the Delhi High Court concluded
that meropenem is a molecule used to treat
bacterial infection, and the term mero is an
Ranjan Narula Associates
Protecting consumers and brand owners
Co-published editorial
84 www.WorldTrademarkReview.com World Trademark ReviewOctober/November 2011
Companies connected with medical field
keep abreast of latest developments in
medicine and preparations worldwide.
Medical literature is freely available in this
country. Doctors, medical practitioners and
persons connected with the medical field
regularly attend medical conferences,
symposiums, lectures etc. It must also be
remembered that nowadays goods are widely
advertised in newspapers, periodicals,
magazines and other media which are
available in the country. This results in a
product acquiring a worldwide reputation.
Thus, if a mark in respect of a drug is
associated with the Respondents worldwide it
would lead to an anomalous situation if an
identical mark in respect of a similar drug is
allowed to be sold in India. However, one note
of caution must be expressed. Multinational
corporations, who have no intention of
coming to India or introducing their product
in India should not be allowed to throttle an
Indian Company by not permitting it to sell a
product in India, if the Indian Company has
genuinely adopted the mark and developed
the product and is first in the market. Thus,
the ultimate test should be who is first in the
market.
An issue often debated is the role of drug
controllers in ensuring that conflicting drug
names are not approved. Section 17B of the
Drugs and Cosmetics Act provides that before
granting approval for the manufacture of a
new drug, the drug controller should be
satisfied that the product name does not
resemble that of a pre-existing drug and will
cause no confusion and deception in the
course of trade. However, in practice, the role
of the Drugs Authority in reviewing and
analysing proposed pharmaceutical
trademarks is unclear. The records of the
Drugs Authority and the Trademarks Office
are not interlinked and there is no provision
for consultation between the two authorities
before a trademark is approved.
The trademark system has been designed
to protect consumers from confusion and
brand owners from misuse of their
intellectual property. Of course, the
pharmaceutical industry does have particular
features that create challenges for the
balancing of these interests. In the case of
pharmaceutical products, it is perhaps more
important to safeguard consumer interest, as
confusion between medicinal products can
be life threatening. Here, as elsewhere, it is
necessary to have clear, simplified and
consistent parameters for the comparison of
marks to ensure consumer protection
without stifling competition.
WTR
pharmaceutical cases is that where the drug
in question is a Schedule H drug (ie, to be
sold only on the written prescription of a
medical practitioner), this should be taken
into account when determining similarity
and resulting confusion. In Ciba Geigy Ltd v
Sun Pharmaceutical Industries, when
comparing the marks CLOFRANIL and
ANAFRANIL, the court considered the
weight to be given to the significance of
drug being a Schedule H drug and held that:
In my judgement, inclusion of a drug in
Schedule H to the Drugs and Cosmetics
Rules, 1945 and its availability only on the
prescription by a doctor is indeed a fact
which cannot be ignored by a Court of law.
There is, therefore, really [the] remotest
possibility of mistake or confusion.
However, in subsequent decisions the
courts have disagreed. In Ciba Geigy Ltd v
Crosslands Research Laboratories Ltd, the
court held as follows: in the mark relating
to sale of medicinal preparations, the
distributors have a vital role to play. The
manufacturers depend on the wholesale
distributors and the retail medical shops.
There are hundreds and thousands of
primary health centres all over India and
medical representatives and they often go
by the words of the medical shops in their
locality. The doctors in the towns and the
Metropolitan Cities are very busy and they
depend upon the junior doctors for writing
the prescription and we have come across
cases where doctors give wrong
prescriptions without knowing the exact
composition of the medicines and the
manufacturers of the medicines.
The court further stated that: [It did] not
for a moment state that the doctors do not
know the difference between VOLTAREN and
VOLTA-K. But when the life has become very
busy, one is apt to commit an error and at the
time of prescription one cannot expect a
doctor, however eminent he might be, to
know the exact manufacturer of a product.
What happens is when a doctor gives a
prescription, say Voltaren i.e. taken to the
medical shop and the medical shop tells the
patient that Volta-K is available in his shop
and it is the same as Voltaren. The medical
shop man also does not know the difference
and he may unknowingly say Volta-K
thinking that is the product of the Plaintiff
Co. That is where the confusion would arise.
Therefore, the argument that the scheduled
drugs are sold only on prescription and,
therefore, there is no scope for any confusion
cannot at all be advanced.
Recent rulings suggest that while a
marks use on a Schedule H drug is one
factor that should be taken into account in
Country correspondent: India
85 www.WorldTrademarkReview.com October/November 2011 World Trademark Review
Ranjan Narula
Managing partner
rnarula@indiaiprights.com
Ranjan Narula
Managing partner
rnarula@indiaiprights.com
Ranjan Narula is the managing partner of
Ranjan Narula Associates, a specialist IP
firm that he founded in 2004. He has 20
years of post-qualification experience in
contentious and non-contentious
intellectual property and has worked with
the legal department of Burmah Castrol
(now BP). He was also a partner with Rouse
and headed its India practice for 10 years.
He extensively advises IP holders on brand
management issues and providesstrategic
advice on IP clearance, exploitation,
acquisition, protection and enforcement.
assessing confusion, it is not decisive.
With the growth of Indias
pharmaceutical industry, the courts have
taken steps to protect consumers from the
confusion that can arise when a local
company adopts an established
international mark. It will be heartening for
rights holders to know that the courts in
India have taken the view that the adoption
of such marks should be considered in a
global context. The position was aptly
summarised by the Supreme Court in
Milment Oftho Industries v Allergan Inc in
relation to the OCUFLOX mark: Whilst
considering the possibility of likelihood of
deception or confusion, in present times and
particularly in the field of medicines, the
Courts must also keep in mind the fact [that]
nowadays the field of medicine is of an
international character. The Court has to keep
in mind the possibility that with the passage
of time, some conflict may occur between the
use of the mark by the Applicant in India and
the user by the overseas company. The Court
must ensure that public interest is in no way
imperilled. Doctors, particularly eminent
doctors, medical practitioners and persons or