A Trademark is a unique identity of the product which includes the name, symbol, design, combination of colours, and any graphical design which separates your product from another, It safeguards your brand against unauthorized third-party use. In recent years we have seen that research and development have increased in the healthcare sector, the pharmaceutical industry is expanding rapidly it has become a major contributor to the Indian economy. This industry has registered the most number of trademarks compared to other industries.
Misleading people by similar names could bring damage to public health and put the healthcare sector at risk wherein possession of a false drug can prove to be deadly because this industry directly deals with people’s lives, prevent this errors trademarks should be unusual so that customers should easily distinguish between medicine based on the name of the brand or drug and trade dress while purchasing pharmaceutical products. Hence there is an existing question that whether a trademark should be considered wholly or only the dominant portion of the trade name. This shall deal with the confusion created by similar Trademarks, Tests to Dissect them, and reforms that are needed to overcome this complication.
Pharmaceutical trademarks under the Trade Marks Act, 1999
The trademark registration primarily protects drugs in this sector and helps give them significant value in keeping a unique brand identity for medicine in the market. Registration of trademarks in this industry is more crucial than in any other industry.
- The Marks That Devoid Of Distinctive Character
Section 9(a) of the Trade Mark Act, 1999 talks about grounds for refusal of registration & doesn’t allow registration which descriptive or which is not capable of distinguishing, it includes marks that have a specific quality, geographical originality, or special value. Nobody can have a monopoly on words, signs, or art which is merely a public Juris.
- Marks That Create Confusion
Another important provision mentioned in section 11 of the trademark act 1999 is that a Trademark should not be similar to a previous trademark so customers don’t get confused about similarities in brand features the earlier trade mark is a well-known trade mark in the country and the use of the later mark without informing would take unfair advantage of or be detrimental to the distinctive character or repute of the previous trade mark, evidence with secondary meaning will be deciding factor
In STIEFEL LABORATORIES INC. (Plaintiff)& ANOTHER v. AJANTA PHARMA LTD. (Defendant). Ajanta pharma registered the trademark of CLINOXID/ CLINOXIDE/ CLINOXIDE-A which was creating confusion with Stiefel laboratories Mark CLINDOXYL. Plaintiff filed suit for permanent injunction, court, in this case, held that Word CLINDOXYL doesn’t have any dictionary meaning, it has the highest degree of distinctiveness and the defendant has copied this name, which will create confusion so the court restrained the defendant from manufacturing, marketing and distributing of product.
- Guidelines for Trademarks Registration
Section 13 of this act states that a trademark should not be any name, chemical component or International Non-Proprietary Name (INN) which is decided by WHO and notified by the Registrar of Trademarks in 2012. INNs are the generic name and these names are the universal identity of the particular chemical ingredient, no company can claim right on it. The WHO, jointly with the World Intellectual Property Organization (WIPO), facilitates national offices to follow these suggestions when evaluating drug trademarks.
INNs are specifically engaged in making an accurate and unique standard name for each active ingredient to avoid errors. It helps in the Identification, prescription and distribution of medicine, it also intended to have proper communication between scientists of different countries having different languages.
The Conflict between pharmaceutical trademarks and trademark law
It is a fixed legal principle that deceptive similarity is based on the idea of visual, phonetic and structural similarity among the marks at issue. The method of assessing the similarity among composite marks creates a direct difference between the “anti-dissection rule” and the “dominant mark rule”.
The Anti-dissection rule comes from Section 17 of the Trade Marks Act, of 1999. Section 17(1) of the mark states that in case of a mark consisting of numerous matters, the owner of the trademark keeps absolute ownership of the trademark as a whole.
Anti-dissection rule means conflicting trademarks are not examined in pieces but are compared by analysing them as a whole, the idea behind that is the customers have perspective and knowledge of that trademark as a whole not in pieces, buyers insufficient memory is the foundation at which any kind of deceptive similarity is detected in a trademark. To the customer, it is the point of similarity that is most helpful than the minute difference so courts should not examine two parts of a trademark on a microscopic level.
This rule is based on a common understanding of the buyer as well as the shopper, they don’t acquire that much technical detail of medicine in their mind so they can’t differentiate in parts but they can recognize drug names as a whole. It’s been held to be a violation of the anti-dissection rule to focus on the “prominent” characteristic of a mark and decide likely confusion upon that feature, ignoring all other factors of the trademark.
On the other hand, the dominant mark is derived from judicial proceedings, the most significant mark which attracts the consumer or helps to identify the medicine is considered a dominant part of a trademark, The reflection of the dominant mark test could be seen in Section 11(b) of the Act which states that a mark might not be registered if the said mark is ‘identical’ to an earlier mark and is being used concerning similar or identical services and capable of causing confusion and deception amongst the public. Here, a deceptively similar mark could also mean a mark wherein the dominant feature of another mark is being used. it seems that there is a direct conflict between the declared rules because as per the law, the rule of the dominant test is arbitrary and should not be pertained.
It is important to indicate that the Court in South India beverages Pvt Ltd v General mills case delivered a peculiar explanation stating that the Test simply supports the Rule and thus, both are complementary to each other. It was held that from a holistic perspective, the two opposing concepts intersect to determine the deceptive similarity in pharmaceutical trademarks. It has been seen that courts are finding it hard to distinguish in both the tests, The dominant mark rule is being recognised while, it is also promoting the features of composite marks ought not to be dissected, so the dominant rule is placed under the umbrella of anti dissection which is worthless as two concepts contradict to each other.
All medicinal drugs have more than one name i.e Generic/Scientific or Brand/Non-proprietary Name, which is commonly used by the public. As per WHO guidelines, Trademark cannot be taken from INNs because every INN is the universal name and is public property
“As per their trademarks, Pharmaceutical companies add suffixes/prefixes to their drugs. In ASTRA-IDL LTD v TTK PHARMA LTD (1992).Defendant used similar prefixes (Beta) to trademark ‘BETALOC’ which is deceptively similar to the plaintiff’s Trademark ‘BETALONG’ so the Bombay High court held that prefixes are so similar that there is a possibility of confusion between the words from the visual and phonetic point of view, Court restrained defendant to use same prefixes”.
Things That Need To Be Avoided While Deciding Trademark
To avoid Conflict The Honourable Supreme court of India, in Cadila HealthCare Ltd. v Cadila Pharmaceutical Ltd. Observed that In highly populated countries like India where a large number of people working in the medical sector also there is a problem with infrastructure, it is certain that medical Negligence can occur with anyone.
However, confusion related to trademarks must be strictly avoided. Therefore court gave some measure to avoid this conflict which includes following
- There shall be a stricter test to be taken when determining confusion related to drugs.
- While deciding on names for trademarks, they shall know what kind of patient is going to purchase it.
- Identify what are the similarities between those identical drugs about nature, symbol, effectiveness etc.
During the period of ‘COVID-19’, the World has witnessed the importance of the pharmaceutical sector in everyone’s life. If we various life-saving medicines will be copied with fake ones this will lead dangerous consequences as I said pharmaceutical industry directly deals with people’s life. People will buy the drugs thinking of the original but they buy the serious consequences for their loved-ones by their hands itself and As I mentioned in this blog Trademarks infringement in the pharmaceutical industry shall not be taken for granted, “drugs are not sweets they are chemicals”.
Author(s) Name: Yogesh Somwanshi (Savitribai Phule Pune University, Pune)