Confusion between medicinal products can be life threatening and not merely inconvenient #indianlaws

Confusion between medicinal products may be life threatening, not merely inconvenient.  Thus there should be as many clear indicators as possible to distinguish two medicinal products from each other.

Deceptive similarity in products (pharmaceutical and medicinal preparations) of the parties was the subject matter of dispute in the present matter. The issue before Court was to determine as to whether there was deceptive and confusing similarity in Defendant’s product to those of the Plaintiffs. The Court answered in affirmative and also held that the Defendants had adopted the infringing marks with knowledge and notice of the registration of the Plaintiffs’ marks.

To resolve the above dispute, the Court took up following issues for consideration, namely, what are the tests in any infringement action and a passing off action? Where the trade dress differs, is another standard to be applied? Does the fact that the competing products are Scheduled ‘H’ drugs of restricted availability, sold by chemists only on a doctor’s prescription, make a difference or require a different standard to be adopted? What must the party alleging acquiescence prove?

The fact that both the drugs in question are sold under prescription is not sufficient to prevent confusion which is otherwise likely to occur. In view of the varying infrastructure for supervision of physicians and pharmacists of medical profession in the country due to linguistic, urban, semi-urban and rural divide across the country and with high degree of possibility of even accidental negligence, strict measures to prevent any confusion arising from similarity of marks among medicines are required to be taken. There is a supervening public interest that supports a lower threshold of proof to establish confusing similarity where the trade marks in question are being applied to medicinal products.

Confusion between medicinal products may, therefore, be life threatening, not merely inconvenient. There should be as many clear indicators as possible to distinguish two medicinal products from each other. It is not uncommon that in hospitals, drugs can be requested verbally and/or under critical/pressure situations. Many patients may be elderly, infirm or illiterate. They may not be in a position to differentiate between the medicine prescribed and bought which is ultimately handed over to them.

The Court further observed that in a passing off action, an immediate and perhaps determinative test is where the misrepresentation made by the defendant is such as is apt to cause an ordinary customer to confuse one product for the other due to the similarity of marks and other surrounding factors.

The Cadila test as taken note by Apex Court (though relating to an action for passing off on the basis of unregistered trade mark for deciding the question of deceptive similarly) emphasized upon following factors to be considered –

(a) The nature of the marks i.e. whether the marks are word marks or label marks or composite marks, i.e. both words and label works;

(b) The degree of resembleness between the marks, phonetically similar and hence similar in idea;

(c) The nature of the goods in respect of which they are used as trademarks;

(d) The similarity in the nature, character and performance of the goods of the rival traders;

(e) The class of purchasers who are likely to buy the goods bearing the marks they require, on their education and intelligence and a degree of care they are likely to exercise in purchasing and/or using the goods;

(f) The mode of purchasing the goods or placing orders for the goods and

(g) Any other surrounding circumstances which may be relevant in the extent of dissimilarity between the competing marks.

Important essentials that emerge are:
• Weightage has to be given to each of the above factors which would depend upon facts of each case, although, same weightage cannot be given to each factor in every case.
• Resemblance may be phonetic, visual or in the basic idea represented by the plaintiffs mark.
• Rival marks need comparison to determine whether the essential features of the plaintiff’s trade mark present in that used by the defendant.
• The identification of the essential features of the mark is in essence a question of fact and would depend on the judgment of the Court based on the evidence led before it as regards the usage of the trade.
• In reference to marks in ‘series’ it would make no difference whether the rival marks are registered or unregistered. If they have a common feature or a common syllable, but are owned by different persons, this will assist an applicant for a mark containing the common feature.
• However applicant must prove that those marks had acquired a reputation by user in the market.
• The marks have to be considered has a whole. There need not be an absolute identity of the competing marks.
• Where the products are so connected as to make confusion or deception likely in view of similarity, the use of the competing mark will be restrained by a Court.

[Medley Pharmaceuticals Ltd. vs. Twilight Mercantiles Ltd.]
(Bombay HC, 07.07.2014)