[This piece has been authored by Vismita Rathii, a student at the Gujarat National Law University.]

 

INTRODUCTION

“Prevention of confusion and mistakes in medicines is too vital to be trifled with”

Intellectual property rights protection is becoming increasingly crucial for businesses as the global market are expanding ane industry participation is increasing. The pharmaceutical industry is no different. Over the years, various landmark judgements have been delivered in instances of trademark infringement and passing off cases in India. In the recent decision of the High Court of Delhi in the case of Sun Pharmaceutical Industries Ltd. v. DWD Pharmaceuticals Ltd., popularly known as the Forzest v. Folzest case, the Honourable Bench held tht, “In a medicinal good, the right of not only the private litigants but also public interest has to be kept in mind, and, in fact, be given prominence.”

The author, in the blog post, makes an attempt to analyse the present judgement in light of the trademark laws in India, including the leading judicial decisions of the apex court. The author further provides suggestions to minimise such cases of trademark infringement while enforcing the current legal framework strictly.

LEGISLATIVE FRAMEWORK

‘Distinctiveness’ is a requirement for a mark to qualify as a trademark. It must not be confusingly similar to an earlier trademark, according to Section 11 of the Trade Marks Act, 1999 [“the Act”]. Furthermore, as per Section 13 of the Act, no name of a chemical element, compound, or International Non-proprietary Name [“INN”] that was announced by the World Health Organization and notified by the Registrar of Trademarks in 2012, or that is confusingly similar to an INN, is permitted to be used as a trademark.

It is customary in India to refer to a drug by the name of the organ or ailment it treats or the primary ingredient, in flagrant violation of the aforementioned requirements. This position was clarified by the celebrated judgement of SBL Ltd. v. Himalaya Drug Co., wherein the court held that, “Such an organ ailment or ingredient being public juris or generic cannot be owned by anyone for use aa s trade mark.”

FORZEST V. FOLZEST: A STEP IN THE RIGHT DIRECTION?

[A] Factual Background

In the present case, Sun Pharmaceuticals [hereinafter “The Plaintiff”] is the registered proprietor of the mark ‘Forzest’ and has been using it since 2003 to sell its medicines for erectile dysfunction. DWD Pharmaceuticals [hereinafter “The Defendant”], on the other hand, had applied to register its mark ‘Folzest’ in 2020 and has been using the mark since 2021 to sell multivitamins for pregnant women to lower the risk of pre-term births.         

The plaintiff had contended that the adoption of a similar mark to that of the plaintiff by the defendant amounted to infringement and passing off and therefore, sought an ex parte interim injunction. The court, prima facie, agreed with the Plaintiff’s argument that the ensuing confusion regarding the two names will cause irreparable harm to the general public and granted it interim relief.

As a result of this decision, the Defendant sought vacation of the ex-parte order arguing that the Plaintiff has concealed certain material facts from the court while seeking the above remedy.

[B] Decision

The court, while deciding the present case, relied on the landmark judgement of Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., wherein it was observed that, “Drugs are poisons, not sweets. Confusion between medicinal products may, therefore, be life threatening, not merely inconvenient. Noting the frailty of human nature and the pressures placed by society on doctors, there should be as many clear indicators as possible to distinguish two medicinal products from each other.”

The bench, after considering the contentions of both the parties, held in favour of the Plaintiff and confirmed the ad-interim order of injunction. At the same time, it imposed a penalty of 10 lakh rupees on the Plaintiff for having concealed material facts from the court in order to obtain an injunction.

[C] Analysis

The court has successfully decided on multiple essential issues that arose in the present case such as, [1] the doctrine of unclean hands, [2] importance of public interest in cases of trademark infringement, and [3] the need for adoption of stricter measures as compared to non-medicinal products to adjudge the violation of trademarks of medicinal products.

In relation to [1], the Defendant relied on the judgement of the Supreme Court in K.D. Sharma v. Steel Authority of India Limited, wherein it was held that, “It is of utmost necessity that the petitioner approaching the Court must come with clean hands, put forward all the facts before the Court without concealing or suppressing anything and seek an appropriate relief.”

Although the Court found merit in the aforementioned submission of the counsel of the Defendant, it decided in favour of the Plaintiff while emphasising on [2] and stating that, “In a medicinal good, the right of not only the private litigants but also public interest has to be kept in mind, and, even a remote chance of deception or confusion arising because of similarity in the marks is to be avoided and prevented, as it may lead to disastrous consequences for unwary consumers.”

Additionally, with regard to [3], the bench noted that stringent measures should be adopted while applying the test to judge the possibility of confusion of one medicinal product for another by the consumer as any such confusion may prove to be lethal and have catastrophic implications on public health.

Therefore, as is evident from the court’s reasoning, it can be observed that it has rightfully followed the public interest principle recognized in the Cadila case. Although there is an urgent need for stricter guidelines in case of pharmaceutical products but the present approach of the court appears to be in the right direction due to the importance it has given to the health and wellbeing of consumers. Furthermore, the imposition of a hefty penalty on the plaintiff also showcases the court’s condemnation of the practice of wrongful concealment of facts. To conclude, the decision of the court, in the present case, is an advancement towards the correct path and will definitely serve as an important precedent for subsequent disputes arising thereof.

[D] Proposed Solutions

Due to the rising number of pharmaceutical companies in our country, there is a plethora of numerous identical and frequently misleading trademarks for such drugs and medicines, which is resultantly leading towards an increase in the number of litigations and disputes. Hence, to restrict such issues, the author has come up with a few suggestions such as, [a] Strict enforcement of Section 13 of the Act so that no trademarks containing chemical names are registered; [b] To avoid a trademark conflict, before registering a trademark, pharmaceutical brand owners must conduct extensive research in both the Trademarks Registry’s databases and actual marketplaces; [c] Enforcement of the mandatory requirement for doctors to clearly write the name of the medication in the prescriptions. This should eliminate the possibility of administering the wrong drugs.

CONCLUSION

As laid down in various judgements of the apex court, the general test for infringement “must be approached from the viewpoint of a common man with average intelligence, and imperfect memory, for whom the overall structure and phonetic similarity in the names is likely to deceive and cause confusion.”

This test, if applied to pharmaceutical products, would certainly result in problematic and unfair decisions, which would, as a result, harm the general masses. Therefore, to mitigate against the risk of physical and mental harm of the patient, the court should lay down a separate and specific test in order to decide pharmaceutical trademark infringement cases. Additionally, the global standard recommended by the World Health Organization i.e., to restrict usage of chemical name in the brand names should be enforced strictly in line with Section 13 of the Act.