Class 5 - Principles - Case Laws

Class 5 principles/decisions:
1. Same Ailment and same drug- less stringent test on dangerous consequences. The
marks will have to be assessed more from the point of view of
confusion/dilution/commercial loss;
i. Bal Pharma Limited vs. Wockhardt Limited & Anr. (supra): In this judgment, this
Court was considering the marks 'Aziwok' and 'Aziwin'. The Court clearly held in
paragraph 7 that the drug which was the basis of the products was
'Azithromycin' and nobody could claim a monopoly over the word 'Azi' which
was a part of the basic drug. This Court also held that 'Azi' was common to trade.
Further, this Court held in paragraph 10 while considering the judgment in the
case of Cadila that since both the products were made of a single ingredient, the
question of causing any health problem or side effect really does not arise. None
of these factors are applicable in the present case. In the present case, the marks
are not derived from the basic drug. Further, the marks are for different ailments
which may result in disastrous consequences.
ii. In this judgment, this Court was considering the marks 'Netromycin' and
'Netmicin'.
This Court held in paragraphs 11 and 12 that both the marks were derived from the
generic drug 'Netilmicin Sulfate' and no one can claim exclusivity in a mark which is
derived from the generic drug. Furthermore, on the facts of the said case, the Court
rendered a finding in paragraph 12 that there was commonality in origin, ingredient,
composition and purpose and that even if one drug is consumed for the other there
cannot be disastrous consequences. Further, the Court held that while one drug was an
expensive drug administered only by doctors in hospitals and purchased in bulk by the
hospitals and not by the consumers, any possibility of confusion is ruled out.
2. Same Ailment and different drugs- Stringent test on dangerous consequences;
3. Different ailments and different drugs- Test of confusion must be applied strictly even
if dangerous consequences is low/absent.
i. Charak Pharma Pvt. Ltd vs Glenmark Pharmaceuticals Ltd on 21 January, 2014

(ECONOVA vs. EVANOVA)- The Hon'ble Supreme Court while noting this aspect
has clearly held that when the drugs have marked differences in their
compositions with completely different side effects, the test should be applied
strictly as the possibility of harm resulting from any kind of confusion by the
consumer can have unpleasant if not disastrous results. In the words of the
Hon'ble Supreme Court, "Public interest would support lesser degree of proof
showing confusing similarity in the case of trade marks in respect of medicinal
products as against other non-medicinal products. Drugs are poisons, not
sweets. Confusion between medicinal products may, therefore, be life
threatening, not merely inconvenient"."
Factors to be considered:
a. It was held by the Hon'ble Supreme Court that the series of marks containing the
common elements can only assist the defendant when these marks are in
extensive use in the market. The onus of proving such user is of course on the
person, who wants to rely on the marks. The Hon'ble Supreme Court further held
that it is possible that the mark may have been registered but not used and
therefore it is not possible to draw any inference as to the user from the
presence of the mark on the register.
In the case of Wyeth Holdings Corporation & Anr vs. Burnet Pharmaceuticals
(Pvt. Ltd.) (supra), this Court while considering the judgment of the Hon'ble
KPPNair 27 NMSL 2529 of 2007 Supreme Court in the case of Corn Products
(supra) held that the evidence of extensive sales must be placed as on the date
when the cause of action arose. This Court held that the relevant date for
determining whether the conduct of the Defendant amounts to passing off is
when the conduct commenced and as such, the material ought to have been
produced of that period. In the present case, the cause of action arose in 2006
when the Defendant admittedly adopted their mark and started using the same.
b. It has been held by the Court in Medley Pharmaceuticals Ltd. vs. Khandelwal
Laboratories Ltd. (supra), in paragraph 16 that "Once the mark is identical or
deceptively similar, the other factors viz. the packing being different, the number
of tablets contained in the competing package is not the same, prices are not
identical and /or the goods being sold on doctors' prescription are altogether are
irrelevant and 25 2011 (5) Bom.C.R. 588 (paragraph 31) KPPNair 32 NMSL 2529
of 2007 immaterial". In any case, as held by the Hon'ble Supreme Court in the
case of Cadila (supra), very often, the drugs are ordered on telephone and
depending on the doctor's handwritten prescription. A person who goes to buy
the drug for the first time would not know what the price or packaging of the
one drug shall be as distinguished to the other.
c. In any case, once the court in an infringement action finds that the marks are
deceptively similar, the honesty of adoption is completely irrelevant.
Furthermore, in this regard, reliance is placed to a passage from Law of Trade
Marks and Passing Off by P. Narayan, paragraph 24.57 wherein it has been
observed that honest adoption does not justify continued user. The same is
reproduced hereunder:
Honest adoption does not justify continue use "Even if it were made out that the
defendants had originally adopted a mark honestly and innocently, either in
ignorance of the existence of the Plaintiff's mark, or in the belief that their mark
was so different from that of the Plaintiff as not to be calculated t mislead an
ordinary purchaser, their continuing to use the mark after they become aware
that their use of it did cause their goods to be mistaken for the goods of the
Plaintiff, would be not less than fraudulent in the eye of the court than if they
had originally begun to use it with a fraudulent intent.
The defendants must bear in mind that the original honesty of intention does
not protect the continued user, if the user is found practically to have the result
of deceiving, or is calculated to deceive purchasers, because it is very easy for
manufacturers KPPNair 34 NMSL 2529 of 2007 to avoid any possibility of
misleading purchasers if they are minded to avoid it."
4. Passing off Vz. Infringement- tests
Ranbaxy Laboratories Ltd. vs. Indchemie Health Specialties Pvt. Ltd.
(supra): Firstly, this is only a passing off action and not an action in infringement.
In this judgment, this Court was considering the marks 'Zanocin' and 'Zenoxim'.
This Court in paragraph 11 clearly held that the basic drug of the Plaintiff was
'Ofloxacin' and the Plaintiff had derived the name from the basic drug. Similarly,
the basic drug of the Defendant was the 'Cefuroxime' and they had also derived
the mark 'Zenoxim' from the basic drug. This Court held that the marks were
descriptive in nature, indicative of the composition of the respective medicines.
The Court further held that no one can have a monopoly over the right to use
the name of the basic drug or a part thereof. Further, this being only a passing of
action, this Court considered various other factors including, the packaging, the
price, etc. The present case being one of infringement, no such additional
material can be relied upon. Further, in the present case the marks are not
derived from the basic drug and its nobody's case that the marks are descriptive.

Class 5 - Principles - Case Laws

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Class 5 - Principles - Case Laws

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Class 5 principles/decisions:

2. Same Ailment and different drugs- Stringent test on dangerous consequences;

i. Charak Pharma Pvt. Ltd vs Glenmark Pharmaceuticals Ltd on 21 January, 2014

4. Passing off Vz. Infringement- tests

Ranbaxy Laboratories Ltd. vs. Indchemie Health Specialties Pvt. Ltd.

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