Trademark And

Pharmaceutical
Industry

By: Pultsya Pandey, Ankit Kumar Paikra,

Animesh Shukla, Bhavesh Motwani, Divyansh
Tiwari, Nikhil Punshi.
 Introduction
 The Indian pharmaceutical sector contributes over 50 percent of worldwide
demand for various vaccines, 40 percent of generic demand within the US
and 25 percent of all medicine within the UK.
 India’s domestic pharmaceutical market turnover reached Rs 1.4 lakh crore
(USD 20.03 billion) in 2019 and the pharmaceuticals export from India stood
at USD 20.70 billion in FY20.
 India's domestic pharmaceutical market is estimated at USD 41 billion in
2021 and is likely to reach USD 65 billion by 2024 and further expand to
USD 120-130 billion by 2030.
 Owing to this, the pharmaceutical industry particularly accounts for
majority of the trademark registrations as compared to any other sector in
India.
 Need for Pharmaceuticals Trademark
Trademarks play a vital role for healthcare professionals, pharmacists and patients in

the pharmaceutical industry owing to their impact on the health and safety of a patient

by avoiding name related medication errors and as a marketing instrument for

companies.
Trademark Law provides legal protection to brands to manufacture the medicine

containing the drug.

In the absence of trademark, there will be multiple manufacturers, manufacturing the

medicines under their own brand name. The brand names may be coined in such a way

so as to recall the name of the active ingredient in the medicine to medical

practitioners.
In pharmaceuticals, names of various medicines are almost similar to each other using

a common prefix of suffix. This practice gives rise to various trademark disputes.
 Pharmaceutical trademarks are often derived from the name of the
concerned ailment, organ or chemical compound contained in the relevant
drug, and may thus lack inherent distinctiveness. This results in the rise to
disputes.

Example

 Recently in India, there have been a plethora of filings for “CORONA” or

“COVID” comprising trademarks during the pandemic, such as “COVID
RELIEF”, “COVID SANJEEVANI”, “CARE CORONA”, “GO
CORONA”, “CORONA SANITISER”,
 “ANTI-CORONA” etc that have given rise to trademark disputes.
 Classification of goods and services for
registration of trademark in India
 For filing trademark application with the Indian trademark office, the goods
and/or services need to be categorized according to the class or classes they
fall under so as to file the application seeking protection of the mark in the
correct class. For this purpose, India follows the classification popularly
known as the Nice Classification.
 Pharmaceutical goods fall under Class 5 of the classification: 
 “Pharmaceuticals, medical and veterinary preparations; sanitary preparations
for medical purposes; dietetic food and substances adapted for medical or
veterinary use, food for babies; dietary supplements for human beings and
animals; plasters, materials for dressings; material for stopping teeth, dental
wax; disinfectants; preparations for destroying vermin; fungicides, herbicides.”
 SYNOPSIS
 Nomenclature of Pharmaceutical products

 What cannot be registered as pharmaceutical trademark with reference to

Section 9, 11, and 13 of the Trademarks Act?

 Non- Conventional Trademarks

 Protection of Brand names in the Pharmaceutical Industry.

 Recent legislation and jurisprudence surrounding trademark protection in the

pharmaceutical industry in India.

 Nomenclature of Pharmaceutical
Product
 A pharmaceutical products can have multiple names, namely, a
generic name, a brand name and a chemical name.
 Chemical name is a scientific name based on the compound's
chemical structure, and never used to identify the product for
clinical or marketing purposes.
 Brand name is given by the pharmaceutical company that markets
the drug. They are proprietary in nature and confer exclusive rights
upon the user.
 Generic name, is the drug's 'active ingredient' that makes it work.
They are non-proprietary is nature.
 Example: In case of Crocin tablets, ‘Paracetamol’ is a generic name,
‘C44H64O24’ is chemical name and ‘Crocin’ is a brand name.
 What cannot be registered as a
Trademark?
Section 9(Absolute Grounds for Refusal): prohibits the registration of
Trademarks which are:
 Descriptive in nature
 Devoid of any distinctiveness
 Not capable of distinguishing goods and services of one source to another
 Can deceive the public or cause confusion
However, in case of pharmaceutical products, the names of medicines is similar
to each other, as it conveys through its name, what drug it is derivative of.
Example: Amoxycillin is the generic name of an antibiotic. Out of 171 drugs
that are available in the market, 114 have the letters MOX in their
trademark; eight of them have AMOX as the first letters.
Section 11 (Relative Grounds for Refusal):
 Must not be similar to an earlier trademark
 Not likely to cause confusion among customers

Examples:
 Corn Products Refining Co v. Shangrila Food Products Ltd, (1960) Plaintiff’s mark-
‘GLUVITA’; Defendant’s mark- ‘GLUCOVITA’
Judgement: Likelihood to cause confusion, since similarity in size, color, design,
mere dissimilarity of word ‘co’ cannot be considered as differentiating factor.
 Hoffmann-La Roche & Co Ltd v. Geoffrey Manner & Co (P) Ltd (1969) Plaintiff’s
mark-‘PROTOVIT’; Defendant’s mark- ‘DROPOVIT’
Judgement: Not likely to cause confusion, around 57 trademarks in Register
included suffix ‘VIT’, an average customer would know that ‘VIT’ is used for
vitamin preparations.
 Biofarma v. Sanjay Medical Store (1997)
Plaintiff’s mark-‘FLAVEDON’; Defendant’s mark- ‘TRIVEDON’
Judgement: Chance of deception or confusion is very less since the medicines are
Schedule H drugs available only on Doctor’s prescription.
 Section 13: Provision restraining trademark of words
similar to INNs
 Commonly accepted or accepted name of any single

chemical element
 Any word declared as International Non-proprietary

Name by WHO and notified by the Registrar.

Any such entry would be deemed to be without sufficient
cause or an entry wrongly remaining under Register as
per Section 57.
Section 57 empowers the Tribunal to remove such entries.
Example of INNs- Amoxicillin, Calciferol
 Protection of Brand Names under
Trademark Law
◦ Registration of trademark is not mandatory for obtaining
protection.
◦ But remedies are available for a registered trademark and a
trademark used in the market but not registered are
different.
◦ Registered trademark - Able to obtain relief in respect of
“INFRINGEMENT” of exclusive rights to use the
trademark.
◦ Unregistered trademark - “PASSING OFF” is the remedy
available.
◦ Whenever one trademark is alleged to infringe another, the
dispute has to be resolved by comparing the two marks.
 Cadila Healthcare Ltd. v/s Cadila
Pharmaceutical Ltd (2001)
◦ Appellants used “FALCIGO” as name of a drug used for
treatment of Cerebral Malaria.
FALCIGO contained “Artesunate”
◦ Respondents also manufactured drug used for treating the
Cerebral Malaria and sold them under the TM name
“FALCITAB”.
FALCITAB contained “Mefloquine Hydrochloride”
◦ Both products were “Schedule - L” drugs, sold only to hospitals
and clinics.
 Timeline of the Case
 District Court - the two drugs differed in appearance,
formulation and price and there is little chance of confusion as
they are Schedule L drugs. Injunction was rejected.
 High Court - Upheld the findings of District Court. Injunction
was rejected.
 Supreme Court - Did not interfere with the order refusing the
injunction but gave directions for expeditious disposal of suit.

However, the Court observed that Confusion in case of medical

products can be life threatening and discussed the test of
confusing similarity for the cases of pharmaceutical drugs.
 TEST OF CONFUSING SIMILARITY

 To check the “nature of the marks” which includes word marks, label
marks and composite marks.
 To check the “degree of similarity between such marks” which include
ideological and phonetic similarity.
 To check the “similarity of nature, performance and character of the
goods” of both traders involved.
 To identify the “class of consumers” who might buy the goods based on
the marks they require, their intelligence, education and the degree of care
they might employ in buying or consuming such goods.
 To check the “nature of the goods” for which they are used as trademarks.
 To “identify the mode of purchase” when buying such goods.
 Any other such related circumstances which may be relevant.
 KEY TAKEAWAYS
 Where medicinal
A STRICTER APPROACH
products are involved,
should be adopted by the Courts
the test to be applied for
in such cases with lesser degree
adjudicating violation of proof of confusing
may not be at par with similarity, unlike non-medicinal
cases involving non products.

medicinal products.
 Neon Laboratories Ltd v. Medical Technologies Ltd. & ors (2015)

BRIEF FACTS

 Both the Neon Laboratories and Medical Technologies were

involved in manufacturing and marketing pharmaceuticals.
Neon Laboratories filed an application for registration of the
mark ‘ROFOL’ which was granted in 2001. However, Neon
Laboratories did not introduce any product in the name of the
registered trademark until 2004.
 The respondent i.e, Medical Technologies, meanwhile in 1998
introduced a generic drug by the name ‘PROPOFOL’ in the
Indian market, which was being marketed under the name
‘PROFOL’.
 ISSUE:
 The issue before the court was whether credence must be
given to the party that registered the trademark first or the
party that introduced the drug in the market first?
 DECISION:
 The case was decided in favor of respondent as the
respondent started manufacturing and marketing and also
registered and meanwhile earned substantial goodwill also.
Hence injunction was imposed on ‘ROFOL’ trademark.
 Win Medicare Pvt. Ltd v/s Galpha Laboratories Ltd & others. (2016)

 The plaintiff company was engaged in the manufacture of

pharmaceutical preparations under the trademark ‘Betadine’.
In may 2013, the plaintiff noticed an advertisement in the
Trademarks journal for the registration of the mark ‘Bectodine
– M’, and also came across the products of Defendant no. 1
indicating that the products were being manufactured, and
hence approached the Delhi HC for injunction.
 The Court applied the principle of ‘likelihood of confusion’, and
held that there was a risk of confusion. It further held that the
defendants had knowingly adopted a deceptively similar mark
as was evident from the identical colour, similar trade dress and
packaging, and hence granted the injunction.
 Sun Pharma Laboratories Limited v. BDR
Pharmaceuticals International Pvt. Ltd. and Ors. (2020)
 DECISION:-

 The Court herein passed a decree in the favor of Sun

Pharma and against BDR Pharma, restraining them from
using the trademark LULIBET or any other mark similar
to Sun Pharma’s trademark LABEBET.
 CONCLUSION
 Pre Cadila - Post Cadila (generic word — overall
phonetic similarity)
 While deciding if there is infringement or not, the

following should be looked upon:

◦ Target Audience (Wary/unwary Purchaser)
◦ Overall Similarity of the composite words (Visual & Phonetic)
◦ Likelihood to deceive or cause Confusion (with or without Px)
 REFERENCES
o https://www.mondaq.com/india/trademark/40362/passing-of
f-pharmaceutical-products
o Legal Issues in Branding Medicinal Products,
http://nopr.niscair.res.in/bitstream/123456789/2041/1/JIPR
%2013%285%29%20523-53
5.pdf
o https://www.who.int/medicines/services/inn/InternationalNo
nproprietaryNameinindia.
pdf
o https
://www.lexology.com/library/detail.aspx?g=5daf2270-dc57-
4eb3-ba10-20ab442f6b40