In the instant case, both the Appellant and the Respondent were a Pharmaceutical company involved in the manufacturing of pharmaceutical products in various countries. A suit for injunction was filed by the Respondents, Allergan, against the Appellant for passing off of the mark “OCUFLOX”, a medicine prepared, manufactured and marketed by the Respondents, as their own. It was the Respondents case that the mark “OCUFLOX” was used by them for an eye care product which contained OFLOXACIN and other compounds.
Thus, it was claimed that they were the prior users of the mark and they used the Mark for the first time on 9th September 1992 and subsequently marketed the product in countries like Europe, Australia, South Africa, and South America under the said mark. They also got the Trade Mark registered in several countries like Australia, Bolivia, Mexico, Peru, Ecuador, Canada, and the USA. However, the application for registration of the Mark in India was still pending.
On the other hand, the Appellant, Milmet, an Indian pharmaceutical company sold the medicinal product “OCUFLOX” which contained the compound CIPROFLOXACIN HCL, used for eye and ear treatment. The Appellants contended that they used the prefix “OCU” from the word “Ocular” and “FLOX” from “Ciprofloxacin” to coin the term “OCUFLOX”. The application for registration of the mark “OCUFLOX” applied in September of 1993 and was also still pending.
The Respondents were granted an ad interim on 18th December, 1996 which was vacated on 29th January, 1997. It was held by the single Judge that the product of the Respondents, Allergan, was not sold in India and since the product was introduced first by the Appellants in India, the Respondents were not entitled to an injunction. However, on appeal to the Supreme Court it held that the Respondents were first in the market and thus, we’re entitled to an injunction.
- Whether the Respondent were prior users of the mark ‘OCUFLUX’?
- If the Respondents were prior users, is the mark sought to be registered by the Appellants deceptively similar?
The present case involved a passing-off action. The law of passing-off is premised on protecting the goodwill which has been established by a person in his business or his goods/services over a period of time. This goodwill of his business or goods/services is represented by a mark, name, sign etc. In a passing-off action, there is a ‘false representation’ which tends to deceive the customers into believing that the goods/services which are being sold by the defendant are those of the plaintiff. This false representation may be through statement or conduct i.e., by appropriating the mark, name, sign, symbol or appearance of someone else’s goods.
While deciding the question of deceptive similarity in a passing-off action the following considerations must be taken into account:
- whether the mark is a word or a label mark or a composite mark i.e., both words and label mark. Thus, the nature of the mark should be considered;
- the degree of resemblance between the marks, phonetic similarity, and similarity in ideas;
- the nature of the goods/services for which the trademark is used;
- the similarity in the nature, character, and performance of the goods of rival traders;
- the intelligence and degree of care that is likely to be exercised by those who are likely to purchase or use the goods bearing the mark;
- the method of purchasing or placing orders for the goods;
- Other circumstances which may be relevant as to the extent of dissimilarity between the marks.
Keeping in view these considerations the Supreme Court in a case involving medicinal products held that:
- A stricter degree of scrutiny is required in case of marks on medicinal products which are likely to cause confusion because the extent of harm may be greater in comparison to ordinary consumer products.
- Where the trademarks are deceptively similar, mistakes or confusion can arise even if the products are not sold over the counter. Thus, where similar goods are sold under similar looking and sounding marks, there is a strong likelihood of confusion and mistake. This holds true even for prescription drugs. Moreover, doctors can also get confused or mistaken.
- Furthermore, handwritten prescriptions are often illegible and can further cause confusion or mistake on the part of the pharmacist if the marks are too alike.
- The court further emphasised that the field of medicine has acquired an international character and certain conflicts may arise in the use of the mark in India and the users of the international company.
- Medicinal products are advertised in newspapers, periodicals, and magazines which results in the product acquiring a worldwide reputation.
- The court specifically laid down that multinational corporation, who have no intention of introducing their product in India cannot be allowed to restrain and clamp down on an Indian company by disallowing it to sell their products in India, where the Indian company has adopted and used the mark, developed the product and is first in the market.
- Therefore, the ‘ultimate test’ is based on who is first in the market.
In the instant case, the marks which are used in respect of pharmaceutical products are the same. Based on the court’s observation it is irrelevant that the Respondents have not used the mark in India if they were first to use the mark in the ‘world market’. The products of the Respondents were advertised before even the products of the Appellant entered the medical market. Therefore, the Respondents had genuinely adopted the mark first.
The Supreme Court, in this case, relied on the doctrine of trans-border reputation and based its decision by giving priority, protection, and recognition to a mark which was never used in India but was adopted and used by the Respondents in the international market first and prior to an identical mark being adopted and used in India.
Moreover, given the inherent risks and dangers a medicinal product can pose owing to confusion or a mistake on the part of consumers with respect to the mark as opposed to ordinary products, where a mark for a drug is associated with a company which has a worldwide presence, it should be protected against an identical mark for similar drugs sold by a company in India.
Therefore, the court laid emphasis on ‘who is first in the market’ test and in this case the Court went a step further to ascertain the presence of the company in the international market, so as to grant them their right over the said mark for the medicinal product.
Anasuya hails from Delhi University and she spends most of her time in Reading, Practising Yoga and Working towards community animal welfare. Her Interest area lies in Intellectual Property Law. For any clarifications, feedback, and advice, you can reach her at firstname.lastname@example.org