Mark owner cannot extend monopoly to other goods after deliberately restricting specification

India

In Indchemie Health Specialities Pvt Ltd v Intas Pharmaceuticals Ltd (Notice of Motion (L) No 2540 of 2014 in Suit (L) No 1067 of 2014), a single judge of the High Court of Bombay, rejecting Indchemie Health Specialities Pvt Ltd’s ad interim application, has held that once a party has deliberately restricted the specification of the goods at the examination stage to overcome an objection, it cannot then extend its monopoly to other goods in the same class. Indchemie’s interlocutory application was restricted to the cause of action of infringement at the ad interim stage, in view of Intas Pharmaceuticals Ltd’s other applications (pending disposal) challenging the joining of the causes of action of passing off and jurisdiction.

                            

                                       Indchemie’s product                  Intas’ product

In support of its case, Indchemie argued, among other things, that:

  1. it has been the registered proprietor of the mark CHERI since May 14 1987 in respect of pharmaceutical preparations in Class 5;

  2. Intas had withdrawn a pharmaceutical product called Cherryfol pursuant to a cease and desist notice from Indchemie; and

  3. Intas had subsequently launched a medicinal and pharmaceutical product called Multi Cherry, which infringed Indchemie's registration for CHERI.

In its defence, Intas argued as follows, among other things:

  1. Its product is not a pharmaceutical preparation (and not a ‘drug’ under the (Indian) Drugs and Cosmetics Act 1940), but is a mere dietary supplement intended to complement a normal diet. It is a proprietary food under the (Indian) Food Safety and Standards Act 2006 and is not meant for medicinal use.

  2. Indchemie had deliberately restricted the specification of the goods from "medicinal and pharmaceutical preparations" to "pharmaceutical preparations" when faced with an objection on the basis of distinctiveness of the CHERI mark at the examination stage. In view of this exclusion, Indchemie could not claim a monopoly over the use of the word 'cheri' in respect of medicinal preparations, let alone in respect of dietary supplements; and

  3. Indchemie’s rights were restricted to the misspelling 'cheri' and did not extend to the correct spelling 'cherry'.

After hearing the parties, the court rejected the ad interim application based on Intas’ arguments. The court also noted that, although the law permitted the filing of infringement actions against similar goods, “similarity” had to be understood in a more restricted sense in the circumstances of this case.

This decision is very peculiar as it deals with prosecution history estoppel in trademark cases. Section 29 of the Trademarks Act 1999 permits infringement actions against similar goods. By applying the test of similarity in a restricted sense, the court appears to have indirectly relied on Section 28(2) of the act, which states that the exclusive rights conferred by a trademark registration are subject to conditions and limitations.

What is also interesting is the introduction of the class heading “dietary supplements” in Class 5 of the 10th edition of the Nice Classification in 2012. Under the ninth edition of the classification, “dietary supplements” were not a class heading and fell under Classes 5, 29 or 30 depending on whether they were for medicinal use or not. “Dietary supplements” is a distinct class heading in Class 5 along with “pharmaceutical preparations” and others, which appears to show a difference between them. Strangely, after obtaining a registration for CHERI in respect of "pharmaceutical preparations" in 1987, Indchemie never filed a fresh application for a wider specification of goods, which suggests that, until 2015, CHERI had not acquired distinctiveness in relation to other goods falling in Class 5. 

It remains to be seen whether this decision will stand the test of time - in any event, mark owners need to be wary when accepting limitations to their registrations.

Adheesh Nargolkar, Shailendra Bhandare and Vidhi Kotak, Khaitan & Co, Mumbai

Khaitan & Co represented Intas in this case

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