No likelihood of confusion between TEMOKEM and TEMODAL/TEMODAR
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In Schering Corporation v Alkem Laboratories Limited, the Delhi High Court has considered the scope of protection afforded to pharmaceutical trademarks.
The case involved Schering Corporation's trademarks TEMODAL and TEMODAR on the one hand, and Alkem Laboratories Limited's mark TEMOKEM on the other. TEMODAL and TEMODAR are registered in India and in several other countries worldwide, while Alkem’s application for the registration of TEMOKEM in India was pending.
All three trademarks are used for the manufacture and sale of the drug Temozolamide, which is prescribed for the treatment of a certain kind of brain tumour. However, there is a significant difference in the price of the drugs (the Temodal and Temodar drugs being sold at approximately six times the price of Alkem's product).
At issue before the court was whether the trademark TEMOKEM was deceptively similar to the TEMODAR and TEMODAL marks.
First, the court considered whether the marks were portmanteau words. Portmanteau words are formed by merging the sounds and meanings of two distinct words (eg, 'brunch' combines the words 'breakfast' and 'lunch'). Portmanteau words can also be created by attaching the prefix or suffix of one word to another word (eg, following the Watergate scandal, it became popular to attach the suffix 'gate' to other words to describe contemporary scandals).
The court held that all three marks were portmanteau words. The court was of the opinion that the mark TEMOKEM was formed by taking the prefix 'temo' from the word 'temozolomide' (the active ingredient of the drug Temozolamide) and the suffix 'kem' from the name of the company Alkem. The court thus found that the word 'Temokem' referred to a drug manufactured by the company Alkem which contained the active ingredient temozolomide.
The court also observed that it is a common practice in the pharmaceutical field to create a drug name by using a prefix or suffix linked to the active ingredient of the drug. Therefore, it held that it would not be unusual for the name of a drug containing temozolomide to include the prefix or suffix 'temo'.
In addition, the court held that the only common element between the three marks was the prefix 'temo', which derived from the generic word 'temozolomide'. Therefore, the prefix 'temo' fell within the public domain and no entity could claim exclusive rights over it.
Consequently, the court held that the prefix 'temo' should be disregarded. Comparing the suffixes 'kem', dar' and 'dal', the court concluded that there was no phonetic or visual similarity between the marks. In addition, the court took into account the following factors:
- the difference in price of the drugs; and
- the fact that the drugs were available only at the request of a hospital or on prescription by a cancer specialist.
Therefore, the court held that there was no likelihood of confusion between the trademark TEMOKEM on the one hand, and the TEMODAL and TEMODAR marks on the other.
Ishani Sahiwal, Anand And Anand Advocates, New Delhi
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