Strict Cadila guidance applied again in ESGIPYRIN Case

The Bombay High Court has granted ex parte injunctions restraining four pharmaceutical companies from using the trademarks EASIPYRIN, ELGIPYRIN, AGEPYRINE and ZYPYRINE (Cases 1012/09, 1013/09, 1014/09 and 1015/09).

Piramal Healthcare Ltd, the owner of the registered trademark ESGIPYRIN, has used this mark for pharmaceutical products since 1974. Piramal filed suit against four companies which were using the trademarks EASIPYRIN, ELGIPYRIN, AGEPYRINE and ZYPYRINE for identical goods.

The court found that the defendants’ trademarks were deceptively similar to Piramal's ESGIPYRIN mark. The court pointed out that the defendants’ packaging and tablets (which were bright yellow) were similar to Piramal’s product. Therefore, there was a likelihood of confusion among the public. The court will decide whether to grant a permanent injunction once the defendants have submitted their defence.

With regard to pharmaceutical trademarks, the following trends have recently emerged:

The Indian courts have recognized that pharmaceutical manufacturers must exercise a high degree of care since the public interest is at stake. Such interest must be protected by the courts, as the sale of medicines is still mostly unregulated.
Pharmaceutical companies often adopt brands that incorporate part of the name of the active ingredient or chemical composition of the drug, or the name of the organ or ailment targeted by the drug. However, the courts are reluctant to allow manufacturers to claim a monopoly over the use of such names. For example, in an earlier case the court held that 'liv' was a generic term for ‘liver’ in the plaintiff’s trademark LIV 52. Therefore, the court refused to grant an injunction preventing the defendant from using the trademark LIV-T for liver drugs.
The courts will consider the overall impression conveyed by the marks, but will disregard any generic term. Therefore, fanciful trademarks will have better protection.
The courts will take into account the fact that where drugs for different ailments are sold under similar marks, confusion between the marks may have fatal consequences. This factor usually weighs in favour of the plaintiff in infringement cases.
The court will also take into account the fact that doctors' handwriting is often illegible and that a large percentage of the population is not familiar with the English language. These factors also usually weigh in favour of the plaintiff.

The courts invariably refer to the 2001 decision of the Supreme Court in Cadila Health Ltd v Cadila Pharmaceuticals Ltd in all cases involving pharmaceutical trademarks. In Cadila, the Supreme Court held that:

“drugs are poisons, not sweets, because any confusion between medicinal products may be life threatening, and not merely inconvenient. Therefore, it is essential that there should be as many clear indicators as possible to distinguish two medicinal products from each other.”

The Supreme Court concluded that the test for assessing the risk of confusion among the public should be more stringent for pharmaceutical trademarks. It seems that in the present case, the Bombay High Court followed the Cadila guidance.

Binny Kalra, Anand And Anand Advocates, New Delhi

Strict Cadila guidance applied again in ESGIPYRIN Case

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