Pharmaceutical Drugs: Interim Injunction for Infringement to be granted very carefully
Publication Date: 6-Sep-2011
This article discusses the recent pharmaceutical trademark infringement suit where an interim injunction granted by the the Ahmednagar District Court in favour of Sun Pharmaceuticals was reversed by the Appellate Court.
The brief facts
Sun Pharmaceuticals is the registered proprietor of the mark AEROTIDE. AEROTIDE is a capsule containing beclomethasone dipropionate and salbutamol dry powder inhaler (AEROTIDE FORTE) in disks for use with a dispenser or an inhaler in cases of breathing problems such as Asthma.
Ferring Pharmaceuticals is the proprietor of the mark FEROTIDE. FEROTIDE contains octreotide acetate, a somatostatin analogue; a growth hormone inhibitor available in the form of an intravenous injection (liquid form) used for treatment of bleeding oesophageal varices.
Sun Pharmaceuticals filed a suit for infringement of their registered mark AEROTIDE against Ferring Pharmaceuticals in the Ahmednagar District Court. Sun Pharmaceuticals had discontinued their drug AEROTIDE in April 2006.
Arguments of the Parties
Sun Pharmaceuticals argued that based on their registration of the mark AEROTIDE, the interim injunction must be granted against the defendant Ferring Pharmaceuticals. Sun Pharmaceuticals argued that both marks were deceptively similar, used for medicines and are likely to cause confusion in the eyes of the pharmacist selling medicines and the purchaser buying the medicines.
Ferring Pharmaceuticals was represented by R K Dewan & Co in the matter. In brief, the argument of the defendant for rejection of the injunction application was as under:
1. The plaintiff's drug was admittedly discontinued 4 years prior to the date of arguments.
2. The composition of both the drugs was entirely different.
3. The diseases/ailments in respect of which the drugs were prescribed were entirely independent and different from each other.
4. The manner of administering the medicines was different from each other
5. The medicines were stored differently by pharmacists on account of difference in formulation.
6. No prejudice could be caused to plaintiff as the plaintiff's product was admittedly discontinued.
District Court Decision
After hearing both the plaintiff's & defendant's advocates at length, the Ahmednagar District Court Judge granted an interim injunction in favour of Sun Pharmaceuticals holding that FEROTIDE was deceptively similar to AEROTIDE and that there was a likelihood of confusion in the minds of the purchaser.
Ferring Pharmaceuticals was advised to appeal in the High Court. Accordingly Ferring Pharmaceuticals filed an appeal in the Aurangabad High Court against the impugned order of the Ahmednagar District Court.
High Court Decision
The High Court Judge quashed the impugned order on the ground that both the drugs AEROTIDE & FEROTIDE were completely different in respect of their composition, nature, characteristics and the ailments in which they were prescribed and administered. The High Court Judge appreciated the appellant's contention that AEROTIDE was an inhaler disk whereas FEROTIDE is an intravenous injection and the formulations were different from each other. Therefore the question of confusion in the minds of the purchaser or the pharmacist did not arise. Hence the appeal was allowed and the impugned interim injunction granted by the Ahmednagar District Court was reversed and vacated by the Aurangabad High Court in favour of Ferring Pharmaceuticals.