In the second week of September 2014, two different Appellate Benches of the Delhi High Court pronounced judgements in two pharmaceutical trademark cases. In the first case (Rajkumar Prasad vs. Abbott Healthcare Pvt. Ltd.) (ANAFORTAN Vs. AMAFORTEN), the Appellate Bench held that the trademark AMAFORTEN was deceptively similar to Abbott’s mark ANAFORTAN. Both trademarks were being used for the drug Camylofin Dihydrochloride.

Shortly, thereafter, another Appellate Bench of the same Court (in the case of Sun Pharmaceutical Industries limited vs Anglo French Drugs and Industries Limited.) (OXETOL vs EXITOL) held that the trademark EXITOL was not deceptively similar to the mark OXETOL. In this case, the mark OXETOL was being used as a brand name for Oxcarbazepine whereas the mark EXITOL was being used for Lactitol monohydrate. Oxcarbazepine is a drug used in the treatment of EPILEPSY and BIPOLAR disorder as an anticonvulsant and for mood stabilizing whereas Lactitol monohydrate was used for the treatment of constipation. Both trademarks ANAFORTAN and OXETOL were registered trademarks. Therefore, both were cases of infringement of trademarks. An additional factor in the case of AMAFORTEN was that the trademark was also registered in the name of the Defendant.

In the ANAFORTAN Vs. AMAFORTEN case, what appears to have weighed against the Defendant was the fact that the active ingredient in both drugs was the same and the Defendant was also selling its products in gold coloured strips which was a slavish imitation of the strips of the Plaintiff. In this case, the learned Judges held that the trademarks were visually, phonetically and deceptively similar and went on to say that this issue was compounded by the fact that the competing goods were pharmaceutical preparations, the class of the goods were the same and the trade channels were also the same.

On the other hand, in the OXETOL Vs. EXITOL case, the Judges came to a different conclusion. What seems to have weighed in the minds of the Judges was that EXITOL (the Defendant’s product) was sold in syrup and granule form whereas the Plaintiff’s product was sold in the form of tablets or capsules. In addition,

the Judges also noted the differences in the packages in which the two drugs were being sold. OXETOL was being sold in blister packs whereas EXITOL was being sold in bottles or sachets. The graphics on the OXETOL pack displayed a man and his brain, clearly representing that this was a drug for treating a brain disorder whereas on the EXITOL pack, the graphics showed an intestine which again showed that the drug was directed to treat an intestinal disorder (constipation). Still further, the graphics on the OXETOL product was in orange script on a white background and the use of the colour brown. Whereas on the EXITOL pack there was a yellow and white colour scheme and EXITOL was written in a distinctive blue script. Both drugs were available on prescription basis only. In the case of OXETOL, the prescribing doctor would be a neurologist, whereas in the case of EXITOL it would be a physician at a hospital, EXITOL being a hospital administered laxative. The consuming patients would also be different, Neuro patients in one case and in the other case patients suffering from intestinal disorders who were admitted to a hospital.

In the Cadilla Pharmaceutical Ltd. case, decided by the Supreme Court of India a few years earlier, the Court had emphasized the need for a stricter standard in matters of infringement involving pharmaceutical products. Applying this case, the Bench in the OXETOL case suggested that the marks must be seen as a whole and by marks the Judges meant not just the two words OXETOL and EXITOL but the marks as presented to the people dealing with the two products that is, the patients, doctors, nurses and chemists. In the OXETOL/EXITOL case, the two visual representations: (i) the word OXETOL written in an orange script in white background on a brown blister pack/having the graphics with a man and a brain, and (ii) the word EXITOL written in blue on a yellow and white label on a sachet having the picture of intestines as a graphic were not deemed to be deceptively similar so as to nearly resemble each other and therefore not likely to deceive or cause confusion. Therefore, rather than considering the marks to be words per se, the Judges considered the marks to be the entire visual representation of the two products which included the two word marks.

Conclusion and Observation:

Visual representation of the respective packs appears to be important criteria while determining the deceptive similarity between two trademarks in the Indian context.

Even if there is a resemblance between the two word marks, it is possible that the Defendant may escape liability if:

• the Defendant’s mark is used in respect of an active ingredient which is entirely different from the active ingredient for which the Plaintiff’s mark is being used

• the diseases, conditions or organs targeted by the active ingredients are different, (as in the present case EPILEPSY/brain and constipation/intestine)

• the dosage form of the respective drugs is different and

• the pack designs have different colour schemes and different graphics.

These seem to be important criteria because a majority of the patients in India may not be able to decipher the English script on the packs but will distinguish products on the visual representations of the respective packages. Colour schemes of the packages also seem to play an important role in determining distinction. For example, in the ANAFORTAN/AMAFORTEN case, as we recall, both products were tablets sold in gold coloured strips and therefore their visual representation were identical, apart from the fact that the active ingredient in both products was also the same. And therefore, one strip could easily have been confused for the other.