Preface

In Pharma Industry it is a general practice to name drugs either by its principal component or the ailment for which it is related to. The chemical names and the generic names cannot per se be registered as Trademark as they are refused under section 13 of the Trade Marks Act, 1999 but the Pharma Industry have adopted a way out by coining words which contain a part of the chemical name. This serves the purpose of identifying the drug. But the same has also given rise to Trade Mark infringement cases filed by drug companies on the ground that the product of its competitor which employs a part of the chemical name in its trade name, is deceptively similar to its own trade name. This made us to analyze Trade Marks disputes involving pharma brands. Our objective was to ascertain how impartial is the Judiciary in adjudicating TM disputes involving pharma brands. Yet another objective was to understand the efficiency of the Indian judicial system in adjudicating TM disputes. This article contains essentially a case study with appropriate comments on the march of the law as the Judges see it.

Beecham Group Plc. Vs. S.R.K. Pharmaceuticals 2004 (28) PTC391 (IPAB)

AMOXIL (Appellants) - LYMOXYL (Respondents)

The appellant was using the mark 'AMOXIL' in India since 1990. This mark was registered in India in 1972 in Class 5 in respect of Pharmaceutical goods. The respondent started using the mark 'LYMOXYL' in India from 1985. The respondent filed the application for registration of the mark in 1987 in India in the same class with respect to similar goods.

The appellant brought an action against the respondent stating that the mark is deceptively similar. The only difference between the two marks is in the prefix 'LY' and 'M'. The rival marks are phonetically and deceptively similar and the goods are pharmaceutical goods under Sec. 12(1) of the Act.

The Intellectual Property Appellate Board (IPAB) held that the respondent dishonestly adopted the mark by copying it from the appellant who had got the mark registered long ago. Hence the respondent cannot claim honest concurrent use, by virtue of earlier use. The Appellate Board delivered a judgment prohibiting registration of the Trade Mark 'LYMOXYL'.

Ranbaxy Laboratories Limited Vs. Anand Prasad & 4 Others 2004 (28) PTC 438 (IPAB)

FORTWIN (Appellant) - OSTWIN (Respondents)

The appellant was the registered proprietor of the mark 'FORTWIN' and had been using the mark since 1975. The respondent applied for registration of the mark 'OSTWIN'. Both the marks related to pharmaceutical compositions in respect of treatment of bones.

The appellant brought an action against the respondent stating that the mark is deceptively similar. The IPAB held that the prefixes are 'FORT' and 'OST' while both the marks end with the suffix 'WIN'. It was further held that since the rival goods are also pharmaceutical goods it might lead to serious consequences due to deception or confusion in the minds of the public. Hence on the possibility of harm being caused to common person the appeal was allowed.

Hoechst Aktiengesellschaft vs. Artee Minerals & Anr. 2004 (28) PTC 470 (IPAB)

ARELON (Appellant) - ARTEELON (Respondents)

The appellant was the registered proprietor of trademark 'ARELON'. This mark was registered in class 5 with respect to pharmaceutical goods relating to preparation for killing weeds and destroying vermin. The respondent filed an application for registration of the mark 'ARTEELON' in the same class with respect to pharmaceutical goods.

The appellant opposed the application for registration of trade mark filed by the respondents on the ground that the registration of the impugned mark would be contrary to provisions of Sections 9, 11, 12(1) and 18 of the Trade and Merchandise Marks Act, 1958.

The IPAB held that the rival goods were same and the only differen