This article has been written by Abhinaba Datta pursuing a Diploma in Intellectual Property, Media and Entertainment Laws course from LawSikho.

 This article has been edited and published by Shashwat Kaushik.

Introduction

Imagine you visited a pharmacy in dire need of paracetamol, putting your trust in the well-known brand “Crocin,” but accidentally ended up purchasing “Cromin,”  a paracetamol from an unknown brand due to its resemblance in name or logo. Although it might seem like a minor error, it has an effect on our entire community as well as on the individual purchasing the medicine. Often, we come across cases of similar trademarks, which lessens the distinctive value of a trademark. These are known as deceptively similar trademarks; they occur when a company attempts to deceive the public and profit from the goodwill and brand value established by a well-known company.

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The application of a trademark to serve as a tool to distinguish between products gets diluted, leading to confusion among the public. This article aims to showcase the complexities of this issue by shedding light on some real-world examples, the effects it has on our society and certain remedial measures that can be taken to minimise the effect. By understanding the nuances of deceptively similar trademarks in the pharmaceutical world, we can collectively strive for a safer, more regulated and more transparent landscape where the well-being of the public is prioritised over all other considerations.

Trademarks in the pharmaceutical industry

Trademarks play a crucial role in the pharmaceutical industry; they serve as a tool for companies to distinguish their products from their competitors and build brand recognition. A trademark is defined under Section 2(1)(i)(viii)(zb) of the Trade Marks Acts of 1999, as a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include the shape of goods, their packaging and a combination of colours.

Trademarks consist of unique markings of symbols, numerals, letters or a combination of all these elements. Non-conventional trademarks such as shape marks, colour marks and holograms are also quite common in the pharmaceutical industry because they are crucial as they help to distinguish goods that may be similar in shape, substance or appearance.

A trademark helps in protecting a pharmaceutical product’s distinctive feature, for example; the colour or shape of pills. This ensures that when generic substitutes hit the market, the original brand stays true to itself.

Pharmaceutical companies are granted exclusive rights and legal ownership through trademark registration. By safeguarding the brand against unethical usage, it stops rival companies from taking advantage of the well-known status of established companies.

Trademark registration encourages pharmaceutical companies to invest in research and development, as their products are safeguarded from any misuse. The exclusive rights that trademark registration grants incentivise companies to release new and improved medications and drugs.

Deceptively similar trademarks in pharmaceutical industry

The term “deceptively similar” is defined under Section 2(1)(h) of the Trade Mark Act of 1999, as a mark shall be deemed to be deceptively similar to another mark if it so nearly resembles that of the other mark as to be likely to deceive or cause confusion. This assessment involves comparing the two marks, taking into account various factors such as their visual appearance, phonetic similarity, and overall impression. The aim is to determine whether the similarities between the marks are significant enough to cause consumers to mistakenly believe that they are dealing with the same company or product.

The concept of “deceptively similar” marks is important because it protects the rights of trademark owners and prevents unfair competition. It ensures that consumers are not misled into purchasing goods or services under the false belief that they are from a particular brand or company. By establishing clear guidelines for determining deceptive similarity, the Trade Mark Act helps to maintain the integrity of the trademark system and promotes fair practices in the marketplace.

Similarity in trademarks can be categorised into three types, which are as follows:

Visual similarity

It refers to a similarity in appearance or visual elements between two trademarks. It involves the assessment of visual elements such as syllables, prefixes, suffixes, shapes, length and other common aspects between two marks.

Phonetic similarity

It refers to similarity when two marks are considered to sound similar and their pronunciation is identical. This type of similarity can be determined based on the way the marks are pronounced, their enunciation, the number of syllables or even the length of the marks. To understand, here are a few examples: Starbucks and Charbucks (a small New Hampshire coffee roaster); Louis Vuitton and Chewy Vuiton (a line of dog toys introduced by Haute Diggity Dog); Xceed and Xseed.

Conceptual similarity

This type of similarity includes both phonetic and visual aspects, as it pertains to both what is seen and what is heard, referencing both the eyes and the ears. It involves assessment by considering the message conveyed by a mark. To understand, here are a few examples: Gluvita and Glucovita; Apple Inc. and Apple Corps Ltd.

To consider a mark to be ‘deceptive’, an important factor is whether, by its average intelligence, the common man is able to distinguish between the two products and not get confused regarding the source of goods.

In India, if a mark is found to be deceptively similar, it amounts to trademark infringement as well as rejection by the Registrar of Trademarks to register a “deceptively similar” trademark.

The deception in trademarks can be further classified by its nature, a person with an average intellect may be deceived by a trademark and have confusion about the following:

  • Misrepresentation of products: If a product has a mark that looks too much like other brands, and it’s not owned by that brand, someone might buy it thinking it’s from the brand they had in mind.
  • Source of trade: An individual might buy the products upon identifying the mark, believing that they come from the same origin as other goods featuring a similar mark that they are already familiar with.
  • Connection between trade: In this situation, although the goods carrying the marks may not be the same, they still bear a resemblance to the mark associated with different goods. In such cases, the person buying the goods may not assume that they belong to the exact brand they had in mind. However, because of the likeness between the marks, there’s a possibility that the buyer thinks there’s some connection or association between both marks.

Impact of deceptively similar trademarks in pharmaceutical industry

When it comes to pharmaceutical products, confusion among customers regarding the product’s origin is more likely to occur when trademarks are deceptively similar. Since pharmaceuticals deal with people’s well-being and health, deceptively similar trademarks have negative health effects and lead to a loss of time and money for consumers.

If medicine boxes look the same, it’s easy to pick the wrong one by mistake, which will further lead to the consumption of the wrong medicine. This mix-up can lead to health problems, making people sick instead of better. Even doctors and pharmacists might get confused and prescribe the wrong medicine, leading to adverse reactions or ineffective treatments.

Pharmaceutical companies invest heavily in research, development and brand building. The similarity in trademarks can trigger legal disputes with companies pursuing legal action to protect their intellectual property rights. These legal disputes can go on for a long time, be very expensive, and have an effect on the company’s reputation, which is important to maintain a strong and trustworthy brand. Deceptively similar trademarks can damage the reputation of established brands, as consumers may associate inferior or counterfeit products with genuine brands, leading to a loss of trust and credibility.

Competitors or small-scale companies, in order to capitalise on the brand value and goodwill of established brands, may purposefully use deceptively similar trademarks to capture market share. This unfair competition has the potential to influence market dynamics, spoil fair competition and restrict the availability of genuine pharmaceutical products by providing cheap alternatives that might not be of the same quality, causing a threat to public health.

Remedies to deceptively similar trademarks in pharmaceutical industry

In the pharmaceutical industry, deceptively similar trademarks pose a serious threat to public health and lead to confusion among customers. Even though there are rules and regulations to address the issue of deceptively similar trademarks, stricter and more robust laws are still required, especially for the pharmaceutical sector.

 It’s critical to enhance the legal frameworks that are already in place. Strong trademark laws and regulations need to be specifically framed to suit the pharmaceutical industry and must be passed by the government and regulatory bodies.

In pharmaceutical trademarks, the brand name or medicine name is derived from the medicine’s intended use, salt content or any other medical term. Pharmaceutical products are frequently named after their components. However, it can be easy to trace these characteristics to the ingredients that constitute them, they are seen as weak and non-differentiable because a similar base element may be present in several medicines. Therefore, strict criteria for trademark approval are required to ensure that similarities between drug names are thoroughly examined before approval.

According to the World Health Organisation on International Non-Propriety Names (INN), trademarks cannot be obtained from international non-proprietary names and should not include their generic stem. Section 13 of the Trade Marks Act of 1999 states that terms that are frequently used for individual chemical compounds, elements or INNs are not eligible to be registered as trademarks.

The enhancement of public awareness is crucial. Healthcare professionals, pharmacists and consumers need to be educated about the risks of taking the wrong medication due to similar trademarks that can help in early detection and reporting to curb the problem at the source.
Another step that can help in the prevention of deceptively similar trademarks is encouraging collaboration among pharmaceutical companies and regulatory bodies to establish industry-wide initiatives for sharing information on trademark applications, which would reduce any potential conflicts. Transparency and cooperation can help foster a collective responsibility to safeguard public health. Despite the existence of  rules and regulations intended to address the issue, there is a pressing need for stricter and more robust laws specifically tailored to the pharmaceutical sector. The current legal framework may be inadequate to deter unscrupulous manufacturers from exploiting loopholes and engaging in deceptive practices.

To safeguard public health, it is essential that trademarks in the pharmaceutical industry be highly distinctive and not easily confused with existing brands. Regulators should implement stringent guidelines that ensure that new trademarks meet rigorous criteria before being approved. This can include conducting thorough searches to identify potential similarities with existing trademarks and requiring a minimum level of dissimilarity to prevent confusion.

Furthermore, there should be enhanced penalties for violations. Stiff fines, injunctions, and even criminal charges should be considered to discourage manufacturers from intentionally using deceptively similar trademarks. This would send a strong message that such practices will not be tolerated and would serve as a deterrent to potential offenders.

Additionally, it is crucial to enhance public awareness about the dangers of deceptively similar trademarks in the pharmaceutical industry. Educational campaigns can be conducted to inform consumers about the importance of carefully checking the brand name, generic name, and dosage of their medications. Healthcare professionals should also be vigilant in educating their patients about this issue and reporting any suspected cases of deceptive trademark practices.

By implementing stricter laws, enhancing penalties, and raising public awareness, we can create a more robust system that safeguards public health and protects consumers from the dangers posed by deceptively similar trademarks in the pharmaceutical industry.

Case study

In the Indian pharmaceutical sector, there have been many cases relating to infringement of trademarks in the pharmaceutical industry. The courts have been extremely careful in deciding these cases, as the margin of error in interpreting these drug-related cases needs to be zero. Here are a few examples of cases relating to infringement of pharmaceutical trademarks:

Cadila Healthcare Ltd. vs. Cadila Pharmaceutical Ltd. (2001)

In this case between Cadila Healthcare Ltd. and Cadila Pharmaceuticals Ltd., the dispute between the companies revolved around the use of trademarks for their respective medicines targeting cerebral malaria. The company Cadila Healthcare Ltd. had the trademark “FALCIGO” registered, while Cadila Pharmaceuticals Ltd. launched “FALCITAB” after one year. Cadila Healthcare Ltd. filed a complaint seeking an injunction to prohibit the use of “FALCITAB,” claiming that both medicines treat the same condition, cerebral malaria and had misleadingly similar labels.

The plaintiffs argued that both drugs were prescribed as a last resort for cerebral malaria, highlighting the potential for confusion. However, the defendants asserted that the term ‘Falci’ was derived from the disease called Falciparum malaria and was used commonly in the pharmaceutical industry.

The Supreme Court found the information insufficient to prevent confusion, despite both drugs requiring a prescription for purchase. The court came to the conclusion that the criteria for determining a deceptively similar trademark required an amendment, given the potentially fatal consequences of misleading medicinal products. Therefore, the court granted the injunction in this case.

The Supreme Court highlighted the factors for evaluating the similarity of pharmaceutical trademarks, including type of trademarks, degree of similarity, nature of products or services, characteristics of rival products, types of buyers, their level of education and caution, purchasing habits and any other relevant information helping in the determination of dissimilarity among competing trademarks. This decision highlighted the need to provide a comprehensive framework for assessing the similarity of pharmaceutical trademarks to avoid potential risks and confusion.

Mankind Pharma Ltd. vs. Novakind BioSciences Pvt. Ltd. (2021)

In the recent case between Mankind Pharma Ltd. and Novakind BioSciences Pvt. Ltd; the High Court of Delhi granted a temporary injunction in favour of Mankind Pharma. This prevented Novakind BioSciences Pvt. Ltd., the defendants from producing or selling any pharmaceutical products with the “KIND” suffix.

The case centred on the use of the suffix “KIND” in pharmaceutical product names. Mankind Pharma, a well-established pharmaceutical company in India, had been using the “KIND” suffix in its product names for several years. Novakind BioSciences Pvt. Ltd., a relatively new entrant to the market, began using the “KIND” suffix in the names of its pharmaceutical products. Mankind Pharma, asserting its rights over the “KIND” suffix, filed a lawsuit against Novakind BioSciences Pvt. Ltd. for infringement of its trademark.

During the trial, Mankind Pharma presented evidence demonstrating its extensive use of the “KIND” suffix over a long period of time. The company also submitted evidence showing that the use of the “KIND” suffix by Novakind BioSciences Pvt. Ltd. was likely to cause confusion in the minds of consumers, leading them to believe that the products of Novakind BioSciences Pvt. Ltd. were associated with Mankind Pharma.

After carefully considering the evidence presented by both parties, the High Court of Delhi ruled in favor of Mankind Pharma. The court held that Mankind Pharma had established a strong case for infringement of its trademark and that there was a likelihood of confusion among consumers. Accordingly, the court granted a temporary injunction restraining Novakind BioSciences Pvt. Ltd. from producing or selling any pharmaceutical products with the “KIND” suffix.

The decision of the High Court of Delhi is a significant victory for Mankind Pharma and sends a strong message to potential infringers. The ruling reinforces the importance of protecting intellectual property rights and ensures that companies invest in innovation and brand building without fear of unauthorised exploitation.

Moreover, the ruling has wider implications for the pharmaceutical industry in India. It sets a precedent for future cases involving trademark infringement and provides guidance to companies on how to protect their intellectual property rights. The decision is expected to foster a more competitive and innovation-driven pharmaceutical industry in India, benefiting consumers by providing them with a wider range of high-quality products.

Cipla Ltd. vs. M.K. Pharmaceuticals MIPR (2007)

In the case between Cipla Ltd. vs. M.K. Pharmaceuticals, the plaintiff, Cipla Ltd., sold “NORFLOXACIN” tablets under the trademark “NORFLOX-400”, packaged in orange oval shaped blister packaging. The plaintiff alleged that the defendant, M.K. Pharmaceuticals MIPR, had infringed upon its trademark and packaging rights by selling NORFLOXACIN tablets under the trademark “NORFLOX-M” and packaged in similar orange, oval-shaped blister packaging.

The plaintiff presented evidence demonstrating that it had been using the trademark “NORFLOX-400” and the orange, oval-shaped blister packaging for several years, and had developed a significant reputation and goodwill associated with these elements. The plaintiff also submitted evidence that the defendant’s use of a similar trademark and packaging was likely to cause confusion among consumers and dilute the distinctiveness of the plaintiff’s brand.

The court considered the evidence presented by both parties and found in favor of the plaintiff. The court held that the defendant’s use of the trademark “NORFLOX-M” and the orange, oval-shaped blister packaging was indeed an infringement of the plaintiff’s trademark and packaging rights. The court issued an injunction restraining the defendant from further using the infringing trademark and packaging, and awarded damages to the plaintiff for the losses suffered as a result of the infringement.

This case highlights the importance of protecting intellectual property rights, such as trademarks and packaging, in the pharmaceutical industry. Companies that invest significant resources in developing and marketing their products are entitled to legal protection against infringement by competitors. The courts play a vital role in upholding intellectual property rights and ensuring fair competition in the marketplace.

Conclusion

The deceptive similarity of trademarks in the pharmaceutical industry is not just about logos or names; it’s about the health and safety of society at large. We can see how confusingly similar packaging and names can lead to serious health problems where someone might take the wrong medicine without realising it. This can have deadly consequences, as people depend on medications for their well-being.

The companies use deceptively similar trademarks in order to cash in on the success of established brands and offer a cheaper alternative to the expensive products of renowned brands but in this case, the disadvantages surpass the advantages of using similar trademarks. The complexity of this problem has revealed the challenges faced by both consumers and healthcare professionals, and it highlights the need for a balance between innovation and ensuring the safety of the public.

The pharmaceutical industry is constantly evolving and has witnessed tremendous growth in the past decade. Due to the expansion of the market and investment by more companies, intellectual property rights protection becomes imperative for the companies. As we strive for progress and breakthroughs in medicine, it is crucial to prioritise clarity and transparency in the way medications are presented to the public. The responsibility lies not only with the pharmaceutical companies but also with the government and regulatory bodies to enforce guidelines that safeguard against confusion.

In the end, it’s not just about trademarks; it’s about creating a healthcare system that the public can trust, knowing that they will receive the right medications. Everyone must take a step towards ensuring a safer and more secure future for the public who put their utmost faith in medications for their health and well-being by addressing the problem of deceptively similar trademarks.

References

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