This post was first published on 5th January, 2014.
The Hon’ble Delhi High Court delivered another thought-provoking judgment on the 16th of December, 2013 related to the pharmaceutical industry. The plaintiff in the present case is Boehringer Ingelheim Pharma Gmbh & Co., a German company with its principal place of business in Germany, whereas the Defendant is IPCA Laboratories Ltd., with its principal place of business in Mumbai.
The Plaintiff has been using the trademark MUCOSOLVAN since 1979 in 56 countries including India for pharmaceutical preparations used mainly for the treatment of productive cough. The trademark application filed by the Plaintiff before the Indian Trademark Office is pending registration. The Plaintiff states that, in or around September 2011, it learnt about the Defendant’s use of the mark MUCOSOLVIN for its pharmaceutical preparations for the treatment of cough. The Plaintiff states that the Defendant’s impugned mark MUCOSOLVIN is virtually identical and deceptively similar to the Plaintiff’s well-known trademark MUCOSOLVAN. The impugned mark is visually, phonetically and structurally indistinguishable from the Plaintiff’s mark except for the letter ‘A’ in MUCOSOLVAN, merely substituted by the letter ‘I’ as in MUCOSOLVIN. The degree of confusion due to mispronunciation and misspelling is very high. Moreover, since both products are meant for the treatment of cough, the chances of confusion are higher. The use of the Defendant’s mark, it was argued, was bound to create confusion on several grounds. It was further stated that, both the Plaintiff’s and the Defendant’s products are Schedule-H drugs and can be sold over the counter and, therefore, a person of average intelligence and imperfect recollection would not be able to distinguish between ”MUCOSOLVAN’ and ‘MUCOSOLVIN’, different only by one letter.
The Defendant contended that, it was the proprietor of the mark SOLVIN and medicinal preparations bearing the name SOLVIN had been available for over 30 years in the Indian market. It was stated that, the Defendants and its predecessors had filed various trademark applications for registration of their products for a series of SOLVIN marks. And so the Defendant’s adoption of the mark MUCOSOLVIN was honest. The addition of the prefix ‘MUCO’ to the well-known mark ‘SOLVIN’ was to convey to the medical profession, public and consumers that it was used for loosening and diluting mucus in the respiratory tract.
The Hon’ble Court, by applying the tests given under Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., held that there may have been many ‘MUCO’ and ‘SOLVIN’ products in the market, but in the present case the two terms were in fact, phonetically, visually similar and had the difference of only one letter between them. The class of purchasers were the same and could not be said to have the degree of intelligence and education to differentiate between the products every time. Both the terms were deceptively similar and adding a prefix to ‘SOLVIN’ may not be considered as a bonafide action on the part of the Defendant. The Hon’ble Court passed an injunction order against the Defendant and added that should the Defendant be prepared to change its name to avoid confusion between the two products, it could apply to the court for variation of this order.
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