INTRODUCTION :
The case[1] is one of the instructing landmark cases intending to clear misleads in passing off. It is a point of discussion when it comes to brand names and their issue of infringement and passing off. In law, there are no particular methods or criteria to dispose of this type of issue as every case is a new challenge. When it comes to medical issues it is crucial to make a decision, even a minute mistake may cause fatal consequences. Thus the present case is related to a medical company claiming that the respondents herein are using a medicine name that is deceptively similar to that of the plaintiff.
BRIEF FACTS OF THE CASE:
The present suit was filed by the appellant seeking an injunction in the District court at Vadodara. The suit came into being when the respondent started selling a medicine under the brand name “Falcitab” and it was appealed by the appellant that they are already selling a drug under the name of “Falcigo” which is similar to that of the respondents. This medicine contains ‘Artesunate’ and is used to treat cerebral malaria which is also called “Falciparum”. It is submitted that the petitioner’s brand was registered under Part A class 5 of the Trademark and Merchandise Act 1958, from 1996, October 7th onwards by getting approved from the Drugs control general. Also, the respondent herein got permitted by the Drug control general for manufacturing the drug namely Mefloquine Hydrochloride in 1997, 10th April under the brand name “Falcitab”.which is also used for treating Cerebral Malaria. The appellant got to know that a drug that is also used to treat cerebral malaria is being sold under the similar name “Falcitab” in April 1998. Thus the present suit was filed by an appellant at the district court of Vadodara for an injunction of the respondent.
ISSUES RAISED:
Whether the act of respondent comes under Passing off?
The names Falcitab and Falcigo tend to be similar and confusing.
ARGUMENTS ADVANCED:
Petitioner Contentions:
“It is argued that the respondent’s action can be passed off by taking the name Faclitab as his drug name which is deceptively similar to that of the petitioner. And it also claimed that it can be confused as it is selling drugs that are used for the same treatment. Also countering the claim of the respondent, the petitioner stated that even though these are Schedule L drugs that are distributed to hospitals and clinics it is not good to overlook the fact that they are similar and can cause confusion to pharmacists.”[2]
Respondents Contentions:
The respondent stated that the prefix “Falci” is derived from the word Falciparum, which is the disease itself. And it is a common practice in pharmaceuticals as it indicates to doctors and pharmacists the usage of this particular drug. It is pertinently submitted that the medicine is a Schedule L medicine that is meant to be distributed to hospitals and clinics, unlike Schedule H which is sold by the chemist only on the prescription of a doctor.
DECREE OF DISTRICT COURT:
“The district court dismissed the interim injunction on 30th May 1998. Stating that the two drugs Falcigo and Falcitab are not similar they are different in formulation, price, and appearance. Also, this medicine is meant to be sold in hospitals and clinics. Thus, there is no chance of confusion between the products.”[3]
DECREE OF HIGH COURT:
The appeal filed before the High Court went ineffective as it stated that it could not be said that there is a likelihood of confusion but there is a chance of passing off the products from one another.
JUDGEMENT OF SUPREME COURT:
After referring to both Indian and foreign cases, the court concluded that English cases are relevant to consider the essential aspects of Trademark. When it comes to the sale of goods, English laws apply to countries whose literacy rate is high and everyone can understand the words and language written on the products. In a country like India where there is no single language and most of the population is illiterate, referring to English law which describes the dissimilarity of products and the distinguishing capacity of customers seems to be far from reality. The things which should be remembered during the examination of such cases are that the person who is buying may not know what is written on the product and a slight difference in the spelling may not be identifiable for that person. Also, the court stated that in the cases of passing off, one must examine if the misrepresentation is likely to confuse an ordinary person from one product to another, and other surrounding factors. It stated that confusion in non-medical products only causes economic loss but in medical cases, it leads to fatal issues and can cause severe health issues. The court opined that in matters relating to medical products, it is necessary to take a strict approach, Thus the court had given a set of factors which are to be considered in deciding a case of a deceptively similar issue. “They are;
- The nature of the marks.
- The degree of resemblance is phonetically similar and hence similar in idea.
- The nature of goods in respect of which they are used as trademarks.
- The similarity in the nature, character, and performance of the goods of the rival traders.
- The class of purchasers who are likely to buy the goods bearing the mark they require, on their education and intelligence and the degree of care they are likely to exercise in purchasing or using the goods.
- Mode of purchasing the goods or placing orders for the goods.
- Any other surrounding circumstances which may be relevant in the extent of dissimilarity between the competing marks.”[4]
By giving these factors as a reference, the apex court directed the case to the district court by stating, the Trial court can now decide the case by considering the above factors.
CRITICAL ANALYSIS:
Many cases are referred to by Supreme Court judges in deciding the present case. One of the most relevant cases is Corn Products Refining Company v Shangrila Food Products Limited.[5] In this case, the conflict occurred over the words Glucovita and Gluvita, the court held in the instant case, it was recognized that when a question of similarity arises the mark has to be considered as a whole. Thus, irrespective of the syllable ‘co’ in the appellant’s mark it is considered to be confusing and similar to the appellant, who also opined that it is not something that can be differentiated in our country. Also held that such a question should be approached from the view of an ordinary person with imperfect recollection. Apart from this case, there are many English cases for a better understanding of Trademark related jurisdiction and the decision-making process. After referring to many cases, the court concluded the above judgement.
CONCLUSION:
The present case upheld a landmark judgement given passing off in medical products. It also held that the matters of non-medical products might cause loss only to the economy, goodwill and reputation. But the matters concerning medical products must be treated or decided with care as they can cause disasters and even in present society medical errors are getting frequent hence the decision can be proof of the medical importance. Also, it provides the insight that a brand name, trademark, or logo can bring a remarkable difference in the outcome of that product. The competitiveness in this business era over one type of product is a remarkable aspect of a growing economy.
Author(s) Name: Vinya Sai Suguna Karedla (JC College of Law)
References:
[1] Cadila Healthcare Ltd. v Cadila Pharmaceuticals Ltd. (2001) (2) PTC 541 SC
[2] Ibid
[3]Ibid
[4] R Sai Gayatri, ‘Cadila Healthcare Ltd. v. Cadila Pharmaceuticals, 2001 : case study’ (IPleaders, 08 February 2022) <https://blog.ipleaders.in/cadila-healthcare-ltd-v-cadila-pharmaceuticals-2001-case-study/> accessed 27 December 2022
[5] Corn Products Refining Company v Shangrila Food Products Ltd. (1960) (1) SCR 968.
