Out of the many trademarks registered every year, the Indian pharmaceutical industry accounts for a major portion compared to the other sectors. The nature of the relationship between consumers and pharmaceutical companies demands that trademarks assigned to this industry conform to a strict standard of assessing similarity. Herein, the author attempts to demonstrate how the rule of trademark law i.e., the 'Anti-Dissection' rule conflicts with one of the similarity tests of trademark law i.e., the 'Dominant mark' test. By shedding light on the two contradictory concepts in trademark law, it is necessary to consider whether the Court's approach in assessing deceptive similarity helps to maintain the standard in adopting pharmaceutical trademarks.
'Anti - dissection' rule v. 'Dominant mark' test
According to the World Intellectual Property Organization (WIPO), trademarks are the distinguishing factor between products available in the market. They are the sign/mark of a particular brand and act as the source of origin for the product. In 2014, the case of South India Beverages Pvt. Ltd. v. General Mills Marketing Inc. [2014] discussed both the concepts in its ruling. The Delhi High Court firstly touched upon the 'Anti-dissection' rule ("the Rule") which explains that a trademark must not be separated into parts but analyzed as a whole. The inference of an ordinary man and his imperfect recollection is the foundation at which any kind of deceptive similarity is detected in a trademark and hence, such an ordinary man would not consider breaking down a mark at the time of purchase. On the other hand, the 'Dominant mark' test ("the Test") originated from judicial pronouncements. The prominent part of a trademark that attracts the customer or helps in identification can be said to be the dominant part of the mark. The Court can set apart the dominant portion of the mark and verify if the opposite party's usage of the said mark is an act of infringement. It is notable to mention that the Court in this very case delivered a peculiar explanation stating that the Test simply supports the Rule and thus, both are complementary to each other. It was held that in a holistic perspective, the two opposing concepts intersect to determine the deceptive similarity in pharmaceutical trademarks. The Rule finds its relevance in Section 15 and Section 17 of the Trade Marks Act (1999) while the Test is not recognized. It is, however, noticed that the practice of using the Test is quite common and referred to by the Courts in assessing pharmaceutical trademarks time and again. Thus, the existence of such contradictory concepts may lead to arbitrary decisions.
Public interest in pharmaceutical trademarks
As part of their trademarks, pharmaceutical companies add a suffix or prefix to their line of products. For instance, in Mankind Pharma Ltd. v. NovakindBioSciences Pvt. Ltd. [2021], the plaintiff's products were coined with the suffix 'Kind' (Dexakind, Metrokind, Dentakind, etc.).Thus, the defendant was restrained against using the same suffix as it had the potential to deceive the customers and allow the defendant to piggyback on the plaintiff's established reputation.[4]In Sun Pharma Laboratories Ltd. v. Ajanta Pharma Ltd. [2018], the Court placed nutraceuticals in the same class as pharmaceuticals and restrained the defendant from using the mark'GLOTAB' as it shared the same prefix as the plaintiff's mark 'GLOEYE'.
The addition of a suffix or prefix either slightly alters the mark or simply creates a word that is interchangeable in a consumer's mind. The essence of trademark law is to confer an exclusive right upon the registered proprietor or in some cases, the prior user of the mark or if the mark has acquired distinctiveness and secondary meaning. It helps the proprietor to build a reputation and direct his consumer base towards his brand. Pharmaceutical trademarks with a similar suffix or prefix not only allow another party to bring on a case of infringement but also poses the grave possibility of customers purchasing the wrong product.
Herein, the focus on pharmaceutical trademarks is to acknowledge the growing number of misleading pharmaceutical trademarks and their direct nexus to the public interest. The need to strike a balance is not limited to the parties alone but the general public as well. The degree of caution must be prioritized and must not be misused at the plight of an unsuspecting customer. It was observed that visually and phonetically similar marks, for example, GENTAC and ZANTAC can be mixed up and cause irreversible effects on the customer who is assumed to be an ordinary man with imperfect recollection. The Court was in favor of the plaintiff and restrained the manufacturing and production of GENTAC. Yet again, the suffix 'TAC' can be a mark of confusion or clarity for the public. The same Court also highlighted the issue of pharmaceutical trademark confusion among the general public. In a country like India, with the general masses usually unaware of the intricacies behind pharmaceutical products and let the simplicity of the terminologies affect their purchases, the scope of the fault increases exponentially. While this invites confusion and leads to misapprehension by the consumer, the issue can be dealt with with stringent measures to adopt distinctive marks. Since the likelihood of similarity in the names of certain medications can prove to be fatal to the consumers, pharmaceutical trademarks must be placed at a higher pedestal.
Conclusion
The obscure view was taken by the Courts concerning the concepts prompts future rulings that may affect the way pharmaceutical trademarks are dealt with. The 'Anti-dissection' rule enshrined in the Trade Marks Act (1999) encourages to look at trademarks as a whole. However, it can be an unrealistic expectation in the pharmaceutical industry. The use of a similar mark in the pharmaceutical market can be disadvantageous to more than one party. The landmark case of CadilaHealthcare v. Cadila Pharmaceuticals[2001] catered to the idea that a stricter approach towards pharmaceutical trademarks is necessary and a revisit to the same would be useful.
Pharmaceutical Trademark And Its Conflict With Trademark Law
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
