INDIA: Delhi High Court Rules on Passing Off of Pharmaceutical Products
In Boehringer Ingelheim Pharma GmbH & Co. KG v. Premchand Godha & Anr. (CS(OS) No. 1287/2013 (Del. Dec. 16, 2013)), the High Court of Delhi confirmed its injunction order of July 5, 2013, in favor of the plaintiff. The Court reiterated the strict approach adopted by the courts in determining the possibility of confusion arising from use of trademarks on pharmaceutical products.
The main question in the present case was whether the trademark MUCOSOLVIN, used by the defendants since 2011 for cough syrup, was deceptively and confusingly similar to the plaintiff’s trademark MUCOSOLVAN, adopted in 1975 and used continuously since 1979 in connection with a wide range of products, including cough syrup.
According to the plaintiff, its well-known trademark MUCOSOLVAN had been registered in 93 countries, but its application to register its mark in Class 5 in India was still pending. The defendants claimed that medicinal preparations bearing the mark SOLVIN have been available for over 30 years in the Indian market and that they were the proprietors of a series of marks containing the word SOLVIN, which was known to the plaintiff. They further asserted that the adoption of the mark MUCOSOLVIN was honest and genuine because the prefix MUCO- was publici juris and only conveyed that the product was used for loosening and diluting mucus in the respiratory tract.
The Court, however, was not satisfied that the defendants’ adoption in 2011 of MUCOSOLVIN was bona fide, as the mark used earlier by the defendants for their product was BRONCHOSOLVIN. It was only when the formulation of their cough syrup was changed (to include the same API Ambroxol ingredient as in the plaintiff’s MUCOSOLVAN product) that the defendants decided to change the name of their cough syrup to MUCOSOLVIN.
Therefore, because the plaintiff had been successful in prima facie establishing that the defendants’ adoption of the mark MUCOSOLVIN was dishonest, the Court held that the fact that the present suit was instituted two years after the plaintiff became aware of the defendants’ use of the product bearing the mark MUCOSOLVIN was not a bar to the grant of an injunction.
Contributor: Swati Bhanot, Chadha & Chadha, New Delhi
Verifier: Gaurav Miglani, Worldwide Intellec, New Delhi
"This article first appeared here http://www.inta.org/INTABulletin/Pages/INDIADelhiHighCourtRulesonPassingOffofPharmaceuticalProducts.aspx in the INTA Bulletin and was reprinted with permission from the International Trademark Association (INTA).”