Trademark Protection: Stricter Approach Needed in Cases Involving Medicinal Products- Kerala HC
In a significant ruling that could have far-reaching implications for trademark protection in India, the High Court delivered a landmark judgment on 15th June 2023, emphasizing the need for a stricter approach in cases involving medicinal products. The bench, comprising of Justice R.K. Sharma and Justice S.K. Verma, opined that protecting public health is paramount when dealing with such products, and the rights of registered proprietors must be carefully balanced with consumer welfare.
The case, which involved a passing off action, highlighted the interplay between registered proprietors of identical or closely resembling trademarks. The court clarified that the exclusive rights of registered trademarks, as per Sections 28(1) and 28(3) of the Trade Marks Act, 1999, do not affect the right to bring an action for passing off goods or services.
“We must ensure that consumers are not exposed to confusion or misrepresentation, especially when it concerns medicinal products,” stated the court in its judgment. “The consequences of any mix-up could be dire on public health.”
The court stressed the importance of establishing evidence of confusion among ordinary consumers due to the similarity of marks and surrounding factors, which is a prerequisite for initiating a passing off action. It further stated that damage to goodwill must be assessed based on economic loss in the market, and referred to the case of Amritdhara Pharmacy v. Satya Deo, stating, “Protection of goodwill in business against misrepresentation is of utmost importance.”
The judgment also brought attention to the assessment of deceptive similarity between products, labels, color schemes, and designs. “The likelihood of creating confusion in the minds of ordinary consumers is a crucial factor in determining misrepresentation,” the court explained.
The court considered market share and economic loss in its evaluation, pointing out that data must be carefully analyzed to understand the impact of new products on existing market share. Notably, in this case, the market share of the respondents remained unaffected by the appellants’ marketing of similar products.
The High Court set aside the impugned order, highlighting that the passing off action was not established. The judgment cited the case of Cadila Health Care Ltd. V. Cadila Pharmaceuticals Ltd., stating, “The passing off action must be based on a solid foundation of evidence.”
Legal experts believe that this judgment will have far-reaching implications for trademark protection, especially in the pharmaceutical industry. The stricter approach adopted by the court will likely serve as a precedent in future cases involving medicinal products, ensuring greater safeguards for consumer welfare.
Mr. A.K. Sinha, the advocate representing the appellant, expressed his satisfaction with the court’s decision, stating, “The judgment rightly upholds the need for consumer protection and provides clarity on the interplay between registered trademarks and passing off actions.”
On the other hand, Mr. R.S. Gupta, the advocate for the respondent, commented, “While we respect the court’s decision, we will carefully examine the possibility of seeking rectification or cancellation of the offending trademark.”
Date of Decision: 15th June 2023
M/S MARIYAS SOAPS vs M/S WIPRO ENTERPRISES LIMITED
