Trademark is used to identify the goods of one manufacturer from the goods of others. It is like a brand name. They are important for business as they allow the companies to establish the reputation of the products which they produce. They include words, symbols, logos, numerals etc. they appear on the product or its packaging. Anything that specifically helps in identification of a company can be a trademark. It can be for goods or services. Due to the presence of trademark the companies do not have to worry that an inferior product might lower the reputation or profit by misleading the consumers.
But in recent times, there have been an increase presence of infringement of trademark in the country. Trademark violations have become common in the country as the wrongdoers use similar trademark of a certain product as their own so that they get monetary benefit on the basis of the products’ reputation.
As seen in the case Gufic Private Limited and Anr. Versus Vasu Healthcare Limited (Notice of Motion No. 399 of 2013 in Suit No. 164 of 2013 decided on 28.03.2016) where the plaintiff was using the trademark SALLAKI for a long time as an ayurvedic tablet that works as a pain reliever. Gufic claimed that it learnt of the Defendant’s, i.e., Vasu Healthcare Limited, preparation having the mark ‘SHALLAKI’ in May 2009. The plaintiff hasd filed for grant of injunction. But according to the judge it was a matter of the mark being descriptive or not.
The plaintiff argued that they had earned considerable amount of goodwill and reputation due to the product. And the name itself wasn’t descriptive as it had acquired a secondary meaning due to its descriptive use. However, the defendants were of the view that SALLAKI was a descriptive name and does not deserve protection. They said that the plant from which the ayurvedic medicine was derived is called SALLAKI in Sanskrit which was given by the Indian Council for Medical Research’s review of medicinal plants. Also another private publication had stated that the Sanskrit name of the plant is Sallak.
After hearing the arguments presented by both the parties, Justice Gautam Patel of the Bombay High Court noted that the defendant’s argument lacked any sense of clarity as the material put forward by the defendant showed that the plant from which the tablet was derived had multiple names in multiple languages. He held that it did not make any sense to accept the argument put forth by the defendant saying that all the names attributable to the plant were descriptive and should not have trademark protection. The main question was put forward by him in the following way: “The distinction here is, in my view, a question of testing whether the present Defendant is using the mark as a trade mark or in a purely descriptive sense.”
He arrived at the conclusion that the defendant was using the impugned mark as a trademark which was not merely for a descriptive purpose. While analysing the packaging of the defendant’s product, he held that it was used mainly for trademark purpose. Though he accepted that the repetition in the package was accidental yet the mark did not leave any doubt about its character. Also no specific evidence was brought on record to show how the mark was popular as the defendant wanted everyone to believe. Thus, rejecting the defendant’s argument, he held: “If there exists one truism today it is that just because something is found on the Internet it is not only for that reason necessarily and invariably true.” And finally, considering that the likelihood of deception would be more in case of ayurvedic medicine, he granted an injunction in favour of the plaintiff.
The judgment given in the above-mentioned case is certainly a welcome development in respect of descriptive use in trademark.
In another recent case relating to trademark it was seen that two companies manufacturing pharmaceutical preparations used similar name for a certain product. There arises a chance of likelihood of confusion in cases when similar names are used. And as consumers being illiterate recognize medicines based on trade dress and colour schemes. There can be health problems in the pharmaceutical industry due to such deception and confusion. Passing off someone else’s goods as its own is not right. Therefore proper usage and implementation of law should be there to stop such harmful process.
Win-Medicare Pvt. Ltd. v Galpha Laboratories Ltd. and Ors. I.A. Nos.22711/2014 & 26365/2014 in CS(OS) No.3507/2014 decided on 4th January, 2016 is the case where such confusion was created. The plaintiff company, Win-Medicare Pvt. Ltd., was engaged in the business of manufacturing, distributing and marketing of high quality pharmaceutical preparations. The plaintiff’s key therapeutic segments include antiseptics, analgesics, gastroenterology, gynaecology, dermatology and neurocare and protein supplements. The plaintiff had launched its range of medicinal preparations consisting of a Povidone-Iodine combination under the trademark BETADINE in the year 1990. In or about May 2013, the plaintiff, for the first time, became aware of the defendant No.1 when the plaintiff noticed an advertisement appearing in Trade Marks Journal No.1584 for registration of the mark
BECTODINE-M. The plaintiff became aware of the product being manufactured by the defendant. The plaintiff approached the Delhi High Court for an injunction.
It was argued by the plaintiff that the trademark BETADINE has a source identifying significance origin associated with the plaintiff alone. They held that the mark “BECTODINE’ is deceptively similar to their mark. Both the marks have same pronunciation and are not distinguishable to a person having imperfect recollection. The mark “BECTODINE” has been adopted solely for the purpose of using the reputation and goodwill of their company. The defendants had mala fide intent. Thus the defendants were just trying to cause confusion amongst the public and also the people in the trade. However, the defendants claimed that they had honestly, independently honestly, independently coined, conceived and adopted the mark BECTODINE-M for use in respect of its medicinal and/or pharmaceutical preparation containing the molecule Povidone-Iodine. And their products using the trademark Bectodine has been used extensively in the country since 2006.
After hearing both the parties, the court first checked for likelihood of confusion and found that there was a probability of confusion. The Court held that where the defendant’s mark contains the essential feature of the plaintiff’s mark combined with other matter, the Court must consider the broad and essential features of the two marks to come to the conclusion about whether one mark is deceptively similar to another. They should not be placed side by side to find out if there are differences, rather, similarity has to be judged as a whole. The overall impression in the minds of the general public must be considered.
The court looked into certain cases like Laxmikant V. Patel v. Chetanbhai Shah & Anr where it was held:
“A person may sell his goods or deliver his services such as in case of a profession under a trading name or style. With the lapse of time such business or services associated with a person acquire a reputation or goodwill which becomes a property which is protected by courts. A competitor initiating sale of goods or services in the same name or by imitating that name results in injury to the business of one who has the property in that name. The law does not permit any one to carry on his business in such a way as would persuade the customers or clients in believing that the goods or services belonging to someone else are his or are associated therewith. It does not matter whether the latter person does so fraudulently or otherwise.”
The Court also referred to the judgment in Cadila Healthcare Ltd. Vs. Cadila Pharmaceuticals Ltd., where the Supreme Court laid down several principles with respect to trademark infringement in pharmaceuticals. The Court also referred to the judgment in Allergan Inc. v. MilmetOftho, 1999 PTC (19) (DB) 160 where the case of “Ocuflox” was considered. The word ‘Ocu’ was derived from Ocular and ‘Flox’ from Ciprofloxacin. The Court in this case, injuncted the use of Ocuflox on the basis of trans-border reputation and keeping in view the interest of the public, and held, “In the interest of the public there cannot be two medicinal preparations bearing the same name from different sources and with different compositions. One must go.”
The Court held that it was beyond doubt that the defendants had knowingly adopted a deceptively similar mark as was evident from the identical trade dress, colour, and similar packaging. The ‘common to trade’ defense of the defendants was rejected in favour of prolonged use of the plaintiff and the Court granted an injunction restraining the defendants from using the trademark “Bectodine / Bectodine-M” or any other similar mark.
From the above-mentioned two cases, it can be seen how trademark infringement can hamper a company’s reputation. And most importantly can affect human health. Thus it is up to the courts now to give proper judgments so as to protect human health and also a company’s business.