1.INTRODUCTION
Trademarks are considered an important part of intellectual property rights. A trademark is a type of intellectual property consisting of a recognized sign or design that identifies a product or service, for example, Domino’s for pizza, Ford for automobiles, etc. Today, in a rapidly growing world, to gain an edge over others, many businesses try to copy other trademarks, which creates confusion in the minds of customers through such deceptive practices. To protect such things, the Trademark Act of 1999 came into force, which gives business houses the business houses the right to file a case to protect their trademark. The main purpose of granting a trademark is twofold: Business houses rights and avoids creating consumer confusion, but the court, while deciding a case, has to balance between the two, which was done by the present court in this case. Now it is not always easy for the court to grant trademarks to any company, particularly if this issue is involved in generic names in the pharmaceutical industry. One such issue was solved and decided by the Madras High Court on December 8, 2023, where the court struck a balance. This is a landmark judgment delivered by the court recently
2.FACTS
On 2nd February , 1999, Indian Immunologicals Ltd., the appellant, applied to register the word mark “INIMOX” for pharmaceutical and medical preparations intended for veterinary use. The first respondent, IPCA Laboratories Pvt. Ltd., filed a notice of challange against the application of petitioner for registration of the mark “INIMOX” on February 25, 2004. The notice was based on the respondent’s rights in the previously registered mark “IMOX” for medical and pharmaceutical preparations, with a use claim dated October 6, 1986. Indian Immunologicals challenged the notice, but the Trade Marks Registry rejected the petitioner position after hearing from both sides. They denied the mark because the competitor is the previous mark user. According to the Registry, the competing marks contain both cloxacillin and amoxicillin. The Registry observed that IPCA presented ample proof to support its claims and that Indian Immunologicals had not submitted any such proof. Aggrieved by this ruling, an appeal is brought before the Madras High Court.
3.ISSUES
*WHETHER REFUSAL OF THE TRADEMARK TO THE APPELLANT JUSTIFIED UNDER SECTION 11 OF THE TRADEMARK ACT ON GROUNDS OF AVOIDING CONFUSION?
*WHETHER THE APPEALANT ENTITLED TO THE TRADEMARK OF HIS DRUG?
*WHETHER TRADEMARK OF THE APPEALANT AND RESPONDENT ARE SAME?
*WHETHER TREDEMARK OF APPEALANT AND RESPONDENT ARE MERE GENERIC NAMES?
*SCOPE OF GENERIC NAMES OR ACTIVE PHARMACEUTICAL INFREDIENTS IN TRADEMARK PROTECTION?
4.CONTENTIONS FROM BOTH SIDE
APPELLANT CONTENTIONS
*The appellant’s advocate argued that the parties stated they had begun using the registered mark soon after submitting their application .They provided proof of their usage of the mark in the Pharmaceutical sector. Given that the rival trademarks, specifically Amoxycillin and Cloxacillin, share an API, it can be assumed that the protection available to generic name is restricted.
*They argued that there is no collusion of trade channels or consumers because the items sold under the “INIMOX” mark are syringes meant for animal use, whereas the products marketed under the “IMOX” mark are capsules meant for human use. There is therefore no chance of confusion. which is the primary goal of trademark registration, namely to prevent consumer misunderstanding. Section 97 of the Drug and Cosmetics Rules of 1945 was cited by them, stating that any confusion is eliminated by this statutory obligation to write crucial drug facts, including a picture of the animal, on the container.
*They stated that the mark has been in use since 2000 and based their claim on the company’s annual report for the fiscal year 2023–13. They claimed that enough MOX in packing material is standard for commerce, based on the search report from the trademark registrar.
*They cited specific precedents in which the appellant was granted relief based on comparable facts, such as in Corona Remedies v. Franco Indian Pharmaceutical Pvt Ltd, where the proprietor of the trademark Stimuliv was granted trademark rights for stimulation. Similarly, in Wochardt Ltd. v. Orchid Chemicals Where the owner of Meeto was eligible to use the Trademark Metax, In the same way, Apex vs. Zuventus where the proprietor of Zincovit was entitled to the trademark Zinconia.
DEFENDANT CONTENTIONS
*Respondent’s lawyers responded by claiming that IPCA had previously used the “IMOX” mark. They did this by citing specific registrar reports that demonstrated the trademark had been in use since 1982, before the appellant.
*They contested the argument that element MOX is public juris in the this sector, arguing that the appellant has not met the burden of demonstrating public juris and that the argument was not made previously.
*To counter the plea of generic names respondent stated that the distinction between trademarks of both parties is the addition of the word NI after the beginning letter “T” and this infringes on the respondent’s rights and would generate customer confusion.
*They cited previous rulings, such as Macledos Pharmaceutical v. UOI, in which it was held that even a small amount of ambiguity should be treated with strict Importance.
5.JUDGMENT
The court in this case had to balance between the rights of customer and Rights of Proprietor of Innovative trademark.The courtin this case had extensively dealt with several legal provision of Trademark act,1999 and rationale behind this judgment was to clear the Grey area around the Trademark in Pharmaceutical Industry.
Under the direction of Senthil Kumar Ramamootry, a bench of one judge accepted the appellant’s position, provided affirmative answers to the first and second issues, and awarded the appellant the right to use the mark INIMOX. The Court looked at the similarities between the competing items to investigate the “likelihood of confusion” issue. The Court came to the conclusion that the goods offered under the competitor marks are comparable. After analysing the parties’ list of previous opinions regarding 1 the strength of a trademark deduced from a general name or API( active medicinal constituents), the Court concluded that trademarks that are deduced from API or general names are weaker in comparison to arbitrary or chased marks. In this legal case, the Court ruled that the trademark” IMOX” possessed by IPCA was not strong enough to help the enrollment of another trademark” INIMOX”. The ultimate was intended solely for veterinary use and there was no possibility of any confusion between the two products if” INIMOX” wasn’t used for human consumption. The court held that while the strength of a trademark deduced from a general name is lower than that of an arbitrary or constructed mark, the liability of confusion should be taken into consideration. Applying the rate in this particular case, the court concluded that proving public juris was inapplicable, agreed with the complainant’s contention regarding section 97 of the 1945 medicine and Cosmetic Rules, and denied the relief.
7.CONCLUSION
The guidelines governing the pharmaceutical industry’s registration of brand names derived from Generic names have been made clearer by the ruling of the High Court. The decision suggested that trademarks with arbitrary or creative content carry more weight. The ruling was a fair compromise between two extreme viewpoints: the idea that similar trademarks in generic names don’t matter, and the belief that similar trademarks always confuse. The court considered both viewpoints and instructed that each case’s facts and circumstances should be considered. This ruling was a welcome decision to clear up any ambiguity in this murky area because it considered the rights of both commercial establishments or proprietors and customers. To avoid a large number of cases with similar facts being filed before the court, this judgment cleared up some of the confusion surrounding trademarks, which had been present for years in the pharmaceutical industry. It also dealt with the important concepts of APIs and generic names, which every law student should understand.
8.REFRENCES
*Researchgate,https://www.researchgate.net/publication/51097162_Franchising_Rabies_Vaccine_Delivery_The_Case_of_Indian_Immunologicals, Last visited on 4th July
*National institute of health,https://www.ncbi.nlm.nih.gov/pmc/articles/PMC3082500/, last visited on 4th July
*SCC ONLINE,https://www.scconline.com/blog/post/2023/12/13/madras-high-court-directs-mark-inimox-registered-for-products-veterinary-use-not-for-human-use/amp/, last visited on 4th July
CASES REFEREED
*Corona remedies vs Franco Indian Pharmaceutical Pvt Ltd,COMMERCIAL APPEAL NO 46 OF 2021
* Orchid chemicals vs Wochardt Ltd, 2013 3 CTC 841
*Apex vs Zuventus,2006 SCC Online MAD 1238
*Macledos pharmaceutical vs UOI,2023 SCC ONLINE BOM 408
*Cadila ltd vs Cadila Pharmaceutical,2001 5 SCC 73
The blog is authored by Mr Pranav Billa of Vivekananda Institute of Professional Studies Delhi