Generic Medicines & their Trademarks: Lawyers Advice
The trademark of a particular company name and logo acts as a source identifier for its consumers and helps them identify/distinguish their choice of product from the rest of the goods present. Trademark law protects the goodwill that is associated with the goods/services manufactured by the company. While dealing with Pharmaceutical Companies, the Trademark law makes no exception. The Pharmaceutical sector of our country is the most active in the Trademark Registration process which is very particular about the registration of brand name and logo. Trademarks related to pharmaceutical companies are considered to be very important as they are linked to public health. Even if the companies spend millions of rupees in research and development (R&D) and patenting the medicines, but then somewhere they spend very little time, effort, or creativity naming them and in reality, they often name their medicines after the generic ingredients.
Can a Pharmaceutical Company adopt a generic name of the medicine as a trademark?
To answer this, we need to first understand, what attributes should a mark have to get registered under the trademark law. For a mark to qualify for a trademark it must be distinctive in nature. If the mark lacks the element of distinctiveness and/or is descriptive in nature that said mark will not be registered. In the pharmaceutical sectors, it is seen that most of the medicinal/pharmaceutical products are named after their generic ingredients. Even if it has become a common practice, it is still considered as weak and non-distinctive as that generic ingredient is used by various pharmaceutical/medicine manufacturers. Hence there might be a possibility of consumer confusion. To prevent that for this very reason Section 13 of the Trademark Act 1999, strictly prohibits the registration of Generic Words, Chemical Composition as Trademark.
There have been various cases where the companies have tried to circumvent Section 13 of the Act and got their medicine registered by just coining a portion of the generic term like Azithral 500mg is the name of the drug but the generic name of the drug is “Azithromycin”. By adopting this way surely, the companies have got their way out, but then this very smart move by the companies gave rise to Trademark Infringement as various market competitors involved in manufacturing of medicinal products were incorporating the same chemical in their drug resulting in the adoption of a deceptively similar name.
The Courts have also repeatedly emphasized the importance of exercising extreme caution when adjudicating infringement cases involving pharmaceutical brands. In the case of Win Medicare Pvt. Ltd v. Galpha Laboratories Ltd & Other (CS(OS)-3507/2014) the plaintiff company manufactured pharmaceutical preparations under the trademark ‘Betadine.’ In May 2013, the plaintiff noticed an advertisement in the Trademarks journal for the registration of the mark ‘Bectodine – M’, as well as products of Defendant No. 1 indicating that the products were being manufactured, and thus approached the Delhi High Court for an injunction. The Court applied the ‘likelihood of confusion’ principle and determined that there was a risk of confusion. It also determined that the defendants had knowingly adopted a deceptively similar mark, as evidenced by the identical color, trade dress, and packaging, and thus granted the injunction.
In Apex Laboratories Limited v Zuventus Health Care Limited (2007) 1 MLJ 657,2006 (33) PTC 492 Mad: the Division Bench of the Madras High Court held that both marks contained the prefix ‘Zinc-,’ which was common in the trade and that the plaintiff could not claim ownership over the word. As a result, the Court denied the plaintiff’s injunction.
Hence, if a mark is derived from a popular generic drug or contains a common to the trade element, members of the trade and the public will pay more attention to the uncommon or new features in the mark, removing the possibility of confusion or deception. A party who alleges that a particular mark, prefix, or suffix is common to the trade, on the other hand, bears the burden of proving it, and this burden can be discharged only by proving its extensive commercial use and not simply its presence on the Register of Trademarks.
Authored By: Adv. Anant Sharma & Swayamsiddha Das