tm & consumer protection
TRANSCRIPT
CHENNAI3rd Floor, ‘Creative Enclave’,
148-150, Luz Church Road,Mylapore,
Chennai - 600 004.Tel: +91 - 44 - 2498 4821
BANGALORE Suite 920, Level 9,
Raheja Towers,26-27, M G Road,
Bangalore - 560 001.Tel: +91 - 80 - 6546 2400
COIMBATORE#1533, Trichy Road,
Coimbatore, India – 641018.Tel: +91 - 422 – 6552921
WEBSITE
www.altacit.com
PHARMACEUTICAL TRADEMARK AND CONSUMER PROTECTION
(Critical analysis on pharmaceutical trademark protection in the view of unwary consumers…)
R.PRIYANKAA,SCHOOL OF EXCELLENCE IN LAW, CHENNAI,INTERN
CHENNAI3rd Floor, ‘Creative Enclave’,
148-150, Luz Church Road,Mylapore,
Chennai - 600 004.Tel: +91 - 44 - 2498 4821
BANGALORE Suite 920, Level 9,
Raheja Towers,26-27, M G Road,
Bangalore - 560 001.Tel: +91 - 80 - 6546 2400
COIMBATORE#1533, Trichy Road,
Coimbatore, India – 641018.Tel: +91 - 422 – 6552921
WEBSITE
www.altacit.com
Pharmaceutical Trademark
• Trademark Act, 1999 governs the registration of Trademark and pharmaceutical products under class 05.
• Generic names cannot be registered.• Section 13(b) specially prohibits commonly used names,
chemical element or compound or words• The Trademark Act prohibits the registration of commonly
used names and descriptive names that suggest quality of a product under provisions of section 09.
• Generic drugs are not protected under this act.
CHENNAI3rd Floor, ‘Creative Enclave’,
148-150, Luz Church Road,Mylapore,
Chennai - 600 004.Tel: +91 - 44 - 2498 4821
BANGALORE Suite 920, Level 9,
Raheja Towers,26-27, M G Road,
Bangalore - 560 001.Tel: +91 - 80 - 6546 2400
COIMBATORE#1533, Trichy Road,
Coimbatore, India – 641018.Tel: +91 - 422 – 6552921
WEBSITE
www.altacit.com
What can be Protected?
Eligible for Registration Not Eligible for Registration
The Pharmaceutical brand should be capable of being represented graphically.
Brands which hurts religious sentiments.
Capable of distinguishing the products of one from those of the others
Scandalous and obscene matters
Brand must be used in relation to the pharmaceutical products
Causes deception and confusion.
Indicating a connection with the pharmaceutical products.
Prohibited under Emblems and Names Act, 1950.
CHENNAI3rd Floor, ‘Creative Enclave’,
148-150, Luz Church Road,Mylapore,
Chennai - 600 004.Tel: +91 - 44 - 2498 4821
BANGALORE Suite 920, Level 9,
Raheja Towers,26-27, M G Road,
Bangalore - 560 001.Tel: +91 - 80 - 6546 2400
COIMBATORE#1533, Trichy Road,
Coimbatore, India – 641018.Tel: +91 - 422 – 6552921
WEBSITE
www.altacit.com
Protection of owners:-
• As per statute registered proprietor has exclusive right to use and right against infringement
• Trademark distinguishes product and creates unique identity• Creates reputation• Creates Brand popularity and helps in business expansion• Trademarks can work effectively across borders, cultures, and
languages.• Trademarks are usually the only business asset you have that can
appreciate in value over time.
CHENNAI3rd Floor, ‘Creative Enclave’,
148-150, Luz Church Road,Mylapore,
Chennai - 600 004.Tel: +91 - 44 - 2498 4821
BANGALORE Suite 920, Level 9,
Raheja Towers,26-27, M G Road,
Bangalore - 560 001.Tel: +91 - 80 - 6546 2400
COIMBATORE#1533, Trichy Road,
Coimbatore, India – 641018.Tel: +91 - 422 – 6552921
WEBSITE
www.altacit.com
Protection to consumers:
• It helps consumers to distinguish the product.• Creates awareness of brand and goodwill• Prevents consumers from deception as to source of goods and
services• Trademarks provide consumer convenience by allowing
consumers to identify (by word, logo, slogan, package design, or other indicators of origin) which product or service they would like to purchase or to avoid purchasing.
• It helps consumers in getting quality products• Trademarks provide consumer convenience by allowing
consumers to base their purchasing decisions on what they have • heard, read, or experienced themselves.
CHENNAI3rd Floor, ‘Creative Enclave’,
148-150, Luz Church Road,Mylapore,
Chennai - 600 004.Tel: +91 - 44 - 2498 4821
BANGALORE Suite 920, Level 9,
Raheja Towers,26-27, M G Road,
Bangalore - 560 001.Tel: +91 - 80 - 6546 2400
COIMBATORE#1533, Trichy Road,
Coimbatore, India – 641018.Tel: +91 - 422 – 6552921
WEBSITE
www.altacit.com
Consumers in pharmaceutical sector
• consumers have limited veto power over the choice and price of prescriptions, they nevertheless have strong views on the industry, its products and expectations for a positive customer experience.
• There was not much awareness on the visual representation of a medicine as companies tend to change the appearance quite often.
• Usually patients rely on the name of the medicine irrespective of the shape, colour and appearance.
• Consumer usually pays attention for the purpose of the medicine to which it cures.
CHENNAI3rd Floor, ‘Creative Enclave’,
148-150, Luz Church Road,Mylapore,
Chennai - 600 004.Tel: +91 - 44 - 2498 4821
BANGALORE Suite 920, Level 9,
Raheja Towers,26-27, M G Road,
Bangalore - 560 001.Tel: +91 - 80 - 6546 2400
COIMBATORE#1533, Trichy Road,
Coimbatore, India – 641018.Tel: +91 - 422 – 6552921
WEBSITE
www.altacit.com
Change of appearance of Drugs
CHENNAI3rd Floor, ‘Creative Enclave’,
148-150, Luz Church Road,Mylapore,
Chennai - 600 004.Tel: +91 - 44 - 2498 4821
BANGALORE Suite 920, Level 9,
Raheja Towers,26-27, M G Road,
Bangalore - 560 001.Tel: +91 - 80 - 6546 2400
COIMBATORE#1533, Trichy Road,
Coimbatore, India – 641018.Tel: +91 - 422 – 6552921
WEBSITE
www.altacit.com
Trademarks to pharmaceutical products:
• Pharmaceutical products are registered under class 05 and are governed by Trademark Act, 1999.
• It prohibits generic and descriptive names• Consumer in pharmaceutical sector purchases product based on
the name also if prescribed and the purpose.• They usually get deceived by similar tablets available in the
market and get side effects.
CHENNAI3rd Floor, ‘Creative Enclave’,
148-150, Luz Church Road,Mylapore,
Chennai - 600 004.Tel: +91 - 44 - 2498 4821
BANGALORE Suite 920, Level 9,
Raheja Towers,26-27, M G Road,
Bangalore - 560 001.Tel: +91 - 80 - 6546 2400
COIMBATORE#1533, Trichy Road,
Coimbatore, India – 641018.Tel: +91 - 422 – 6552921
WEBSITE
www.altacit.com
How Similar products obtained Trademarks?
In a case,Indchemie Health Specialists Pvt. Ltd. V. Intas Pharmaceuticals.
PlaintiffPharmaceuticals preparationCHERI capsules, syrup, etc..Direction of physicianTo cure Iron deficiencyMedicinal preparationPleaded that both are deceptively similar and serves the same purpose
DefendantDietary supplyCHERRY syrupDirection of dieticianIron deficiencyDietary supplementDefendant contended that both are not similar as his product is a mere dietary supplement.
CHENNAI3rd Floor, ‘Creative Enclave’,
148-150, Luz Church Road,Mylapore,
Chennai - 600 004.Tel: +91 - 44 - 2498 4821
BANGALORE Suite 920, Level 9,
Raheja Towers,26-27, M G Road,
Bangalore - 560 001.Tel: +91 - 80 - 6546 2400
COIMBATORE#1533, Trichy Road,
Coimbatore, India – 641018.Tel: +91 - 422 – 6552921
WEBSITE
www.altacit.com
• Court held that since the plaintiff’s product is a pharmaceutical product it has to be consumed with the direction of the physician whereas defendants product can be consumed with the advice of a dietician which makes difference between them.
• Here it has also been quoted that the plaintiff’s products are covered under Drugs and Cosmetics Act, 1940 whereas Defendants products are covered under Food and safety act.
• Therefore allowed the defendants to use his registered name despite of both serving the same Iron deficiency.
CHENNAI3rd Floor, ‘Creative Enclave’,
148-150, Luz Church Road,Mylapore,
Chennai - 600 004.Tel: +91 - 44 - 2498 4821
BANGALORE Suite 920, Level 9,
Raheja Towers,26-27, M G Road,
Bangalore - 560 001.Tel: +91 - 80 - 6546 2400
COIMBATORE#1533, Trichy Road,
Coimbatore, India – 641018.Tel: +91 - 422 – 6552921
WEBSITE
www.altacit.com
• Similarly, in Ranbaxy Laboratories Limited V.Indchemie Health Specialists pvt. Ltd.
PlaintiffRegistered user of “Zanocin”Generic name: offoxacinAnti-bacterial purposeFound defendants product to be deceptively similar and claimed for injunction.
DefendantRegistered “Zenoxim”Generic name: CefuroximeAnti-biotic purposePleaded that their generic names are different and they serve different purposes.
CHENNAI3rd Floor, ‘Creative Enclave’,
148-150, Luz Church Road,Mylapore,
Chennai - 600 004.Tel: +91 - 44 - 2498 4821
BANGALORE Suite 920, Level 9,
Raheja Towers,26-27, M G Road,
Bangalore - 560 001.Tel: +91 - 80 - 6546 2400
COIMBATORE#1533, Trichy Road,
Coimbatore, India – 641018.Tel: +91 - 422 – 6552921
WEBSITE
www.altacit.com
Court held that since their generic names are different Offoxacin and cefuroxime their origin is said to be
different. They both serve different purposes one as anti-bacterial
and another as anti-biotic Therefore held since their origin and purpose is not
common they do not cause confusion or deception in the minds of the consumers and allowed the usage.
CHENNAI3rd Floor, ‘Creative Enclave’,
148-150, Luz Church Road,Mylapore,
Chennai - 600 004.Tel: +91 - 44 - 2498 4821
BANGALORE Suite 920, Level 9,
Raheja Towers,26-27, M G Road,
Bangalore - 560 001.Tel: +91 - 80 - 6546 2400
COIMBATORE#1533, Trichy Road,
Coimbatore, India – 641018.Tel: +91 - 422 – 6552921
WEBSITE
www.altacit.com
• In another case, Cadila Health Care ltd. V. Cadila Pharmaceuticals Ltd.:
Appellant:1) Registered name “Falcigo”2) cures “Falcipharum”ie., cerebral malaria.3)Contains Artesunate.4)Claims for injunction on the basis of deceptive similarity
Respondent:1)Registered name “Falcitab”2)Contains Mefloquine hydrochloride3)Cures Falcipharum Malaria4) Contended that the Falci was a common name of the disease and the words Go and Tab alone indicates the brands.
CHENNAI3rd Floor, ‘Creative Enclave’,
148-150, Luz Church Road,Mylapore,
Chennai - 600 004.Tel: +91 - 44 - 2498 4821
BANGALORE Suite 920, Level 9,
Raheja Towers,26-27, M G Road,
Bangalore - 560 001.Tel: +91 - 80 - 6546 2400
COIMBATORE#1533, Trichy Road,
Coimbatore, India – 641018.Tel: +91 - 422 – 6552921
WEBSITE
www.altacit.com
Court accepted the views of the respondents and further stated that both the products contains different ingredients and their generic names were also different and therefore allowed the usage.
CHENNAI3rd Floor, ‘Creative Enclave’,
148-150, Luz Church Road,Mylapore,
Chennai - 600 004.Tel: +91 - 44 - 2498 4821
BANGALORE Suite 920, Level 9,
Raheja Towers,26-27, M G Road,
Bangalore - 560 001.Tel: +91 - 80 - 6546 2400
COIMBATORE#1533, Trichy Road,
Coimbatore, India – 641018.Tel: +91 - 422 – 6552921
WEBSITE
www.altacit.com
Analysis of the cases:-
• In the above cited cases the product names were registered though they were quite similar.
• Court gave various reasons for accepting the names.
• The given reasons were absolutely acceptable for a person who buys medicines with prescription
• Nowadays people purchase medicines without prescription by mere usage of the name of the medicine.
• Here comes the confusion
CHENNAI3rd Floor, ‘Creative Enclave’,
148-150, Luz Church Road,Mylapore,
Chennai - 600 004.Tel: +91 - 44 - 2498 4821
BANGALORE Suite 920, Level 9,
Raheja Towers,26-27, M G Road,
Bangalore - 560 001.Tel: +91 - 80 - 6546 2400
COIMBATORE#1533, Trichy Road,
Coimbatore, India – 641018.Tel: +91 - 422 – 6552921
WEBSITE
www.altacit.com
Possibility of confusion:
• In the first case, court interpreted the difference between the dietician and a physician.
• Layman couldn’t differentiate the dietician and physician while purchasing a product.
• Also medical shops doesn’t always ask for prescription while selling the medicines.
• This would cause deception in the minds of the consumer since their usage and names are similar.
• Also not every consumer is aware of the Drugs and Cosmetics Act and Food and Safety Act.
CHENNAI3rd Floor, ‘Creative Enclave’,
148-150, Luz Church Road,Mylapore,
Chennai - 600 004.Tel: +91 - 44 - 2498 4821
BANGALORE Suite 920, Level 9,
Raheja Towers,26-27, M G Road,
Bangalore - 560 001.Tel: +91 - 80 - 6546 2400
COIMBATORE#1533, Trichy Road,
Coimbatore, India – 641018.Tel: +91 - 422 – 6552921
WEBSITE
www.altacit.com
• In the second case, the point of difference was:• Offoxacin and cefuroxime generic names,consumer
is not a technical person so he might not be aware of it.
• Then both anti-biotic and anti-bacterial serves the same purpose which is to kill bacteria.
• So there are possibilities to get deception.
CHENNAI3rd Floor, ‘Creative Enclave’,
148-150, Luz Church Road,Mylapore,
Chennai - 600 004.Tel: +91 - 44 - 2498 4821
BANGALORE Suite 920, Level 9,
Raheja Towers,26-27, M G Road,
Bangalore - 560 001.Tel: +91 - 80 - 6546 2400
COIMBATORE#1533, Trichy Road,
Coimbatore, India – 641018.Tel: +91 - 422 – 6552921
WEBSITE
www.altacit.com
• In the third case the difference is regarding the suffixes Go and Tab.
• In 2004 case, Ranbaxy Laboratories Ltd. V. Anand Prasad and 4 others, it was held that having the same suffix in the product name would cause confusion.
• Applying of that case law here same prefix also
causes confusion.
CHENNAI3rd Floor, ‘Creative Enclave’,
148-150, Luz Church Road,Mylapore,
Chennai - 600 004.Tel: +91 - 44 - 2498 4821
BANGALORE Suite 920, Level 9,
Raheja Towers,26-27, M G Road,
Bangalore - 560 001.Tel: +91 - 80 - 6546 2400
COIMBATORE#1533, Trichy Road,
Coimbatore, India – 641018.Tel: +91 - 422 – 6552921
WEBSITE
www.altacit.com
Deception and Confusion:
• Consumers are not technical people to understand the generic names, composition, direction etc… they purchase medicines by the usage of names. So granting trademarks to phonetically similar products though with some variations would definitely mislead the consumers.
These cases strikes the very object of the Trademark law.
CHENNAI3rd Floor, ‘Creative Enclave’,
148-150, Luz Church Road,Mylapore,
Chennai - 600 004.Tel: +91 - 44 - 2498 4821
BANGALORE Suite 920, Level 9,
Raheja Towers,26-27, M G Road,
Bangalore - 560 001.Tel: +91 - 80 - 6546 2400
COIMBATORE#1533, Trichy Road,
Coimbatore, India – 641018.Tel: +91 - 422 – 6552921
WEBSITE
www.altacit.com
Suggestion:
• Registration of similar mark with slight alterations can be avoided.
• Make different presence
• Here the consumer can easily find out the brand name irrespective of the product name.
• Strict evaluation.