Introduction

Naming of drugs and/or other pharmaceutical products from the underlying active pharmaceutical ingredients (APIs) or the diseases or conditions that the drugs treat, has been a long-standing practice in the Pharma industry. Due to the fact that a large number of pharmaceutical brand names are usually derived from a relatively modest number of APIs in existence, there is bound to be similarity between the two rival brand names. However, would that lead to customer confusion, and would you be able to register such a brand name? The Single Judge of the Madras High Court recently conducted an in-depth analysis on this aspect in the case of Indian Immunologicals Ltd. v. IPCA Laboratories Pvt. Ltd. & Anr.[1] by its judgment dated 8 December 2023.

Brief facts

The Appellant - Indian Immunologicals Ltd. applied for the registration of the word mark "INIMOX" on February 2, 1999, on a "proposed to be used" basis for medicinal and pharmaceutical preparations for veterinary use. After the said application was published in the Trade Marks Journal, the first respondent - IPCA Laboratories Pvt. Ltd. filed a Notice of Opposition on 25 February 2004, against the application for registration of the mark "INIMOX", based on their rights in the prior registered mark "IMOX" in Class 5 for medical and pharmaceutical preparations, with a use claim of 6 October 1986. Indian Immunologicals contested the opposition proceedings and after hearing both the parties, the Registrar of the Trade Marks Registry refused registration of the mark "INIMOX".

Why was the "INIMOX" Mark refused by the Registry?

The Trade Marks Registry refused the mark on the basis that the goods under the rival marks are used for the same purposes and the Opponent is the prior user of the mark.  The Registry was of the view that the rival marks are a combination of Amoxycillin + Cloxacillin. The Registry noted that IPCA adduced sufficient evidence to corroborate its contentions, and no such evidence had been filed by Indian Immunologicals. Lastly, the Registry concluded that Indian Immunologicals being the subsequent user of the "INIMOX" mark which is formed after a mere addition of the letters "IN" to the word "IMOX", had adopted the mark in bad faith and wanted to ride upon the reputation earned by IPCA in respect of the "IMOX" mark. The Registry held that the use of "INIMOX" in the market would lead to a likelihood of confusion amongst the relevant class of consumers and accordingly refused the registration of the "INIMOX" mark.

Rival contentions

Arguments put forward by the Indian Immunologicals:

1. They asserted that they started using the "INIMOX" mark shortly after the trademark application was filed on February 2, 1999, and produced evidence in support of use of the mark in the veterinary industry;
2. Given that the rival marks are derived from the common API i.e, Amoxycillin and Cloxacillin, the protection given to such mark is weak, and the differentiator will enable "INIMOX" to be registered;
3. As the products sold under the "INIMOX" mark is in the form of a syringe meant for use in animals, and the product under the mark "IMOX" is a capsule meant for humans, therefore, there is no overlapping of trade channels, and consumers, thus no likelihood of confusion;
4. That the word "MOX" is publici juris or common to the trade;
5. In support of their contentions, the Appellant relied on various case law such as: (i) Syngenta Limited Hyderabad Chemical Supplies Limited & Deputy Registrar of Trade Marks (Icon vs. Imicon: no relief was granted); (ii) Corona Remedies Private Limited v. Franco-Indian Pharmaceuticals Private Limited (Stimuliv v. Stimu-let: no relief was granted); (iii) Orchid Chemicals & Pharmaceuticals Ltd. v. Wockhardt Limited (Meto vs. Metox: no relief was granted); Apex Laboratories Ltd. v. Zuventus Health Care Ltd. (Zincovit vs. Zinconia: no relief was granted at the interim stage); Astrazeneca UK Ltd & Anr v. Orchid Chemicals & Pharmaceuticals Ltd (Meronem v. Meromer: no relief was granted); Macleods Pharmaceuticals Ltd v. Swisskem Healthcare and another (Panderm v. Polyderm: no relief was granted); Schering Corporation & Anr v. United Biotech (P) Ltd (Netromycin v. Netmicin: no relief was granted.)

Contentions put forward by IPCA:

1. IPCA is the prior user of the "IMOX" mark, and that Indian Immunologicals manufactures vaccines and medicines for human use;
2. That the mark "INIMOX" just has two additional letters i.e., "IN" in comparison to IPCA’s "IMOX" mark, therefore the mark is deceptively similar to IPCA’s mark even if the common generic source argument is taken into account;
3. IPCA further submitted that Indian Immunologicals failed to prove the "MOX" word is publici juris, and submitted that the registration of the "INIMOX" would lead to deception and confusion amongst the public;
4. In support of their contentions, IPCA relied on various case law such as: Associate Builders Delhi Development Authority (regarding perversity); Macleods Pharmaceuticals Ltd v. Union of India and Others (confusion in pharmaceutical products); E. Griffiths Hughes v. Vick Chemical Co. (determination of rights of parties on date of application filing); Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd (greater need of protection in the pharmaceutical sector)

Decision and analysis

The Court initially analyzed the factual inconsistencies in the refusal order passed by the Trade Marks Registry. As per the Court, some of the findings in the order such as the finding that both the rival products contain ‘amoxycillin’ and ‘cloxacillin’ was held to be inaccurate given Indian Immunologicals’ product contained both the APIs and IPCA’s product contained only ‘amoxycillin’. Similarly, the finding by the Registry that both the rival products are used for human consumption was erroneous in the light of the fact that Indian Immunologicals’ syringes are meant only for veterinary use while IPCA’s capsules are meant for human consumption.

Nevertheless, given that the primary aspect of the Registry’s impugned order dealt with "likelihood of confusion", the Court comprehensively explored this aspect. The Court, while referring to Section 11(1) of the Trade Marks Act,1999 (Act), firstly, discussed as to who was the prior user. Once it was ascertained that IPCA was the prior user given its use since 1982 (use of IPCA through exports was held as valid use in the light of the Bombay High Court judgment in Cadila Pharmaceuticals Ltd v. Sami Khatib[2]); the Court looked at the similarity between the rival goods. The Court concluded that the goods sold under the rival marks are similar given that they are both pharmaceutical products and are therefore similar in nature and origin.

The Court thereafter examined whether the refusal of the "INIMOX" mark by the Registry was warranted. To undertake this analysis, the Court evaluated the comprehensive list of precedents relied upon by the parties on the aspect of the strength of a trademark derived from a generic name or API. While putting a caveat that most of the orders relied upon were passed in respect of interim injunction applications, the Court concluded that marks that are derived from API or generic names are weaker in comparison to arbitrary or coined marks. The Court held that the larger the portion of the API or disease name that a mark uses, the weaker is its protection. Similarly, if a mark contains additional terms and unique elements apart from what it has borrowed from an API or disease name, then its protection would be stronger. This apart, the Court maintained that the analysis of "visual, phonetic and structural" similarity will play an important role in deciding the outcome of infringement, passing off, or proceedings involving strength of marks under Section 11(1) of the Act.

By taking the above discussion into consideration, the Court decided as follows:

(a) Given the admission of IPCA that they appropriated the word "MOX" from "Amoxycillin", IPCA’s argument of lack of proof for "MOX" being publici juris was inconsequential.

(b) IPCA thus appropriated 3 letters from the generic name i.e., "Amoxycillin" and added one letter i.e., "I". On the other hand, Indian Immunologicals appropriated three 3 letters and added the letters "INI". Given the appropriation by IPCA from a generic name and a slight addition, the Court held that their mark "IMOX" as a mark is weak and consequently the said mark cannot prevent the registration of "INIMOX".

(c) The Court considered that Indian Immunologicals’ product under the "INIMOX" mark is an injection meant for veterinary use while IPCA’s product under the "IMOX" mark is a capsule for humans. In this respect, the Court also highlighted Indian Immunologicals’ reliance on Section 97(3) of the Drugs and Cosmetics Rules, 1945 which states that containers for medicines made for animal use must display the slogan ‘Not for human use; for animal treatment only’ and will have to display a symbol depicting the head of a domestic animal. The Court noted that there was no material or basis provided by IPCA that the mark "INIMOX" was used by Indian Immunologicals for production of human vaccines. In any case, Indian Immunologicals consented to restricting the use of "IMINOX" mark only to veterinary use.

(d) In addition to this, the Court noted that IPCA had not initiated any infringement or passing off action against Indian Immunologicals for the use of their "INIMOX" mark which would be indicative of "prima facie of the absence of actual deception or confusion." As per the Court the "absence of actual confusion", would be relevant in such a matter. The Court also considered that the search report from the Trade Marks Registry showed several marks had been registered containing the term "MOX" such as "MOX", "UMOX", and "IDIMOX".

After considering the above aspects, the Court held that as, (i) the "INIMOX" product was meant for use only in the injection form (that would be administered by trained doctors or nurses); (ii) the said injection was meant for use in veterinary purposes only; (iii) since most pharmacies do not combine human and animal drugs; (iv) the fact that Section 97(3) of the Drugs and Cosmetics Rules, 1945 laid down specific guidelines for its packaging; and (v) given the presence of multiple "MOX" formative marks in Register, there would be no likelihood of confusion between the rival products on the condition that "INIMOX" products would not be used for humans. Therefore, the Court overturned the Registry’s findings in respect of "likelihood of confusion" and allowed the appeal, directing the mark "INIMOX" to proceed towards registration. 

The High Court’s order in this matter has provided clarity on the contours of registering API-derivate brand names in the pharmaceutical industry, and the necessary due diligence that needs to be carried out in that regard. Trademarks that are arbitrary or inventive carry more weight. That is to say, a mark’s uniqueness is automatically diminished when it is derived from a generic name, API or disease/condition’s name.

[The authors are Partner, Associate and Senior Associate, respectively, in IPR practice of Lakshmikumaran & Sridharan Attorneys]

1. [1] (T) CMA (TM) No.72 of 2023
2. [2] 2011 SCC Online Bom 484