A trademark’s degree of registrability or its ability to sustain a suit or enforce a…
A Trade Mark is essentially adopted to advertise one’s product and to make it known to the purchaser. It attempts to portray the nature and, if possible, the quality of the product and over a period of time, the trade mark may become popular. It is usually at that stage that other people are tempted to pass off their products as that of the original owner of the mark. That is the reason why it is said that in a passing off action, the plaintiff’s right is “against the conduct of the defendant which leads to or is intended or calculated to lead to deception.
To begin with, it is of utmost importance to understand what passing off is and how does it affect the parties involved. Passing off is said to be a species of unfair trade competition or of actionable unfair trading by which one person, through deception, attempts to obtain an economic benefit of the reputation which other has established for himself in a particular trade or business. The passing off action depends upon the principle that nobody has a right to represent his goods as the goods of somebody. In simpler words, a man is not to sell his goods or services under the pretence that they are those of another person.
Elements of Passing off:
Referring to Lord Diplock in ErwenWarnink BV Vs. J Townend& Sons , the modern tort of passing off has five elements:
(i) A misrepresentation
(ii)Made by a trader in the course of trade
(iii)To prospective customers of his or ultimate consumers of goods or services supplied by him
(iv)Which is calculated to injure the business or goodwill of another trader (in the sense that this is a reasonably foreseeable consequence) and
(v)Which causes actual damage to a business or goodwill of the trader by whom the action is brought or (in a quiatimet action) will probably do so.
In order to understand with even further clarity, it is necessary to understand the concept in reference to the judicial precedents by the Hon’ble Supreme Court of India.
The Judicial Precedent being, in National Sewing Thread Co. Ltd., Chidambaram vs. James Chadwick and Bros Ltd. , the Hon’ble Court was dealing with a case where an application for registration of a trademark had been declines by the Registrar who accepted the objections filed by the respondent to the application for registration. While interpreting Section 8 of the Trade Marks Act which provides that no trademark not part of a trade mark shall be registered which consists of, or contains, any scandalous design, or any matter the use of which would by reason of its being ‘likely to deceive or cause confusion’. Thus, making it amply clear that an application made to register a trade mark which is likely to deceive or to cause confusion has to be refused notwithstanding the fact that the mark might have no identity or close resemblance with any other trademark.
Burden of proving that a trademark which a person seeks to register is not likely to deceive or to cause confusion:
The said burden of proof is on the applicant. It is for him to satisfy the Registrar that his trade mark does not fall within the prohibition of Section 8 and therefore, it should be registered. Further, it is most pertinent to mention here that in deciding whether a particular trademark is likely to deceive or cause confusion that duty is not discharged by arriving at the result by merely comparing it with trademark which is already registered and whose proprietor is offering opposition to the registration of the mark. The real question to decide in such cases is to see as to how a purchaser, who must be looked upon as an average man of ordinary intelligence, would react to a particular trade mark, what association he would form by looking at the trade mark, and in what respect he would connect the trademark with the goods which he would be purchasing.
That the Judicial Precedent being, in Corn Products Refining Company vs. Shangrila Food Products Limited ,the Hon’ble Supreme Court was again concerned with an appeal arising out of the decision of the Registrar pertaining to the registration of a trade mark. M/s Shangrila Food Products had applied for the registration of the mark “Glucovita” and M/s Corn Products, who were the owners of registered trademark “Glucovita” filed its objections to the registration of the Respondent’s mark. Dealing with the question as to whether there was a likelihood of confusion between the two marks , which was the view taken by Justice Desai of the Bombay High Court in that case which was over-ruled by the Division Bench, the Hon’ble Supreme Court observed that the same is a question of first impression. The same was explained further in simpler words by the Hon’ble Supreme Court by observing that it is well recognised that in deciding a question of similarity between two marks, the marks have to be considered as a whole.
Deceptive Resemblance and the ways it can be tackled:
Dealing with the aspect of Deceptive Resemblance, the Judicial Precedent being in Amritdhara Pharmacy vs. SatyaDeo, the respondent had applied for registration of the trade name “Lakshmandhara” in respect of a medicinal preparation for the alleviation of various ailments. This was opposed by the appellant whose trade name “Amritdhara” had already been registered in respect of similar medicinal preparation. The question which arose was whether the name “Lakshmandhara” was likely to deceive the public or cause confusion to the trade.
It is very important to note that the Trade Marks Act does not lay down any criteria for determining what is likely to deceive or cause confusion. Thus, the Hon’ble Supreme Court held that every case must be depend on its own particular facts, and the value of authorities lies not so much in the actual decision as in the tests applied for determining what is likely to deceive or cause confusion.
The Hon’ble Apex Court further observed that a critical comparison of the two names may disclose some points of difference but an unwary purchaser of average intelligence and imperfect recollection would be deceived by the overall similarity of the two names having regard to the nature of the medicine he is looking for with a somewhat vague recollection that he had purchased a similar medicine on a previous occasion with a similar name.The trade mark is the whole thing- the whole word has to be considered.
Kerly on Trade Marks, 8th Edition, P. 400 observed that for deceptive resemblance, two important questions need to be considered:
(1)Who are the persons whom the resemblance must likely to deceive or confuse, and;
(2)What rules of comparison are to adopted in judging whether such resemblance exists.
As to confusion, it is perhaps an appropriate description of the state of mind of a customer who, on seeing a mark thinks that it differs from the mark on goods which he has previously bought, but is doubtful whether that impression is not due to imperfect recollection.
The difference between an action for Passing Off and action for infringement of Trade Mark:
The Hon’ble Apex court has differentiated between the two in the Judicial Precedent being, that of DurgaDutt Sharma vs. N.P. Laboratories . It observed that while an action for passing off is a common law remedy being in substance an action for deceit, that is, passing off by a person of his own goods as those of another, that is not the gist of an action for infringement.
The action for infringement is a statutory remedy conferred on the registered proprietor of a registered trade mark for the vindication of the exclusive right to use of the trade mark in relation to those goods vide Section 21 of the Act.
The use by the defendant of the trade mark of the plaintiff is not essential in an action for passing off, but is sine qua non in the case of an action for infringement. No doubt, where the evidence in respect of passing off consists merely of the colourable use of a registered trade mark, the essential features of both the actions might coincide in the sense that what would be a colourable limitation of a trade mark in a passing off action would also be such in an action for infringement of the same trade mark. But there the correspondence between the two ceases.
In an action for infringement, the plaintiff must, no doubt make out that the use of the defendant’s mark is likely to deceive, but where the similarity between the plaintiff’s and the defendant’s mark is so close either visually, phonetically or otherwise and the court reaches the conclusion that there is a limitation, no further evidence is required to establish that the plaintiff’s right are violated.
The Hon’ble Apex Court further expressed the same in a simple manner by stating that if the essential features of the trade mark of the plaintiff have been adopted by the defendant, the fact that the get up, packing and other writing or marks on the goods or on the packets in which he offers his goods for sale show marked differences, or indicate clearly a trade origin different from that of the registered proprietor of the mark would be immaterial; whereas in the case of passing off, the defendant may escape liability if he can show that the added matter is sufficient to distinguish his goods from those of the plaintiff.
Importance of preventing any possibility of confusion in the use of Trade Marks among medicinal products:
Now, before starting, it is important to know the difference between Schedule “H” drugs and Schedule “L” drugs. The Schedule “H” drugs are those which can be sold by the chemist only on the prescription of the Doctor but Schedule “L” drugs are not sold across the counter but are sold only to the hospitals and clinics. Nevertheless, it is not un-common that because of lack of competence or otherwise, mistakes can arise especially where the Trade Marks are deceptively similar.
In Blansett Pharmaceuticals Co. vs. CarmickLaboartories Inc. , it was held that confusion and mistake is likely, even for prescription drugs prescribed by doctors and dispensed by pharmacists, where these similar goods are marketed under marks which look alike and sound alike.
In the case of Glenwood Laboratories, Inc. vs. American Home Products Corp , the Court of the United State had held that the products of the parties are medicinal and applicant’s product is contraindicated for the disease for which the opposer’s product is indicated. It is apparent that confusion or mistake in filling a prescription for either product could produce harmful effects. Under such circumstances, it is necessary for obvious reasons, to avoid confusion or mistake in the dispensing of the pharmaceuticals.
The Hon’ble Apex Court in Cadila Health Care Ltd. Vs. Cadila Pharmaceuticals Ltd.  observed that the drugs have a marked difference in the compositions with completely different side effects, the test should be applied strictly as the possibility of harm resulting from any kind of confusion by the consumer can have unpleasant if not disastrous results. Further, the courts need to be particularly vigilant where the defendant’s drug, of which passing off is alleged, is meant for curing the same ailment as the plaintiff’s medicine but the compositions are different. The confusion is more likely in such cases and the incorrect intake of medicine may even result in loss of life or other serious health problems.
It is most pertinent to mention that the physicians and pharmacists are trained people yet they are not infallible and in medicines, there can be no provisions for mistake since even a possibility of mistake may prove fatal. The court observed that in lieu of the varying infrastructure for supervision of physicians and pharmacists of medical profession in our country due to linguistic, urban, semi urban and rural divide across the country and with high degree of possibility of even accidental negligence, strict measures to prevent any confusion arising from similarity of marks among medicines are required to be taken.
Furthermore, public interest would support lesser degree of proof showing confusing similarity in the case of the trademark in respect of medicinal product as against non-medicinal products. Confusion between medicinal products may, therefore, be life threatening, not merely inconvenient. A stricter approach needs to be adopted while applying the test to judge the possibility of confusion of one medicinal product for another by the consumer.
An important aspect which the Hon’ble Supreme Court in the above matter observed was that while examining cases pertaining to dissimilarity of marks, can the English principles be applied in its entirety in India, to which the Apex Court answered in negative while holding that in a country like India where there is no single common language, a large percentage of population is illiterate and a small fraction of people know English, then to apply the principles of English Law regarding dissimilarity of marks or the customer knowing about the distinguishing characteristics of the plaintiff’s seems to overlook the ground realities in India.
Section 17B of the Drugs and Cosmetics Act, 1940 indicates a limitation or resemblance of another drug in a manner likely to deceive being regarded as a spurious drug it is but proper that before granting permission to manufacture a drug under a brand name the authority under the Act is satisfied that there will be no confusion or deception in the market. The authorities should consider requiring such an applicant to submit an official search report from the Trade Mark Office pertaining to the trade mark in question which will enable the drug authority to arrive at a correct conclusion.
The Apex Court in the Cadila matter (supra) laid down certain factors that in an action for passing off on the basis of unregistered trademark, generally for deciding the question of deceptive similarity, the following factors are to be considered:
(i) The nature of marks i.e. whether the marks are word marks or label marks or composite marks, i.e. both words and label words.
(ii)The degree of resemblance between the marks, phonetically similar and hence similar in idea.
(iii)The nature of the goods in respect of which they are used as trade marks.
(iv)The similarity in the nature, character and performance of the goods of the rival traders.
(v)The class of purchasers who are likely to buy the goods bearing the marks they requireon their education and intelligence and a degree of care they are likely to exercise in purchasing and/or using the goods.
(vi)The mode of purchasing the goods or placing orders for the goods and
(vii)Any other surrounding circumstances which may be relevant in the extent of dissimilarity between the competing marks.
Thus, to conclude this article, from the plethora of precedents as mentioned above, it is very much clear the medicinal products require a greater amount of scrutiny with respect to dealing with the confusions pertaining to Trade Marks as the identity of the product itself could have dire effects on the public health.
Author: Rajat Sabu, Senior Associate at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at [email protected].
References: 1979(2) AER 927  MANU/SC/0063/1953  MANU/SC/0115/1959  MANU/SC/0256/1962  MANU/SC/0197/1964  25 USPQ 2nd 1473 (TTAB 1993)  173 USPQ 19(1972) 455 F . Reports 2d 1348 (1972)  MANU/SC/0199/2001