Decided by the High Court of Bombay

Facts

The petitioner (Macleods Pharmaceuticals Limited) is a pharmaceutical company incorporated under the provisions of Companies Act, 1956. It challenged the order passed by the Intellectual Property Appellate Board (IPAB, allowing a rectification application filed by respondent number 4 (Sun Pharmaceuticals Ltd) which was directed to delete the entry of the registered trade mark ‘OFLOMAC’ registered by the petitioner (Macleods Pharmaceuticals Limited v Union of India, 2023 SCC OnLine Bom 408).

In this case Sun claimed it had filed a trade mark application for OFRAMAX on 30 August 1989 and registration was granted on 13 May 1994 for goods in Class 5. Macleods filed its trade mark application for the mark OFLOMAC on 28 January 1999 in the same class and it was registered in 2005.

Sun filed the rectification application on 29 October 2013 seeking cancellation/removal of the OFLOMAC registration. The application for removal of the trade mark from the register was filed under Section 57 of the Trade Mark Act, 1999 (“Act”) and was allowed by the above stated order of the IPAB, dated 30 December 2020.

The writ petition in this case was filed against this order and the main issue under consideration was whether Macleods’ trade mark is of such a nature as to deceive the public or cause confusion with respect to the trade mark of Sun, as envisaged under Section 9(2)(a) and Section 11(1)(b) of the Act.

Analysis

The counsel for Macleods argued that it had adopted the mark OFLOMAC, which was the combination of its medicine name OFLOXACIN and the company name MACLEODS. They further stated that Sun claimed use of trade mark OFRAMAX since July 1991 but failed to produce any documents to show that the said mark OFRAMAX had been used prior to May 1999 and that invoices and statements produced only showed use since 2003.

Counsel argued that Macleods’ mark OFLOMAC had been used prior in point of time and was entitled to protection under the Act. They further stated that the IPAB had completely overlooked the documentary evidence showing the adoption to be honest and its use prior to that of Sun.

Counsel for Sun argued that the Hon’ble Court should consider the fact that there was no infringement or passing off as it had acquired registration for its mark OFRAMAX earlier than the petitioner and that the order passed by IPAB was valid. They further argued that the said order was delivered by a Bench of the IPAB consisting of a Chairman and two technical members and the judgment of such an expert body/tribunal should not be interfered with lightly.

The primary issue that the Court addressed in this case was whether Macleods’ contested trade mark was of a character to mislead the public or create confusion with respect to the trade mark of Sun.

The Supreme Court established the procedure to decide the issue of confusing similarity in the case of trade marks used in relation to medical products in the case of Cadila Health Care Limited v. Cadila Pharmaceuticals Ltd, which was cited by the Court. By applying the established approach from the referred case, the Court laid down the following seven principles:

1. When a particular medicinal or a pharmaceutical product is involved as the impugned trade mark which may deceive the public or cause a confusion with respect to another trade mark, it is the Court’s primary duty to take utmost care to prevent any such possibility of confusion in the use of trade marks.
2. Confusion in the case of a non-medicinal or a non-pharmaceutical product may only cause economic loss to the person, but confusion in terms of a medicinal or pharmaceutical product may have a disastrous effect on health. Hence, it is proper to require a lesser quantum of proof of confusing similarity for such products.
3. The Court may not speculate as to whether there is a probability of confusion between the marks. The mere existence of the slightest probability of confusion in the case of medicinal product marks requires that the use of such marks be restrained.
4. Courts must decide the similarity and confusion between medicinal products from the viewpoint of a person with average intelligence considering multiple factors such as the first impression of the mark, salient features of both the products, nature of the commodity, overall similarity, and the possibility of the same creating confusion amongst the public at large.
5. The duty of the Court must always be to protect the public and purity of the trade mark register irrespective of what hardship or inconvenience it may cause to a particular party whose trade mark is likely to deceive or cause confusion.
6. The courts must follow these principles gathered from various Court decisions. (i) Meticulous comparison is not the correct way; (ii) The marks must be compared as whole; (iii) First impression; (iv) Prima facie view is not conclusive; (v) Structural resemblance; and (vi) Conceptual similarity to be considered.
7. The main object of maintaining the trade mark register is that the public should know whose goods they are buying. It is therefore essential that the register should not contain a trade mark by which a purchaser may likely be deceived by thinking that they are buying the goods of a particular company/industry whereas they are buying the goods of another company/industry.

Based on the referred cases and principles laid down, the Court held that Macleods’ trade mark was deceptive and could lead to confusion for the public with respect to Sun’s mark .

Comment

Through this case, the Court established a strict rule that the Court’s top priority in such cases is to exercise extreme caution in preventing any possibility of confusion in the use of trade marks when a specific medicinal or pharmaceutical product is at issue.

A deceptive trade mark can indeed mislead the public or create confusion with respect to another trade mark. In cases such as these, the Courts should come to a definite conclusion about the possibility/ likelihood of misunderstanding between the marks to enable prompt and immediate action to curtail and mitigate the damages.