Deceptive Similarity of in case of Pharmaceutical Products
Trade Marks is an indication of origin of goods and services and it distinguishes between the goods and services of one from another. Trademark provides a recognition and public associate a trademark with particular attributes. We often come across many marks where one copies the substantial or prominent part of the already existing mark or uses deceptively similar mark so to cash upon the existing reputation of a well-established mark by causing confusion as to the source and origin of the mark. Various factors which are considered in determining whether the mark is deceptively similar or not are nature of goods, trade channel, class of mark and targeted customers. Visual representation is an important consideration in determining the deceptive similarity.
Deceptive Similarity –Section 2(1) (h)
The Trade Mark Act, 1999 defines “deceptively similar” in Section 2 (1) (h) as, a mark shall be deemed to be deceptively similar to another mark if it so nearly resembles that the other mark as to be likely to deceive or cause confusion.
In P.L. Anwar v M. Natarajan case the Madras High court said that intention to deceive and or to cause confusion is not necessary. It is the probable effect on the ordinary customer that one has to consider. Where the similarity between the two marks is so close either visually, phonetically or otherwise and the court reaches the conclusion that there is an imitation, no further evidence is required to establish that the plaintiff’s rights are violated.
This article will discuss about the deceptive similarity of trademarks in case of pharmaceutical products.
In Case of Pharmaceutical Products
The deceptively similar marks cause confusion among the public regarding the source of origin of the product. Needless to say that when pharmaceutical products are in question, the confusion is likely to result in serious harmful implications in addition to the loss of time and money invested by the consumer. The test of confusion has to be looked upon from the perspective of a customer of average intelligence and imperfect recollection and a stricter approach needs to be applied in cases where the products are pharmaceuticals. As justly pointed out by the Hon’ble Supreme Court in the landmark case of Cadila Health Care Ltd. V Cadila Pharmaceuticals:
“Drugs are poisons, not sweets. Confusion between medicinal products may, therefore be life threatening, not merely inconvenient.”
The test of confusing similarity is modified when the goods involved are medicinal products. Confusion in products in case of medicinal products may result in greater harm thus greater protection is required than in ordinary case. As we all know pharmaceuticals also have an ill effect if they are not taken as prescribed or in case of confusion due to deceptively similar drugs available in the market and may even prove to be life threatening in some cases so there is a need to pay additional importance and care that the marks in pharmaceuticals do not cause deception or any kind of confusion. In Wyeth Holdings Corporation and another v/s Sun pharmaceuticals Industries Ltd. the court held that if the trade channel and customers are same the possibility of confusion increases.
The Supreme Court in the case of Cadila Health Care Ltd. V Cadila Phamaceuticals made it very clear that in case of medicinal products a stricter approach and extra care must be taken in the trademark involving medicinal products so as to prevent any type of confusion among the public. In this case the respondent was selling the medicine named ‘Falicitab’ and the appellant contended that the respondent’s medicine is deceptively similar to his drug ‘Falcigo’ and causing confusion among the public thus leading to passing-off action. The court observed that test to be applied for deceptive similarity in cases where medicinal products are involved should be far greater from cases involving non-medicinal products. Confusion in the cases of non-medicinal products may only amount to financial loss but in case of medicinal products the confusion between two deceptively similar products may have much severe effect and even prove fatal in extreme cases. The court also observed that in cases where the deceptively similar drugs are meant for curing the same disease the chances of confusion are much higher and there is high rate of risk involved as drugs differ in composition. The decision of English courts cannot be applied in a country like India where there is large rural population, high illiteracy rate, linguistic differences the possibility of confusion is on the higher side. The court held that a mere fact that both the drugs are sold under the prescription would not be sufficient to prevent confusion.
It was held in Schering Corpn. V. Alza Corpn. that Physicians and pharmacists have a good knowledge in their field does not imply that they are also knowledgeable as to marks and immune from getting deceived by the similar deceptive mark.
In the case of Cipla Ltd. V M.K. Pharmaceuticals the question of color of medicines was considered and it was held that color is not the basis of purchase of medicines. Distinctiveness of medicines are from their names and not by color or shape. Monopoly over the colors in pharmaceutical products cannot be claimed by anyone.
Few instances where the drugs were found to be deceptively similar are, ‘PIOZED’ was found to be deceptively similar to the mark ‘PIOZ’, ‘NOVERAN’ was held to be deceptively similar to ‘VOVRAN’ and ‘AMAFORTEN’ was found to be deceptively similar to ‘ANAFORTEN’.
Thus it can be seen that the test of deceptive similarity raises its bar in cases of pharmaceutical products as the deception caused due to the similarity may have grave consequences and even prove to be fatal. It has been seen in number of cases above that the court has held number of marks to be deceptively similar to another mark on grounds of visual or phonetic similarity. Even professionally trained individuals who are expert in their field are not immune to deception which may have serious repercussions. In country like India the susceptibility of public in general is increased many folds due to factors like, people coming from different backgrounds and speaking different languages. The low literacy rate also adds to the confusion and more often than not, prescription medicines are bought in critical and anxious situations which further increase the likelihood of deception. Hence, it very important for a person who wishes to adopt and use a mark in cases of pharmaceutical products to carry out bare minimum due diligence and make sure that it is not confusingly similar to any other mark and would not lead to ambiguity in any manner and does not cause loss of money, time, effort and most importantly a person’s life.
Author: Mr. Ankit Chaudhary, trademark intern at Khurana and Khurana Advocates and IP Attorneys and can be reached at firstname.lastname@example.org
 AIR 1980 Mad. 56.
 Cadila Health Care Ltd. V Cadila Pharmaceuticals [(2001) 5 SCC 73]
 McCarthy on Trade Marks 3rd Edn.
 (2004 (28) PTC 423)
 [(2001) 5 SCC 73]
 [207 USPQ 504 (TTAB 1980)]
 2008 (36) PTC 166 Del,
 [2003 (26) PTC 226 (Mad)]
 [2014 (60) PTC 51]
 Trade Mark Act 1999
 McCarty on Trade Marks 3rd
 Cadila Health Care Ltd. V Cadila Phamaceuticals [(2001) 5 SCC 73]