This post was first published on 5th January, 2014.<\/p>\n
The Hon\u2019ble Delhi High Court delivered another thought-provoking judgment on the 16th of\u00a0December,\u00a02013 related to the pharmaceutical industry.\u00a0The plaintiff in the present case is Boehringer Ingelheim Pharma Gmbh & Co., a German company with its principal place of business in Germany, whereas the Defendant is IPCA Laboratories Ltd., with its principal place of business in Mumbai.<\/p>\n
The Plaintiff has been using the trademark MUCOSOLVAN since 1979 in 56 countries including India for pharmaceutical preparations used mainly for the treatment of productive cough. The trademark application filed by the Plaintiff before the Indian Trademark Office is pending registration. The Plaintiff states that, in or around September 2011, it learnt about the Defendant\u2019s use of the mark MUCOSOLVIN for its pharmaceutical preparations for the treatment of cough. The Plaintiff states that the Defendant\u2019s impugned mark MUCOSOLVIN is virtually identical and deceptively similar to the Plaintiff\u2019s well-known trademark MUCOSOLVAN. The impugned mark is visually, phonetically and structurally indistinguishable from the Plaintiff\u2019s mark except for the letter \u2018A\u2019 in MUCOSOLVAN, merely substituted by the letter \u2018I\u2019 as in MUCOSOLVIN. The degree of confusion due to mispronunciation and misspelling is very high. Moreover, since both products are meant for the treatment of cough, the chances of confusion are higher. The use of the Defendant\u2019s mark, it was argued, was bound to create confusion on several grounds. It was further stated that, both the Plaintiff’s and the Defendant’s products are Schedule-H drugs and can be sold over the counter and, therefore, a person of average intelligence and imperfect recollection would not be able to distinguish between ”MUCOSOLVAN’ and ‘MUCOSOLVIN’, different only by one letter.<\/p>\n
The Defendant contended that, it was the proprietor of the mark SOLVIN and medicinal preparations bearing the name SOLVIN had been available for over 30 years in the Indian market. It was stated that, the Defendants and its predecessors had filed various trademark applications for registration of their products for a series of SOLVIN marks. And so the Defendant\u2019s adoption of the mark MUCOSOLVIN was honest. The addition of the prefix \u2018MUCO\u2019 to the well-known mark \u2018SOLVIN\u2019 was to convey to the medical profession, public and consumers that it was used for loosening and diluting mucus in the respiratory tract.<\/p>\n
The Hon\u2019ble Court, by applying the tests given under Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., held that there may have been many \u2018MUCO\u2019 and \u2018SOLVIN\u2019 products in the market, but in the present case the two terms were in fact, phonetically, visually similar and had the difference of only one letter between them. The class of\u00a0 purchasers were the same and could not be said to have the degree of intelligence and education to differentiate between the products every time. Both the terms were deceptively similar and adding a prefix to ‘SOLVIN’ may not be considered as a bonafide action on the part of the Defendant. The Hon\u2019ble Court passed an injunction order against the Defendant and added that should the Defendant be prepared to change its name to avoid confusion between the two products, it could apply to the court for variation of this order. The Delhi High Court addressed the trademark dispute between MUCOSOLVIN and MUCOSOLVAN, focusing on their deceptive similarity and consumer confusion. The judgment provides key insights into trademark protection in the pharmaceutical sector.<\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"open","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"iawp_total_views":13,"footnotes":""},"categories":[6,11],"tags":[10392,486,29,5,10391,10390,6021,41],"class_list":["post-3961","post","type-post","status-publish","format-standard","hentry","category-intellectual-property","category-trademarks","tag-court-judgment","tag-delhi-high-court","tag-india","tag-intellectual-property","tag-mucosolvan","tag-mucosolvin","tag-pharmaceutical-trademarks","tag-trademark-infringement-2"],"_links":{"self":[{"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/posts\/3961","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/comments?post=3961"}],"version-history":[{"count":3,"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/posts\/3961\/revisions"}],"predecessor-version":[{"id":139697,"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/posts\/3961\/revisions\/139697"}],"wp:attachment":[{"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/media?parent=3961"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/categories?post=3961"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/tags?post=3961"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}
\nImage source<\/a><\/p>\n","protected":false},"excerpt":{"rendered":"