The case marks a landmark moment in the history of unregistered trademark passing off. Passing off possible in the case of unregistered trademarks. The passing off action is based on the idea that no one has the right to represent his commodities as someone else’s goods. In other words, a man is not allowed to sell his goods or services under the guise of someone else’s.
Members of the Bench: Justice British Kumar, Justice B.N.Kripal, Justice Doraswamy Raju
Citation: 2001 (2) PTC 541 SC
Facts of the Case
Cadila Healthcare and Cadila Pharmaceuticals had taken over the business of Cadila Group, and one of the terms of the acquisition was that both firms would have equal rights to use the brand “CADILA.” Cadila Healthcare filed the lawsuit after discovering that Cadila Pharmaceutical was using the mark “FALCITAB,” which is similar to their mark “FALCIGO,” and that Cadila Pharmaceutical was using the mark for a similar medicine. As a result, Cadila Healthcare filed a lawsuit seeking an injunction to prevent Cadila Pharmaceutical from using a mark that is deceptively similar and liable to create misunderstanding.
Cadila Healthcare produced the medicine “FALCIGO,” which was used to treating ‘Falcipharum,’ a type of cerebral malaria. They filed for Trade Mark registration in class 5 and received authorisation to commercialize the drug from the Drug Controller General (India) on August 20, 1996 and October 7, 1996, respectively, and have been manufacturing and marketing their drug across India under the mark “FALCIGO” since then. Cadila Pharmaceutical received clearance from the Drug Controller General (India) on April 10, 1997, to produce a drug incorporating “Mefloquine Hydrochloride,” which was also used to treat “Falciparum.” They produced and distributed the medicine under the brand name “FALCITAB.”
Cadila Healthcare has filed the lawsuit for injunction stating that Cadila Pharmaceutical is passing-off their goods under the guise of the very same drug for the treatment of similar diseases, which is likely to trigger misunderstanding.
The central issue of this case was whether Cadila Pharmaceuticals trademark, “FALCITAB,” is identical to Cadila Healthcare’s mark, “FALCIGO.” In the Trial Court, Cadila Healthcare’s injunction request was rejected by the Vadodara Extra Assistance Judge. It was discovered that the two medications “FALCIGO” and “FALCITAB” varied in look and composition, and that they can only be supplied to hospitals and clinics, reducing the risk of error and misrepresentation when marketed to consumers. An appeal was filed at the High Court against the Trial Court’s ruling. The Hon’ble High Court upheld the Trial Court’s decision, concluding that there is no chance of miscommunication being induced to an unsuspecting consumer and that there is no chance of passing off. The Case then moved to the Supreme Court, which is what we will be looking into.
In the Supreme Court
At the outset, the Supreme Court stated that this judgment does not seek to overturn a lower court’s decision or conclusions; rather, the decision is issued solely to establish rules to be followed when dealing with issues of passing off, particularly in medical products. Accordingly, the Supreme Court studied different precedents from domestic and foreign jurisdictions in depth, and concluded that no matter how detailed and minute the foreign precedents are, they cannot be applied to India because there is no common language, a significant majority of the population is illiterate, and only a few people know English. Before making any announcements, it had to be kept in mind that the doubt over the product’s authenticity could have major consequences for public health in India. Even though the pharmaceuticals in issue are ‘Schedule L’ drugs, which are only marketed to hospitals and clinics, the court noted that it does not rule out the possibility of confusion among medical professionals distributing prescriptions.
Finally, the Hon’ble Supreme Court outlined different requirements to consider in determining misleading likeness in cases of passing off.
They are –
- The type of the marks, such as whether they are word or label marks, or composite marks, which include both words and label works.
- The extent of similarity between the markings, both phonetically and conceptually.
- The type of commodities for which they are being utilised as trademarks.
- Whether the structure, style, and execution of the rival dealers’ commodities are comparable.
- The type of customer who is most prone to shop items with the marks they demand, educational qualifications and intellect, as well as the level of caution they are likely to exercise in acquiring and/or utilizing the goods.
- The manner in which items are purchased or orders are placed; and
- Any other factors that may be significant in determining the degree of differentiation between conflicting marks.
Author: Medha Mukherjee, Legal Intern at PA Legal.
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