BARRIER is no barrier to registration of DNA Barrier Chris McLeod, Elkington and Fife LLP, London International Update India Ms. Samta Mehra, Remfry & Sagar It is common practice in the pharmaceutical industry to derive names of drugs from their chemical compounds and this often results in co-existence of similarly named medicines. At the same time, it is well-established that trade mark law envisages stricter examination of marks in respect of medicinal and pharmaceutical preparations as infringement/passing off here not only causes economic loss but can also have hazardous health consequences. Extreme caution has to be exercised in such cases, more so, in a polyglot nation like India where diverse scripts are used and a significant segment of consumer base is uneducated. The recent judgment of WinMedicare Private Limited (plaintiff) v Galpha Laboratories Limited (defendant) highlights these issues, amongst others, and emphasizes that public interest is paramount. The plaintiff, registered proprietor of the trade mark BETADINE in India in relation to pharmaceutical preparations, was manufacturing and selling a PovidoneIodine combination since the year 1990 under a distinctive trade dress comprising of a white background with dark blue lettering prominently featuring a two stripe mark accompanied by the trademark BETADINE appearing on the label. When it learnt that the defendant had filed a deceptively similar mark BECTODINE-M in Class 5, the plaintiff opposed the application in 2013 upon its advertisement. Subsequently, on noticing use of the mark BECTODINE by the defendant with a similar get up as that of the plaintiff’s products, the plaintiff instituted a suit for permanent injunction asserting its prior and well-established rights in the trade mark, trade dress and copyright. An order of ex-parte ad interim injunction was granted by the Delhi High Court on 14 November 2014. Thereafter, an application was filed by the defendant for vacation of the ex-parte interim injunction and the said application along with the application for interim injunction was argued before the High Court at length. In Case O-123-16 Mölnlycke Health Care AB v Mologen AB (7 March 2016), the UK Intellectual Property Office (IPO) has rejected an opposition by Mölnlycke to an application to register the word mark DNABarrier in classes 1 and 5. Mologen filed its application on 17 June 2014 as a designation of a WIPO registration. On publication for opposition purposes in October 2014, Mölnlycke filed opposition on the basis of several earlier UK and EU trade mark registrations of BARRIER covering goods in classes 5, 10 and other classes, arguing that the marks were visually, phonetically and conceptually similar, that the respective goods were similar and that its earlier mark had enhanced distinctive character through use in the UK. Mölnlycke detailed its use in its evidence, claiming use in the UK in relation to surgical drapes for at least 40 years and total sales of over GBP £280 million from 2004 to 2014. The IPO’s hearing officer held that Mölnlycke’s claim that the respective goods could be used in “close proximity” lacked specificity. He was therefore unable to detect any similarity other than in relation to the earlier registration covering goods in class 5 and the goods covered by the application. Considering first the class 1 goods covered by the application chemicals, proteins, enzymes, nucleic acids etc. – the hearing officer held that these did not compete with and were not complementary to Mölnlycke’s class 5 goods, namely plasters, dressings, compresses, swabs and the like. Turning to the class 5 goods covered by the application, the hearing officer held that these were either identical or similar. The hearing officer then considered the average consumer. On the basis of the General Court judgment in Mundipharma AG v OHIM, there were two groups of relevant consumers, namely members of the public and professionals. Members of the public would display a low degree of care when selecting inexpensive goods such as disposable pads, and a high degree of care when selecting goods for use on the person or for ingestion. Professionals would pay a high degree of attention in relation to all goods due to the necessary elements of the selection process. Comparing the marks, the hearing officer concluded that they had a medium degree of visual and aural similarity because the earlier mark was contained as an identifiable element in the later mark, but that the DNA element of the later mark reduced the conceptual similarity to “medium at best”. Turning to the evidence of use, the hearing officer held that most of this was in relation to goods in classes 10 and 25 and that none of it was in relation to goods in class 5, adding that the word BARRIER must have a very low degree of inherent distinctiveness for class 5 goods which may act as a barrier. In conclusion, the hearing officer held that the medium degree of similarity between the marks resulting from a shared element which, at best, had very low distinctive character, was insufficient to lead to direct or indirect confusion. He therefore rejected the opposition and awarded costs to Mologen. This decision is not surprising when considering the facts and in particular the use of the earlier marks, in relation to which the evidence enabled the hearing officer to find in favour of Mologen in relation to marks which on first sight might well appear sufficiently similar. Continued on next page 3