The Delhi High Court says yes
pharmaceutical industry cannot be
considered as a new and trending
phenomenon. We customarily come
across events where pharmaceutical
companies incline to claim their rights
over a new invention or a trade mark.
the International pharmaceutical
company, Novartis AG (hereinafter as the
Plaintiff) filed a suit of passing off and
unfair competition against Intas
Pharmaceuticals (the defendant) for
restraining them from manufacturing,
selling, offering for sale, etc. the drug for
ranibizumab under the trade mark
LUMINA or any other trade mark which
is deceptively similar to Plaintiff's trade
mark LUMINOUS.
medical services in relation to
ranibizumab. In the year 2011, in order to
analyze, evaluate and benchmark the
treatment, efficacy and safety of
ranibizumab the Plaintiff had initiated a
data and scientific research study under
the mark LUMINOUS.
when the Plaintiff in 2015 came to know
that the Defendant was planning to
launch its drugs for ranibizumab.
In December 2014, the Plaintiff and the
Defendant participated in a
pharmaceutical conference conducted by
Vitro Retinal Society of India (VRSI)
wherein the Plaintiff's trade mark
LUMINOUS was exhibited for its use in
relation to medical studies pertaining to
ranibizumab. Subsequently, in February
2015 during a conference organized by
All India Ophthalmological Society, the
Plaintiff was in utter shock to see the
Defendant exhibiting the proposed
launch of Ranibizumab under the trade
mark LUMINA which was deceptively
similar to the Plaintiff's LUMNIOUS
mark.
legal notice to the Defendant contending
that the adoption of a deceptively similar
trade mark by the Defendant will cause
confusion. The Defendant in their reply
to the legal notice of the Plaintiff refused
to comply with the requisitions sought by
the Plaintiff. In fact, the Defendant went
ahead and instituted a suit before the
Delhi High Court against the Plaintiff on
the ground that the legal notice issued by
Plaintiff constituted groundless threats
Act 1999 and sought appropriate reliefs.
instant suit of passing off against the
Defendant requesting permanent
injunction in its favour and to restrain the
Defendant from manufacturing, selling,
advertising, etc. the drug for
pharmaceutical preparations of
ranibizumab using the trade mark
LUMINA or any other mark deceptively
similar to the Plaintiff's trade mark
LUMINOUS.
High Court (hereinafter as the Court)
that the mark LUMINOUS was used in
other countries from July 2010 and had
been in use in India since 1 December,
2012. The Plaintiff argued on its being the
prior adopter of the trade mark
LUMINOUS and submitted that contrary
to this, the Defendant had not even
commenced use of its mark LUMINA.
mark LUMNIOUS by the Plaintiff and
contended that the Plaintiff had been
using the mark LUMINOUS for clinical
data and scientific research which does
not amount to commercial use and
therefore cannot be considered a trade
mark. Thus, no protection can be sought
for or granted to the Plaintiff. The
defendant also urged to consider
LUMINOUS a generic mark based on
various registrations on the record of the
Registrar of Trade Mark of the mark
LUMINOUS and marks akin to this sign.
The Plaintiff submitted that all research
and studies under the mark LUMINOUS
are related and connected with
ranibizumab and the sale of its drug,
therefore the same amounts to
commercial usage.
granted an ad interim injunction in favour
of the Plaintiff. Though the Defendant had
not filed its reply, the Court was
persuaded to grant an interim injunction
giving due weight to the prior use by the
Plaintiff of the trade mark LUMINOUS.
The Court reiterated that it is a settled
legal position that in order to succeed in
a passing off matter, what has to be
established is the use of a mark "prior in
point of time" to the impugned use by
the respondents. The Court restrained
the Defendant to manufacture or sell
LUMINA considering its structural and
phonetic similarity with Plaintiff's trade
Continued
Reckitt's medicine and that parents may
accidentally give their children too much
of the product; however, the TTAB
concluded that this has "nothing to do
with confusion between trade marks."
however, after the defeat of its safety-
related likelihood of confusion claim.
Earlier in the proceeding, the Opposer had
claimed that Reckitt's marks were merely
descriptive and Reckitt had responded by
claiming that its marks had acquired
distinctiveness under Section 2(f) of the
Lanham Act. The TTAB noted that Reckitt
had applied for its marks on an intent-to-
use basis and so a claim of acquired
distinctiveness on this point technically
was not available because it must be based
on use. Nonetheless, the TTAB
considered the issue of acquired
distinctiveness because the parties had
litigated the issue, and found Reckitt's
evidence insufficient.
since 2006, the advertising figures
supporting the claim of acquired
distinctiveness, despite totaling around $22
million, had declined and were not recent.
In addition, the TTAB noted that there was
no contextual evidence submitted that
would allow it to properly evaluate the
impact of Reckitt's sale of 779 million
doses of expectorant within the "vast
pharmaceutical industry." The TTAB noted
that "the raw number, although perhaps
showing the relative success of applicant's
product, does not necessarily evidence
consumers' recognition of the proposed
mark as a source indicator." Thus, the
TTAB sustained the opposition on the
basis of Reckitt's failure to establish that
its marks had acquired distinctiveness.
lessons for companies selling OTC
pharmaceuticals in the US, such as the
importance of establishing a thorough
record when claiming acquired
distinctiveness, including explanations as to
the relevance of this evidence within the
pharma industry. Finally, it demonstrates
that health and safety concerns do not
trump or unduly influence a likelihood of
confusion analysis before the TTAB where
the evidence does not otherwise support
such a finding.