Article
Registrability of trademarks derived from generic names in Pharma Industry – Madras High Court analyses and propounds test to strike a balance
By Vindhya S Mani, Mohit Kar and Kriti Sood
The article in this issue of IPR Amicus discusses a recent Madras High Court decision against a refusal order for registration of the mark ‘Inimox’ considering an opposition by the owner of mark ‘Imox’, both used for pharmaceuticals. The High Court has overturned the Registry’s findings in respect of ‘likelihood of confusion’ and allowed the appeal, directing the mark ‘Inimox’ to proceed towards registration. Elaborately discussing the rival contentions before the Court and the Court’s decision, the authors note that the said decision has provided clarity on the contours of registering API-derivate brand names in the pharmaceutical industry, and the necessary due diligence that needs to be carried out in that regard. They also observe that trademarks that are arbitrary or inventive carry more weight, and that a mark’s uniqueness is automatically diminished when it is derived from a generic name, API or disease/condition’s name.
Ratio decidendi
- Patents – No deemed abandonment under Section 40 in case of bona fide belief that permission under Section 39 for patent of addition is not required – Absence of prior consent under Section 39 when only a technical breach – Madras High Court
- Patents – Use of laminate in prior art cannot motivate person skilled in such art to consider use of a film on standalone basis – Madras High Court
- Trademarks – Non-use of earlier mark in relation to relevant goods/services by the opponent is a material consideration while deciding opposition – Madras High Court also observes that Use to be established when trademark proprietor sues for infringement
- Certification trademark – Exception under Section 76(3) to infringement, and registration prohibitions under Section 70 – Delhi High Court
- Trademarks – Mere global/cross-border reputation is not sufficient, significant reputation need to be proved in India for protection here – Delhi High Court
News Nuggets
- Trademarks – Reasons for accepting or directing advertisement of a mark are to be made publicly available
- Trademarks – ‘Honest concurrent use’ required for claiming benefit of Section 12 but evidence relating to adoption is also relevant
- Patents – Situs of High Court for filing appeal under Section 117A
- ‘Apollo’ recognised as well-known trademark in healthcare and pharma sector
