Court emphasizes stringent scrutiny in pharmaceutical trademarks to avoid public health risks.
In a significant ruling, the Delhi High Court has canceled the trademark registration of "DAPLOGIN," a pharmaceutical product, following a petition by Dr. Reddy's Laboratories Limited. The court found "DAPLOGIN" to be deceptively similar to Dr. Reddy's pre-existing trademark "DAPLO," both used for medications treating Type-2 Diabetes Mellitus. The judgment, delivered by Justice Ms. Jyoti Singh, underscored the critical importance of preventing confusion in pharmaceutical trademarks due to potential public health risks.
Dr. Reddy's Laboratories, a major player in the pharmaceutical industry, argued that their trademark "DAPLO" was a coined term, in use since 2020, and had garnered substantial goodwill. They contended that "DAPLOGIN," registered by M/s Razenta Pharmaceuticals Private Limited, was visually and phonetically similar, risking confusion among consumers and potentially leading to severe health consequences due to the identical active ingredient, Dapagliflozin, in both drugs.
The court agreed, noting that the two trademarks, when compared as a whole, were likely to be confused by an average consumer. The judgment emphasized that even though both drugs are prescription-based, this does not eliminate the risk of confusion, citing the Supreme Court's precedent in Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., where it was recognized that both physicians and pharmacists can err, especially in a diverse country like India.
Justice Singh pointed out that the addition of "GIN" in "DAPLOGIN" was insufficient to distinguish it from "DAPLO," as the latter was subsumed within the former. The court rejected the defense that "DAPLO" was a generic term derived from the active ingredient Dapagliflozin, affirming its status as a distinctive mark.
The judgment also highlighted the need for greater vigilance and stricter scrutiny in pharmaceutical trademark cases, given the potential for serious health risks arising from trademark confusion. The court ordered the cancellation of "DAPLOGIN" from the Trade Marks Register to maintain its purity and protect public health interests.
Bottom Line :
Trademark law - Pharmaceutical products - The marks "DAPLOGIN" and "DAPLO" are deceptively similar; phonetic and visual similarities exist, creating a likelihood of confusion. Courts must apply stricter standards of scrutiny in cases involving pharmaceutical trademarks to prevent public health risks.
Statutory provision(s):
Sections 9(1)(a), 9(2)(a), 11(1)(b), 28, and 57 of the Trade Marks Act, 1999.
