layout: post title: “RE-EXAMINING THE STRINGENT PUBLIC INTEREST STANDARD IN PHARMACEUTICAL TRADEMARK DISPUTES” date: 2023-01-22 11:17:11 +0000 categories: [Intellectual Property, Personal] featured: true image: https://pin.it/3PLLj86Sx RE-EXAMINING THE STRINGENT PUBLIC INTEREST STANDARD IN PHARMACEUTICAL TRADEMARK DISPUTES

By Siddhaant Verma

Introduction

A recent decision of the Delhi High Court has brought an important principle of pharmaceutical trademarks to the forefront. In trademark infringement suits that relate to pharmaceutical drugs, Indian courts adopt a higher than usual degree of scrutiny to assess the similarity between the marks. This principle was concretized by the Supreme Court in [Cadila Healthcare v. Cadila Pharmaceuticals](https://web.archive.org/web/20230124115944/https:/indiankanoon.org/doc/1114158/), which expressed the need for a greater level of care when dealing with pharmaceutical trademarks. Prima facie, this approach makes obvious sense. As the Apex Court explained— “drugs are poisons, not sweets”. Considering the enormous impact on public health, even slight confusion between two drugs may lead to detrimental consequences. Thus, even if there is a minor possibility that the public may confuse one medicine for another, courts will generally grant an injunction to restrain the use of the infringing mark given the compelling public interest. However, while Cadila Healthcare was correctly decided, the author shall argue that the judgment has not been considered in its proper context in subsequent decisions. Several courts have now needlessly employed an overbroad understanding of the ‘public interest standard’,* which has led to the abandonment of the first principles of trademark law.

Revisiting Cadila Healthcare

In Cadila Healthcare, the court was tasked with determining whether a drug named ‘Falcitab’ infringed on the appellant’s trademark ‘Falcigo’. It is pertinent to note that while both drugs were aimed at curing the same ailment, their chemical compositions were considerably different. The Court ultimately held that given the nature of the product, a stricter standard ought to apply to prevent the possibility of harm resulting from even a remote likelihood of confusion between the two drugs. However, the court made these observations in a very specific context. This test was only meant to apply only in situations where the drugs have distinct chemical compositions but are meant to cure the same illness. This is evident from the following excerpt of the judgment— “The drugs have a marked difference in the compositions with completely different side effects, the test should be applied strictly as the possibility of harm resulting from any kind of confusion by the consumer can have unpleasant if not disastrous results. The courts need to be particularly vigilant where the defendants drug, of which passing off is alleged, is meant for curing the same ailment as the plaintiffs medicine but the compositions are different.” A person in the market for medicine for a particular ailment can easily get confused between two similarly named products. Where the chemical compositions of such products are different, picking the wrong medicine can have adverse consequences on a person’s health if they are susceptible to side-effects from that drug. This is exactly the kind of quandary that the Supreme Court was seeking to resolve when it prescribed a stricter standard for assessing similarity between pharmaceutical trademarks.

(Mis)application of the Public Interest Standard

Several subsequent decisions, unfortunately, have misunderstood the context of the Cadila Healthcare decision. Instead of applying the stricter ‘public interest’ standard to the limited circumstances described above, they seem to have extended it to all pharmaceutical trademarks. An example of this is the Delhi High Court’s decision in [Mankind Pharma v. Novakind Bio Sciences](https://web.archive.org/web/20230124115944/https:/indiankanoon.org/doc/183866955/). The plaintiff, Mankind, which had several registered trademarks ending with the suffix ‘kind’, objected to the registration of the respondent’s ‘Sebakind’ trademark. As per Section 11(1) of the Trademarks Act, there needs to be a similarity between the marks as well as a likelihood of confusion to refuse registration. It is a well-settled proposition that the marks ought to be looked at in their entirety to determine similarity. Dissecting the marks to establish similarity between suffixes such as ‘kind’ is not sufficient. For instance, the judgment of the Delhi High Court in *PhonePe v. Ezy Services* held that ‘BharatPe’ did not infringe on the ‘PhonePe’ mark merely because their suffixes were identical. Thus, ordinarily, the plaintiff should not have succeeded in the Mankind case. However, the court applied the ‘public interest’ standard of Cadila to rule against the use of ‘Sebakind’. This was done despite the fact that the present case did not meet the specific factual criteria of Cadila.* 

Such broad- based application of the ‘public interest’ standard is especially detrimental in cases where there is a dispute between generic drugs sold under different brands. In [Wyeth Holdings v. Burnet Pharmaceuticals](https://web.archive.org/web/20230124115944/https:/indiankanoon.org/doc/357841/), the Bombay High Court held that “merely because the two competing marks are used for drugs with the same composition that would not justify applying a lower standard of scrutiny. For, even in such a case, the public interest lies in protecting the consumer against an unwary purchase of a deceptively similar product.”* However, now that bioequivalence studies are mandatory for generic drugs, applying a strict standard to such classes of disputes would do more harm than good. It is common practice for pharmaceutical companies to name their drugs based on its active ingredients. This means that there is bound to be some level of similarity between the marks of generic substitutes. Furthermore, bioequivalence between two drugs means that they result in the same therapeutic outcomes for patients. If the core justification for trademark law is to serve as a marker of quality for the product, applying a stricter standard for goods that are virtually the same makes no sense. It would only serve to reduce competition and increase the cost of drugs, which would result in greater harm to public health.

Courts have increasingly gotten cognizant of such issues and have decided against applying the ‘public interest’ standard in all circumstances. For instance, in Astrazeneca v. Orchid Chemicals](https://web.archive.org/web/20230124115944/http:/164.100.69.66/jupload/dhc/NAC/judgement/23-09-2022/NAC23092022SC4272022_182331.pdf), the court while discussing the test laid down in Cadila, noted that— “In case of same medicine or drug this test which is the basis for considering the effect on the health and life will be redundant. Same drug having same composition will not have different side effects leading to any disastrous results.” It decided against applying the stringent ‘public interest’ standard as the drugs were merely generic substitutes of each other having the same chemical compositions. Then again, the same court in its recent [Fdc v. Nilrise* decision relied on the ‘public interest’ standard despite the fact that the medicines in question had the same chemical composition.

Conclusion ​ Clearly, there is a lot of confusion and contradiction in how courts have interpreted the Cadila decision. The author believes in a limited application of the ratio set out therein. In an era of increasing drug costs, the public interest requires that the courts commit to providing access to low-cost medicines. In fact, in cases where the courts are dealing with generic substitutes, the public interest would be better served if the courts are lenient in their application of trademark law. Consumers should not face higher costs and be led to believe that the same drugs differ in quality because they are identified by a particular trademark. Scholars in other countries have recognized this problem and have even called for a complete abolition of pharmaceutical trademarks. While this step may be too extreme, courts must at least ensure that that they do not resort to a heavy-handed approach while dealing with pharmaceutical trademarks. They must also require parties to submit bioequivalence studies of their medicines to determine if their therapeutic outcomes are actually the same.