Cadila Health care Ltd. v. Cadila Pharmaceuticals – 2001 (2) PTC 541 SC
Bench – Justice B.N.Kripal, Justice Doraswamy Raju, Justice British Kumar
The case is a landmark judgment in relation to passing off of an unregistered trademark. In the case of unregistered trademarks, passing off action is maintainable. The passing off action depends upon the principle that nobody has a right to represent his goods as the goods of somebody. In other words, a man is not to sell his goods or services under the pretense that they are those of another person. The Appellant and Respondent were both pharmaceutical companies who had taken over the business of the Cadila Group subsequent to restructing under the Companies Act. Both companies were granted the right to use the term Cadila. The Appellant company initially manufactured a drug to treat cerebral malaria with the mark ‘Falcigo’ and was granted permission by the Drugs Controller of India in 1996 to sell the product across India. In 1997 the permission was also granted to the Respondent for selling drugs for cerebral malaria with the name ‘Falcitab’. The Supreme Court took into consideration various aspects like the legibility of doctors prescription, accidental confusion due to deceptive similarity and the need for caution in cases of drugs which are used to treat the same disease, however comprise of different composition. The test of a reasonable ordinary person was held to be a person of imperfect recollection and average intelligence. The Court took into consideration that even if both the drugs are Schedule L drugs which means that they are only sold in hospitals and clinics with prescriptions, there could be a cause of confusion even amongst professionals dispensing the medicines. The Hon’ble Supreme Court after evaluating the provisions of the Trademarks Act, 1999 and Section 17-B of the Drugs and Cosmetics Act, 1940 conclusively established that there was a likelihood of passing off and it was a case of deceptive similarity. Some of the essential factors to be considered for determining deceptive similarity was held in this case as follows –
- The nature of marks
- The extent of similarity between the competing marks – phonetic and visual similarity
- Nature of goods
- Area where the goods are used.
- The similarity in the goods in relation to effectiveness, performance, nature etc.
- The target consumers of the goods, their intelligence and the requisite degree of care that needs to be taken.