In the pharmaceutical industry, the practice of naming drugs after their active pharmaceutical ingredients (APIs) or the diseases they treat is a longstanding tradition. However, this practice has led to potential conflicts, prompting legal scrutiny. A recent case before the Madras High Court, Indian Immunological Ltd. v. IPCA Laboratories Pvt. Ltd., delved into the complexities of registering a brand name in such scenarios.
Indian Immunological sought to register the mark “INIMOX” for veterinary medicinal preparations. IPCA Laboratories opposed, citing their prior registration of “IMOX” for medical and pharmaceutical preparations. The Trade Marks Registry rejected “INIMOX,” citing potential confusion and IPCA’s prior use.
Registry’s Basis for Refusal
The Registry argued that both marks contained the common APIs Amoxycillin + Cloxacillin, giving IPCA prior usage rights. It found Indian Immunological’ adoption of “INIMOX” in bad faith, attempting to leverage IPCA’s reputation.
Indian Immunological contended that “INIMOX” was distinct due to its veterinary focus, differentiating it from IPCA’s human-oriented “IMOX.” They argued that the “MOX” component was generic and cited various case laws. Court’s
Analysis and Decision
The Court found factual inaccuracies in the Registry’s decision, clarifying differences in product use. It emphasized the weaker protection for marks derived from APIs and ruled in favor of Indian Immunologicals. The Court concluded that the distinctiveness of a mark, especially derived from a generic name, depends on factors such as additional terms and uniqueness.
The judgment clarified the need for due diligence in registering API-related brand names. Arbitrary or inventive marks carry more weight, and the analysis of visual, phonetic, and structural similarities plays a crucial role in trademark disputes.
The Madras High Court’s decision provides clarity on registering API-derived brand names in the pharmaceutical sector. It underscores the importance of uniqueness and due diligence in navigating brand name disputes, setting a precedent for resolving such conflicts in the industry.