TRADE MARK REGISTRATION OF DRUGS: BLURRING THE BOUNDARIES?

It is well-known that the Indian democracy prides itself on the three pillars of the legislature,

the executive, and the judiciary, each of which claims to be respectful of this separation of

powers doctrine (also referred to as “Lakshman Rekha”). In this context, this article seeks to

briefly examine the judgement of the Supreme Court in Cadila Healthcare Limited vs Cadila

Pharmaceuticals Limited, where the trade marks at hand were Falcigo and Falcitab.

Crux of the Judgement

The Supreme Court held that “drugs are poisons, not sweets. Confusion between medicinal

products may, therefore, be life threatening, not merely inconvenient”. The Court further held

that “a stricter approach should be adopted while applying the test to judge the possibility of

confusion of one medicinal product for another by the consumer”.

Section 11 of the Trade Marks Act

Section 11(1) of the Trade Marks Act states as follows:

A trade mark shall not be registered if, because of - (a) its identity with an earlier trade mark

and similarity of goods or services covered by the trade mark; or (b) its similarity to an

earlier trade mark and the identity or similarity of the goods or services covered by the trade

mark, there exists a likelihood of confusion on the part of the public, which includes the

likelihood of association with the earlier trade mark.

Intent of the Legislature

From a plain reading of the Trade Marks Act, it is fairly clear that the Act lays out the

circumstances under which a trade mark cannot be registered, and the same is class-agnostic.

In other words, the Trade Marks Act does not mandate one approach for goods in all classes

except class 5, and a stricter approach for goods in class 5.

Purpose of the Courts

In Bablu @ Rajesh Kumar vs The State of Bihar and Ors, the Patna High Court held that a

Court “cannot rewrite, recast, or redesign the provisions since the power to legislate has not

been conferred on the courts. The Court should make a purpose full interpretation so as to

effectuate the intention of the legislature…”.

Where’s the Lakshman Rekha?

While the intention behind the Supreme Court’s judgement is well-appreciated, it makes one

wonder whether the Court was within its powers to order enhanced scrutiny for goods in class

5. To our knowledge, intent of the legislature does not find any mention in the judgement.

Food for Thought: Are Drugs the Only Poison?

What about cosmetics, which are also regulated by the same body that oversees drugs? Or

food supplements or nutraceuticals, which fall under the same class as drugs?

Trade Mark Registration in Class 5

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Want to register a trade mark in class 5 or any other class? Come to us and we will take care

of the rest.