2003 (1) TMI 562 - HC - Companies Law

Summary

Issues Involved:
1. Confusion or deception between the trademarks 'BIOCILIN' and 'BICILLIN'.
2. Compliance with clauses (d) and (e) of section 9(1), sections 11(a) and 12(1) of the Trade and Merchandise Marks Act, 1958.
3. Phonetic similarity and public interest in medicinal products.
4. Compliance with section 17(b) of the Drugs and Cosmetics Act.
5. Directions to the Registrar of Trade Marks for better coordination with Drug Authorities.

Detailed Analysis:

1. Confusion or deception between the trademarks 'BIOCILIN' and 'BICILLIN':
The primary issue was whether the trademarks 'BIOCILIN' and 'BICILLIN' would likely cause confusion or deception among purchasers. Both trademarks are used for drug components involving AMPICILLIN and CLOXACILLIN. The court noted that phonetic similarity between the two marks could lead to confusion, especially in critical situations where drugs are requested verbally. The Supreme Court's decision in Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. was cited, emphasizing that confusion between medicinal products could be life-threatening.

2. Compliance with clauses (d) and (e) of section 9(1), sections 11(a) and 12(1) of the Trade and Merchandise Marks Act, 1958:
- Section 9(1)(d) & (e): The court found that neither 'BIOCILIN' nor 'BICILLIN' had any direct reference to the character or quality of the goods, thus clauses (d) and (e) of section 9 were not applicable.
- Section 11(a): The court focused on the likelihood of deception or confusion. Given the phonetic similarity and the potential for serious health consequences, it was determined that 'BICILLIN' could not be registered as it would likely deceive or cause confusion.
- Section 12(1): The court concluded that 'BICILLIN' was deceptively similar to 'BIOCILIN', and thus, its registration was prohibited under section 12(1).

3. Phonetic similarity and public interest in medicinal products:
The court emphasized the importance of avoiding confusion in medicinal products due to their potential health impacts. The Supreme Court's guidelines in Cadila Health Care Ltd. were reiterated, stressing that a stricter approach should be adopted for medicinal products to prevent any risk to public health.

4. Compliance with section 17(b) of the Drugs and Cosmetics Act:
The court referred to section 17(b) of the Drugs and Cosmetics Act, which aims to prevent deception in drug naming. The judgment in Cadila Health Care Ltd. was cited, suggesting that drug authorities should ensure no confusion or deception in the market before granting permission to manufacture a drug under a brand name.

5. Directions to the Registrar of Trade Marks for better coordination with Drug Authorities:
The court suggested that the Registrar of Trade Marks should require an Official Search Report from Drug Controllers before accepting a trademark for a medicinal product. This would ensure better coordination and prevent issues like the present case. The court also recommended that the Law Commission and the Ministry of Law consider amendments to facilitate information sharing on the internet among various authorities.

Conclusion:
The appeal was accepted, and the order dated 7th October 1999 by the Assistant Registrar of Trade Marks was set aside. The application for registration of the trademark 'BICILLIN' was rejected. The court also emphasized the need for better coordination between the Registrar of Trade Marks and Drug Authorities to prevent similar issues in the future.