CHARAK PHARMACEUTICALS (INFORMANT) VS. GLENMARK PHARMACEUTICALS (DEFENDANT)

ALLEGATIONS

The Informant alleged that the mark adopted by the Defendant is phonetically and structurally deceptively similar to that of the mark of the Informant and was likely to create confusion in the minds of the consumers.

BRIEF OF FACTS

The Informant started making the drug 'Evanova' from April 2002 in the form of capsules for the treatment of menopause while the Defendant had in May 2006 applied for registration of its mark 'Econova' used in probiotic capsules for the treatment of bacterial vaginosis.

According to the Informant, it learned about the illegal activities of the Defendant of infringement of the Informant's registered trademark 'Evanova' and of passing off their product as that of the Informant's. The Informant contended that the products of both the parties dealt in the same area, the standard of scrutiny would have to reckon whether there was phonetical and structural similarity and whether they were likely to create any confusion in the minds of men of ordinary intelligence. The Court should note similarities of the two marks and not decide on the basis of dis-similarities.

The Defendant argued that its mark was aurally, structurally and visually different and dis-similar to that of the mark of the Informant's. Moreover, the product of the Defendant was available only against prescription and not Over The Counter (OTC) as in the case of Informant. It further contended that since May 2006, the company had been extensively using the said trademark and enjoyed immense reputation and goodwill of its own. For these reasons, the Defendant asserted that there is no similarity in the two marks.

CONCLUSION

The Bombay High Court Judge said that he was prima facie satisfied that the Defendant's mark 'Econova' was deceptively similar to the Informant's mark 'Evanova'. He further added that both the products were entirely different and if, as a result of the confusion, the wrong drug was administered, it would lead to disastrous consequences.

DECISION

The Bombay High Court has granted relief to the Informant, directing the Defendant to rename its drug 'Econova' since its name is deceptively similar.

MADRID PROTOCOL BECOMES EFFECTIVE IN INDIA

Making a significant progress in the area of Trademark Law, on April 8, 2013 India became the 90th member of Madrid Protocol which is effective in India from July 8, 2013 as per Information Notice No. 15/2013.

WHAT IS MADRID PROTOCOL

Madrid Protocol is a Treaty that provides for the International Registration of Trademarks by filing a Single Application in one language for ensuring registration in several countries. The Madrid Protocol, along with the International Treaty called the Madrid Agreement governs the Madrid System for the International Registration of Trademarks. The system is administered by the International Bureau of the World Intellectual Property Organization (WIPO), which maintains the International Register of Trademarks.

AMENDMENT OF TRADEMARK LAW (EFFECTIVE FROM JULY 8, 2013)

The Trade Marks (Amendment) Rules, 2013 introduces Chapter III A to the existing Trade Marks Rules, 2002 relating to 'Special Provisions for Protection of Trademarks through the International Registration under the Madrid Protocol'.

This comes as a cost effective step for any natural person or legal entity which has a real and effective industrial or commercial establishment in, or is domiciled in, or is a national of India and has got a registration of Trademark in India, as this system will allow an applicant to make an Online Application for the International Registration of Trademark under the Madrid Protocol.

This system is advantageous to an applicant as now an International Registration may be obtained by simply filing a single application with the International Bureau of the WIPO in a single language and on payment of single set of fees.

These advantages also exist for renewals and for recording of transactions.

Thus by making an Online Application, an Indian Applicant can make an application for registration of Trademark in as many as 89 countries apart from India and hence it implies that the Trademark owners can get their trademarks protected in the Indian jurisdiction as well as in the jurisdiction of the 89 other member countries through a single application.

The list of Contracting Parties to the Protocol can be found at http://www.wipo.int/treaties/en/ShowResults.jsp?lang=en&treaty_id=8