Cadila Healthcare Ltd. v. Cadila Pharmaceuticals, 2001 (21) PTC 541 (SC)
FACTS:
- Two pharmaceutical firms, Cadila Healthcare Ltd. (the Appellant) and Cadila Pharmaceuticals (the respondent), introduced drugs for the treatment of cerebral malaria. The Appellant’s drug was called Falcitab and the Respondent’s drug was called Falcigo.
- The Drugs Controller of India gave the Appellant permission to register their trademark in 1996 whereas the Respondent registered their trademark in 1997.
- After learning that the Respondent was producing, distributing, and selling a medicine that was identical to the Appellants in name and use later in 1998, the Appellant filed an injunction with the Vadodara District Court. The District Court ultimately ruled in favour of the Respondent.
- Aggrieved by this decision, the Appellant appealed before the High Court but the High Court dismissed their appeal.
- Finally, the Appellant approached the Supreme Court.
RULE:
- Passing off is the act of misrepresenting one’s products or services to the public as those of another person or company in an effort to deceive his customers into believing that they are those of another person or company.
- The owner must demonstrate that their goods or services have goodwill and that the user is making false statements in order to build a case of passing off. Additionally, the owner must demonstrate that they suffered a loss as a result of the user’s creation of false claims.
ISSUE:
- Whether or not the sale of the ‘Falcigo’ drug by the Respondent amounts to passing off?
- Whether the mark of Cadila Pharmaceutical i.e., ‘Falcitab’ is similar to the mark of Cadila Healthcare i.e., ‘Falcigo’?
HELD:
- The Hon’ble Supreme Court established certain principles to consider while dealing with a case of passing off and to decide the existence of deceptive similarity. The principles are as follows –
- To check the nature of the marks which includes word marks, label marks and composite marks.
- To check the degree of similarity between such marks which include ideological and phonetic similarity.
- To check the similarity of nature, performance and character of the goods of both traders involved.
- To identify the class of consumers who might buy the goods based on the marks they require, their intelligence, education and the degree of care they might employ in buying or consuming such goods.
- To check the nature of the goods for which they are used as trademarks.
- To identify the mode of purchase when buying such goods.
- Any other such related circumstances which may be relevant in the matter of dissimilarity between such competitive marks.
- The Supreme Court did not interfere with the orders passed by the lower courts. Disposing of the appeal, the Supreme Court directed the trial court to decide as per the observations made by the High Court.