Name of the Student : ANEESH VINAY RAJ

Registration Number : 19DBLBT007

Programme : LLB

Semester : FIFTH SEMESTER

Course : IPR AND CYBER LAWS

Component : CASE COMMENT

Date of Submission : 27/11/2021

Submitted to : PROF. SONIKA NAIR

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Cadila Health care Ltd. v. Cadila Pharmaceuticals – 2001 (2) PTC
541 SC

INTRODUCTION

In this case, the two companies i.e., Cadila Healthcare and Cadila Pharmaceuticals had
taken over the business of Cadila Group and one of the conditions of such takeover of
Cadila Group was that, both the companies got equivalent right to use the name
‘CADILA’. The suit was brought before the court by Cadila Healthcare when it came to
their knowledge that Cadila Pharmaceutical is using the mark “FALCITAB” which is
similar to their mark “FALCIGO”; and that the mark was applied by Cadila
Pharmaceutical for similar drug. Hence, though this suit Cadila Healthcare claimed for
an injunction against Cadila Pharmaceutical to restrain them from using a mark which
is deceptively similar and is likely to cause confusion.

FACTS OF THE CASE

 The appellant and the respondent are pharmaceutical companies who have
launched medicinal products named Falcitab and Falcigo respectively and
registered it in the year 1996 and 1997 respectively.
 In the year 1998, the appellants realized that the respondent had a product
similar to it in name and purpose and filed for an injunction restraining them
from further trade before the district court of Vadodara.
 This was dismissed by the court in favor of the respondents for the reasons that
the two products were different in appearance, formulation, and price and that
they were scheduled L products i.e. they were sold directly to the hospitals/clinic
and not directly to the individuals.
 Hence, there wasn’t any scope for confusion. After this, the appellants
approached the high court.
 The high court dismissed the appeal on the grounds that there was little chance of
passing off and there was no likelihood of confusion.

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  When the appellants approached the Supreme Court, it refused to delve into the
matter of the validity and legality of the order passed by the lower courts since it
was under the obligation for the speedy disposal of the case.

ISSUE OF THE CASE

The issue involved in this case was whether the mark of Cadila Pharmaceutical i.e.,
“FALCITAB” is similar to the mark of Cadila Healthcare i.e., “FALCIGO”?

ARGUMENTS FOR THE PETITIONER

 It was contended by Cadila Healthcare that similar mark had been used by Cadila
Pharmaceutical for treatment of similar disease which is likely to cause confusion
and deception.
 That the contention of Cadila Pharmaceutical that the mark is used in ‘Schedule
L’ drug which is sold only to hospitals and clinics hence there is no chance of
confusion does not hold true as chances human error and confusion cannot be
ruled out even if it is handled by trained medical practitioner.
 That Cadila Pharmaceutical is passing off drug of Cadila Healthcare by using the
mark “FALCITAB” for another similar drug.

ARGUMENTS FOR THE RESPONDENT

 Cadila Pharmaceutical contented that the prefix “FALCI” of their mark

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JUDGEMENT

Before Trial Court

The injunction application of Cadila Healthcare was dismissed by The Extra Assistance
Judge, Vadodara. It was observed that the two drugs “FALCIGO” and “FALCITAB”
differed in appearance and formulation, and they can only be sold to hospitals and
clinics which diminishes the chance of confusion and deception compared to when these
are to be sold to individuals.

Before High Court

An appeal was preferred before High Court against the decision of Trial Court, Hon’ble
High Court affirmed with the decision of Trial Court and after examining various
aspects held that the likelihood of confusion caused to an unwary consumer is not there
and there is little chance of passing off.

Before Supreme Court

At the Hon’ble Supreme Court said that, through this judgment it does not tend to
interfere with the decision and findings of lower court, the judgment is passed only to
set out principles which are to be kept in mind while dealing with issue of passing off
especially in medical products.

Hon’ble Supreme Court examined in detail various precedents of domestic and foreign
jurisdictions, and it was observed by Supreme Court that howsoever detailed and
minute the foreign precedents are, the same could not be made applicable to India
where there is no common language, where large percentage of people are not literate
and only few people know English language. Purchasers of India are to be kept in mind
before any pronouncement as the confusion of the identity of the product itself could
have serious effects on the public health.

It was further observed by court that even though the drugs in question are ‘Schedule L’
drugs which are sold only to hospitals and clinics, it does not rule out the possibility of
confusion among professionals dispensing medicines.

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Hon’ble Supreme Court laid out various factors to be considered in case of passing off,
for deciding question of deceptive similarity which is as follows:

 Nature of the goods and marks (written or label or composite marks).

ANALYSIS

A trademark is primarily used to promote the origin and quality of a product. Others
may be tempted to put off their items as those of the mark's original owner once it gets
popular. As a result, handing off actions is deceiving.

I agree with the judgment given my supreme court it’s all a subject of first impressions
when it comes to determining whether or not there's a misunderstanding. When
determining if two trademarks are identical or not, the full trademark should be
considered, not just the words. Taking down and analyzing words has long been thought
to be a risky practice. The comparison of a portion of the word in two trademarks is
insufficient to prevent registration. The statute does not provide the standards for
determining if there is fraud or confusion caused by a single brand. When two
trademarks exist side by side in the very same marketplace and are properly used, they
might generate deception or misunderstanding.

The Court has to be precise to account for delays in memory and the impact of poor
pronunciation and speaking on the part of both the individual looking to buy
underneath the trade description and the shop assistant serving that person's needs.
This could be because only individuals who are unfamiliar with both words, or who are
familiar with one but have a poor understanding of the other, are probably to be
mislead. The court further held that, in addition to the balancing of conveniences,
similar strengths of cases of either party should be considered when resolving instances

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of this type, and that differentiation was more essential than similarities when deciding
cases of this type.

It's fairly uncommon for schedule L drugs to cause confusion. It could be due to a lack of
skill or something else entirely. Because they can be harmful, misunderstanding among
drugs with diverse composition and negative effects but focused at the same condition
does greater suffering than misunderstanding among other drugs. As a result, in cases
like these, greater rules must be followed.