Do IMOX and INIMOX sound so similar to you that you will be confused over which to ask for when you stand at the pharmacy counter?
IMOX is a brand that belongs to IPCA Laboratories Pvt Ltd; INIMOX is of Indian Immunologicals Ltd. IPCA objected (successfully) to INIMOX to the Registrar of Trade Marks Registry. A legal dispute ensued, which was settled by the Madras High Court last month.
The Court ruled in favor of Indian Immunologicals Ltd, noting that there were key differences between the two drugs. IMOX is a tablet for humans; INIMOX an injection for animals. Case closed.
Indian Immunologicals Ltd offered several legal precedents of similar-sounding names where no relief was granted to the objecting party. Some of them are: Stimuliv (Corona Remedies) and Stimu-let (Franco-Indian Pharmaceuticals), Meto (Orchid Chemicals) and Metox (Wockhardt), Zincovit (Apex Laboratories) and Zinconia (Zuventus Health Care), Meronem (Astrazeneca) and Meromer (Orchid Chemicals), Netromycin (Schering Corporation) and Netmicin (United Biotech).
However, there is a larger issue underlying the dispute. The names of most of the drugs sold in the market are derived from their underlying ‘active pharmaceutical ingredient’. Therefore, when rival companies name their drugs, the names are bound to be somewhat similar. How do you register their names?
The Madras High Court judgment lays down certain principles, which have been analysed by Vindhya Mani, Mohit Kar and Kriti Sood, lawyers at the law firm Lakshmikumaran & Sridharan, in an article in Mondaq. They note: “The Court concluded that marks that are derived from API or generic names are weaker in comparison to arbitrary or coined marks. The Court held that the larger the portion of the API or disease name that a mark uses, the weaker is its protection. Similarly, if a mark contains additional terms and unique elements apart from what it has borrowed from an API or disease name, then its protection would be stronger. This apart, the Court maintained that the analysis of “visual, phonetic and structural” similarity will play an important role in deciding the outcome of infringement, passing off, or proceedings involving strength of marks.”