Introduction

This landmark case dealt with the issue of passing off and the infringement of trademarks.

Facts

• Cadila Health Care Ltd. (appellant) and Cadila Pharmaceuticals Ltd. (respondent) were the parties involved in the case.
  • Both parties were engaged in the pharmaceutical industry, and the trademarks in question were associated with pharmaceutical products.
  • Both companies got the right to use the word “Cadila” in their names.
• The appellant brought a drug named “Falcigo” to cure malaria and got it registered under Trade and Merchandise Marks Act, 1958.
  • It later came to know that the respondent is also selling a drug to treat malaria with similar name “Falcitab”.
  • The plaintiff claimed that the defendant's use of a similar trademark was causing confusion among consumers.
• District Court dismissed the plea of the appellant stating that both the drugs differed in several factors including appearance, formulation and consideration (price).
  • The High Court also dismissed the appeal of appellant hence he filed an appeal before the Supreme Court.

Issues Involved

• Whether the defendant's use of a similar trademark would likely cause confusion among consumers, leading them to believe that the products of the defendant were connected with or endorsed by the plaintiff?
• Whether the Respondent conducted passing off?

Observation

SC did not interfere with the decision of the District Court and High Court but gave several factors which needs to be determined while deciding the question of deceptive similarity:

• The nature of the marks, i.e. whether the marks are word marks or label marks or composite marks, i.e. both words and label works.
• The degree of resembleness between the marks, phonetically similar and hence similar in idea.
• The nature of the goods in respect of which they are used as trademarks.
• The similarity in the nature, character and performance of the goods of the rival traders.
• The class of purchasers who are likely to buy the goods bearing the marks they require; on their education and intelligence and a degree of care they are likely to exercise in purchasing and/or using the goods.
• The mode of purchasing the goods or placing orders for the goods and
• Any other surrounding circumstances which may be relevant in the extent of dissimilarity between the competing marks.

Conclusion

SC said that Trial Court will decide the matter keeping in view the factors given by the SC.

Note

• "Passing off" is a concept of trademark law. It occurs when one party misrepresents goods or services as those of another, leading to confusion among consumers.
• This misrepresentation can harm the reputation of the original trademark owner.