The present case involves a trademark dispute between two pharmaceutical companies, M/s Apex Laboratories Pvt. Ltd. (Plaintiff) and Macleods Pharmaceuticals Limited (Defendant), over the use of trademarks for their respective antihistamine drugs. The plaintiff, Apex Laboratories, sought a permanent injunction against the defendant, restraining them from using the trademark “BELATIN,” which it claimed was deceptively similar to its registered trademark “BILTEN.” Apex Laboratories also requested the surrender of infringing materials, a decree for accounts and profits, and legal costs. The defendant, in response, argued that it had conceived and adopted the mark BELATIN before the plaintiff applied for registration of BILTEN, making it an honest and concurrent user of the mark. The court had to determine whether the defendant’s use of the mark BELATIN infringed the plaintiff’s registered trademark and whether honest and concurrent use could be a valid defence in an infringement action.
Apex Laboratories contended that it had adopted the trademark BILTEN in June 2019 and applied for its registration on July 25, 2019. The product, containing the active pharmaceutical ingredient (API) Bilastine, was launched in November 2019 after obtaining the necessary drug license. The plaintiff argued that the defendant’s use of the trademark BELATIN, which was first noticed in August 2020, was not only deceptively similar but also intended to cause confusion in the market. Given the phonetic and visual resemblance between the two marks, the plaintiff sought legal protection against what it considered trademark infringement and passing off.
On the other hand, Macleods Pharmaceuticals argued that it had conceived the trademark BELATIN in May 2019 and applied for its registration on June 22, 2019, well before the plaintiff’s trademark application. The defendant contended that trademarks in the pharmaceutical industry are often derived from the drug’s active ingredient, in this case, Bilastine. Since the plaintiff’s and defendant’s marks were both inspired by the same API, the defendant asserted that no party could claim exclusive rights over a mark that was descriptive in nature. Furthermore, the defendant maintained that its use of the trademark was honest and concurrent, having undertaken proper market research before adopting the name.
The court framed multiple issues, including whether the plaintiff was the registered proprietor of the trademark BILTEN, whether it was the prior user, whether the defendant’s adoption of BELATIN was honest, and whether the two trademarks were deceptively similar.
In analysing the evidence, the court noted that Apex Laboratories had successfully registered BILTEN as a trademark on July 25, 2019. The defendant’s application for BELATIN, filed earlier on June 22, 2019, was still pending registration. However, the court emphasised that the key issue was not just the date of registration but also the actual commercial use of the trademarks.
The plaintiff presented invoices from November 2019 as evidence of commercial use, establishing that it had been actively selling the product under the BILTEN trademark since then. The defendant, in turn, presented a manufacturing invoice dated October 31, 2019, which showed that its product BELATIN had been manufactured before the plaintiff’s first recorded sales. However, the court noted that mere manufacturing did not equate to commercial use, and the defendant’s sales turnover documents showed actual sales beginning only in February 2020. This placed the plaintiff’s use of BILTEN at least three months ahead of the defendant’s commercial use of BELATIN, establishing prior use in the market.
With respect to deceptive similarity, the court considered the visual, phonetic, and structural similarities between BILTEN and BELATIN. It observed that both names were derived from Bilastine, making them inherently similar in sound and appearance. Given that both drugs served the same medical purpose, the likelihood of consumer confusion was high, particularly among doctors and pharmacists. Citing the Supreme Court’s ruling in Cadila Healthcare Ltd. vs Cadila Pharmaceuticals Ltd., the court reaffirmed that public health concerns require a stricter approach to preventing confusion in pharmaceutical trademarks. The court concluded that the two trademarks were indeed deceptively similar, which supported the plaintiff’s claim of infringement.
The defendant also argued that its use of BELATIN should be protected as honest and concurrent under Section 12 of the Trade Marks Act. However, the court ruled that the defence of honest and concurrent use is only available when a trademark has been successfully registered under that provision. Since the defendant’s application for registration was still pending, it could not claim this defence in an infringement action. The court also rejected the argument that the plaintiff had acquiesced in the defendant’s use of BELATIN, noting that the plaintiff filed suit promptly upon discovering the alleged infringement.
On the issue of remedies, the court granted a permanent injunction restraining the defendant from using the trademark BELATIN. However, considering the commercial impact of an immediate injunction, it allowed the defendant a four-month grace period to liquidate existing inventory bearing the BELATIN mark. The court also ordered the defendant to surrender all infringing materials after this period. While the plaintiff had sought damages and an account of profits, the court denied these requests, as the evidence did not conclusively establish financial harm to the plaintiff.
In conclusion, the judgment reaffirmed the importance of prior use in trademark disputes and underscored the high standard of protection given to pharmaceutical trademarks. The court’s ruling clarified that honest and concurrent use does not serve as a defence in an infringement case unless the defendant has secured registration under Section 12 of the Trade Marks Act. By granting a structured injunction with a transition period, the court balanced trademark protection with commercial fairness. This case highlights the complexities of pharmaceutical branding and the critical role of legal clarity in resolving disputes in the industry.
