Sanofi-Aventis Deutschland GmbH (Sanofi) has filed this appeal before the Madras High Court against the order of the Assistant Registrar of Trademarks, Chennai in opposition proceedings dismissing opposition against the mark CALDALE of Jagdale Industries Private Limited (Jagdale). Sanofi, the registered proprietor of the mark, CARDACE in class 5 filed opposition against the mark CALDALE filed by the Respondent, Jagdale Industries Private Limited (Jagdale).

Assistant Registrar of Trademarks dismissed the opposition of Sanofi holding:

1. CARDACE and CALDALE are not phonetically similar.
2. The rival products are used to treat different diseases.
3. Sanofi’s product will be available only with a medical prescription.

Sanofi filed the appeal on the following grounds:

1. Both the parties operate in the pharmaceutical industry
2. CARDACE registered in 1988, is prescribed for blood pressure control in diabetic patients, while CALDALE applied for in 2000, is a calcium supplement.
3. ‘CARDACE’ and ‘CALDALE’ are phonetically similar, both being Schedule-H drugs sold in tablet form would lead to confusion.
4. The first syllable ‘CA’ is identical, and the second syllable ‘DA’ could easily be misread or mispronounced, resulting in serious health impacts.
5. Utmost caution needs to be exercised when it comes to approving deceptively similar names for medicines, as any confusion could lead to life-threatening consequences.

Jagdale countered the appeal on the following:

1. They have been in business since 1994 and there is no similarity between the rival trademarks and thus, no likelihood of confusion.
2. Microscopic comparison of the rival marks is unnecessary, as both parties’ drugs are Schedule-H drugs, to be sold only on prescription.
3. Even in case of remote similarity, it would not be decisive as the target audiences are different—Sanofi’s drug is for blood pressure in diabetic patients, while Jagdale’s product is a calcium supplement.
4. They are using the CALDALE mark since 2007 without any confusion in the market. The order passed by the Assistant Registrar in the opposition proceedings is a well-reasoned one and there is no scope for interference.

Court’s analysis and findings

1. In the instant case admittedly the rival marks ‘CARDACE’ and ‘CALDALE’ are medicinal drugs, specifically Schedule-H drugs, which require a doctor’s prescription for sale.
2. Sanofi’s ‘CARDACE,’ is created by combining ‘CAR’ relating to the heart, with ‘DACE’ and is used for heart-related conditions. Jagdale’s ‘CALDALE,’ is a calcium supplement, and its name was formed by combining ‘CAL’ referring to calcium, with ‘DALE’.
3. The core issue is whether the trademarks ‘CARDACE’ and ‘CALDALE’ are phonetically similar so as to cause confusion. Sanofi’s success in the appeal depends on establishing even a remote similarity and slight potential for confusion, considering the established legal principle that medicinal products require a stricter standard of scrutiny compared to other consumer products.
4. The Court observed that there is no likelihood of confusion as there is no phonetic similarity between the two names, ‘CARDACE’ and ‘CALDALE.’ The letters ‘R’ and ‘L’ sound distinctly different, and the suffixes ‘ACE’ and ‘ALE’ also have no resemblance. Further, a trained pharmacist would recognize the difference between a heart-related drug and a calcium supplement.
5. Even though Sanofi’s registered mark is CARDACE, the product is being sold as CARDACE-5 and therefore there is absolutely no chance of a pharmacist misreading the doctor’s prescription and giving CALDALE in its place.
6. Sanofi’s argument that ‘Juggat Pharma,’ was wrongly assumed to be ‘Jagdale,’ leading to the belief that the adoption of the trademark ‘CALDALE’ was honest and bona fide ought not to succeed. This is considering the fact that Sanofi had already acknowledged that Jagdale had filed an application to amend its name from ‘Juggat Pharma’ to ‘Jagdale Industries Private Limited.’
7. There is also merit in the contention that Jagdale’s CALDALE has been sold since 2007 without any reported confusion with the Sanofi’s drug, ‘CARDACE’. This long coexistence in the market works in Jagdale’s favour.
8. There is also merit in Jagdale’s argument that consumers are careful when purchasing prescription drugs like ‘CARDACE’ and ‘CALDALE as these are only sold on prescription. The advancements in technology, such as computerized or digital prescriptions, have also reduced the likelihood of confusion, compared to when doctors wrote prescriptions by hand.
9. The Court considered the critical need to avoid confusion with prescription drugs due to the potential harm to consumers and after reviewing the trademarks ‘CARDACE’ and ‘CALDALE,’ held that there is no likelihood of confusion between the two.
10. In light of the above findings the Court refused to interfere with the order of the Assistant Registrar of Trademarks and accordingly dismissed the appeal filed by Sanofi.

Comment

The Court’s observation that advancements in technology, such as computerized or digital prescriptions, have also reduced the likelihood of confusion, compared to when doctors wrote prescriptions by hand may hold true for metros and big cities but may not apply universally. The level of digital penetration and adoption of technology for doctors to issue computerized or digital prescriptions may not be high among doctors in small towns and villages.