Madras HC Bans Macleods' BELATIN Trademark for Infringement, Grants 4 Months to Clear Stock

Justice Senthilkumar Ramamoorthy, in his judgment, emphasized the likelihood of confusion between the two trademarks, especially within the pharmaceutical industry. He highlighted the importance of safeguarding pharmaceutical trademarks to prevent potential confusion among patients and healthcare professionals, citing previous rulings by the Supreme Court.

The dispute arose over the timing and use of the two trademarks. Apex Laboratories, which holds Trademark No. 4246358 in Class 5 for medicinal and pharmaceutical preparations, claimed it adopted the BILTEN mark in June 2019 and launched the product commercially in November 2019. The drug maker stated that the product contains BILASTINE, as the main ingredient, and consequently is used as an antihistamine.

Macleods argued that it conceived the BELATIN mark in May 2019, a month before Apex, and applied for registration in June 2019. However, Macleods did not begin commercial use of the mark until February 2020, months after Apex had already been selling BILTEN. Apex argued that while Macleods had filed earlier, it was the first to use the mark in commerce, and that the visual and phonetic similarities between the two trademarks could lead to confusion.

Macleods countered that both marks were derived from Bilastine, the active pharmaceutical ingredient (API), and claimed that any resemblance was coincidental. They also pointed to other similar drug names, such as BILAXTEN and BELTAS, arguing that they did not cause confusion. Furthermore, Macleods maintained that its use of BELATIN since February 2020 was in good faith and should be protected under the principle of "honest and concurrent use."

Apex’s counsel argued that while both trademarks were derived from the same API, their earlier commercial use of BILTEN and its registration in July 2019 entitled it to protection. They presented evidence of Apex’s adoption and use of the mark starting as early as April 2019, supported by purchase orders and invoices. On the other hand, Macleods did not begin using BELATIN commercially until February 2020. The counsel also highlighted that a registered trademark, even when based on an API, is entitled to protection against deceptively similar marks, citing multiple legal precedents.

Macleods' counsel pointed to their earlier application for the BELATIN mark, filed in June 2019, and argued that the adoption of the trademark began in May 2019. They further emphasized that Macleods had conducted a trademark search to ensure no similar marks existed and that BELATIN was launched in October 2019 after obtaining a manufacturing license. They also noted that other pharmaceutical companies had similar trademarks derived from the same API. The defendant argued that the plaintiff’s delay in filing the lawsuit suggested that it had no objections to Macleods' use of BELATIN.

Macleods' counsel also argued that under trademark law, a prior applicant's rights should not be interfered with by a later applicant, and that actual use was not necessary to establish proprietary rights. They also claimed that the principle of "honest concurrent use" under Section 12 of the Trade Marks Act applied, allowing for the registration and protection of similar trademarks when used honestly and concurrently.

After reviewing the evidence, the court concluded that Apex had prior adoption and commercial use of the BILTEN mark, starting in November 2019, while Macleods began using BELATIN only in February 2020. The court ruled in favor of Apex, noting that while Macleods was the prior adopter of the mark BELATIN, Apex was the prior user. It observed;

"The defendant is the prior adopter of the mark BELATIN, but is not the prior user thereof. Such evidence also indicates that the plaintiff's use predated use by the defendant by about three months. There is also nothing on record to indicate that the plaintiff adopted the trademark BILTEN after becoming aware of the defendant's adoption of the trademark BELATIN. Therefore, the adoption of the trademark BILTEN by the plaintiff was honest."

Regarding the deceptive similarity between the trademarks, the court held that despite both trademarks deriving from the same API, the likelihood of confusion and deception was high due to their similarities in both visual and phonetic aspects. The court emphasized that strong protection is necessary for pharmaceutical trademarks to avoid confusion, as supported by precedents. It noted;

"In the case at hand, both the trademarks are applied to pharmaceutical preparations used for the treatment of human beings. Therefore, the likelihood of deception or confusion cannot be disregarded. Given the degree of similarity between the two trademarks and use in relation to identical goods, notwithstanding common origin from the API, I conclude that there is deceptive similarity."

The defendant’s claim of "honest concurrent use" was rejected for the purpose of this infringement case. The court clarified that such a defense is only applicable in registration matters and not in infringement actions unless the defendant has successfully registered the trademark. Macleods did not prove acquiescence or fulfill the necessary conditions for this defense. The court observed;

"On surveying relevant precedents, I conclude that the defence of honest and concurrent use is not available to a defendant in an action for infringement unless such party previously succeeded in registering its trademark on such basis."

Subsequently, the court ruled that Apex is entitled to the statutory rights under the Trade Marks Act and granted an injunction preventing Macleods from using the BELATIN mark. However, Macleods was given four months to liquidate its existing inventory of BELATIN products. The court also rejected the defendant’s counterclaim for damages and awarded reasonable costs to Apex, including court fees and lawyer’s fees, amounting to Rs 3 lakhs. It held;

"In view of the conclusion that the plaintiff is the prior user of the trademark BILTEN and is entitled to exercise its statutory rights under the TM Act, including by instituting this suit, the defendant is not entitled to the counter claim for damages. Issue Nos.11 and 12 are decided, therefore, in favour of the plaintiff and against the defendant. Turning to issues 13 and 14, the evidence on record clearly indicates that the defendant commenced use of the trademark BELATIN honestly in February, 2020 after conceiving and adopting the trademark in May, 2019. The use by the plaintiff preceded use by the defendant by only about three months. It bears repetition that it was concluded earlier that such use is honest. The defendant has used the trademark BELATIN continuously since February, 2020, and there is no evidence of loss to the plaintiff as a consequence. Hence, the plaintiff is not entitled to damages and the relief is required to be modified by taking these aspects into account. Since costs follow the event, as the partly successful party with regard to injunctive relief for infringement, the plaintiff is entitled to reasonable costs."

The court clarified that Macleods’ trademark registration application is still under review, and any decision regarding the registration should not be influenced by the court’s findings. If Macleods’ registration is granted, they may apply for a modification or discharge of the permanent injunction. It clarified;

"As stated earlier, the defendant's application for registration is pending consideration by the Registrar of Trade Marks. For the avoidance of doubt, it is clarified that such application may be decided uninfluenced by the conclusions herein. It is further clarified that the defendant is granted leave to apply for modification or discharge of the decree of permanent injunction for infringement if the application for registration were to be allowed, conditionally or otherwise."