Dr Reddy’s DAPLO prevails as Delhi High Court cancels deceptively similar DAPLOGIN pharma trademark

Dr. Reddy’s Laboratories Limited (“Petitioner”) sought cancellation under Section 57 of the Trade Marks Act, 1999, of Respondent No. 1’s registration No. 5208898 for the mark DAPLOGIN in Class 5, covering medicinal and pharmaceutical preparations.

The Petitioner claimed prior adoption, use and registration of the mark DAPLO since 2020 for pharmaceutical products containing Dapagliflozin, used in the treatment of Type-2 Diabetes Mellitus.

Respondent No. 1’s mark DAPLOGIN was adopted on a “proposed to be used” basis on 14 November 2021 and subsequently registered after no opposition was filed against its journal publication.

The Petitioner contended that DAPLOGIN wholly subsumed DAPLO and was visually and phonetically deceptively similar, particularly because both marks concerned identical pharmaceutical goods containing the same active ingredient and treating the same disease.

Respondent No. 1 maintained that DAPLOGIN was honestly derived from “Dapagliflozin”, that “DAP/DAPLO” was common to the trade, and that the suffix “GIN” sufficiently distinguished the marks.

1. Whether the mark DAPLOGIN is deceptively similar to the Petitioner’s earlier registered mark DAPLO, having regard to the visual, structural and phonetic similarity between the marks.

2. Whether registration of DAPLOGIN for identical pharmaceutical goods is likely to deceive or cause confusion and is therefore contrary to Sections 9(1)(a), 9(2)(a) and 11(1)(b) of the Trade Marks Act, 1999.

3. Whether the defence that DAPLO or the prefix DAP is derived from “Dapagliflozin” and is common to the trade disentitled the Petitioner from claiming exclusivity or seeking cancellation.

4. Whether the fact that both medicines are prescription drugs and allegedly co-existed in the market excluded the likelihood of confusion.

The Court applied Section 57 of the Trade Marks Act, 1999, concerning cancellation or variation of registration, read with Sections 9(1)(a), 9(2)(a) and 11(1)(b), which prohibit registration of marks lacking distinctiveness, likely to deceive or cause confusion, or similar to an earlier mark in respect of identical or similar goods.

Under the anti-dissection rule, competing composite marks must ordinarily be compared as wholes, from the perspective of a person of average intelligence and imperfect recollection; however, dominant elements may be identified where appropriate.

The Court relied on Re Pianotist Co.’s Application, Amritdhara Pharmacy v. Satya Deo Gupta, Parle Products v. J.P. & Co., and South India Beverages v. General Mills for the overall-comparison and dominant-mark principles.

For pharmaceutical products, Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. requires exacting judicial scrutiny and a stricter approach because even prescription medicines may be confused by doctors, pharmacists or consumers, with potentially serious consequences.

A plea that a mark or part of it is “common to trade” must be supported by evidence of substantial, frequent and actual market use; mere registrations on the Trade Marks Register are insufficient.

Prior use is an important factor, and a later adopter cannot avoid the consequences of deceptive similarity merely by asserting an allegedly honest or ingredient-derived adoption.

The Court compared DAPLO and DAPLOGIN as wholes but found that DAPLOGIN incorporated all five letters of DAPLO as its dominant prefix, with the additional suffix “GIN” insufficient to dispel the visual similarity.

Phonetically, DAPLO would be pronounced “DAP-LO”, while DAPLOGIN would be pronounced “DAP-LO-GIN”, causing the earlier mark to be prominently recalled within the later mark.

The likelihood of confusion was heightened because the rival marks covered identical pharmaceutical products, contained the same API—Dapagliflozin—and were used for the treatment of the same disease, through overlapping trade channels and to a common consumer base.

Applying the heightened pharmaceutical standard under Cadila, the Court held that prescription status did not eliminate the possibility of confusion.

The Court rejected Respondent No. 1’s ingredient-derived adoption defence, holding that DAPLO as a whole was a coined and distinctive mark and was neither generic nor publici juris.

The cited third-party marks did not establish common use because Respondent No. 1 produced no evidence of their actual or substantial market presence; registrations alone could show only that the expression was “common to register”, not “common to the trade”.

The Court consequently inferred that DAPLOGIN had been adopted dishonestly to come close to and benefit from the Petitioner’s goodwill in DAPLO.

The cancellation petition was allowed, and registration No. 5208898 for DAPLOGIN in Class 5 was cancelled.

Respondent No. 2, the Registrar of Trade Marks, was directed to rectify the Register within six weeks.