Stringent Scrutiny for Pharmaceutical Marks: Deceptive Similarity in Medicinal Preparations Warrants Rectification of the Trademark Register

The Petitioner, a global healthcare company, has been established in India since 1910.

The Petitioner is the registered proprietor of the trademark “PANKREOFLAT” (Registration No. 221220) in Class 5, dated 16.03.1964.

The mark “PANKREOFLAT” is used for a medicinal formulation treating digestive issues and has been in continuous use since the 1970s, generating significant sales and goodwill.

In October 2024, the Petitioner discovered Respondent No. 1’s registration for the mark “KREOFLAT” (No. 4694743) in Class 5, granted on 15.04.2021 on a "proposed to be used" basis.

The Petitioner filed a rectification petition under Section 57 of the Trade Marks Act, 1999, seeking removal of the Respondent’s mark, alleging deceptive similarity and prior rights.

Whether the Respondent’s trademark “KREOFLAT” is deceptively similar to the Petitioner’s prior registered mark “PANKREOFLAT” under Class 5.

Whether the entry of the mark “KREOFLAT” in the Register of Trade Marks was made without sufficient cause and should be cancelled/removed under Section 57 of the Act.

The court primarily applied Section 57 of the Trade Marks Act, 1999 regarding the power to cancel or vary registration and rectify the register.

It relied on the "stringent test" for deceptive similarity in pharmaceutical products established in *Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd.*, which mandates that even a slight possibility of confusion in medicines must be avoided due to public interest and health risks.

It further applied the "dominant feature" principle from *South India Beverages v. General Mills Marketing Inc.*, allowing the court to identify the prominent part of a mark despite the anti-dissection rule.

The court also applied the "lesser quantum of proof" for medicinal products as discussed in *Glenmark Pharmaceuticals Ltd v. Sun Pharma Laboratories Ltd*.

The court found the Petitioner to be the prior adopter, user, and registrant, with documented use of “PANKREOFLAT” since at least 2005 and substantial sales/promotional figures up to 2024.

Conversely, Respondent No. 1 provided no evidence of actual use or sales of “KREOFLAT”.

Applying the *Cadila* test, the court determined that “KREOFLAT” is phonetically, visually, and structurally deceptively similar to “PANKREOFLAT,” as it merely removed the prefix "PAN" from the Petitioner’s coined mark.

The court noted that because both products target the same ailments (digestive issues) and share the same consumer base, the risk of confusion for a consumer of average intelligence is high.

Furthermore, the court held that Respondent No. 2 (Registrar) failed to properly cite the Petitioner’s prior mark during examination, rendering the registration erroneous.

The court allowed the petition and directed Respondent No. 2 to rectify the Register by removing the trademark “KREOFLAT” (No. 4694743) within four weeks.

No orders as to costs were made.