Distinctive pharma packaging needed to avoid harm

In the recent case of Dr Reddy’s Laboratories Limited v SGS Pharmaceuticals (P) Limited, Delhi High Court granted relief to the plaintiff, Dr Reddy’s Laboratories, by restraining the defendant from infringing on the registered trademark, trade dress, colour scheme, and distinctive packaging of the medicine Cyproheptadine sold by the plaintiff under the trademark Practin. The court found that the defendant was using identical packaging, colour scheme and trade dress to pass off their product as the plaintiff’s product and ride on the goodwill and reputation of the plaintiff’s product.

The plaintiff is a globally renowned pharmaceutical company in existence since 1984 and with a worldwide presence. The trademark Practin, with its trade dress and colour scheme, was registered in 1986 by Wockhardt and assigned to the plaintiff via an assignment deed dated 9 June 2020.

The product has had an annual market value of between INR350 and INR600 million (USD4.2 and USD7.2 million) during the past five years preceding 2020. It enjoyed significant recall value in the market because of its unique appearance. Unlike the usual silver-coloured packaging used for most medicines, it was orange on one side and white on the reverse. This unique and distinctive packaging was copyright-protected and had acquired a distinct identity due to being in continuous use for three decades.

The defendant, in resisting the plaintiff’s application pointed out that it was not using the name Practin, the plaintiff’s registered trademark. It sold its product under the trade name Cyproheptadine–4. Cyproheptadine is the scientific name of the salt, which was the basic ingredient of the pharmaceutical product. The defendant claimed to have been using the name Cyproheptadine–4 since 2001 under a valid drug licence and, therefore, asserted its right to continue its sale.

However, the plaintiff’s case revolved around the defendant using an infringing trade dress, colour scheme and deceptively identical packaging. The plaintiff argued that its application was in the interests of consumers who were likely to be misled into thinking the product of the defendant was that of the plaintiff. The defendant, on the other hand, claimed that because its medicine was a schedule H drug and was sold only by pharmacists though a medical practitioner’s prescription, the possibility of confusion by purchasers identifying the product of the defendant as that of the plaintiff was unduly exaggerated.

The court accepted the fact that the defendant held a drug licence for Cyproheptadine–4, and that the defendant had been selling the drug since 2001.

However, the court held there was no reason to sell Cyproheptadine–4 in packaging identical to that of the plaintiff’s product, with the same colour scheme, trade dress and layout. This was especially so because the plaintiff used a bicolour scheme unique in the industry and which was created specifically to distinguish its products from the rest. The continuous presence of the product in the market since 1996 created considerable goodwill and brand recall, both of which had been protected by valid trademarks and trade dress and IP registrations.

The court granted an injunction against the use of identical packaging. The defendant was directed to submit details of distinct packaging not infringing the plaintiff’s product through trade dress, colour scheme, layout, packaging, font and overall appearance. Even if the defendant’s product was a schedule H drug, the possibility of being misled by identical packaging could not be discounted, because the average consumer may not be able to differentiate the two products on plain viewing.

This decision emphasised two elements. First, as illiteracy was prevalent among probable consumers, the appearance of a product was significant. Second, there should be no possibility of confusion in the mind of the average consumer or purchaser of medicines.

These are pharmaceutical products and a higher degree of care must be taken to avoid any possibility of identical packaging. Even though the scientific name of the salt used in each medicine was the same, the court protected the plaintiff’s intellectual property rights in its unique trade dress, colour scheme and layout.

Manisha Singh and Puja Tiwari are partners at LexOrbis.