Trademarks based on generic names harder to enforce

Cadila Healthcare, which owns the registered trademark Mexate, has lost a case filed against Wallace Pharmaceuticals. The unsuccessful action had aimed to restrain Wallace from using its registered trademark Mext.

Both companies use their trademarks as an abbreviation of methotrexate, a drug used to treat cancer. The following discussion of the case is based on media reports, as the judgment itself is not currently available.

In 2008 Cadila took action before Ahmedabad District Court, alleging that Mext was a confusingly similar abbreviation of its Mexate mark. Wallace responded that it had applied for the mark in 2002, and that Cadila had not raised any objection at that time. Subsequently, Wallace developed its brand and built a market for the product, besides regularly publishing its Mext trademark in medical journals and other magazines. Wallace also produced sales figures for the period 2003 to 2007 to demonstrate the extensive use of the mark.

The legislative and regulatory update is compiled by Nishith Desai Associates, a Mumbai-based law firm. The authors can be contacted at nishith@nishithdesai.com. Readers should not act on the basis of this information without seeking professional legal advice.