Boehringer Ingelheim Pharma Gmbh & Co. KG v. Vee Excel Drug International

This case analysis Akshay during hid internship with LeDroit India.

Court and Citation

This case was decided by the Delhi High Court in CS (Comm) 837/2018, an intellectual property dispute primarily involving trademark infringement and passing off.

Background

Boehringer Ingelheim Pharma Gmbh & Co. KG, a global pharmaceutical giant based in Germany, initiated legal action against Vee Excel Drug International, an Indian pharmaceutical company, for unauthorized use of their registered trademark PRADAXA. Boehringer marketed PRADAXA globally, including in India, for preventing strokes and embolism in patients suffering from non-valvular atrial fibrillation.

The plaintiff alleged that Vee Excel was marketing and selling a product under the name PRADAXA-NATURALS, a purported herbal medicine, in a manner that caused confusion among consumers and tarnished the goodwill associated with PRADAXA. The herbal product had no association with the plaintiff’s pharmaceutical product, which was prescription-only and highly regulated.

The plaintiff sought permanent injunctions restraining Vee Excel from using the mark PRADAXA or any deceptively similar mark, damages, delivery of infringing goods for destruction, and other relief.

Legal Issues

1. Trademark Infringement: Whether Vee Excel’s use of the name PRADAXA-NATURALS constituted infringement of Boehringer’s registered trademark PRADAXA under Sections 29 and 30 of the Indian Trade Marks Act, 1999.
2. Passing Off: Whether the defendant’s use of PRADAXA-NATURALS misrepresented their goods as being associated with Boehringer, leading to potential harm to the plaintiff’s goodwill.
3. Dilution and Tarnishment: Whether the defendant’s use of a similar mark diluted the distinctiveness of the plaintiff’s trademark and harmed its reputation.

Plaintiff’s Arguments

1. Trademark Registration: Boehringer emphasized its global and Indian registrations of PRADAXA in Class 5 (pharmaceutical products), making it a well-known mark. The use of PRADAXA-NATURALS was argued to be prima facie infringement.
2. Likelihood of Confusion: The similarity in names and the shared industry (healthcare/pharmaceuticals) were likely to confuse consumers, who might associate PRADAXA-NATURALS with Boehringer’s trusted brand.
3. Reputation and Dilution: The defendant’s use of PRADAXA-NATURALS, a herbal product, tarnished PRADAXA’s reputation, as Boehringer maintained strict quality controls for its pharmaceutical products. The association with unverified herbal claims diluted the distinctiveness of PRADAXA.
4. Bad Faith and Misrepresentation: The plaintiff argued that Vee Excel adopted the name PRADAXA deliberately to free-ride on Boehringer’s goodwill and deceive consumers.

Defendant’s Arguments

1. Non-Infringement: Vee Excel contended that PRADAXA-NATURALS targeted a different market segment—herbal remedies—and was not a prescription medicine, thus eliminating any possibility of confusion.
2. Generic Usage: The defendant argued that PRADAXA could be considered descriptive or generic in relation to their herbal products, asserting that the term “natural” differentiated their product from Boehringer’s.
3. No Reputation in Herbal Market: Vee Excel claimed that PRADAXA did not have goodwill in the herbal segment, and their use of PRADAXA-NATURALS was unlikely to dilute the pharmaceutical brand’s reputation.
4. Lack of Confusion Evidence: The defendant asserted that there was no evidence of actual consumer confusion.

Court’s Analysis and Judgment

1. Trademark Infringement: The court found a prima facie case of infringement under Section 29 of the Trade Marks Act. It emphasized the phonetic, visual, and conceptual similarity between PRADAXA and PRADAXA-NATURALS, noting that the addition of “NATURALS” did not eliminate the likelihood of confusion, especially given the overlapping sectors (healthcare and wellness).
2. Passing Off: The court upheld the claim of passing off, stating that the defendant’s use of PRADAXA-NATURALS could mislead consumers into associating the herbal product with the reputed pharmaceutical brand PRADAXA.
3. Dilution and Tarnishment: The court recognized that Boehringer’s trademark PRADAXA was a well-known mark under Section 29(4). The use of the mark for an unrelated herbal product was likely to dilute its distinctiveness and tarnish its reputation.
4. Bad Faith: The court noted that Vee Excel’s choice of the name PRADAXA-NATURALS appeared deliberate and was intended to capitalize on the goodwill of PRADAXA, further supporting the plaintiff’s claims.
5. Relief Granted: The Delhi High Court granted the following reliefs:
   1. A permanent injunction restraining Vee Excel from using the PRADAXA mark or any deceptively similar mark in any form.
   1. Directions for the defendant to deliver the infringing goods and materials for destruction.
   1. An order for the defendant to disclose details of its sales and profits derived from the infringing product to determine damages.

Significance

1. Protection of Pharmaceutical Trademarks: The judgment underscores the importance of safeguarding trademarks in the pharmaceutical industry, where consumer trust and public health are paramount.
2. Distinctiveness in Overlapping Markets: The case highlights how similar marks used in related sectors, even with slight modifications, can lead to confusion and dilute the reputation of well-established brands.
3. Recognition of Global Brands: The court’s recognition of PRADAXA as a well-known trademark illustrates the protection afforded to reputed international trademarks under Indian law.
4. Message to Free-Riders: The judgment serves as a deterrent to businesses seeking to exploit the goodwill of established brands through deceptive practices.

This judgment reinforces the robust trademark protections available in India and reflects the judiciary’s commitment to preventing consumer confusion and ensuring fair competition in the marketplace.