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No Monopoly over Colour, Shape or Packaging of a Medicine

Issued: February 01 2011

The Delhi High Court, in its recent judgment in Ranbaxy Laboratories Ltd. vs. Cipla Limited, has put forth the proposition that the distinctiveness of a medicine is in its name and not in the colour, shape or packaging of that medicine.

Ranbaxy filed an appeal before Delhi High Court challenging the interim order passed by the Additional District Judge, where the lower Court issued an interim injunction in favour of Cipla and against Ranbaxy, restraining Ranbxy from manufacturing, selling, offering for sale, advertising or directly or indirectly dealing in a drug sold by Ranbaxy as Enflox 400.

In a suit filed by Cipla before the District Court in Delhi, Cipla claimed use of a trademark Norflox continuously and exclusively throughout the country for the past 16 years. Cipla further claimed that it had started manufacturing and marketing Norflox 400 as a distinctive, orange-coloured, oval-shaped tablet in blister packaging since 1987. It was further claimed that the annual sales of Norflox 400 was running in the billions of rupees and that Cipla was spending tens of millions of rupees on advertising and promoting its Norflox products. On February, 12, 2004, Cipla came to know that Ranbaxy had launched a similar product with identical oval, orange-coloured tablets in blister packs and was selling the drug under the mark Enflox 400.

Based on the report, Cipla filed a suit against Ranbaxy for passing off and also claimed interim relief for the same, on the grounds of being a prior user of blister packaging containing distinctive orange-coloured, oval-shaped tablets. Cipla had contended that the shape and colour of Ranbaxy’s product are deceptively similar to those of its own product and are likely to lead to confusion among both the purchasing public and the trade and that they constitute an unfair attempt by Ranbaxy to take undue advantage of the business and goodwill generated by Cipla with regard to the sale of Norflox. However, Cipla conceded before the trial court that there was no challenge to the mark adopted by Ranbaxy and that the same is visually and phonetically different from the trademark adopted and used by Cipla.

The issue that came up in the appeal before the Delhi High Court was whether the order of the Additional District Judge granting interim relief to Cipla was liable to be set aside or not.

Ranbaxy contended before the Court that merely because Cipla has started using a particular colour for its tablets it should not get a monopoly over said colour so that no other manufacturers could use that colour. Ranbaxy contended that there were many other manufacturers that were using similar orange-coloured, oval-shaped tablets for their medicines packed in similar blister packaging.

Ranbaxy relied on the earlier case of Cipla vs. MKPharmaceuticals, involving the same issue, wherein the Court allowed the appeal of MKPharmaceuticals against an order restraining the company from marketing and selling Norfloxacin because the tablets offered for sale happened to have same colour, shape and packaging as those of Norflox.

The Court had held that “although undisputedly the packaging, shape and colour of the plaintiffs and defendants were similar, however, in view of the fact that blister form of packaging of tablets is a common and prevalent type of packaging used for 50% of the tablets in the market, the plaintiffs can have no monopoly over a particular form of packaging and cannot pray that no one else should offer its medicine in that fashion. The distinctiveness of the medicines is in the name and not the colour or shape.”

Further, holding that colour of the medicine cannot be associated with the brand, the Court observed that, “it is a settled law that there can be no monopoly over colours. Cipla is in the field of manufacturing a wide range of medicines and it may colour its tablets in any colour starting from violet to red. Merely because Cipla has started using a particular colour for its tablets Cipla does not get monopoly over colour so that no one else can use that colour. Moreover, the medicines are not bought by colours by the consumers. There are thousand types of tablets available with the chemist for different ailments. No one goes to a chemist and asks for blue, red, orange, peach or white colour of tablets. No manufacturer advertises his medicines by colours or shape.”

With regard to the shape of a tablet, court observed that the “shape of the tablets is not associated either with the quality of the tablets or with the nature of the medicine. It cannot be said that because the shape of the plaintiff’s tablets and defendant’s tablets being oval, it was going to create confusion in the minds of the customers.”

The Court was of the view that the distinctiveness of the medicines is in the name and not in colour or shape. Even if there has been a deliberate copying of a similar colour and shape of the Plaintiff’s tablets that would not amount to passing off, since colour and shape are not indicative of the drugs, neither are they associated with the trademark.

It is pertinent to note here that Cipla did not appear in the instant matter or in the earlier-cited case and both the appeals were heard in its absence.

Finally, putting the matter at rest, the Court held that the above-mentioned decision deals with the same product of Cipla and an identical grievance, albeit regarding a different manufacturer, and that the issue in the instant appeal is thus squarely covered by the earlier decision. Consequently, the impugned order passed by the Additional District Judge was set aside and the appeal was allowed.

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About the Author

Manisha Singh Nair is a partner at Lex Orbis in New Delhi. She has the distinction of practicing in both the prosecution and enforcement arenas, and has extensive experience in the post-lodgment prosecution of patents, trademarks and designs.


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