A RIX-Taker: The Standard of Care in the Pharmaceutical Sector

Introduction

In a significant reaffirmation of principles concerning trademark confusion and deception within the pharmaceutical domain, the Delhi High Court has recently revisited the benchmarks for evaluating potential confusion among pharmaceutical products. The Single Judge considered the phonetics, structure, and purpose of the goods in establishing infringement. The suit instituted by GlaxoSmithKline Biologics against Defendant 1, Human Biolife India Private Limited, who they claimed were allegedly infringing on Plaintiff’s RIX range of marks by manufacturing and selling pharmaceutical products bearing the RIX mark.

Facts and Arguments

Human Biolife India engaged two other entities (Defendants 2 and 3) under contract for the manufacturing, packaging, and labelling of pharmaceutical products according to directives provided by Human Biolife. These entities argued that any trademark infringement claims against the products produced for Human Biolife should be solely its responsibility, given that the trademarks used were claimed to be owned by Human Biolife, which also agreed to indemnify them against any resulting liabilities.

On the day of the hearing, Defendants 2 and 3 did not oppose the prayer of the Plaintiff and Defendant 1 did not appear before the Court despite having been present before the Registry for Opposition proceedings and having registered marks in their favour in the suit. The Court chose to proceed ex parte and made note of the plaintiff’s arguments and submissions.

The plaintiff referred to the various RIX-suffix marks which they were using in the development and supply of vaccines. However, the hearing was restricted to ROTARIX, AMBIRIX, CERVARIX and RIX marks, which form part of the extensive RIX portfolio of marks owned by the plaintiff. The details of the marks under contention during the hearing are represented in the table below.

The plaintiff stated that the use of the suffix RIX was inspired by a village in Belgium, “Rixensart,” which also happened to be the location of the plaintiff’s headquarters. The plaintiff stated that they used the suffix RIX in all their trademarks, which denoted vaccination products. As an industry standard, they combined RIX with the disease for which the vaccine provided immunity. The plaintiff submitted that “RIX” allowed their marks to be arbitrary.

The plaintiff referred to the following marks to buttress their submissions: VARILREX for Varicella, ROTARIX for Rotavirus, CERVARIX for Cervical Cancer, HAVRIX for Hepatitis A, TYPHERIX for Typhoid Fever, HIBERIX for Influenzae Type B and FLUARIX for common cold.

The plaintiff stated that seventeen RIX marks had been granted statutory protection since 1984 for various vaccine formulations and have been in circulation since the launch of the RIX range in 1986, which has consistently created new vaccine formulations, the latest being launched recently in 2023. The plaintiff arraigned Defendants 2 and 3 in the suit as companies manufacturing the products bearing impugned marks.

Observations and Findings

The Court observed that the Defendants’ marks were deceptively similar to the plaintiff’s marks, if not nearly identical. The Court observed that usage of the suffix RIX furthered confusion between the marks. The Court considered that under similar circumstances in 2007, the plaintiff had filed a suit and was granted an injunction in their favour. The Court also regarded the submissions made by the Defendants and noted that Defendant 1 was not contesting the suit, and Defendants 2 and 3 made no objections to the plaintiff’s prayer.

In its consideration of the phonetic and structural similarities between the marks, the Court also noted that the goods were used in the pharmaceutical sector, which required a more stringent yardstick of measurement as laid down by the Supreme Court in Cadila Healthcare. The Court considered the goods, which were vaccines (Plaintiff) and injectables or transfusions (Defendants), and held that the phonetic and structural similarities, combined with the overlapping nature of the products, could lead to confusion and, by extension, fatal consequences for the recipient of the medication.

Judgment

The Court observed that the subject matter also included a public interest perspective and held that the plaintiff would suffer harm if an injunction were not granted when the balance of convenience was clearly in their favour. The Court restricted the Defendant from manufacturing and selling directly or indirectly any products bearing the impugned marks.

Authors: Manisha Singh and Tushitta Murali

First Published By: Lexology here