Beyond Brand Protection: When Public Interest Limits Trademark Enforcement
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Introduction : The Trademark Act, 1999, defines the purpose of a trademark in section 2(1)(zb): to establish distinctiveness in a competitive market and to provide a safeguard for the masses against potential deception. The Courts have, over the years, ensured that public interest in trademark rights is prioritised. This article discusses the limitations of trademark protection.
The Semaglutide Battle: Novo Nordisk vs Dr Reddy’s Laboratories
The Delhi High Court has recently ruled in the case of Novo Nordisk vs. Dr. Reddy’s Laboratories by applying the Cadila Doctrine i.e., Strict Standard consisting of 7-factors for adjudging absolute clarity in the mind of the consumers and medical professionals from accidentally buying or prescribing a product with phonetic similarity between the drugs name Olymviq and Ozempic that possesses high-risk to the public health as these are related to the treatment of Type-2 diabetes and obesity.
The plaintiff in the case was Novo Nordisk, which argued on the following grounds:
The Phonetic similarity between the prefix vowel O and the consonant verbal ending effect.
The brand name has a trans-border reputation and is claimed to be protected under section 29(4), i.e., for dilution to protect the investment functionality of the reputed brand marks.
The likelihood of confusion in the mind of the public due to misinterpretation or distorted verbal statements.
The defendant in the case was Dr Reddy’s Laboratory, which argued on the following grounds:
The brand name is distinctive in syllables and packaging.
The drug prescription will be done by a trained medical professional where the risk of confusion is minimal.
The medicine is cost-effective and 60% cheaper than other accessible drugs.
The court has to weigh between the owner's right and the application of public interest and has applied major doctrines for settling the matter. The following are the doctrines:
The Credible Challenge doctrine was established by the case of M/S Bishwanath Prasad Radhey Shyam v. Hindustan Metal Industries (1978).
The Clear the way doctrine was established by the case of F. Hoffmann-La Roche Ltd. Cipla Ltd. (2008).
The Higher- Standard Doctrine established by the case of Cadila Health Care Ltd. Cadila Pharmaceutical Ltd. (2001).
The Anti-Evergreen Doctrine under section 3(d) of the Patents Act was established in the matter of Novartis AG v. Union of India (2013).
The Credible Challenge Doctrine
The doctrine comes into play when the court must determine whether to grant an interim injunction by ensuring that the patent invalidity does not affect the proprietor's interest against patent monopoly power. Here, in the specific case, the court refused to grant the interim injunction thereby allowing the defendant to continue by invoking the Proportionality Doctrine, equitable remedy and Balance of Convenience as destroying vital drugs would be in opposition to the public interest and unnecessary. The base of this doctrine is well-founded under section 107 of the Patent Act, 1970.
The court granted a 30-day run-off period and ordered the donation of remaining stock to the Government hospitals as is normally the course of action by the court, which is destruction under section 135 of the Trademark Act. Additionally, a non-infringing mark for future production was agreed upon. In the given scenario the Plaintiff Patent has expired and the credible challenge doctrine promotes generic manufacturer entry in the market.
The “Clear the Way” Doctrine
This doctrine works as a safeguard for existing patent holders against generic manufactured products. It states that while a party whose intention is to launch a product they should first clear the way by the following ways:
filling a revocation patent under Section-64 of the Patent Act.
seeking a non-infringement declaration decree under Section-105 of the Patent Act.
Filling a Post-Grant Opposition under Section-25 of the Patent Act.
The main objective of the clear the way doctrine is to settle the matter through proper judicial recourse and in the present case the Delhi HC has interpreted Bona fide intention of the defendant as objectively instead of the state of the mind by applying the coined mark test where the court said that the word “Ozempic” is not a dictionary word and has been a co-incidence that the defendant has coined it. Hence, upheld the legal right under Section-107 of the Patents Act, 1970.
Furthermore, there is a duty to search the trademark registration website. Any phonetic similarity between market leaders and generic manufacturers is often interpreted as an attempt to gain public attention. Justice Jyoti Singh observed that the defendant already possessed a second name, “Obeda” suggestive of the fact that the defendant had an intention to make a profit against the Plaintiff’s brand.
However, the Defendant instead of hiding away their logistics, came out front to protect their patent validity and therefore, instead of obliterating the life-saving drug the court asserted on the public interest doctrine where they intended to provide the cost-effective drugs in the market and viewed it as pro-competitive by allowing its production.
The balance of public interest was maintained by limiting the effects of the infringing element. Under section 30 of the Trademark Act, a registered mark protects a trademark with honest use in industrial or commercial matters and allows the descriptive use. This grants the right to fair competition and to profess business.
The Higher Standard Doctrine
This doctrine is the backbone in the case for pharmaceutical trademark which requires high standard for adjudging the phonetic similar medicinal products and here comes the role of the section 29 of the Trademark Act, 1999 which acts as a shield to the owners financial gain by stopping others from using their identical mark and by applying it the court took note of the fact whether a particular drugs possess a likelihood of confusion in the mind of the prudent man with average intelligence and possibility of partial recollection. But the court rejected its application.
While the dispute is related to the phonetic similarity between their medicinal products the court applied the Balance of Convenience doctrine and suggested a substitution commercially and held that the defendant should not suffer by pausing the market supply as the same drug was launched in another name and the court rightly applied the vulnerability test which means that the infringing element is so glaring that a suit can be at the interim stage be challenged irrespective of other important factors like the age of the patent, etc.
The Anti-evergreening Doctrine
This doctrine prevents the patent from extending beyond a 20-year monopoly via minor or obvious variations and is mainly interpreted under section 3(d) of the Patent Act which sets the ground on what’s not an invention. This doctrine was the main basis of the argument in the case as the Plaintiff contended that for the purpose of manufacturing the Semaglutide drug, a special skill was required, the defendant has even admitted about Form 27 which made clear that previous genus patent already covered the disclosed the Ozempic and they attempted to go both ways by secondary species patent by arguing efficacy of molecules for human consumption.
However, based on the Plaintiff’s own admission, the court concluded that they had attempted to evergreen their patent and the Defendant sought only to provide affordable medicines to the public within the Commercial market. The court relied on section 64 of the Patent Act which prevents evergreening by establishing that once an invention enters the prior art, it becomes available for public use and is no longer eligible for exclusive claims.
Conclusion
This case has set a high bar for the granting trademark and patent protection to business owners against the public interest. Under Section 83 and Section 107A of the Patent Act, 1970 public interest is promoted by encouraging availability of essential health products. Furthermore, the Government can authorise any third party to manufacture drugs at reasonable prices in situations where the public demands are not met. There is even a Bolar exemption doctrine which allows the generic company to research and use the patent before its expiry.
Furthermore, under section 30(1) and section 135 of the Trademark Act, 1999, the principle of honest practice limits a proprietor's right to exclude others from using a mark for industrial purposes. This also allows for equitable relief, such as the distribution of the infringing products within 30days as an alternative to their destruction.
Author: Samridhi Srivastava in case of any queries please contact/write back to us via email to content@khuranaandkhurana.com or at Khurana & Khurana, Advocates and IP Attorney.
References
https://www.scconline.com/blog/post/2026/03/12/delhi-hc-allows-dr-reddys-to-make-and-import-semaglutide/?hl=en-GB#:~:text=The%20Court%20examined%20the%20relevant, disclosed%20in%20the%20genus%20Patent.
https://www.barandbench.com/columns/clearing-the-way-a-life-saving-drug-for-chronic-injunction-battles-in-patent-litigation?hl=en-GB#:~:text=Simply%2C%20the%20principle%20of%20%E2%80%9Cclearing, first%20challenge%20that%20patent%20by
Section 107A in The Patents Act, 1970 https://share.google/FIdTLbVtPdyNByb3F
Section 30 in The Trade Marks Act, 1999 https://share.google/1eCYoTpd2piyMo8GB