It describes the case and legal provisions involved in Cadila Healthcare Limited vs Cadila Pharmaceuticals Limited 2001

1. Cadila Healthcare
Limited v/s Cadila
Pharmaceuticals Limited
(2001)

2. NAME OF THE CASE
CADILA HEALTHCARE LTD. V. CADILA PHARMACEUTICALS,
2001
CITATION OF THE
CASE
2001 (2) PTC 541 SC
NAME OF THE COURT HON’BLE SUPREME COURT OF INDIA
APPLICANT IN THE
CASE
CADILA HEALTHCARE LTD.
RESPONDENT IN THE
CASE
CADILA PHARMACEUTICALS
HON’BLE BENCH
JUSTICE B.N.KRIPALJUSTICE DORASWAMY RAJUJUSTICE
BRITISH KUMAR
DATE OF THE
JUDGEMENT
26TH MARCH, 2001

3. RELEVANCE OF THE CASE
Imagine a situation where you are unwell and you are in
search of your medicine, you want paracetamol with the name
‘Fevergo’ for your treatment, however, you get a tablet by the
name ‘Fevertab’. Believing ‘Fevertab’ to be the same as
‘Fevergo’ you buy it and the tablet doesn’t suit you. Later, you
realise that it was not the tablet you were looking for, you were
misled by the name. By this example, it is clear that such
similarity between the names of medicines might lead to life-
threatening situations as the composition may differ
extensively. In the law of intellectual property, there is a
catena of cases that are premised upon unregistered
trademarks and the action of passing off.
The current case is a landmark case that deals with the passing

4. MEANING OF DECEPTIVELY SIMILAR
Section 2(h) of Trademark Act, 1999
A mark shall be deemed to be deceptively similar to another
mark if it so nearly resembles that other mark as to be likely to
deceive or cause confusion.
This is also an absolute ground for refusal of registration under
section 9 of Trademark Act, 1999.

5. MEANING OF INFRINGEMENT
Section 29 of the Trade mark Act, 1999 states about various
aspects concerning the infringement as given in S.29(1) that A
registered trade mark is infringed by a person who, not being
registered proprietor or a person using by way of permitted
in the course of trade, a mark which is identical with, or
similar to the trade mark in relation to goods or services in
which the trade mark is registered and in such manner as to
the use of the mark likely to be taken as being used as a trade
It is further given in the Sub Section (9) of this provision that
the infringement can also be done by the spoken use of the
words as well as by the visuals.

6. MEANING OF PASSING OFF
• According to Duhaime’s law dictionary, Passing Off is
“making some false representation likely to induce a
person to believe that the goods or services are those
of another.”
• The law of passing off is provided under Section 134 1
(c) of Trademark Act 1999. (2) And Section 27 of the
Trademark Act 1999 provides a common law
remedy. It is a common-law tort which is used for
unregistered trademark rights ( a trademark which
has not been registered under trademark or patent
office is known as an unregistered trademark).
• The law of passing off prevents one person from

7. ELEMENTS OF PASSING OFF
• There are three main elements of Passing-Off which
were stated in the famous case law of Reckitt & Colman
Ltd. v/s Borden Inc. by the house of lords, which are as
It was stated that a plaintiff must establish
• Goodwill or reputation attached to his/ her goods or
services
• He/she should prove that a misrepresentation is done
by the defendant.
• He should prove that he/she has suffered a loss due to
the defendant’s misrepresentation.

8. Modern elements of Passing-Off
• Misrepresentation
• Made by a person in the course of trade
• To prospective customers of his or her ultimate
consumers of goods or services supplied by him or her
• To injure the Goodwill of another person’s business
• Causes actual damage to the plaintiff’s business
Goodwill

9. DIFFERENCE BETWEEN INFRINGEMENT AND PASSING OFF
S. No. Infringement Passing off
1. Type of remedy The statutory remedy under Section
29(1) of the Trade mark Act, 1999
Common-Law remedy
2. Registration It is a pre-requisite It is not required
3. Proof Plaintiff is only required to show
deceptive similarity, as there is a
presumption of confusion
Apart from proving deceptive similarity, the
Plaintiff is also required to prove confusion
in public and the likelihood of injury to the
plaintiff's goodwill
4. Jurisdiction The registered proprietor or registered
user of the trade mark can institute
the suit where they actually and
voluntarily resides or carries his
business or personally work for gain
Section 20 of the Civil Procedure Code,

10. AMBIT OF BOTH
In a recent case of S. Syed Mohideen v. P. SulochanaBai,
the Apex Court of the country stated that passing off right
is a wider remedy than that of infringement. This is
because the passing off doctrine operates on the general
principle that no person is entitled to represent his or
her business as the business of another person. The said
action of deceit is maintainable for diverse reasons other
than that of registered rights which are allocated rights
under the Act.

11. FACTS OF THE CASE
• In the present case, Cadila Healthcare Ltd. (the
appellant) and Cadila Pharmaceuticals (the respondent)
were two pharmaceutical companies that introduced
medicine for the treatment of cerebral malaria
commonly known as Falciparum.
• The appellant launched the medicine by the name and
style ‘Falcitab’ and the respondent named their
medicine ‘Falcigo’.
• The appellant got their trademark registered in 1996
after being granted permission by the Drugs Controller
of India, whereas, the respondent registered their
trademark in 1997.

12. PROCEDURAL HISTORY
• Later in the year 1998, the appellant became aware that Cadila
Pharmaceutical is using the mark “FALCITAB” which is similar
to their mark “FALCIGO”; and that the mark was applied by
Cadila Pharmaceutical for similar drug, thus the appellant filed
an injunction before the Vadodara District Court to restrict the
respondent from doing any further trade.
• However, the Vadodra District Court gave the judgement in
favour of the respondent stating that the two medicines were
different from each other based on formulation, appearance
and price. The Court also stated that, since both the medicines
are ‘Schedule L’ category drugs and are sold to hospitals directly
there will not be any likelihood of the public being confused.
• Aggrieved by this decision, the appellant appealed before the
High Court. The appellants had no luck this time too, as the
High Court dismissed their appeal on the basis that there was no

13. ISSUES RAISED
•Whether or not the sale of the ‘Falcigo’ drug by
the respondent amounts to passing off?
•Whether the mark of Cadila Pharmaceutical
i.e., ‘Falcitab’ is similar to the mark of Cadila
Healthcare i.e., ‘Falcigo’?

14. Appellant’s contentions
• Cadila Healthcare Ltd., i.e., the appellant contended that a
similar trademark to theirs is being used by Cadila
Pharmaceuticals, i.e., the respondent for the treatment of
falciparum malaria that has a high possibility of creating
confusion and deception among the public. The appellants
stated that the respondent is passing off a drug of the appellants
by making use of a deceptively similar trademark name
called ‘Falcitab’ for the treatment of a similar ailment.
• The appellant further mentioned the contention of the
respondent stating that the mark of the drug is only used for the
‘Schedule L’ category of drugs that are directly sold to hospitals
and clinics and thus, the possibility of any confusion being

15. Respondent’s contentions
• Cadila Pharmaceutical contended that the
prefix ‘Falci’ in their trademark name ‘Falcitab’ was
taken from the disease ‘Falciparum’, and it is a common
practice in the pharmaceutical industry to name a
medicine after the disease it is supposed to cure.
• The respondent further contended that the said drug
belongs to the ‘Schedule L’ category wherein such
medicines are directly sold to hospitals or clinics, unlike
the ‘Schedule H’ drugs which are sold in the retail
medical shops. Due to this reason, the possibility of the
public being confused or deceived between both drugs is
unlikely.

16. JUDGEMENT
• The Hon’ble Supreme Court stated ,the said judgement is passed
to establish the principles to be followed while dealing with an
action of passing off with special regard to medical products.
• The Indian market consists of a huge number of people who
don’t know English or are illiterate, thus such consumers are
supposed to be considered prior to making any decision as the
confusion regarding the identity of the product might lead to
grave effects on public health and this is why we cant rely on
foreign judgements for giving a decision in India.
• The Hon’ble Court also observed that even if the drugs in
dispute belong to ‘Schedule L’ which are directly sold to the
hospitals or clinics, the possibility of creation of confusion
between both the drugs cannot be dispensed with even though it
is prescribed by a medical practitioner.

17. Finally, the Hon’ble Supreme Court established certain principles to
consider while dealing with a case of passing off and to decide the existence
of deceptive similarity. The principles are as follows –
1. To check the:-
• nature of the marks which includes word marks, label marks and
composite marks.
• degree of similarity between such marks which include ideological and
phonetic similarity.
• similarity of nature, performance and character of the goods of both
traders involved.
• of the goods for which they are used as trademarks.
2. To identify the:-
• class of consumers who might buy the goods based on the marks they
require, their intelligence, education and the degree of care they might
employ in buying or consuming such goods.
• mode of purchase when buying such goods.

18. Made by:-
Anushka Singh
BBA LLB- 4TH Year
2018006764
SOL, Sharda University