Trade Marks
Madras High Court declines relief to Cipla over infringing use of its mark RESPULES

This case (Cipla Ltd. v. Sun Pharmaceutical Industries) involved an order by a Single Judge of the Madras High Court regarding a dispute over the use of the mark RESPULES owned by Cipla Ltd. (“Cipla”). The medical preparation sold under the mark RESPULES is a capsule in liquid form used for nebulization in respiratory illnesses.

Cipla argued that RESPULES, a portmanteau, was coined by it in 1993; and that it is a word not found in the English dictionary, or the Directory of International Non-proprietary Names. Cipla has had a registration for the same since 2002. Cipla alleged that the defendant, Sun Pharmaceutical Industries (“Sun”) has infringed its rights in the said mark by using it in a descriptive form and in lower case. Sun, on the other hand, argued that the term RESPULES is not a coined word but a descriptive word. It further contended that RESPULES is not a purely invented word because of its reference in a descriptive sense in various contexts including by Cipla itself, the Drugs Controller General of India, and the Director General of Health Services.

On considering the rival arguments, the Court observed that a fusion of two descriptive words may be afforded trademark protection as a newly coined word only when it does not readily recall the self-evident combination of words. The Court considered precedents involving marks like INSTEA (referring to instant tea) and DROPOVIT (referring to drop of vitamin). It is evident that ‘INSTEA’ is a combination of the words ‘Instant’ and ‘Tea’ whereas, in ‘DROPOVIT,’ such a combination is not evident. INSTEA was therefore rejected for protection, whereas DROPVIT was held to be eligible for protection. Applying the same reasoning to RESPULES, the Court observed that while RESPULES is not in the same league as INSTEA, it is also not as difficult to discern the constituent descriptive words, “respiratory capsules.” Additionally, the mark had been commonly used, even by Cipla to describe the form in which medicine is marketed.

As such, the Court was not inclined to restrain Sun from using RESPULES.

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