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12 November 2018
The High Court of Sindh recently allowed an appeal filed by Novartis AG against Nabiqasim Industries (Private) Limited and restrained the latter from using the trademark DESCOL on account of its similarity with Novartis's prior registered trademark LESCOL.
Novartis filed suit for trademark infringement and passing off against Nabiqasim Industries (Private) Limited to restrain Nabiqasim Industries from using the trademark DESCOL in Pakistan in relation to a pharmaceutical product bearing the generic name, Atorvastin, used as a lipid lowering agent.
Novartis owns extensive proprietary rights in the trademark LESCOL. It claimed to own the registration for the trademark LESCOL in Class 5 and had also made extensive use of said mark in Pakistan since 1995 in relation to a pharmaceutical product with the generic name Fluvastatin used for the treatment of diabetes.
While considering the interlocutory injunction filed by Novartis, the single bench of the High Court of Sindh passed an ad interim ex parte order whereby Nabiqasim Industries was restrained from using the trademark DESCOL. However, said restraining order was subsequently vacated by the single bench as it was concluded that:
Aggrieved by the High Court of Sindh's order, Novartis filed an appeal, which was heard by the High Court of Sindh's appellate bench.
While considering the meaning of 'prescription drugs', the appellate bench took note of the local pharmaceutical market's particular circumstances, where drugs are usually sold without prescriptions and without a specialist pharmacist being available at the majority of drug stores. The High Court of Sindh's appellate bench asserted that in the case of pharmaceutical products, the public must be protected from the possibility of confusion at all times.
In addition, the High Court's appellate bench was of the view that the respective marks, LESCOL and DESCOL, were substantially similar as they consisted of six letters, five of which were identical and the only difference being that the first letter in the respondent's mark was D rather than L.
The High Court of Sindh's appellate bench overturned the order passed by the High Court's single bench.
For further information on this topic please contact Sana Shaikh at Vellani & Vellani by telephone (+92 21 3580 1000) or email (firstname.lastname@example.org). The Vellani & Vellani website can be accessed at www.vellani.com.
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Sana Shaikh Fikree