As pharmaceutical companies constantly work to develop new products, there are sure to be multiple drugs – either already available or in various stages of trials and testing – to alleviate any given ailment or the symptoms thereof. These companies rely heavily on IP law to ensure that their product and reputation remain unharmed by possible infringers, especially seeing that profits garnered by monopolizing a particular pharmaceutical product can reach up to billions of dollars. In the case of Rotta Research Laboratorium SpA v Ho Tack Sien Ors, the latter claimed to have independently developed the glucosamine sulphate based drug Artril 250, which was similar to Viartril-S, a drug developed and sold by the Plaintiffs, Rotta Research Laboratorium SpA and Antah Pharma Sdn Bhd, both of which were used to treat osteoarthritis.
The Plaintiffs alleged that the Defendants, Ho Tack Sien, Chai Yuet Ying and the companies they enlisted to trademark, manufacture and distribute their product, infringed upon their trademark rights and wrongfully passed off the Defendants’ products as that belonging to them. This was achieved by the misuse of confidential information passed down from the Plaintiffs to their former employees, the Defendants, in an attempt to deliberately steal business from and damage the reputation and goodwill of the Plaintiffs. Following a 7-day trial, the Court decided that the Plaintiffs had proven their case against all Defendants except for the first company hired to manufacture Artril 250.
Among the issues of concern in the final judgement were trademark infringement and passing-off by the Defendants. In arguing this, the Plaintiffs had to provide sufficient evidence that the two products are deceptively similar to the point of a likelihood of confusion and possible misrepresentation. This was achieved by demonstrating aural and visual similarities, the former being in the names of each ‘Vi-artril’ versus ‘Artril’ despite the presence of the unique suffixes ‘S’ and ‘250,’ respectively. The visual resemblances were evident in many aspects, from the red and white tablets to the uniform red and white box with an image of a knee. Possible confusion could arise for the intended recipients of these drugs, namely the elderly suffering from osteoarthritis, as they were positioned side-by-side on the shelves in pharmacies. Instances of actual confusion were also presented by the testimonies of two independent witnesses, Dr. Ng Suan Thoong and pharmacist Che Suraya binti Haji Mohd Zain, who both contacted the Plaintiffs with regard to Artril 250.
Misrepresentation came into play when it was brought to light that the Plaintiffs had previously released a drug by the name of Arthryl. Having been employed by the Plaintiffs, the Defendants had this knowledge when coining the name ‘Artril’ for their product. Electing a name resembling that of the Plaintiffs’ product led the public to believe that the good will and reputation the Plaintiffs have developed over years of service could be associated with that of the Defendants.
The breach of obligation of confidentiality by Ho and Chai as per their employment contract with the Plaintiffs was apparent as both individuals had access to confidential material regarding the development and manufacturing of Viartril-S which surpasses the general information on glucosamine sulphate available on the internet. Furthermore the Defendants’ document ‘Annex B’ containing information on the development and manufacture of Artril 250 bore a significant resemblance to the corresponding document for that of Viartril-S.
To weaken their case further, the two lacked credibility as witnesses when testifying as Ho contradicted himself during the cross-examination and both refused to answer questions or gave curt responses in the form of ‘don’t know,’ ‘can’t remember,’ and ‘no comment.’
Pursuant to Section 45 of the Trade Marks Act of 1976, giving courts the power to amend an entry on the Trade Mark Register, the Court’s decision in favour of the Plaintiffs included expunging the trademark for Artril 250 by the judge. In addition, costs of RM25,000 against each defendant were awarded to the Plaintiffs. The Defendants responded to this decision by filing an appeal.
This case highlights a crucial, but often overlooked or underestimated business success tool, and that is the importance of identifying the types of IP assets present in a business and taking proper steps to enforce these rights to protect the business. IP rights are seemingly mystifying, but with expert advice and regular IP asset management auditing, these rights not only form one of the main weapons to attack competitors and infringers with but also act as shields to defend businesses against thieving copycats.
- Spotting Seiko in Seiki? - May 17, 2016
- The Non-Use of PARLIAMENT in Malaysia - April 25, 2016
- [Business Today] The Recipe to Success… - October 20, 2015
