The Delhi High Court has cancelled the registration of DAPLOGIN for medicinal preparations in Class 5, finding the mark deceptively similar to Dr. Reddy’s Laboratories’ earlier coined mark DAPLO for a diabetes drug containing dapagliflozin. The cancellation was granted under Section 57 of the Trade Marks Act, 1999, after the court rejected the respondent’s defence that DAPLOGIN was legitimately derived from the chemical name.
A Coined Whole, Not a Short-Form
Razenta Pharmaceuticals defended the mark by arguing it was derived from the molecule, taking the first three letters (DAP) and the last five (LOZIN) from dapagliflozin, substituting Z with G, and adding GIN. The court accepted that courts have generally refused to protect names that are simply short forms of an active ingredient, such as LETROZ (from Letrozole) or NIMULID (from Nimesulide). However, the court found this reasoning did not apply to DAPLO, which is not a recognisable short-form or abbreviation of the molecule.
DAPLO is a coined whole, conceived by combining DAP and LO. That places it on the opposite side of the line from LETROZ or NIMULID, which readers would recognise as truncations of their molecules. DAPLOGIN, by contrast, subsumed the entirety of DAPLO. When two pharmaceutical marks are compared as wholes, the anti-dissection rule, tempered by the recognition that a dominant element may carry more weight, the dominant part of DAPLOGIN was DAPLO itself, identical to the petitioner’s mark. And because recall in this field is largely phonetic, with the opening syllables doing most of the identifying work, DAP-LO-GIN would be heard as carrying DAP-LO prominently within it. The suffix GIN did not dispel that; it decorated it.
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Marking a Competitor’s Distinctive Word as Dominant
The court found that Razenta’s mark adopted a competitor’s coined word as its dominant element. This was seen as an attempt to take advantage of the goodwill Dr. Reddy’s Laboratories had established for the same drug.
The “Crowded Field” Defence Failed
Razenta claimed that DAPLO is part of a crowded field, citing four other marks that start with DAPLO. However, the court rejected this argument because there was no evidence that these marks were actually used in the market. To demonstrate that a mark is common, it must be shown to be part of the trade, not merely registered. A mark must be substantially used to affect the distinctiveness of another mark.