Delhi High Court Weighs If Pudin Hara Qualifies as an Invented Word in Dabur Trademark Battle

A Fight to the Green Bottle Legacy.

One of the most interesting trademark cases in Indian pharmaceutical industry this year has turned out to be the Delhi High Court. Dabur India Limited, a market leader in the Fast-Moving Consumer Goods (FMCG) sector has been in a loggerhead with one of its competitors on who should use the name Pudin Hara. This is a brand that has been a household name in India decades over and it is associated with alleviating stomach ailments. The case, which is heard by Justice Tejas Karia, concerns a more basic issue of intellectual property law, which is whether the word Pudin Hara is a unique, coined word and thus should be given complete protection, or is it a mere describing combination of common Hindi words mint and the color green?

The controversy emerged when Dabur realized that a different company known as Wellford Pharmaceutical Private Limited had registered a trademark of Welford Pudin Hara. Dabur rushed to the court to revoke this registration and get an interim injunction to prevent Wellford adopting the name. The decision in this case can also establish a prominent precedent in terms of protecting the ayurvedic and traditional medicine brands in India, in particular, those based on the names of the main ingredients. Dabur legal team has opposed that this name cannot be allowed to be used by any other company as it will not only be diluting their brand but also create potentially dangerous confusion to the consumers.

The Descriptive vs. vs. the Invented Word Debate.

The very basis of this law battle is the definition of the trademark itself. Trademark law provides the highest protection to words that have been invented or coined since they are both unique and distinctive in nature. The main point that Dabur used to make is that Pudin Hara is a coined term that they had formulated to distinguish their certain ayurvedic proprietary drug. They argue that though the word pudina specifically means mint and hara specifically means green, the blend was a unique product used by Dabur to ensure a unique brand name which has no meaning but the product itself.

Whereas, the difficulty with such instances is usually found on the opposite end of the spectrum, that is, descriptive marks. A mark is descriptive when it states directly the quality, kind or ingredients of the commodities. When a court concludes that a term is purely descriptive, then a future assertion of monopoly thereupon becomes significantly difficult. As an example, it would be hard to protect the sale of a soap named Soap or lemon drink named Lemon. The rebuttal in this situation would be of course that it is a green product and made of mint, so the name would be a description of the contents. This is where the court has to consider whether the decades of usage by Dabur has provided the word with a secondary meaning that goes beyond its literal translation and, in fact, converted it to be a proper noun in the common consciousness of the common people.

One Hundred Years of Brand Building at Risk.

The Dabur counsel stressed on the monumental historical baggage in their assertion. They indicated their allegations to the court showing that Dabur has been producing and selling products of the name Pudin Hara as early as 1930. This has been over 90 years of existence which has entrenched the name in the Indian healthcare culture. Also, they reported to have a valid trademark registration of the name since 1979. When a brand stronger than ninety years old suddenly appears before the eyes of a competitor with the same two words, the threat to its tradition is regarded as the immediate one.

The company also came up with statistics to support its exclusivity claim. They reported to the High Court that they held 27 out of the 29 trademarks in India including the words Pudin Hara. This superiority in the trademark register, they claimed, is indicative of the brand name and the strict measures they have employed in ensuring that the brand name is preserved over the years. They claimed that the brand has become so famous that any time a consumer encounters a brand name, Pudin Hara, he or she is bound to think of Dabur and no one else. The threat to this monopoly of the mind is posed by the introduction of a third-party product in the same name, and even with a prefix attached to it.

The Strategies of introducing a prefix.

One of the aspects of the case, which was highly contested in the hearing, was the approach of Wellford Pharma of trading by the name, Welford Pudin Hara. Another objection that a defendant will provide in cases of trademark disputes is the addition of their own company name or a unique prefix that will make their product distinct enough to differentiate it with that of the plaintiff. Wellford must have tried to invoke this defense, which implies that Welford will give the consumer an understanding that the product comes out of another source. Dabur legal team however vehemently countered this calling it an instance of lifting the mark as a whole.

Dabur asserted that the addition of the word Welford before the popular brand name, Pudin Hara does not remedy the violation. They argued that the crucial aspect of the mark is the words Pudin Hara that attract the attention of the consumer and make the buying decision. This can be frequently called in the branding world as riding on the coat-tails of a senior mark. By calling the same product in a different brand (digestive medicine) the competitor is claimed to be attempting to overlook the efforts of establishing a new brand and rather taking advantage of the credibility that Dabur has gained.

Consumer Confusion and Public Health.

The stakes involved in this case are high since it is a medicine that we are talking about. It has been a traditional practice of the courts in India that the consideration of trademark confusion should be enhanced in regard to pharmaceuticals. Although any wrong purchase of a shirt or a biscuit may result in a minor inconvenience, any wrong buy of a medicine may have dire health consequences. Dabur put a lot of emphasis on this, even threatening the court that similarity in the names of the medicinal products may confuse consumers.