IP Rights Trademark Registration

Trademark Registration for Pharmaceutical Companies in India

The Pharmaceutical industry is India’s top gross domestic product (GDP) contributor. The market value is capped at US$60 million for 2024, with national consumption amounting to US$23.4 billion and exports at US$26.5 billion. Trademark registration for pharmaceutical products is important because it concerns public health and customer safety. It helps protect a brand, prevent counterfeiting, and ensure good quality.

With the rise of digitalization in India, pharmaceutical companies are now selling products through e-commerce channels like mobile applications, namely TATA 1mg, Netmeds, MedPlus Mart, and PharmEasy, increasing the competition in the market because customers perceive registered brands as reliable and safe.

In this blog, we’ll cover the legal background, registration process, benefits, important prerequisites, name requirements, Class-5 of Nice Classification, famous case laws, and challenges of trademark protection for pharma companies in India.

What is a Pharmaceutical Trademark?

A pharmaceutical trademark is used by companies to identify and differentiate their products or services from their competitors. It ensures consumer safety, product quality, and a distinct brand identity.

A trademark may contain a letter, word, number, phrase, shape, color, or sound. Pharmaceutical companies are also registering collective, certifications, and service marks.

The Evolution of Trademark Law in India

Explore how trademark law evolved in India as described below:

The Trade Marks Act of 1940

Enacted in 1940, the law included provisions for the registration and legal protection of trademarks in India. It provided remedies for trademark infringement with an extra focus on civil remedies.

The Trade and Merchandise Act of 1958

The Trade and Merchandise Act of 1958 replaced the Trade Marks Act of 1940 and compiled the laws concerning trademarks and merchandise marks. It introduced criminal provisions against fake trademarks and product descriptions. The act explicitly described the act of infringement as a criminal offence, and prescribed imprisonment and fines. 

The Trade Marks Act of 1999

This law repealed the Trade Mark and Merchandise Act of 1958 and implemented the rules of the World Trade Organization (WTO)’s Trade-Related Aspects of Intellectual Property Rights (TRIPS). The law included “service marks” in the trademark’s definition.

It also provided rules for the protection of well-known and unregistered marks. It further introduced the regulations for the protection of international trademarks under the Madrid Protocol. The law also started the registration of collective and certification marks.

Trade Marks Rule of 2017

The Indian lawmakers established the Trade Marks Rules of 2017 to enhance the customer experience through the digitalization of the trademark registration process. With the initiation of this regulation, the lawmakers introduced the e-filing facility and streamlined the process by reducing the number of forms to 8 from 74. It also started a video conferencing facility for hearings.

Importance of Trademark Protection for Pharma Companies

Discover the importance of trademark protection for pharmaceutical companies as listed-below:

Brand Identity

A registered trademark creates a unique brand identity in the market. It enables pharmaceutical companies to gain customer trust and increase their business revenue. A distinct brand image helps build goodwill in the market.

Enhanced Quality

Trademark licensing ensures a product or service’s quality. End consumers connect a product’s quality with its brand identity, which helps create a distinct image in the market to expand the customer base.  

Exclusive Rights

Trademark protection entitles companies to exclusive rights to their products and services, which helps prevent the flow of counterfeit and duplicate products in India’s diverse consumer market. It also helps brand owners get security in case anybody copies their product.

Legal Protection

A registered trademark entitles its holders the right to file lawsuits in case anybody copies their branded products. A trademark owner can initiate an injunction, claim monetary damages in the form of profit proceeds, and commence a lawsuit for the destruction of duplicate products.

Competitive Advantage

A trademark gives you an advantage over your competitors in the market. The Ⓡ symbol mark can be used to market a product, which would ultimately help you expand your brand in the global market.  

International Brand Expansion

You can use your Indian trademark in the international market by registering it in 131 countries through a single application via the Madrid System of the World Intellectual Property Rights (WIPO). India has been a member of the WIPO since 1975 and assented to the Madrid Protocol in 2013. A unified registration can save cost and time compared to different registrations in individual countries.  

Intangible Asset

A trademark is an intangible asset for a pharmaceutical company, which can help facilitate future business growth. Businesses can sell, assign, or commercialize it, creating an alternate source of income.

Ⓡ Symbol

A product or service with a “Ⓡ Symbol” label will get more recognition as opposed to unregistered brands. The logo signifies that a brand is registered, and any type of unauthorized use would amount to legal disputes and penalties. The symbol also helps the public differentiate brands from those of others in the market.

License & Franchise

Medicine manufacturing businesses can increase their business revenue and profits by tapping into the licensing and franchising market opportunities. A company with good brand recognition can easily get investors and buyers in the market.

Goodwill

Trademark registration helps pharmaceutical companies establish trust and credibility amongst customers in the market. Regular customer and their loyalty towards the product create goodwill. A registered brand with a good reputation can easily acquire funds and loans through credit and financial institutions.

Long-Term Protection

A registered trademark is valid for 10 years, and third parties can’t use it during that period. Any unlawful use would amount to unlimited liabilities, including criminal imprisonment and fines. Owners must renew it within the last six months of the ongoing period. The Indian trademark authority also provides a 6-month grace period after the expiration of the validity.

Key Points of Trademarks for Pharmaceutical Companies

The pre-requisites of trademark protection for pharmaceutical companies are as follows:

1. Similarity in Brand

You must check the brand name, packaging, color, shape, or design to ensure there’s no similarity in the trademark. A similar trademark can easily create confusion in the market, sabotage a company’s goodwill, give rise to unfair business practices, and cause serious health risks for end consumers.

2. Regulatory Approvals

All applicants must obtain relevant drug or healthcare licenses and permits before applying for a trademark registration for their pharmaceutical products.

3. Trade Mark Search

After acquiring a relevant drug license, the next step should be trademark registration. You must conduct a thorough trademark search to detect early infringements and get the desired name per market requirements.  

Pharmaceutical Brand Name Requirements

Take note of the following key points before starting the name search process. Your ultimate objective should:

• Support your marketing strategy.
• Minimize or mitigate the risks of medication side effects or adverse reactions.
• Be acceptable by the CDSCO, International Non-proprietary Names (INN), Drug Controller General of India (DCGI), and Fixed-dose combinations (FDCs).
• Be approved by the Office of the Controller General of Patents, Designs, and Trade Marks (CGPDTM).

Classification for Pharmaceutical Companies: Trademark Class 5

The classification of medication and drug products is done through class 5 of the nice classification as explained below:

• Pharma drugs, medicals, and veterinary preparations
• Sanitary preparedness for healthcare purposes.
• Diet foods and materials accustomed for medical or veterinary use  
• Baby formula or related food items
• Dietary supplements for human individuals and animals
• Medical dressing materials and plasters
• Materials used for dental fillings.
• Dental wax for the formation of dentures and related end products.
• Substances used as disinfectants like ethyl alcohol-based solutions.
• Any type of pesticide, such as rat poison and cockroach sprays
• Chemical solutions are used to eliminate bad fungi.

Goods Excluded from Class 5 Nice Classification

• Meal, protein, diet foods, and beverage substitutes and replacements that aren’t meant for medical or veterinary purposes.
• Cosmetic deodorant sprays
• Supportive or elastic bandages
• Personal hygiene products, such as soaps, shampoos, perfumes, essential oils, creams, and moisturizers

Documents Required for Pharma Trademark Registration

The list of documents required is as follows:

• A complete trademark application Form TM-A
• Identification and address proof of the applicant
• A summary of the trademark under consideration
• List of products and services as per Class 5 of the Nice Classification (NCL) or Vienna Classification (VCL)
• A representation of the trademark in question
• A copy of the company registration certificate
• A power of attorney (POA), required if the application is being filed by an authorized agent.
• A prior use proof, if applicable
• A digital signature certificate (DSC)
• A copy of the drug license of the company
• An affidavit in case the trademark is already in use
• Details and ID of the authorized agent, if any
• Translation into English if the documents are in any other language
• Goods & Services Tax (GST) registration certificate

Process of Pharma Brand Name Registration in India

Have a look at the process of pharma brand name registration in India:

Search on the Trademark Database

All applicants must perform a preliminary trademark search with the Office of the Controller General of Patents, Designs, and Trade Marks (CGPDTM) and the World Intellectual Property Organization’s global database to avoid infringements and fast-track the registration process.

Classification of Products

All products are listed in the Nice classification (NCL). There are 45 classes, including 34 for products and 11 for services. It is important to sort out the products as per the classes before making an application with the CGPDTM. The applicants may use the Vienna Classification (VCL) for shapes, logos, or designs.

Application Filing with Documents

The next step is to file the trademark application with mandatory documents and fee payment, such as a representation and print of the trademark in question, along with a company registration certificate and relevant licenses with the Trade Marks Registry (TMR), formally known as CGPDTM.

Examination

In India, the trademark is examined in two steps. First, the examiner verifies basic details, namely the identification of the applicant and registration fees verification, and then forwards the application to the controller for a substantive examination.

The examination controller then assesses the application concerning the legitimacy of the trademark, whether or not it requires registration, or whether it conflicts with other registered products.

Opposition in the Journal

After the controller’s approval, the trademark is published in the official journal of the Trade Marks Registry to invite third-party oppositions for 16 weeks. Opposing parties can be competitors, previous users, or well-known trademark owners.

Final Approval & Certificate Issue

If no application is filed during the 4-month opposition period, the registry will grant the trademark registration, authorizing the applicant with exclusive rights to the trademark. 

Compliance After Pharmaceutical Trademark Registration

The list of compliance requirements after pharmaceutical trademark registration is as follows:

• Draft a trademark license agreement and include clauses on the ownership, validity, roles, responsibilities, quality, restriction of use, confidentiality, termination, indemnity, liability, dispute resolution, and insurance.
• Notify the Office of the Controller General of Patents, Designs, and Trade Marks (CGPDTM) in case there’s any change in the ownership or list of goods and services of the trademark.
• Pharmaceutical companies must renew their trademarks during the last six months of the ongoing 10-year validity period.
• It is important to inspect any potential infringements, so pharma trademark owners must keep a close watch on their competitors.
• Pharmaceutical companies must work closely with the Indian customs authority to monitor the import and export of their registered products and services.
• All trademark owners should remain 100% compliant with relevant laws, including domestic and international.
• It is mandatory to use the trademark for 5 consecutive years, so all drug companies should maintain a usage record to comply with the rule.
• All Pharma corporations must ensure proper cooperation against trademark oppositions or cancellations.

Cases on Trademark Violation for Pharma Companies in India

Find out the landmark judgements on trademark violations for Pharma Companies in India:

1. Cipla Limited vs M.K. Pharmaceuticals, 2007

Cipla Limited (herein referred to as the plaintiff) filed an injunction against M.K. Pharmaceuticals (herein referred to as the defendant) for producing and selling a drug with the same colour, shape, and packaging.

The plaintiff manufactured a drug named “NORFLOXACIN”, which was oval and orange in colour under the trademark “NORFLOX-400” and used blister packaging.

The plaintiff alleged that M.K. Pharmaceuticals was manufacturing a drug with the same name, color, shape, and packaging, which created confusion in the market.

Since the plaintiff didn’t pursue the case based on the name, the Delhi High Court held that a trademark owner couldn’t monopolize based on the colour or shape of a drug because customers never ask for a medication by its colour, shape, or packaging properties. That oval was a common shape used in medications all across the world. Hence, the Hon’ble Court dismissed the application for an injunction against the defendant (M.K. Pharmaceuticals).

The precedent set by the Delhi High Court: the colour, shape, and packaging properties are completely irrelevant when it comes to differentiating it from that of the others in the market. Name is the only relevant factor for pharmaceutical companies seeking trademark registration.

2. Mankind Pharma Limited vs Novakind Bio Sciences Private Limited, 2023

Mankind Pharma Limited (herein referred to as the plaintiff) filed an injunction against Novakind Bio Sciences Private Limited (defendant) for manufacturing a drug using the term “KIND”.

The Delhi High Court’s single bench granted an ad-interim injunction against the defendant from using the “NOVAKIND” or similar marks.

Aggrieved by the order, the defendant filed an appeal before the dual bench. However, the Hon’ble Court dismissed the appeal and stated that the trademark “MANKIND” had become unique, with over 78 different trademarks for various pharmaceutical products, confirming that the defendant’s use of “NOVAKIND” would likely create confusion in the consumer market due to the use of the similar word “KIND”.

3. Cadila Healthcare Ltd. v/s Cadila Pharmaceutical Ltd, 2001

Cadila Healthcare Ltd. (petitioner) manufactured a drug named FALCIGO” for cerebral malaria-falciparum, and after a year, another company named Cadila Pharmaceutical Ltd (respondent) launched a medicine “Falcitab” for the same ailment, so the petitioner filed an injunction against the respondent in the Vadodara’s district court from using the term “Falcitab”.

The petitioner, in its argument, explained that both drugs were used to treat the same disease with deceitfully similar names. The defendant asserted that the word “FALCI” was derived from falciparum malaria, contending that it is a common practice in the pharma industry.

The Supreme Court of India disagreed with the respondent’s argument and stated that even though both were prescription medications, it wasn’t enough to remove the confusion.

Therefore, the Hon’ble Court dismissed the appeal and upheld the injunction while providing key factors on deceptive similarities between the two pharmaceutical companies as mentioned below:

1. Type of trademark, namely word, label, or combined marks.
2. The degree of similarity.
3. Whether the trademark represents a product or service.
4. The similarity factor concerns the character, nature, and execution of goods of the competitor.
5. The method of ordering and purchasing the product
6. The customer base that would buy the medication
7. Any relevant factor that could help narrow down the dissimilarity between the contending marks.

4. Neon Laboratories Ltd v/s Medical Technologies Ltd. & ors, 2015

The Neon Laboratories Ltd (appellant) filed an application in 1992 for the drug “ROFOL” and was granted registration in 2001 but didn’t launch the product until 2004.

Medical Technologies Ltd. & ors (respondent) introduced a registered trademark medication named “PROFOL” in 1998.

The Supreme Court of India ruled in favour of the respondent and levied an injunction against the appellant’s use of “ROFOL”, concluding that the respondent had a prior use date. They introduced and marketed the drug, which substantially increased their goodwill. 

The precedent: the new mark shouldn’t have descriptive features relating to an exciting trademark.

Challenges Faced by Pharmaceutical Companies in TM Filing

Discover the common challenges and obstructions faced by pharmaceutical companies in TM filing:

1. Complex Legal Regulations

Navigating legislation can be challenging if you’re not from a legal background. The name search is extensive and requires checks with several authorities, such as CDSCO, INN, DCGI, and FDCs.

2. Lengthy Process

The registration process is lengthy and time-consuming, which could create a hurdle for companies seeking fast-track approval. The entire process takes around 10 to 12 months, including a four-month opposition period. 

3. Heavy Regulatory Compliance

Pharmaceutical companies are required to obtain various licenses and permit approvals, such as individual drug licenses, quality checks, and clinical trials for consumer safety. All of these compliance requirements can potentially delay the trademark registration process and the ultimate entry of the product into the market.

4. Similar Trademarks

This is one of the most common barriers that companies face while acquiring a trademark. Most drug names are derived from similar chemical formula combinations and diseases, which can lead to infringement disputes and opposition, ultimately delaying the registration process of new products.

5. General & Descriptive Terms

The use of general terms for diseases and organs isn’t allowed as per the Trade Marks Act of 1999. Using descriptive terms to describe ingredients is also deemed invalid under the law. These limitations can lead to the scarcity of brand names for pharmaceutical companies.

6. Supply Chain Obstructions

India’s dependency on raw materials, such as Active Pharmaceutical Ingredients (APIs), Key Starting Materials (KSMs), and other related materials to manufacture drugs, makes it prone to international supply chain obstructions, which could also impact brand registration. Currently, India relies on China, the United States of America (USA), the United Kingdom (UK), and Germany for the import of key resources.  

Conclusion

To wrap things up, it is clear that it is highly important for pharmaceutical companies to obtain a trademark because of various factors such as market competition, customer safety, regulatory compliance requirements, and the prevention of medical errors. If a company is operating without a trademark in 2025 is most likely to lose clients and credibility in India’s pharmaceutical sector.

Acquiring a pharmaceutical trademark requires defeating barriers, such as long process, complex legal compliance, fund scarcity, and similarity issues, and pharmaceutical companies can overcome the many obstructions in the roadway to achieve great success and huge profits by leveraging India’s significant and top industry sector, which can be achieved by obtaining professional support for trademark registration.

Why Choose Enterslice for IP Services for Pharmaceutical Companies? 

• 10+ years of expertise in IP registrations.
• In-depth legal knowledge in domestic and international pharmaceutical laws
• We have a network of 250+ trademark attorneys and IP litigators
• Worldwide coverage
• We provide real-time tracking of trademark registration application status
• Compliance alerts throughout the registration validity and renewals.
• We have helped protect over 2,000 pharma trademarks and advised several companies on defensive brand strategies and enforcement. 

Contact now and get expert guidance on Pharma trademark protection in India, visit https://enterslice.com/.

Frequently Asked Questions