The Intellectual Property Tribunal Decisions are binding on Regulatory Authorities like DRAP and the Drug Registration Board --- Islamabad High Court, Islamabad

Islamabad 30-12-2024: In a significant ruling, the Islamabad High Court (IHC) set aside the registration of the drug FERIJET, citing trademark infringement and consumer safety concerns. The judgment reaffirmed the supremacy of intellectual property rights in the pharmaceutical sector and highlighted the responsibilities of regulatory authorities to harmonize drug registration with trademark laws.

The dispute arose between Vifor (International) AG (the petitioner) and the Drug Regulatory Authority of Pakistan (DRAP), alongside other respondents, over the registration of the drug FERIJET, manufactured by Respondent No. 4. The petitioner argued that FERIJET’s name was deceptively similar to its own drug, FERINJECT, which was a registered trademark under the Trade Marks Ordinance, 2001.

An Intellectual Property Tribunal (IPT) had previously ruled in favor of the petitioner in 2018, declaring FERIJET as deceptively similar to FERINJECT and prohibiting its manufacture and sale. Despite this ruling, the Drug Registration Board (DRB) and Drugs Appellate Board (DAB) refused to cancel FERIJET’s registration, prompting the current Writ Petition.

The Court was tasked with addressing:

1. The harmonization of the Drugs Act, 1976, DRAP Act, 2012, and Trade Marks Ordinance, 2001.
2. Whether the findings of the Intellectual Property Tribunal were binding on DRAP and DRB.
3. The impact of trademark infringement on public health and consumer safety.

Mr. Justice Babar Sattar ruled in favor of the petitioner, emphasizing several key principles:

1. The Intellectual Property Tribunal’s decision declaring FERIJET deceptively similar to FERINJECT was binding on DRAP and DRB. Regulatory authorities cannot override judgments issued by competent Courts on intellectual property matters.
2. The Court highlighted the critical importance of avoiding consumer confusion in pharmaceuticals, which can lead to severe or fatal consequences. It stressed that stricter standards must be applied when dealing with trademarks in the healthcare sector.
3. The Court found no conflict between the Trade Marks Ordinance and the Drugs Act. It ruled that the Trade Marks Ordinance, being the special law, prevails in matters of trademark infringement.
4. The judgment underscored the necessity of prioritizing public health over commercial interests in cases involving pharmaceutical products.

The Court annulled the Drug Registration Board’s orders dated July 29, 2021, and the Drugs Appellate Board’s decision of July 18, 2022. It directed the cancellation of FERIJET’s registration under Section 7(11)(b) and (d) of the Drugs Act, 1976. Additionally, the Court ordered Respondent No. 4 to change the tradename and trademark of the drug.

A cost of Rs. 50,000 was imposed on Respondent No. 4, payable to the petitioner within four weeks.

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