In a recent case filed by Ajanta Pharma Ltd (hereinafter referred to as the “Plaintiff”) before the Bombay High Court (hereinafter referred to as the ‘Court’) seeking an injunction restraining Theon Pharmaceuticals (hereinafter referred to as ‘Defendant No. 1’) and Intas Pharmaceuticals (hereinafter referred to as ‘Defendant No. 2’) (collectively referred to as the Defendants) from infringing and passing off its mark “FERANTA”, the Hon’ble Court vide order dated May 5, 2017 held that there was no prima facie case made out by the Plaintiff, and dismissed the present notice of motion filed by it against the Defendants.
The Plaintiff obtained for registration of the mark FERANTA under Application no. 1652066, on February11, 2008 in class 05 for pharmaceutical, medicinal and veterinary preparations. The Plaintiff has used the mark since 2013 for L-Methyfolate Calcium, Pyridoxal 5'- Phosphate, Methylcobalamin, Ferrous Ascorbate and Zinc Sulphate pharmaceutical tablets. The Plaintiff claims that it has had considerable sales of INR 88.21 lakhs (USD 136805 approx.) in 2015-16, and has run up promotional costs as well. The Plaintiff claims that in or around July, 2016, it discovered the Defendant No. 2’s Ferrous Ascorbate and L-Methyl Folate tablet under the FERINTA mark (now abandoned), with a suffix 'XT', which was being sold as a dietary supplement. It further discovered that the Defendant No. 2 had applied for registration of its mark under application number 2969381, in the same class as that of the Plaintiff. The Registrar objected to the application, citing the Plaintiff’s prior registration of FERANTA as a conflicting mark. On that objection, the Defendant No. 2 made another application on April 15, 2016 under no. 3235362 for the mark FERINTA XT. On August 11, 2016, the Hon’ble Court granted ex-parte ad interim injunction in favour of the Plaintiff directing the Defendant No. 2 to cease usage of FERINTA. On September 1, 2016, the Defendant No. 2 agreed to cease usage of FERINTA, and would instead use the mark INTAS’ FERINTAS, with INTAS’ set above the word FERINTAS, with the letter FER in black, and the rest in a rust red color and FERINTAS set in an oval lozenge device.
Defense taken by the Defendants:
· That the Plaintiff has itself copied the trade mark from another party, and therefore cannot institute action against the Defendant No. 2.
· That the Plaintiff’s products are sold as pharmaceutical drugs, whereas the Defendant’s products are sold as dietary supplements.
· There is honesty in adoption of the trade mark, with FER- being derived from FERrous, and INTAS from the Company name.
· That the present case does not fall under the ambit of Section 29 (1) but rather Section 29 (2) of the Trade Marks Act, 1999. The goods manufactured by the Plaintiff and the Defendant No. 2 cannot be conflated as Class 05 has a wide sweep, as if a party has only manufactured pharmaceutical drugs and not dietary supplements, there cannot be any likelihood of confusion. In other words, for a case falling under Section 29 (2) of the Trade Marks Act, 1999, mere similarity of marks is insufficient, and must be accompanied by a similarity or identity of goods; and even that will not completely fulfil the requirements of Section 29 (2), for a likelihood of confusion must be shown.
· That the Plaintiff has not copied anyone’s mark, and the mark FERANTA lapsed in 1989 and was filed on a proposed to be used basis.
· That the two products have precisely the same ingredients and serve exactly the same purpose. According to the Nice classification, pharmaceuticals include dietary and meal supplements and dietetic foods adapted for medicinal use (but, importantly, does not include meal supplements and dietetic foods not for medicinal use).
· The contents or ingredients are the same, as are the trade and marketing channels and the consumer base. Any difference is formulation is trivial, as both products are vended to treat anemia.
· The Plaintiff states that a party cannot slither around in Class 05 by saying its mark, though in that class, is for a different sub-class or sub-species. The test in law speaks to the existence of rival marks in a class, not in a sub-classification. A classification or sub-classification in any case is never as important as the manner of use. What the law prevents is a rival from adopting a deceptively similar mark.
· That honesty in adoption is irrelevant, and in any case, there is no honesty on the part of the Defendant for adoption of the said mark, as the Defendant was well aware of the Plaintiff’s prior registration and its mark inter alia from the Registrar's citing of the Plaintiff’s mark as a conflicting mark.
· The Plaintiff submits that the deconstruction of the mark into separate names and explaining how the trade mark is formed is wholly irrelevant to the present case.
· The Court observes that the two marks have to be seen as a whole and not separately. Therefore, the Plaintiff’s submission that the Defendant’s mark should be considered without INTAS is dismissed. Furthermore, the Court held that looking at the two marks as a whole, there is no doubt that there is, in the words of the Supreme Court in JR Kapoor v Micronix India [1994 Supp (3) SCC 215] not the remotest chance of buyers and users being misguided or confused.
· The Hon’ble Court observed that one must guard as much against an approach that is overbroad, and sweeps in all manner of goods easily distinguished, and one that is much too narrow. Given the similarity of marks, the next step would then be to test similarity of goods. The Defendant No. 2’s product is not adapted for medical use. The Hon’ble Court further observed that the NICE classification (2016 version, 10th edition), in its entry for Class 5, says the class does not include meal replacements, dietetic food and beverages not for medical or veterinary use. If the Defendant No. 2’s product is such a dietetic food, then that may be another point of distinction. The Hon’ble Court held that the two marks were sufficiently distinguishable.
· The Hon’ble Court observed that the Defendant’s products did not harm the public in general and did not warrant an injunction to preserve the public interest.
· The Hon’ble Court also observed that there is a well-established sequence in which a claim in infringement and passing off (or either) should be examined. Though the causes of action are distinct, some of their tests overlap common to both is this sequencing:
o Are the marks identical?
o If not, are they similar;
o What is the nature and degree of similarity;
o What goods or services are they being used on or for?
o Are those goods or services identical, or similar?
The Hon’ble Court stated that answers to these questions, in various permutations, yield a result. However, the Hon’ble Court stated that it is possible to invert this paradigm, and suggest that because the goods are either the same or similar, therefore one must work backwards to conclude that the marks must be similar, or held to be similar, and therefore, infringement and passing off must both be presumed. Identity or similarity of marks must be the first test, not the assumption, and we proceed to the goods or services from there, not the other way around.
“It is not possible to hold that a prima facie case is made out. The Motion fails. It is dismissed. There will be no order as to costs.”