Trademark registration guarantees the proprietor certain set of exclusive rights. These exclusive rights not only provide a unique trade identity to the proprietor, but also ensures that nobody else violates these rights, misuses, or copies the trade name or trademark in any manner. In legal terms, violation of the exclusive rights attached to a registered trademark without the authorization or licensees from the proprietor is termed as trademark infringement. To prove trademark infringement in India, the Court considers several factors. Some of these factors are:
- The degree of similarity between the two marks: In this factor usually, the Indian Courts compare the marks in question and take note of the resemblance between the marks in question, phonetic, or visual or similarity in idea. The deciding element of similarity is the mind of consumer having average intelligence.
- Presumption of Confusion: Once a brand enters in the market and establishes itself, it leaves an impression in the minds of the people. The consumers start associating the registered mark to the brand for which it is used. In such a case, when any other entity or individual uses a similar or identical mark in order to confuse the consumer regarding the origin of the good, is when this factor is proved. A deceptive mark can be said to be such a mark, which is likely to cause confusion in the minds of the buyer.
- Reputation of the Registered mark: This factor looks at the level of popularity that the registered mark has achieved within the territory of India.
- Usage with or without authorization: The Court would take note of the fact that the application of the mark was without proper authorization or license from the registered proprietor and the alleged infringer had full knowledge of this fact.
- Comparison of the two marks in totality: The Courts have repeatedly reiterated that, in case of trademark infringement the marks in question would be considered in totality and not in parts.
- Prior use: Another important and deciding factor would be ‘prior use’ of a trademark. This is a defence in infringement cases. The rights of a prior user of the mark are kept on a higher pedestal than even that of the proprietor of a registered trademark. The Court would consider which party had been using the mark earlier than the other.
The Delhi High Court on February 19, 2018 in the case of Sun Pharma Laboratories Ltd v. Lupin Ltd & Anr, held that, ‘it is a settled legal position that while comparing the trademarks, the marks have to be taken as a whole. Merely because the Defendant was using a part of the mark earlier cannot be a ground to plead trademark infringement’. The Court further clarified that the mark cannot be split and then compared, as is sought to be done in this case.
Facts of the Case
- Sun Pharma Laboratories (hereinafter referred to as ‘the Plaintiff’) is a wholly owned subsidiary of Sun Pharmaceutical Industries Ltd. and in order to strengthen its organizational structure of Domestic Formulation Undertaking, Sun Pharmaceutical Industries Ltd. vide Scheme of Arrangement, spun off its domestic formulation division undertaking including intellectual property thereof to the Plaintiff.
- On May 5, 2013, the Bombay High Court approved the above Scheme of Arrangement, because of which the Plaintiff became the proprietor and owner of all the IP rights of Sun Pharmaceutical Industries Ltd. for the domestic formulation undertaking activities.
- The Plaintiff thus recorded itself as the subsequent proprietor of the trademarks with the Trade Marks Registry.
- One of the medicine, used for treatment of non-insulin diabetic patients, of the Plaintiff is marketed under the trademark TRIVOLIB, which according to Plaintiff, is a coined mark.
- Lupin Ltd. (hereinafter referred to as ‘Defendant No.1’) markets the medicines manufactured by Defendant No.2.
- In the third week of September 2014, it was found by the Plaintiff that the Defendants are marketing its medicine under the mark TRI-VOBIT 1 and TRI-VOBIT 2 (hereinafter referred to as ‘impugned marks’) in Delhi. The composition of the medicine was also alleged to be similar.
- According to the Plaintiff, the impugned marks are phonetically and deceptively similar to the Plaintiff’s registered mark TRIVOLIB. The Plaintiff filed the present suit as the actions of the Defendants constituted infringement, passing off and unfair competition.
- The Plaintiff contends that the mark TRIVOLIB was coined by it in August 2011 and is used extensively since then. The trademark TRIVOLIB is also registered in Class 5 vide registration dated August 12, 2011.
- It was submitted by the Plaintiffs that from October 1, 2011 till March 3, 2012, it had sold products worth INR 2,86,00,000 (USD 440,440 approx.). From April 1, 2012 to March 31, 2013, the sale figure jumped up to INR 13,39,00,000 (USD 2,062,060 approx.). Further, the sales increased up to INR 24,39,00,000 (USD 3,756,060 approx.).
- It further submitted that the consumers at large distinguish, identify, and associate TRIVOLIB with the Plaintiff. In addition, it pleaded that the mark is a well-known trademark in India.
- It was alleged that the Defendants have adopted the impugned trademarks having seen the success of the Plaintiff’s medicine without any reason.
- It pointed out that the search by the software of the Plaintiff did throw up TRI-VOBIT 1 and hence the objections were filed. Since the software did not throw up the name of TRI-VOBIT 2, the filing of opposition regarding the same was missed. However, it has applied for cancellation of the said trademark to the Trade Marks Registry.
- It submitted that no case for trademark infringement is made out, as it is the registered proprietor of the mark TRI-VOBIT 2 in Class 5.
- With respect to the allegation of passing off, the Defendants submitted that the Plaintiffs have failed to establish the acquired goodwill in the mark TRIVOLIB. Therefore, the case of passing off is not made out.
- It stated that it has launched the mark TRIVOLIB in October 2012. Further, it was contended that the Defendant No. 1 is the registered proprietor of the mark VOBIT, which was bona fidely adopted prior to the Plaintiff. The trade mark VOBIT was used for the first time by the Defendants in 2008 whereas the Plaintiff has been using the trade mark TRIVOLIB since August 2011, only the word TRI has been prefixed to the word VOBIT since October 2012.
- The word TRI in the mark signifies a combination of three drugs, which in the present case were Voglibose, Metformin Hydrochloride and Glimepiride
- It pointed out that the Plaintiff themselves stated that they have no objection to the Defendants using the trademark VOBIT or from the Defendant using the prefix TRI. Hence, it was pleaded that the Plaintiff had no right to seek injunction against the combination of TRI and VOBIT.
- It threw light on the fact that the Plaintiff only opposed the trademark application for the trademark TRI-VOBIT 1. They never filed an opposition to application for registration of mark TRI-VOBIT 2. Hence, they contended that the Plaintiff could not now turn around and say that they have rights in the said trademark.
- The Court pointed out that when the suit was filed the trademark of the Defendants TRI-VOBIT 2 was not registered. It was registered about 14 days after filing of the suit. It opined that ‘mere moving of an application, for revoking the registration of the trade mark in favor of the Defendant, by the Plaintiff before the Trade Marks Registry would not confer any rights for the present on the Plaintiff.’
- It held that if the essential ingredients of passing off were made out, a suit for passing off would lie against the Defendants, despite registration of the trademark TRI-VOBIT 2.
- The Court agreed that the Plaintiff was a prior user of the trademark TRIVOLIB. It commenced use of the trademark in October 2011. The sales documents placed by the Plaintiff were also took into consideration by the Court. With respect to the Defendant, the Court pointed out that no other details were given, except the commencement of usage of its trademark TRI-VOBIT only in October 2012 and having sold over 15 lakh strips. Therefore, the Court held that the Plaintiff has made out a prima facie case of having built substantial goodwill and reputation in the market. The Plaintiff is a much prior user of the brand TRI VOLIB and has vested rights in the said trademark.
- With regards to ‘Deceptive Similarity’ between the marks, the Court reiterated that the test is to see as to whether the essential features of the trademark of the Plaintiff have been adopted by the Defendants. It held that ‘the trade mark of the Defendants TRI-VOBIT is prima facie phonetically and structurally similar to the trade mark of the Plaintiff TRIVOLIB. Further, the two drugs of the parties are for the same ailment. The likelihood of confusion cannot be ruled out. There is no merit in the contentions of the Defendant to the contrary.’
- The Court also clarified that while comparing the trademarks, the marks have to be taken as a whole. The plea of the Defendant as being the prior user of the mark is completely misplaced. It held that ‘VOBIT has to be compared with TRIVOLIB. When we compare the two words, it is manifest that TRI-VOBIT is structurally and phonetically similar to the trademark of the Plaintiff TRIVOLIB. Merely because the Defendant was using VOBIT earlier cannot be a ground to plead that the words have to be split and then compared as is sought to be done.’
Please note that the factors are only illustrative. It is not necessary that all the factors are considered while determining similarity of marks. Every case would be measured on its own facts, circumstances and evidences. Where a totality of circumstances indicates trademark infringement it will be enough to get the remedies.