Source: www.delhihighcourt.nic.in
Introduction
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[1]:
- 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.
Plaintiff’s Contentions
- 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.
Defendant’s Contentions
- 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.
Court’s Decision
- 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.’
[1]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.
.
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