In this Notice of Motion, the Bombay High Court considered the question of deceptive similarity, acquiescence and balance of convenience and decided in favour of the plaintiffs on all questions.
Background:
The plaintiff, EMCURE Pharmaceuticals, registered the marks OROFER and OROFER- XT in October, 1996 as word marks in Class 5 (medicinal or pharmaceutical preparations for iron deficiency, anaemia, etc.). The product in question is a film coated tablet or capsule prescribed as an iron supplement by orthopaedics and folic acid and vitamin B supplement by gynaecologists. In January, 1997 the plaintiff obtained a license from the FDA, Maharashtra for the manufacture of the drug which began in later in that same year.
On 10th January, 2006 the Plaintiff noticed the Defendant, Corona Remedies Pvt Ltd’s advertisement in the trademark journal no 1371 for the registration of the trademark COROFER also in Class 5. It then sent a cease and desist notice to the Defendant on 17th December, 2007 and opposed their registration application on 20th December 2007. A second cease and desist notice was sent to the defendant’s on 26th June, 2009 and finally filed a suit for infringement on 7th September 2013. The present decision of the court was in pursuance of a Notice of Motion for interim relief injuncting the defendants from manufacturing and/or marketing and/or trading in and/or advertising and/or otherwise dealing in any pharmaceutical product bearing the impugned trademark.
Prima Facie Case:
The court broke down the enquiry into a prima facie case into 4 main issues. I will follow the same for the purpose of this analysis:
a) First, are the Defendant’s marks deceptively similar to those of the Plaintiff?
The test for deceptive similarity, the court stated, is to “juxatopose the two marks and then ask what might the likely effect on the mind of a person of average intelligence and imperfect recollection?” Based on this test, the court found that where the entire mark is incorporated in the rival mark, deceptive similarity is established. It noted that apart from the addition of the letter C, the plaintiff’s marks were ‘entirely subsumed in the Defendant’s rival marks.’ It applied the test of phonetic similarity (relying on Charak Pharma Pvt. Ltd. v Glenmark Pharmaceutical Ltd., and further noted that on this test there can be no doubt that the defendant’s marks are deceptively similar to the plaintiffs.
Relying on Cadila Heath Care Ltd., the court also held that regard must be had to the fact that English is not the lingua franca in our country, the enormous differences in pronunciation across the country, the ‘easygoing and laissez-fairre approach to communication’ in answering the question of deceptive similarity.
(b) Second, is the fact that there are other marks with the word (or letters) “FER” determinative, in that the use of this word or abbreviation by the Defendant cannot be said to constitute an infringement of the Plaintiff’s marks?
The court deemed that the fact that there might be other marks with the word ‘FER’ in them to be ‘inconsequential’. The fact that the defendant itself has sought registration for a mark containing this expression would preclude them from arguing a lack of distinctiveness.
(c) Third, if it be shown that the Plaintiff is not the first user of such a mark, does this furnish a valid defence?
The Defendant argued that ‘Advent Laboratories’ was a prior user of the mark with a registration dating back to 24th September, 1985. However, the Plaintiff argued that there is no evidence of actual user by this company. More importantly, the Trademark Act contemplates the coexistence of multiple simultaneous proprietors of a single mark [Section 28(3) and Section 12 of the Act] and each of these proprietors, while they have no rights of exclusivity inter se, has full rights conferred by the Act against any third party.
(d) Fourth, is the Plaintiff’s claim defeated by delay if such a delay is proved? Is Section 33 of the Act limited to a later registered trade mark?
The court, citing Midas Hygiene Industries P. Ltd. & Anr. vs. Sudhir Bhatia and Charak Pharma Pvt. Ltd, stated that it is firmly settled law that ‘mere’ delay will not defeat the rights of a registered proprietor. It held: “A mere failure to sue without a positive act of encouragement is no defence and is no acquiescence.”
The court, holding that acquiescence requires positive acts and is not mere negligence or oversight, stated that: “Essential to the acquiescence doctrine is that it is accompanied by encouragement or an inducement: he who posses a legal right must have encouraged the alleged violator of that right in acting to the latter’s detriment, confident in the knowledge that the former is not asserting his rights against the violator.” It held that silence is not sufficient to establish acquiescence.
As to the Defendant’s prior user since 2001, citing Win Medicare v. Somacare Laboratories Ltd, the court further held that the burden of showing honesty of its concurrent user lies with the defendant. It evaluated the evidence and found that the defendant had not introduced sufficient evidence (in particular, the sales figures) to prove their claim or either prior user or concurrent user.
Finally, the Defendant argued that Section 33 applies to unregistered marks since the existence of Section 28 would otherwise render Section 33 redundant by any other interpretation. The court rejected this argument, observing instead that “Section 33 operates in a well-defined and circumscribed set of circumstances. It cannot possibly oust every other plea of acquiescence.”
Balance of Convenience:
The court, citing Cadila Heath Care Ltd. again,stated that the court must function as ‘sentinels’ in matters involving pharmaceutical products owing to the ‘overarching public interest that requires a lower threshold of proof of confusing or deceptive similarity.’ Noting the paramount importance of quality even for innocuous drugs, the court stated the balance of convenience is not limited to that of the two parties in court, but rather includes the ‘balance of public convenience.’
