Trademark Infringement, With a Cherry on Top

On 24^th June, 2015, in an interlocutory application, the Bombay High Court made a distinction between usage of the word ‘Cheri’ with respect to pharmaceutical preparation and ‘Cherry’ with respect to a dietary supplement, holding that there was no  trademark infringement. The order is available here.

The plaintiffs, Indchemie Health Specialists Pvt. Ltd, were registered proprietors of the trademark ‘Cheri’, used in haematinic preparations for iron deficiency, sold in the form of syrups, tablets and capsules. The trademark was in use from 1987. It is worth noting that when they applied for registration of the trademark, it was objected to by the Registry on the ground that it the word cherry is a descriptive term and it does not acquire distinctiveness merely by changing the spelling to ‘Cheri’. However, the trademark was registered when the plaintiffs agreed to restrict the trademark only with respect to pharmaceutical preparations (and drop medicinal preparations from within its ambit). This restriction was done by virtue of the Registrar’s power under S.18(4) to accept applications for trademark subject to conditions and limitations.

The Defendants, Intas Pharmaceuticals, produced a dietary supplement called ‘Multi Cherry’.  It was not a pharmaceutical preparation, but a proprietary food which was to be consumed as advised by a dietician. It was regulated under the Food Safety and Standards Act, 2006 and not the Drugs and Cosmetics Act.  The Court held that given that the plaintiffs had specifically relinquished their trademark over other medicinal preparations, they cannot enforce a trademark with respect to goods outside the class in which the trademark was registered.

The primary issue here is the relationship between S. 18, S.28 and S.29 of the Trademarks Act. According to S.28(1), the registration of a trademark gives the proprietor the exclusive right to use the trademark in relation to goods or services in respect of which the mark is registered. Note that in this case, the class of goods or services for this trademark was curtailed by the Registrar by virtue of S.18. However, the infringement analysis under S.29 is wider- S.29(2)(b) considers “similarity to the registered trade mark and the identity or similarity of the goods or services covered by such registered trade mark to be infringement, provided that there is likelihood of confusion on the part of the public. Therefore, while S.28 seems to confer an exclusive right with respect to a certain class of goods, S.29 covers uses which are identical or similar to goods or services covered by the registered mark.  The Court considered whether S. 29 is applicable by virtue of the goods being ‘similar’. It held that in the present case, as the trademark was registered exclusively for pharmaceutical preparations and the proprietors of the mark had specifically relinquished their claim on a broader class of goods, the word ‘similar’ must be construed narrowly. The Court considered the facts that the pricing of the two products were different and one was to be consumed “as directed by the physician” and the other to be consumed “as directed by the dietician”, and held that this was sufficient evidence that the goods were not similar.  However, the Court also opined that similarity is considered from the eyes of the consumer but held that the above facts are sufficient to prove that there is no likelihood of confusion either.

This interesting decision raises three questions: Firstly, whether the term ‘similarity’ under S.29 is controlled by S.18 and S.28? That is, whether the term can be construed narrowly if the Registrar had granted the trademark only with respect to a narrow class of goods? Secondly, and related to the first, whether a greater degree of likelihood of confusion is likely to offset such a narrow interpretation of ‘similarity’? And thirdly, if the Court’s reasoning that ‘similarity’ must be understood in light of likelihood of confusion, whether there was such likelihood in the instant case?

I would answer all three questions in the affirmative. If we were to honour the Registrar’s intention that a trademark is used only with respect to a narrow class of goods (because it would otherwise be too descriptive to be a trademark), we should read ‘similarity’ in a narrow fashion as well. An analogous concept in Patent law is Prosecution History Estoppel, according to which claims that are relinquished at the patent prosecution stage in order to make the invention fit into the criteria for patentability cannot later be included as part of the invention in a suit for infringement. However, patent law and trademark law serve very different functions, and therefore, that is where the analogy must end. In trademark law, the primary function is to protect unwary consumers with average intelligence and imperfect recollection (as held by the Supreme Court). What happens in the prosecution history is of little relevance if the likelihood of confusion is high.

In this case, I would argue that there was a high likelihood of confusion- consumers are unlikely to make a nuanced distinction between physicians and dieticians mentioned in fine print on a bottle. Nor is the consumer likely to know the difference in the regulatory laws that apply to both products. Further, both products were sold through chemists, and were manufactured by pharmaceutical companies. It is established that a higher standard be applied for likelihood of confusion in trademarks involving medicines, given the potential for unpleasant consequences.

However, I cannot deny that the questions raised in this case are quite interesting, and I am very much open to correction on my reasoning. Please let us know your thoughts in the comments.