Introduction
Delhi High Court has laid down a strict test for comparing trademarks related to medicinal goods in the case of FDC LIMITED v. NILRISE PHARMACEUTICALS PVT. LTD. AND ANR.[1] In the instant case, the court examined the trademarks of both the parties being used for the drug, which is used to cure conditions like pneumonia, sinusitis, cystitis and ear infections. The court reiterated that when a mark is being examined, especially for a medicine/drug, it should be looked at from the point of view of an unwary purchaser of average intelligence and imperfect recollection.
Facts of the Case
The plaintiff (FDC Limited) conceived the mark “ZIPOD” in the year 2004 and has been using the same since 2007. The mark “ZIPOD” is in use with respect to cefpodoxime-based antibiotic and antibacterial preparations. The preparation is used to treat conditions like pneumonia, sinusitis, cystitis and ear infections. The said products are available in a dry syrup form, tablet and dispersible tablet. Further, the mark “ZIPOD” has been registered in the name of the plaintiff by the Trade Marks Registry of India. On the other hand, Defendant (Nilrise Pharmaceuticals Pvt. Ltd.) has registered the mark “ZOYPOD” for the pharmaceutical product containing the active pharmaceutical ingredient Cefpodoxime Proxetil.
In January 2022, the plaintiff gained knowledge about the defendant’s mark “ZOYPOD”, and immediately served a cease-and-desist notice along with filing an application for rectification of the mark “ZOYPOD” in the Trade Marks Registry.
Issue before the Court
The moot issue, in this case, is whether the mark “ZOYPOD” is deceptively similar to the mark “ZIPOD” under Section 11(1) of the Trade Marks Act, 1999?
Rules and/or Law under Indian Trademarks Act, 1999
Section 11(1) of the Indian Trademarks Act, 1999 (hereinafter “the Act”) states that if a mark is identical with or similar to any earlier mark in respect of an identical or similar description of goods or services, then, in that case, there exists a likelihood of confusion on the part of the public and such mark shall not be granted protection/registered.
Further, in Narayanan on Trade Marks, the rules of comparison state, “The visual, aural and conceptual similarities of the marks must be assessed with reference to the overall impressions created by the marks bearing in mind their distinctive and dominant components.”
Thus, the court applied the rule and/or law in the present matter in light of the legislative intent as well as the precedent set by the Supreme Court and High Courts of India.
Contentions of the Plaintiff
The plaintiff asserted that not only the defendant’s mark “ZOYPOD” is phonetically and visually similar to its own mark “ZIPOD” but the goods are also overlapping with the plaintiff’s. The word “POD” appears only in the middle of the Cefpodoxime and the use of the same cannot be common to trade relating to pharmaceutical products. Furthermore, the plaintiff asserted that being the prior adopter of the mark “ZIPOD” since 2004, the plaintiff is the bona fide adopter and prior owner of the said mark.
Contentions of the Defendant
The defendant asserted that the term “POD” used in the mark is generic in nature and is derived from the common molecular name i.e., Cefpodoxime, which falls in the list of International Nonproprietary Names (INN) and is used to treat bacterial infections. Therefore, no one can claim an exclusive right over the same or over any other mark having “POD” either as a prefix or suffix. Further, the defendant contended that both the marks are phonetically and structurally different and had put its reliance on the examination report issued by the Trade Marks Registry, which while examining the trade mark application of the defendant for registration of the above-mentioned mark, did not cite the plaintiff’s trade mark as a conflicting trade mark for raising objections under Section 11 of the Trade Marks Act. Furthermore, the defendant asserted that since the drugs in question are Schedule “H” drugs, they are only available on prescription. Moreover, the packaging of the same is also different. Thus, the defendant is bona fide owner of the mark “ZOYPOD”.
Observations of the Court
After hearing both the parties’ arguments, the court observed the following.
The court placed its reliance on the Supreme Court’s judgement, “Amritdhara Pharmacy v. Satya Deo Gupta[2] for comparing the two marks “ZIPOD” and “ZOYPOD”, wherein it was held,
“Such medicinal preparation will be purchased mostly by people who instead of going to a doctor wish to purchase medicine for the quick alleviation of their suffering, both villagers and townsfolk, literate as well as illiterate. A critical comparison of the two names may disclose some points of difference, but an unwary purchaser of average intelligence and imperfect recollection would be deceived by the overall similarity of the two names having regard to the nature of the medicine he is looking for with a somewhat vague recollection that he had purchased a similar medicine on a previous occasion with a similar name. He would go more by the similarity of the two names in the context of the widely known medicinal preparation that he wants for his ailments”
The Court also considered the case of, “Corn Products Refining Co. v. Skangrila Food Products Ltd.”[3], wherein it was held that “the question has to be approached from the point of view of a man of average intelligence and imperfect recollection.”
Thus, by applying the test laid down in the above-mentioned cases, the court opined that prima facie the mark of the plaintiff “ZIPOD” and the mark of the defendant “ZOYPOD” are phonetically similar.
Further, the court contended that when the two marks are appeared to be deceptively similar, the prior adopter of the mark is entitled to the protection of its mark from infringement thereof in terms of Section 29(2)(b) of the Trade Mark Act, 1999 (the Act). Since the plaintiff is the prior adopter of the mark, therefore, he accrued the rights under Section 29(2) of the Act.
With regard to the submission of the defendant regarding the mark “ZOYPOD” has been derived from the molecular name i.e., Cefpodoxime, the court held that since “POD” appears in the middle of the molecule name, it is neither the opening nor the closing part and is the irrelevant part of the said molecular name.
With regard to the submission made by the defendant regarding the drug being “Schedule H”, the court put its reliance on “Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd.[4]”, wherein it was held that, “To say that the medicinal preparations in the present case being “Schedule-H” drugs requiring a prescription, no confusion would arise, would be limiting the test. As observed in several other cases, such as USV Limited v. IPCA Laboratories Limited[5], a mistake can occur while reading the prescription on account of the similarity of the names.” In light of this, the court rejected the submission made by the defendant in this regard.
Further, the court stated that the defendant did not disclose the number of sales made by them using the impugned mark nor of any advertisement expenses incurred by them in promoting the said mark.
Judgment of the Court
After examining the facts and circumstances of the present case, the court held that “Each mark of the defendant has to be tested on its own standing. Merely because the defendant uses the prefix “ZOY” for its other medicinal preparations, it cannot be allowed to use the impugned mark even though the same is found to be deceptively similar to an already registered mark with prior use. Since the products in question are medicinal products, the test to be applied needs to be far stricter than the one applied to other goods, as any confusion would result in public injury. In the present case, since the defendants have not been able to satisfactorily show that they are the user of the impugned mark since 2014, and even otherwise would be the later entrant into the market, and the two marks are phonetically and visually similar, the use of the impugned mark of the defendants “ZOYPOD” is liable to be restrained.”
Conclusion
This case has again touched upon the issue of the two marks being deceptively similar to each other under Section 11(1) of the Trade Marks Act, 1999. Since the two marks in question relate to medicinal products, the Delhi High Court has examined the same in a strict sense by applying the test of deceptive similarity laid down by the Apex Court in the case of Amritdhara (supra).
However, there are several cases, wherein the court has stated that the two marks should be seen/tested by the common prudence man and if there is a slight possibility of confusion, the marks are termed to be similar to each other. In the recent case, “Mondelez India Foods Pvt. Ltd. And Anr. V. Neeraj Food Products”[6], the Delhi High Court has held that, “The test in such a matter is not that of absolute confusion. Even the likelihood of confusion is sufficient. The class of the consumers that the product is targeted at should be of prime focus while deciding deceptive similarity of the two marks.”
Since, the two marks in question relate to medicinal products, which make this case more significant to the public at large and relevant to the socio and economic significance of the Indian pharmaceutical market. Though the legal precedence has already been laid down by the various other judgments, the present case has given a strict interpretation of the same, wherein, it is emphasized that the test to be applied in such cases should be far stricter than applied in other goods, as any confusion would result in public injury.
References:
- https://www.livelaw.in/news-updates/test-comparing-trademarks-stricter-medicinal-products-confusion-public-injury-delhi-high-court-213222
- https://www.livelaw.in/pdf_upload/fdc-v-nilrise-230922-442395.pdf
[1] CS(COMM) 427/2022
[2] AIR 1963 SC 449
[3] (1960) (1) SCR 968
[4] (2001) 5 SCC 73
[5] 2002 SCC OnLine Mad 870
[6] CS (COMM) 393/2018