The Delhi High Court on 26th May 2020 in the case titled as M/S Bharat Biotech International Ltd. v. Optival Health Solutions Pvt. Ltd. & Anr. Observed that ‘TCV” which stands for (Typhoid Conjugate Vaccine), a vaccine for typhoid being an abbreviation, is not capable of being registered as a trademark and also that the mark ‘ZYVAC-TCV’ is not deceptively similar to the mark ‘TYPBAR-TCV’.
FACTS
The plaintiff was registered owner of the trademark ‘TCV’ and ‘TYPBAR-TCV’ in India under Trade Marks Act, 1999 in the year 2012 and was creating a vaccine for Typhoid treatment. Also, the trademark ‘TCV’ is registered in Saudi Arabia and Jordan.
The Defendant no.2 was the manufacturer of the Typhoid Vaccine named ‘ZYVAC-TCV’. In, 2018 Plaintiff learned through market sources about defendant no.2 and according to defendant identical in composition to the Plaintiff’s vaccine.
The suit was filed by the plaintiff for a permanent injunction against the defendant seeking restraint order from infringing its trademarks, passing off, rendition of accounts/damages and delivery up, etc.
ARGUMENTS BY THE PETITIONER
According to the Plaintiff, Defendant’s vaccine- ‘ZYVAC-TCV’, is confusing and being in relation to identical product category, it is inherently a misrepresentation to the consuming public that the defendant No.2’s product has an association with the plaintiff and/or that such use of a trademark is authorized by the plaintiff, neither of which is true or correct.
According to the plaintiff, given the worldwide reputation, registrations, substantial continuous uninterrupted use, laudatory recognition of the plaintiff, the trade-marks ‘TCV’ and ‘Typbar-TCV’ qualify as well-known trade-marks, which are associated with the plaintiff and therefore deserves protection.
ARGUMENTS RAISED BY THE DEFENDANT
According to Defendant, it is not infringing the plaintiff’s trademark for the reason that the defendant No.2’s mark ‘ZYVAC-TCV’, when considered as a whole is entirely different from the plaintiff’s mark and the essential and prominent feature of the defendant No.2’s mark is ‘ZYVAC’– which is a combination of the words ‘Zydus’ and ‘Vaccine’.
Also, Further, the Trade Mark ‘TCV’ of the plaintiff is generic and descriptive of a category of the vaccine called ‘Typhoid Conjugate Vaccine’ and cannot acquire any distinctiveness through use and is therefore not entitled to protection in law.
CASE ANALYSIS
The plaintiff concealed the fact that application for registration of ‘TCV’ was already filed on June 24, 2009, and instead claimed that it was the first adopter of the term ‘TVC’.
Now, it is settled law that for the defence of the use of a descriptive mark as an indication of a kind, quality or characteristic of goods (under Section 35 of the Trade Marks Act) is to succeed, the term used is required to be generic and that the use of the term be bona fide. If a sufficiently distinctive term is used along with the descriptive term, the same would qualify as bona fide use.
The presence of the word ‘ZYVAC’ along with the descriptive abbreviation ‘TCV’ in defendant No. 2’s, makes the mark ‘ZYVAC-TCV’ sufficiently distinctive and clearly indicates the bona fide intention of the defendant No. 2.
The court observed that the main mark of the plaintiff is ‘TYPBAR-TCV’ with ‘TCV’ being generic abbreviation/acronym of ‘Typhoid Conjugate Vaccine’ which is not a coined word and being common to trade as such, needs to be excluded for comparison with ‘ZYVAC’ of the defendant. Now, on such exclusion what remains is ‘TYPBAR’ of the plaintiff and ‘ZYVAC’ of defendant No.2.
DECISION OF THE COURT
The court observed that the packaging of the vaccine is dark blue in color whereas the defendant No.2’s is light blue. The words ‘TCV’ in the plaintiff’s packaging are written in orange whereas in defendant No.2’s packaging, they are in green color. Further what is significant is, on the packaging of both the parties the words ‘Typhoid Vi Capsular Polysaccharide Tetanus Toxoid Conjugate Vaccine’ (in the case of the plaintiff) and ‘Typhoid Tetanus Toxoid Conjugate Vaccine’ (in the case of defendant No.2) are written. The same clearly highlights / signifies the nature of the product, to be a vaccine, that too of similar type. So, a consumer can easily make out what ‘TCV’ stands for.
Court held that ‘TCV’ being an abbreviation, is not capable of being registered as a trademark and also that the mark ‘ZYVAC-TCV’ is not deceptively similar to the mark ‘TYPBAR-TCV’.
Also, Plaintiff failed to refute the fact that the application for mark ‘TCV’ was first filed by one Sanjeev Thakkar, in relation to medicinal preparations in the year 2009. The court in the absence of denial by the Plaintiff held that the Sanjeev Thakkar has coined the mark ‘TCV’ in 2009 and not the Plaintiff.
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Pic Courtsey: Science Chronicle
