High Court of Delhi was dealing with the petition filed under Order XXXIX Rules 1 & 2 read with Section 151 CPC for an ad-interim order of injunction
Brief Facts:
The plaintiff is a company incorporated in 1940 under the name of the ‘Fairdeal Corporation (Pvt.) Ltd. In 1985, the plaintiff’s name was changed to ‘FDC Private Limited’ and a fresh Certificate of Incorporation. The present suit has been filed against the defendant alleging infringement by it of trademark “CINZAN”, registered in the name of the plaintiff in respect of its product launched in 1989. The plaintiff had obtained trademark registration for the word mark “CINZAN” in 1987, which is valid and subsisting. The defendant, which is a private limited company, had dishonestly adopted the trademark “CINZINE”, which was deceptively, phonetically and structurally similar to the plaintiff’s prior adopted and registered trademark “CINZAN”. Legal notices had been issued, after which the defendants had abandoned its application for registration of trademark “CINZINE”. However, in November, 2020, the representative of the plaintiff came across a fresh sample of the impugned products “CINZINE” in the market, but this time, not manufactured by the defendant No.1, but by defendant No.2. A Legal Notice was sent, which was replied to by the defendant No.1 indicating that they were changing their mark to “CINZITAS”. However, the plaintiff had objection to the defendants using the mark as “CINZITAS”, as that too is deceptively similar to the plaintiff’s trademark “CINZAN”.
Petitioner’s Contention:
Learned counsel for the petitioner submitted that the defendants had repeatedly infringed the trademark of the plaintiff. She further submitted that the mark sought to be used by the defendants was phonetically similar to that of the plaintiff’s trademark. It was also contended that the word “CINZAN” had to be considered as a whole and could not be split into two, nor could be the mark of the defendants “CINZITAS” split into “CINZI” and “TAS”, to assess whether the two trademarks were similar or not. It was also submitted that the defendants have not been able to establish that since December, 2020, they had any sale of “CINZITAS” nor have they disclosed when they had launched their product. Thus, they had no right in equity to continue such use of the name “CINZITAS”. It was thus submitted that the plaintiff had disclosed a prima facie case in its favour, as having a registered trademark, being the prior user since 1989 and having built a solid market reputation, they would suffer irreparable loss and injury, if no injunction was granted.
Respondent’s Contention:
Learned Counsel for the respondent submitted that as regards the trademark “CINZINE”, they had already stopped its use since December, 2020. He submitted that as regards “CINZITAS”, the mark had been coined by the defendant No.1 by combining the salt/compound from which the drug had been derived with the suffix of the name of the defendant No.1. Thus, in the name “CINZITAS”, “CINZI” has been derived from the generic salt “CINNARIZINE” and “TAS” has been derived from the name of the defendant No.1 “TAS MED INDIA PVT. LTD.”.
He submitted that the practice of joining the company name and the disease for which the product was to be used or the salt/compound from which the product was manufactured, was a standard industry practice, as is clearly evident from the name of the plaintiff’s own product. No one could seek to register the name of the compound which was ‘publici juris’. It has been further argued by learned counsel for the defendants that the two names had no phonetic similarity. Thus, there was no infringement of the trademark of the plaintiff.
HC’s observations:
The issue before the Court was whether a similar injunction is to be issued against the defendants restraining them from using the proposed mark “CINZITAS”.
The Court found that “The courts have discouraged the use of the words that are ‘publici juris’. Whether a medical term is a ‘publici juris’, and whether it has become so in respect of an ailment or compound/salt, is a fact to be determined at trial. Adopting the name of the basic drug has thus been discouraged.”
HC stated that “Words that are commonly used in the trade or are descriptive in nature or laudatory of the quality of the good, cannot also be used as a trademark by one entity to exclude such use by others. In other words, it is not as if the courts have not protected the trademarks, which entail a certain level of creativity and uniqueness even if drawn from the compound/salt, or those which have, through long use, gained a reputation of representing the compound/salt itself. When such names are coined, then if somebody else subsequently, imitates these names, the courts have compared the two marks to determine whether there was a deceptive similarity or not. Ordinarily, the complete word is taken for comparison and not the parts of the words.”
HC relied upon the case of USV Limited v. IPCA Laboratories Limited, where court held that “a mistake can occur while reading the prescription on account of the similarity of the names.”
The Court stated that “Using deceptively similar trademarks is an attempt by one doing so, to gain from the reputation built by the proprietor of the trademark sought to be copied and this very act would be causing damage to the proprietor inasmuch as the intention is to divert the sales from the proprietor to the one who is infringing the trademark.”
HC also relied upon the case of Cadila Health Care Ltd. that “a high standard is to be applied to medicinal products as substitution of the medication could be dangerous or harmful to a patient as side-effects/allergies may differ between the two medicines. Thus, confusion being created on account of the similar sounding names has to be prevented as a policy measure.”
The Court observed that the product “CINZAN” is used for motion sickness, nausea due to motion sickness, vertigo or Meniere’s disease. The defendants do not dispute that their product is also for the same ailment. The defendants have not explained how they have also come to use the same four letters i.e., “CINZ”, to name their product.
HC Held:
After evaluating various case laws and submissions by both the parties the Court held that “The defendants are fully aware of the presence of “CINZAN” in the market since long. They failed in getting a phonetically similar trademark registered. “CINZ” in their proposed name of “CINZITAS” is clearly derived from the name of the plaintiff’s product “CINZAN” and not from the salt “CINNARIZINE”. It is a clear attempt at infringing the trademark of the plaintiff and also of passing off their own goods as those of the plaintiff. This seems to be a second attempt by the defendants to infringe the trademark of the plaintiff, mere accounting for the sales of the product of the defendants will not suffice, as ‘irreparable loss and injury’ would be caused to the plaintiff due to dilution. The products are for the same illness. The deceptive similarity will lead to confusion.”
Bench: Hon'ble Ms. Justice Asha Menon
Case Title: FDC Limited v. Tas Med (India) Private Limited And Anr.
Case Details: CS (COMM) 269/2021
Read Judgment @Latestlaws.com
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