Dr. Reddys Laboratories Limited filed an infringement and passing off suit against Smart Laboratories regarding AZIWOK used for medicinal, pharmaceutical and veterinary preparations and sanitary substances.
During the third week of August 2023, the plaintiff noticed that the defendant was using the mark AZIWAKE, which is quite similar to their registered mark. On inquiry, the plaintiff learned that the defendant had applied for the registration of the mark AZIWAKE on a proposal-to-be-used basis on 14th April 2022.
Wockhardt (Mother company of Dr. Reddy Laboratories Ltd.) has been using AZIWOK since its registration in 1994 and has been a recognized mark for pharmaceutical products. They instituted the suit before the Delhi High Court that both the concerned marks are used for azithromycin, which can easily confuse ignorant and innocent consumers. Wockhardt claimed a decree of permanent injunction to restrain Smart Laboratories and others acting on, in any manner, the mark AZIWAKE and also pleaded for compensation and costs.
The counsel on behalf of the defendant argued that without even issuing any notice requiring the defendant to cease using the mark AZIWAKE, the plaintiff had approached this Court belatedly by way of the present suit. They also referred to the Supreme Court judgement of Cadila Health Care Ltd v. Cadila Pharmaceuticals Ltd, where the Supreme Court has advised adopting a more relaxed standard of deceptive similarity, where the Court was concerned with alleged passing off in the case of pharmaceutical preparations only to ensure that an erroneous drug was not prescribed, because of its name is similar to the registered trade mark of another. That principle, which submits the defendant's counsel, applies where the two preparations are different and not the same, as in the present case. Counsel submits that AZIWAKE can be regarded as something other than visually or phonetically similar to AZIWOK.
The counsel further submits that the considerations of the balance of convenience and irreparable loss would not justify injuncting the defendant from any other use of the mark AZIWAKE, as the mark has been in the market since July 2022. She seeks to point out that the plaintiff had abandoned three AZIWOK label marks, which had been assigned to it by Wockhardt, by not renewing the marks.
The counsel on the plaintiff's side pointed out that the structural and phonetic similarity between AZIWOK and AZIWAKE is so pronounced that there is a clear likelihood of confusion and association. When so compared, he submits that a consumer of average intelligence and imperfect recollection, who has once come across the plaintiff's AZIWOK and, at a later point of time, chances upon the defendant's AZIWAKE, is bound to be placed in a state of wonderment as to whether he had seen the mark earlier. That would constitute a likelihood of confusion within the meaning of Section 29(2) of the Trade Marks Act.
While considering the arguments from both sides, the Court states that the competing words are, in the present case, "AZIWOK" and "AZIWAKE". There is no real distinction between their "look" and "sound", especially as the plaintiff holds a word mark registration for the word "AZIWOK". Though, considering the buyer side, it is obvious that AZIWAKE is phonetically similar to AZIWOK, as they sound deceptively identical to the ear, one may, if it is necessary to pare the issue to its essentials, explain why the two words are phonetically similar.
Both the marks are used for the same pharmaceutical preparation, namely, azithromycin. Insofar as the consumers dealing with the marks are concerned, the pharmaceutical preparations in question would initially be prescribed by doctors, dispensed by chemists and purchased by the consumer/patient. It would be unrealistic to expect every doctor to know the distinction between AZIWOK and AZIWAKE, mainly when both marks are used regarding azithromycin. Even if it were to be so assumed, confusion could always take place at the end of the dispensing chemist or the purchasing customer.
The Delhi High Court restrained the defendant from using the mark "AZIWAKE" in any manner, whether using prefixes or suffixes, regarding pharmaceutical products and related goods and services.
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