Delhi High Court
M/S Bharat Biotech International ... vs Optival Health Solutions Pvt. ... on 26 May, 2020
IN THE HIGH COURT OF DELHI AT NEW DELHI
Judgment delivered on: May 26, 2020
+ CS(COMM) 1248/2018 & IAs. 16073/2018, 16074/2018 and
1997/2019
M/S BHARAT BIOTECH INTERNATIONAL
LTD. ..... Plaintiff
Through: Mr.Sudhir Chandra, Sr. Adv. with
Mr.Sughosh S. N., Mr. Vipin Nair,
Mr.P. B. Suresh and Mr.Karthik
Jayashankar and Ms.Pracheta Kaur,
Advs.
versus
OPTIVAL HEALTH SOLUTIONS PVT. LTD.
& ANR. ..... Defendants
Through: Mr. Yogesh Raavi and Ms. Snigdha
Singh, Advs. for D-1.
Mr. Anil Sapra, Sr. Adv. with Ms.
Anusuya Nigam and Ms.Vrinda
Pathak, Advs. for D-2
CORAM:
HON'BLE MR. JUSTICE V. KAMESWAR RAO
JUDGMENT
V. KAMESWAR RAO, J
I.A. 16073/2018
1. By this order I shall decide this application filed by the
plaintiff under Order XXXIX Rule 1 and 2 read with Section 151
of CPC seeking interim injunction against the defendants.
2. The suit has been filed by the plaintiff for permanent
injunction against the defendants seeking restraint order from
infringing its trade marks, passing off, rendition of accounts /
damages and delivery up etc.
3. It is the case of the plaintiff that it is one of the leading
manufacturer of the specialized vaccines and bio-therapeutics in
India with significant presence both in India and abroad. It has a
history of creating innovative vaccines. The manufacturing
facilities of the plaintiff are approved by the regulatory agencies
in India and abroad and are also approved by the World Health
Organization. The plaintiff has honestly coined the trade mark
'TCV' and 'Typbar-TCV' in the year 2012 in relation to a
revolutionary vaccine product for Typhoid treatment, then under
development by the plaintiff. Both of the said trade marks are
registered in India under Trade Marks Act, 1999 ('Trade Marks
Act', in short) and have been in continuous and uninterrupted use
since May, 2012. The details of the registration of the trade
marks are as under:
a) Trademark : TCV
Registration No. : 2291745
Valid upto : 28.02.2022
Class : 5
Goods : Vaccine formulations,
Typhoid conjugated vaccine
formulations
b) Trademark : Typbar-TCV
Registration No. : 2291743
Valid upto : 28.02.2022
Class : 5
Goods : Vaccine formulations
It is averred that both the registrations are valid and subsisting.
4. The plaintiff's trade mark 'TCV' is registered in Saudi
Arabia and Jordan and is expected for registration in Nigeria.
Similarly, the plaintiff's trade mark 'Typbar-TCV has been
registered in Saudi Arabia and Jordan and has been accepted for
registration in Vietnam and Nigeria. The vaccine of the plaintiff has
been widely sold throughout in India since 2013-2014 and is
recognized as a premier product for treatment of Typhoid. As per
the plaintiff, the revenue in 2017-2018 alone was INR 108.82
Crores. The plaintiff is actively and diligently monitoring any
misuse of its aforesaid trade marks. To quote an example, it is
averred that the plaintiff on coming to know of the filing of trade
mark application bearing no. 2091888 for 'SCION TCV' by a third
party, immediately initiated an opposition proceedings before the
Trade Mark Registry on July 20, 2018.
5. It is the case of the plaintiff, based on the information
received, the defendant No.1 is a corporate entity with offices pan-
India including Delhi, and appears to be in the business of hosting
and operating an interactive website www.medplusmart.com, where
pharmaceutical products are actively offered for sale across India
including the products bearing the infringing trade marks. The
plaintiff is not aware of the exact composition of the defendant No.1
which will become known only after discovery in the present
proceedings.
6. It is averred that in the second week of October, 2018, the
plaintiff learnt through market sources including its distributors that
defendant No.2 had actively commenced promoting a competing
vaccine product for Typhoid infection which was similar if not
identical in composition to the plaintiff's conjugated vaccine
product. Plaintiff immediately undertook market surveillance and
proceeded to cause searches to be made through the internet as well,
to determine the authenticity of such information and to determine if
any violation of its intellectual property rights was involved.
During such enquiry, a website was located which claimed to offer a
Typhoid vaccine named 'ZYVAC-TCV' purportedly manufactured
by defendant No.2. The product was marked as 'Out of Stock'. On
further enquiry, plaintiff was informed that the product of defendant
No.2 was likely to be available within a few weeks all across India
including New Delhi. It also located promotional material
distributed by defendant No.2 in India in relation to this vaccine
product. Such promotional material used the registered trade mark
'TCV' of the plaintiff in a manner that is bound to cause confusion
amongst the target audience, viz., healthcare professional who are
accustomed to identifying the vaccine of the plaintiff as 'TCV'. It
is stated that the likelihood of defendant No.2's product being
passed off as 'TCV' of the plaintiff is very high since the trade
mark 'TCV' occupies a prominent location and position in such
promotional literature of defendant No.2. In addition, defendant
No.2 also uses the same reference 'ZYVAC-TCV' on its website
under the page titled 'Products'. It is averred that further searches
on the website of the Trade Mark Registry shows that the defendant
No.2 has apparently not filed any trade mark application for either
'ZYVAC-TCV' or even for 'ZYVAC' per se. It is stated that
defendant No.2 is slavishly copying not only the registered trade
mark 'TCV' of the plaintiff, but has also dishonestly adopted the
'ZYVAC' part of its product name from third party trade marks,
including of Merck Sharpe & Dohme and Alan Pharmaceuticals.
Hence, it is contended that the launch of a Typhoid vaccine by
defendant No.2 under the name 'ZYVAC-TCV' is a flagrant
infringement of the plaintiff's registered Trade Mark no. 2291745
for 'TCV' inasmuch as this trade mark forms an inextricable part of
the name adopted by defendant No.2. Defendant No.1 is also guilty
of infringement of said trade mark 'TCV' inasmuch as it provides a
channel for trade in products bearing the infringing the trade mark,
and within the jurisdiction of this court.
7. It is the stand of the plaintiff that the use so far in
publicizing, and intended launch of a competing product with
identical and / or deceptively similar trade mark '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 trade mark is authorized by the plaintiff, neither
of which are true or correct. It is also stated that the mala fides and
dishonesty of defendants are amply clear from the fact that the
promotional material for 'ZYVAC-TCV' says 'for children of all
ages', whereas it is actually the plaintiff's vaccine, which was the
first typhoid vaccine in India which was approved for administration
to infants and children below two years. 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' qualifies as well-known trade
marks, which are associated with the plaintiff and therefore deserves
protection and the use of an identical and deceptively similar mark
by the defendants and in respect of identical product category, viz.
Typhoid vaccine takes unfair advantage and is detrimental to or
likely to dilute the distinctive character and repute of the plaintiff's
trade marks. That apart, the presence of the counterfeit products of
the defendant No.2 being deceptively similar to the plaintiff's
product, is prejudicial to the health of the typhoid patients who are
typically from economically disadvantaged sections of the society.
8. Reply to the application has been filed by the defendant
No.2 wherein it is stated that defendant No.2 is not infringing the
plaintiff's trade mark 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'. Further, the Trade Mark 'TCV'
of the plaintiff is generic and descriptive of a category of vaccine
called 'Typhoid Conjugate Vaccine' and cannot acquire any
distinctiveness through use and is therefore not entitled to protection
in law. That apart, the plaintiff cannot claim to be the first adopter
of the mark TCV and has concealed the fact that prior to the alleged
adoption of its mark in the year 2012, another entity had filed an
application for the registration of the mark TCV on June 24, 2009
claiming use since May 6, 2009. The said application was in fact
cited in the examination report of the plaintiff's application for the
mark 'TCV'. Hence, the plaintiff is clearly not the creator nor prior
user of the mark as alleged. It is stated that the trade mark 'TCV'
per se is not used by the plaintiff and no evidence has been adduced
to show use of the said mark. Even the abbreviation 'TCV' is not
being used in a trade mark sense by defendant No.2 in the mark
'ZYVAC-TCV'. The defendant's mark 'ZYVAC-TCV' is a
coined, original and arbitrary trade mark and third parties are also
using the mark 'TCV' in a descriptive sense as the defendant No.2,
and the same is permissible in law. It is stated that the defendant
No.2 is not passing off its product as that of the plaintiff and the
same is clear as (i) a comparison of the product packaging of the
defendant No.2's product with that of the plaintiff shows that there
is no similarity between the same; (2) no case of passing off is
established by the plaintiff as no evidence is forthcoming to prove
the goodwill of the marks of the plaintiff as the plaintiff has not
even been using the mark 'TCV' per se. The reply seeks the
dismissal of the application.
SUBMISSIONS
9. Mr. Sudhir Chandra, learned Sr. Counsel appearing for
the plaintiff apart from reiterating the stand taken in the application
submitted that Typhoid, caused by Salmonella Typhi (bacterium), is
a major endemic disease in Asia, Africa and Middle East, resulting
in 1,28,000 - 1,61,000 deaths annually. The disease burden is
probably the highest in India, with 494 deaths for every one lakh
persons per year. The earlier types of vaccines available were (1)
Parenteral Killed Whole Cell Vaccine (2). Oral-live attenuated
Vaccine; and (3) Typhoid-Vi Capsular Polysaccharide Vaccine.
According to him, due to the fact that earlier generation vaccines
were not producing immunization in children, a need was felt for a
new vaccine which can be given to young children as well. In the
year 2008, the plaintiff invented a bacterial vaccine and methods to
manufacture thereof the new generation of Typhoid Vaccine, being
'Typhoid Vi Capsular Polysaccharide Tetanus Toxoid Conjugate
Vaccine', for which the plaintiff acquired following patents:
Patent Country Application Date of Granted Date of Status
Title Number Filing Number Grant
PCT PCT/IN2014/000530 19.08.2014 National phases entered in
following countries:
USA 14/913816 23.02.2016 10046039 14.08.2018 Grant
Mexico mx/a/2016/002386 24.02.2016 365726 11.06.2019 Grant
South Africa 2016-01123 18.02.2016 2016-01123 18.02.2017 Grant
Russia 2016110576 23.03.2016 2684615 10.04.2019 Grant
EPO 2014841291 02.03.2016 14841291.9 Notice of
notice of grant Grant
dated
13.08.2019
Ukraine 2016 02951 23.03.2016 Decision of Decision of
grant issued on Grant
24.04.2019
10. It was his submission that the vaccine developed by the
plaintiff has been referred to in the industry as Typhoid Vi Capsular
Polysaccharide Tetanus Toxoid Conjugate Vaccine' / Typhoid Vi
Conjugate Vaccine I.P. / ViP's - TT'etc., therefore proving that the
term 'TCV' was a creation of the plaintiff. The aforesaid fact is
clearly reflected from defendant No.2's packaging which prescribes
the vaccine differently as 'Typhoid Vi conjugate Vaccine I.P.' on
top of their mark whereas the plaintiff's brochure refers the vaccine
as 'Typhoid - Tetanus Toxoid Conjugated Vaccine'. Ever since
May 17, 2013, plaintiff has been granted license for commercial
manufacture of 'Typhoid Vi Capsular Polysaccharide Tetanus
Toxoid Conjugate Vaccine' in India. The defendant No.2 was
nowhere in the picture until April, 2018 by which time the public
had associated the vaccine as belonging and owned by the plaintiff.
11. It was further submitted that on February 29, 2012, the
plaintiff had applied for the registration of the two trade marks
'TYPBAR-TCV' (TM Application No. 2291743) and 'TCV' (TM
Application No. 2291745), separately, both in Class-5, covering
vaccine formulations. The said applications were accepted after
following the due procedure contemplated under Sections 20, 72, 73
of the Trade Marks Act, which envisages inviting opposition for
registration through public advertisement. No opposition was filed
under Section 23 of the Trade Marks Act. Thereafter, trade marks
were granted to the plaintiff on September 15, 2016 and March 20,
2018 respectively and the same are valid and subsisting. Both trade
marks 'TCV' and 'TYPBAR-TCV' are unique and distinct. The
plaintiff has coined the term 'TCV'. Plaintiff is the first and prior
user of the mark 'TCV' since 2013 when it started its commercial
run for the said vaccine. The term 'TCV' has acquired
distinctiveness as a result of continuous use made by it and is now
solely and exclusively associated with the plaintiff. In order to
prove distinctiveness, he has relied on the two parameters laid down
by the Supreme Court in Satyam Infoway Ltd. v. SIFFYNET
Solutions Pvt. Ltd., (2004) 6 SCC 145, which are the volume of
sales and extent of advertisement. In this context, he had drawn the
attention of the Court to the sale figures of the plaintiff, as compared
to that of defendant No.2, in the following manner: -
YEAR SALES OF PLAINTIFF VOL. SALES OF DEFENDANT
(IN CRORES) (IN CRORES)
2013-2014 10.62
2014-2015 37.15
2015-2016 71.70
2016-2017 85.90
2017-2018 108.82
April, 2018 - Dec. 2018 For the year 2018-2019, the sales 0.09
stand at Rs.120.57
The commercial sales of the vaccine clearly imply the
way the product has been associated in the perception of the public.
12. It was his submission that the plaintiff is also exporting
aforesaid vaccine (Purified Vi Capsular Polysaccharide of S. Typi
Ty. 2 Conjugated to Tetanus Toxoid) to various countries including
Nigeria, Nepal, Cambodia and Laos etc. He submitted that huge
amount of money is invested in Research and Development, and
advertisement, tabulated as under:
FINANCIAL YEAR RESEARCH AND
DEVELOPMENT
EXPENDITURE (IN
CRORES)
2005-2006 18.08
2006-2007 10.63
2007-2008 17.11
2008-2009 15.86
2009-2010 31.93
2011-2012 16.49
2012-2013 11.16
2013-2014 11.35
2014-2015 20.95
2015-2016 35.91
2016-2017 45.08
2017-2018 25.25
13. This investment will be lost and irreversible damage will
be caused, if injunction is not grated. Therefore, in view of the
sales, expenditure on R&D, advertisement and the fact that WHO, a
premier body on the health matters, has pre-qualified the plaintiff's
vaccine as the only vaccine for typhoid to be utilized for the UN
program, convincingly establishes that the plaintiff's trade mark has
achieved distinctiveness. He stated the defendants have relied on
the cases of Cluett Peabody & Co. Inc. v. Arrow Apparals, 1998
(18) PTC 156 (Bom) and Veerumal Praveen Kumar v. Needle
Industries (India) Ltd. and Ors., 2001 (21) PTC 889 (Del.) to
submit that the distinctiveness will be lost by non-user. According
to Mr. Chandra, such an argument cannot be sustained in the eye of
law, for the simple reason that 'TCV' has been continuously used
by the plaintiff and also as 'TYPBAR-TCV' which itself is a
registered trade mark. The registration of the trade marks is a
prima facie evidence of their validity under Section 31 of the Trade
Marks Act, and any infringement thereof is actionable. In this
regard, he has relied on the judgment of the full Bench of the
Bombay High Court in Lupin v. Johnson and Johnson, 2014 SCC
Online Bom. 4596. He argued, even if it is assumed that the
aforesaid trade mark is registered in breach of Section 9(1) of the
Trade Marks Act, still the trade mark cannot be declared as invalid,
as the plaintiff's trade mark has attained distinctiveness as mandated
under Section 32 of the Trade Marks Act. He submitted that the
product packaging of the parties herein are as under:
DEFENDANT PACKAGING (IMAGE NO.1)
PLAINTIFF'S PACKAGING (IMAGE NO.2)
14. He stated that the plaintiff's packaging has 'TCV'
surrounded by a protective semi-circular shield. Similarly,
defendant no.2 has deceptively copied the shield around the term
'TCV' in their packaging. Therefore, he submitted that the
aforesaid attempt of the defendant No.2, is to deceive and confuse
the consumers and thereby cause loss to the plaintiff herein by
riding upon the goodwill and reputation of the plaintiff. A similar
type of vaccine developed by Bio-Med is being sold in India under
the name 'PEDA Typh'. The defendant No.2 has made a reference
to the aforesaid typhoid vaccine 'PEDA Typh', to show that same is
a type of 'TCV' available in the market and therefore the 'TCV' is
not exclusive to the plaintiff. However, on a reference to, Vol. IV.
Pg. 12 of the defendant No.2's documents, it is evident that the
same is in fact a 'Typhoid Vi Conjugate Vaccine' and not 'TCV'
per se. He further submitted defendant No.2 has not produced any
evidence to prove that 'TCV' was a generic term. The articles and
material supplied by the defendant No.2 are all relatively recent,
post 2015, whereas plaintiff's product was already in the market
since 2013. There is not a single article / document / material, as
submitted by the defendant No.2, to point that 'TCV' was utilized
in a generic sense before 2013.
15. He submitted that a probable reason why the plaintiff's
mark 'TCV' is being contended as a 'generic term' by the
defendant No.2 is because of the lack of a convenient substitute to
the term of 'Typhoid Vi Capsular Polysaccharide Tetanus Toxoid
Conjugate Vaccine'. The plaintiff's product, being the first of its
kind in the market, has acquired distinctiveness with respect to the
aforesaid trade mark 'TCV'. In support of his contention, he relied
on Sunil Mittal v. Darzi on Call, (2017) 242 DLT 62, Para 15
thereof.
16. He argued that the defendant No.2 has not applied for the
registration of its mark 'ZYVAC TCV'. This shows the malafide
intent of defendant No.2 in copying the 'TCV', without having a
registration on the same. Added to the above in an utter disrespect
to plaintiff's trade mark, the defendant No.2's brochure utilized the
'TM'
symbol after 'ZYVC-TCV'. This clearly portrays the malafide
intention of the defendant No.2 to ride on the goodwill of the
plaintiff herein.
17. It was his submission that the defendant No.2, while
relying on the case of Nestle India Ltd. v. Mood Hospitality Private
Limited, 2010 (42) PTC 514 (Del.) has contended that 'TCV' is
only used as a suffix to ''ZYVAC', therefore, there is no similarity,
between the plaintiff's trade mark and the defendant's. However,
the facts of that case are easily distinguishable, having regard to the
fact that usage of the term 'YO!' therein was not as a trade mark,
rather was just used to 'call the attention'. In this case, the unique
and distinctive word coined by the Plaintiff i.e., 'TCV' is utilized
by the defendant No.2 to only cause confusion in the minds of the
buyers, accordingly, the presumption under Section 29 (3) of the
Trade Marks Act shall operate in favour of the plaintiff. Moreover,
there are umpteen examples wherein by merely adding prefix to a
distinctive mark, the infringer i.e the defendant No.2 in this case,
cannot defeat the legitimate rights of the other party. He has relied
on the judgment in Kamani Oil Industries Pvt. Ltd. v.
Bhuwaneshwar Refineries Pvt. Ltd., 2014 (4) ABR 103. The use
of 'TCV' in the impugned mark of the defendant No.2 i.e.,
'ZYVAC-TCV' is an infringement of the registered trade mark of
the plaintiff and is already causing confusion in the minds of the
public. He further stated that in any case Section 29 (3) of the Trade
Marks Act, contemplates that the Court shall presume the confusion
on the part of the public with regard to the identity of the goods and
services, if a registered trade mark is copied so as to be identical or
similar to the goods of the registered trade mark user. In the instant
case, 'TCV' is a registered trade mark of the plaintiff. The use of
'TCV' by the defendant No.2 does violence to Section 29 (3) of the
Trade Marks Act and therefore the Court ought to grant the
injunction, in view of the mandate of Section 29 (3) of the Act.
18. He submitted that defendant No.2 has contended that the
term 'TCV' is a generic term and using it along with 'ZYVAC' as a
prefix, makes it distinct from that of the plaintiff's trade marks. The
aforesaid contention cannot be sustained in the eye of law as 'TCV'
itself is registered trade mark of the plaintiff and has been associated
with the plaintiff's product. The very use of the 'TCV' by the
defendant No.2 is done to cash on the goodwill and reputation of the
plaintiff's product. The sweat and labor of the plaintiff in
developing a product and creating the scheme of the product in the
mind of the public, is sought to be exploited by the defendant No.2.
Further the objections, raised, at the time of grant of the trade
marks, have been considered by the Registry before the grant to the
plaintiff and therefore, cannot be looked into at this stage of the
proceedings wherein the plaintiff has established a prima-facie case
in its favour. Further, it is well established principle that the
plaintiff is not expected to sue all small-time infringers who may not
be affecting plaintiff's business. He relied on the judgment of the
Division Bench of this Court in the case of Pankaj Goel v. Dabur
India Ltd., 2008 (38) PTC 49 (Del).
19. He argued that defendant No.2 has failed to satisfy that
the registration of the plaintiff's trade mark is ex-facie illegal,
fraudulent or shocks the conscience of the Court. Defendant No.2
has failed to discharge the very high threshold placed on it. He
placed reliance on the case of Lupin (Supra). He submitted that the
case of the Marico Ltd. v. Agro Tech Foods Ltd., 2010 (44) PTC
736 (Del.) was one wherein the usage of the term 'LOW ABSORB'
being a common descriptive word indicating the nature of edible oil
could not be upheld by the Court as it was ex facie illegal and
shocked the conscious of the Court. However, in this case at hand,
the very high threshold set by the case of Lupin (Supra) for the
defendant No.2 is not discharged.
20. According to Mr. Chandra, the defendant No.2 has raised
a contention in the present suit challenging the validity of the
plaintiff's trade mark, without first approaching the appropriate
authority i.e., Registrar or IPAB as the case may be, for setting aside
the same, as envisaged under various provisions of the Trade Marks
Act (Section 57 and 124). In this regard, he has placed reliance on
para 41 of Patel Field Marshal Agencies v. P.M. Diesels Limited
and Others, (2018) 2 SCC 112.
21. It is also contended that, the defendant No.2, in breach of
the ratio laid down by the Supreme Court in the Patel Field
Marshal Agencies (Supra) inasmuch as, it has neither sought the
permission of this Court nor has this Court given a prima facie
finding on the invalidity, for it to approach the concerned Registrar
or the IPAB as the case may be, during pendency of the Suit.
22. Finally, Mr. Chandra submitted that the plaintiff is a
Company which believes in innovation and is not merely producing
generic drugs in India. If the injunction in this matter is not granted,
then the investment made by plaintiff in Research and Development
would be in jeopardy. Every day of delay is causing irreparable loss
/ harm to the plaintiff herein. According to him, the plaintiff
satisfies the required ingredients, of a prima facie case, balance of
convenience and has a good case on merits, for seeking an interim
injunction against the defendants herein. Matters pertaining to
infringement of Intellectual Property Rights (IPRs) are special
cases. Mere compensation can never be treated as an efficacious
remedy in IPR infringement matters and an injunction is therefore
necessary to prevent the defendants from invading or threatening to
invade the plaintiff's right to, or enjoyment of the property.
23. On the other hand, it was the submission of Mr. Anil
Sapra, learned Sr. Counsel appearing for the defendant No.2 that the
product in question in the present suit is a type of vaccine for
Typhoid, being one of the three vaccines available for the disease,
viz. Typhoid Conjugate Vaccine (TCV), Unconjugated Vi
Polysaccharide (ViPS) and Live attenuated Ty21a Vaccine. The
marks in question in the present matter are 'TYPBAR-TCV' and
'TCV' of the plaintiff and the mark 'ZYVAC-TCV' of the
defendant No.2. The vaccine 'Typhoid Conjugate Vaccine', is
commonly known world over, especially as part of medical journals
and in the medical community as 'TCV'. Therefore, as per the
'Spectrum of Distinctiveness of Marks' propounded by McCarthy,
the mark 'TCV' being a generic abbreviation of the product, as also
being descriptive of the goods it relates to, is incapable of trade
mark protection. So it, follows that generic marks i.e. marks that
indicate a type / kind / variety of the goods being sold thereunder
are incapable of acquiring distinctiveness even through years of use
and have no trade mark significance.
24. He also stated that the mark 'TCV' is descriptive of the
product in question, and therefore, cannot be granted exclusive
protection under the law in the absence of acquired distinctiveness.
He further submitted, 'Typhoid Conjugate Vaccine' is the name of
the vaccine, which is commonly abbreviated as 'TCV' for ease of
reference, such that all 'TCV' vaccines are generically and
colloquially referred to as 'TCV'. He also stated that published
scientific articles clearly refer to 'Typhoid Conjugate Vaccines' as
'TCV'. In this regard, he has relied on page 86 and Page [email protected],
Volume III, plaintiff's documents; Pages [email protected], 64-66,
[email protected],75,78,81, Volume IV Defendant no.2's Documents.
Therefore, as per the 'Spectrum of Distinctiveness', the mark
'TCV' is generic, and incapable of being distinctive - as such, no
party can claim exclusivity over the same. Further, a highly generic
mark is incapable of trade mark protection (Ref:- Cadila
Healthcare Limited v Gujarat Cooperative Milk Marketing
Federation Limited & Ors, 2009 (41) PTC 336 (Del)) and any
registration granted in respect of a generic mark will also not grant
sanctity to the mark. The grant of a trade mark registration is only
prima facie evidence of its validity and the presumption of prima
facie validity of registration is a rebuttable presumption. In such
cases, the Court has the power to go behind the registration,
specially at the interim stage. Thus, an abbreviation cannot be used
as a trade mark if it is a generic term and has clear generic
connotations. In such cases, the defendant No.2 would have, as
good a right to a descriptive title as the plaintiff. Further, the mark
TCV is descriptive of the product in question, as it merely describes
one of the three types of typhoid vaccines available. A descriptive
mark can only be afforded protection in case it has acquired
distinctiveness on facts.
25. It was his submission, the following details of the
plaintiff's marks and its user are relevant to show that the plaintiff's
marks 'TCV' and 'TYPBAR-TCV' have not acquired
distinctiveness as:
a. The Plaintiff is not the first one to coin and adopt
the mark 'TCV'. In this regard, he relied on page 14,
Volume IV of defendant's Documents. The trademark
application for the mark 'TCV' was first filed by one
Sanjeev Thakkar, in relation to medicinal preparations
in the year 2009 claiming user since May 2009 i.e.
well before the plaintiff sought to claim rights in the
same. Additionally, the said fact was concealed by the
Plaintiff when it approached the Court seeking
equitable relief;
b. No evidence has been adduced by the plaintiff that
the mark 'TCV' has been used by it in any manner
whatsoever. The plaintiff's documents, including
invoices, clearly show that the mark used by them is
in fact 'TYPBAR-TCV'. Even on its own website,
the plaintiff has used the marks 'TYPBAR' and
'TYPBAR-TCV'. Non-use of the mark 'TCV' has
been cleverly concealed in order to mislead the Court.
It is settled law that a mark that is not used in
commerce affords no rights. Marks do not exist in a
vacuum. (Ref:-Cluett Peabody (supra), Veerumal
Praveen Kumar (supra));
c. The Plaintiff's reliance, on the WHO pre-
qualification in a trade mark infringement and passing
off suit is misconceived and misplaced. The said pre-
qualification does not have any bearing on the trade
mark used in respect of the product;
d. Assuming for the sake of argument that the mark
'TCV' is descriptive, it has not acquired
distinctiveness inasmuch as the user of the plaintiff is
only of six years since 2012 onwards as mentioned in
para 3 of the plaint, that too of the mark 'TYPBAR -
TCV', and not 'TCV' itself. Further, the plaintiff
has made no claim of acquired distinctiveness in its
pleadings, even though the same was sought to be
addressed during the course of arguments before this
Court;
e. Such being the case, third parties including
defendant No.2 cannot be barred from using a
descriptive and generic mark;
f. In fact, allowing the Plaintiff to enjoy exclusivity
over a highly descriptive and generic mark such as
'TCV' would be contrary to public policy, as the
natural effect thereof would be that honest traders
such as defendant no.2 would not be able to inform
the public at large that it is manufacturing a vaccine
for the treatment of Typhoid. Such a chilling effect is
highly undesirable Marico (supra);
26. Mr. Sapra submitted that defendant no.2's mark
'ZYVAC-TCV' when considered as a whole, is entirely different
from the plaintiff's mark 'TYPBAR-TCV' and the essential and
prominent feature of the defendant No.2's mark is 'ZYVAC'. It is
settled law that while comparing trade marks, the competing marks
should be considered as a whole (Ref:- Kaviraj Pandit Durga Dutt
Sharma v Navaratna Pharmaceutical Labs, AIR 1965 SC 980)
and not broken into fragments and parts; competing marks should
not be placed side by side to find out if there are any differences in
them, since the whole of a mark is greater than the sum of its parts
(Ref:- Marico (supra). The test, therefore, is if one mark bears
such an overall similarity to the registered mark as would likely to
mislead a person usually dealing with one to mistake it for the
other. (Ref:- Parle Products Ltd. v. J.P and Co., 1972 (3) SCR
289; Para 9,).
27. It was submitted by Mr. Sapra that by applying the
abovementioned test, the marks 'ZYVAC-TCV' and 'TYPBAR-
TCV' bear no resemblance or similarity and therefore eliminate any
likelihood of confusion or deception. The essential feature of the
defendant No.2's mark is 'ZYVAC' and not 'TCV', as it is evident
from a mere glance at defendant No.2's product packaging. The
mark 'ZYVAC' is a coined mark and is a unique combination of
the words ZYDUS and VACCINE, and as such, has no meaning,
thus qualifying as an arbitrary and fanciful mark. Without
prejudice, while a mark is to be considered in its entirety, yet, it is
permissible to accord more importance to a dominant element in
composite marks. It is not a violation of the anti-dissection rule to
view the dominant component parts in order to decipher the
probable consumer reaction. (Ref:- South India Beverages Pvt.
Ltd. v. General Mills Marketing Inc., (2015 (61) PTC231 (Del)).
Any reference to the mark 'ZYVAC' relates solely to defendant
No. 2, owing to the enormous reputation and goodwill associated
with the mark 'ZYDUS'. Members of the trade and consumers at
large associate the mark 'ZYVAC' exclusively with 'ZYDUS' and
the Zydus Group in view of the reputation of the defendant No.2's
group companies and the various medicines provided under marks
containing 'ZY'. The very adoption of the arbitrary mark 'ZYVAC'
shows the defendant No.2's bona fide intention, and clarifies that it
only seeks to convey to consumers that the product in question is a
'TCV' vaccine manufactured by the Zydus Group.
28. He further submitted, in pharmaceutical products, trade
marks are usually adopted using one of the following three features
of the product, or their combination: (i) A part of the name of the
drug or the INN name (eg: NAXDOM for Domperidone and
Naproxen Tablets, CETRIZINE for levocetrizine tablets), (ii) a part
of the name of the manufacturer of the drug and/or (eg: LEVOCIP
for Levocetrezine sold by Cipla Limited) (iii) a completely fanciful
name that had no relation to the above (eg: COMBIFLAM for
Ibuprofen and paracetamol tablets) (Ref:- Cadila Healthcare
Limited v Aureate Healthcare Pvt Ltd., 2012 (51) PTC 585(Del),
Para 27). In such cases, the importance of the prefix of the word
should be given due weightage and important, in case where the
suffix is common. Where the suffix is common, regard must be had
to the earlier portion of the word which distinguishes one from the
other. Where the suffix is common, the earlier portion of the word
is the natural, necessary and in fact, the actual mark of distinction
(Ref: Cadila Healthcare Limited v Dabur India Limited, (1997) 17
PTC 417). Such being the settled position of law, it is clear that
there can be no confusion whatsoever when the marks 'TYPBAR-
TCV' is compared to the mark 'ZYVAC-TCV'.
29. Mr. Sapra submitted that the defendant No.2's use of the
mark 'TCV' is not in the trade mark sense as envisaged in Section
29 of the Trade Marks Act, and is thus within the ambit of the law
under Sections 35 and 30(2) of the Trade Marks Act. An action for
infringement under Section 29(1) of the Trade Marks Act, could
only be brought where the defendant uses a mark 'as a trade mark'
i.e. in a manner 'indicative of trade origin' (Ref:- Nestle v Mood
Hospitality, (2010 (42) PTC 14(Del), para 12). If a mark is not
being used in a 'trade mark sense' but merely in a descriptive
sense, it is covered in the exceptions under Section 30(2) and
Section 35 of the Trade Marks Act. If a defence of use of a
descriptive mark as an indication of kind, quality or characteristic
of goods (under Section 35) is to succeed, the term used is required
to be generic and that the use of the term be bona fide. It has been
held that if a sufficiently distinctive term is used along with the
descriptive term, the same would qualify as bona fide use. Thus,
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.
30. He submitted that the packaging and overall getup of the
competing marks is different and thus no action of infringement or
passing off lies against the defendants. A bare perusal of the
packaging of the products, reveal the pronounced differences in the
packaging of the products. The differences combined with the fact
that the prefix in both the marks are entirely different, he submitted
that no action of infringement or passing off lies against defendant
No 2.
31. It was the submission of Mr. Sapra that the plaintiff's
contention that it is the first manufacturer of the 'Typhoid
Conjugate Vaccine' and is entitled to the exclusive use of the mark
'TCV', is highly misconceived. The plaintiff has claimed in the
pleadings that it is the first entity to sell a 'TCV' vaccine. In this
regard, even if the same is assumed to be true, it does not entitle the
plaintiff to debar future manufacturers by adapting a
generic/descriptive term as a mark. Such a situation would impinge
on the legitimate use of the mark in future by any other
manufacturer.
32. Mr. Sapra submitted that the arguments advanced on
behalf of the plaintiff are devoid of merit and the plaintiff has
sought to argue beyond its pleadings. It is a well settled position of
law that the parties cannot argue beyond their pleadings. He stated
that during the course of arguments, it was contended on behalf of
the plaintiff that the only players in the market using the term
'TCV' are the plaintiff and the defendant No.2. However, it is
relevant to note that there are two other players in the market that
manufacture the said vaccine, apart from the parties in the present
suit. In view of the same, it cannot be contended that the defendant
No. 2 is the only party that chose to use the mark 'TCV' in order to
ride on the alleged goodwill of the plaintiff's product. He submitted
that for such an argument to sustain, there should be considerable
number of parties in the same trade, and only defendant No.2
choosing the same mark as that of the plaintiff. However, as the
facts of the present case show, 'TCV' is presently at a nascent stage
of development for commercial sale, and thus there are very few
players in the market, rendering the argument of the plaintiff
baseless.
33. It was the submission of Mr. Sapra, that it was contended
on behalf of the plaintiff that the mark 'TCV' has acquired
distinctiveness through years of use, however, no such pleading has
been made in the plaint, thus, the argument should be rejected
outrightly. Without prejudice to the aforesaid, he highlighted that a
generic mark can never acquire distinctiveness, as has been
propounded by McCarthy and reiterated in the Cadila Healthcare
Limited v Gujarat Cooperative Milk Marketing Federation
Limited & Ors, 2009 (41) PTC 336 (Del). Further, it has been
stated by the plaintiff during the course of hearing that the plaintiff
has registered patents for the vaccine in various jurisdictions and
has also applied for a patent in India. He submitted that the
aforesaid argument should be rejected as (a) patent
registration/pending application for patent registration is entirely
irrelevant for the present trade mark infringement dispute and (b)
the aforesaid argument was not averred by the plaintiff in the
pleadings. He reiterated that a party cannot go beyond its pleadings.
He submitted that the plaintiff has, during the course of the hearing,
taken the argument that alleged 'protective semi-circular shield'
over the mark of the plaintiff has been copied by the defendant No.
2. In this regard, he stated the symbol present in the mark of the
plaintiff, can by no stretch of imagination, be called a 'shield'. In
any event, the symbol is entirely different from the defendant
No.2's mark. Further, as is the case in most of the arguments taken
by the plaintiff at the stage of hearing, the aforesaid, has not been
pleaded in the plaint. According to him such submissions point
towards the desperate attempts of improving the case, which
evidently is devoid of merit.
34. It was his submission that the plaintiff has sought to
distinguish the case of Marico (supra) by saying that the marks
therein (LOW ABSORB and LOSORB) were evidently generic and
thus would not apply to the facts of the present case. However, the
reliance was placed on the said judgment to substantiate the
following propositions of law:
a. That companies/persons who are first of the block in the
market to use a said mark which is descriptive in nature should
be discouraged from claiming exclusivity on the same;
b. Further, it was categorically held in the judgment that if a
defendant uses his own word mark as a trade mark prominently
in addition to the descriptive word mark which the plaintiff
claims to be his trade mark, nothing further is required to show
the bona fides of the defendant against whom infringement of a
registered trade mark is alleged.
According to Mr. Sapra, both the aforesaid principles remain
unrebutted by the Plaintiff.
35. According to Mr. Sapra, Mr. Chandra during the course
of arguments stated that the cases of Cluett Peabody (supra),
Veerumal (supra) have no application in the present case since the
mark 'TCV' is being used as part of 'TYPBAR-TCV'. According
to him, the aforesaid contention of the plaintiff points directly
towards the mala fide of the plaintiff, since it fails to answer the
pertinent question which is: why has the plaintiff registered both the
marks 'TYPBAR TCV' and 'TCV' when in fact it had no intention
of using the mark 'TCV' per se. He stated that the plaintiff has
failed to justify or answer the aforesaid question all throughout the
pleadings and oral arguments, clearly evidencing that the
registration over the mark 'TCV' is devoid of merit. According to
him, it was contended on behalf of the plaintiff during the course of
the hearing that the fact that the defendant No.2's mark is
'ZYVAC-TCV' is immaterial since the whole mark cannot be
copied with the addition of another word with it. Taking the
example of the mark 'TATA', it was stated that "xyz TATA" would
still be an infringement. According to Mr. Sapra, the aforesaid
argument is entirely misplaced, while comparing two competing
marks, the 'essential features' of the marks are to be seen. Reliance
is placed on the Supreme Court judgment in Ramdev Food
products v. Arvindbhai Ramabhai Patel, (2006) 8 SCC 726.
Owing to the generic nature of the mark 'TCV', it is an inescapable
conclusion that the essential and dominant feature of the Plaintiffs
mark is 'TYPBAR' and not 'TCV'. Furthermore, the essential
feature of the mark of the defendant No 2 is 'ZYVAC', since the
defendant No. 2 manufactures and sells numerous medicines under
the 'ZY' prefix, indicating its origin from defendant No. 2 and none
else. Thus, the analogy drawn with TATA trade mark is erroneous,
since TATA is the essential and dominant feature in the mark of the
proprietor, which, if used by any other party along with other words
would indeed constitute infringement, whereas 'TCV' standalone is
a generic mark and is standalone not being used by the plaintiff,
disentitling it from being the essential feature of the plaintiffs mark.
36. He submitted the reliance placed by Mr. Chandra on the
judgment of Lupin (supra) is misplaced since though a high burden
of proof lies on the defendant to prove a prima facie case that a
registration is invalid, such burden has been discharged by
defendant No. 2 in the present case since the mark 'TCV' has not
been used at all. Thus, the registration is patently illegal, obtained
even when the plaintiff had no intention to ever using the mark
standalone. Further, the plaintiff's argument regarding seeking
permission of the Court before filing a rectification is also
misplaced since the judgement of the Supreme Court in Patel Field
Marshal (supra), clarifies the position by categorically holding that
no permission of the court is required before initiating a
rectification proceeding.
37. It was submitted on behalf of defendant No.2, that in the
note of arguments filed by the plaintiff that they have also sought to
place reliance on arguments that were taken neither in the
plaint/application or during arguments. It is settled law that
arguments that traverse beyond pleadings ought not to be
considered.
No case for grant of interim injunction is established by the
plaintiff since:
a. No prima facie case is established
i. There is no similarity whatsoever between the
marks 'TYPBAR-TCV' and 'ZYVAC-TCV',
therefore, there is no infringement of the said mark as
claimed or otherwise;
ii. There is no similarity between the packaging of the
plaintiff and that of the defendant No.2, therefore,
likelihood of confusion, as alleged or otherwise.
iii. The mark 'TCV' is highly generic and incapable
of affording exclusive protection.
iv. Assuming for the sake of argument, that the mark
'TCV' is descriptive, it has not acquired
distinctiveness, as established by the Plaintiff's
documents.
v. The mark 'TCV' per se is not being used by the
plaintiff itself - therefore, equities have to be
balanced in favour of the defendant no.2.
b. Balance of convenience is in favour of the
Defendant No 2
i. The mark 'TCV' per se is not being used by the
plaintiff itself.
ii. The plaintiff would not be put to any
inconvenience if the mark 'ZYVAC-TCV' which is
entirely different from 'TYPBAR-TCV' is used in
the course of trade.
iii. Being a vaccine for a tropical disease such as
Typhoid, all parties manufacturing the said vaccine
ought to be permitted to describe the product as such,
so that the same is made available, without any
confusion or deception, to the largest possible patient
base.
iv. Since 'TCV' is completely descriptive of the type
of vaccine, not allowing the defendant No.2 and
others from using the name 'TCV' would be against
public policy.
v. The fact that the defendant No.2 has used the
coined mark 'ZYVAC' (ZYDUS + VACCINE) along
with the descriptive term 'TCV' clarifies beyond
doubt, the Defendant no.2's bona fide adoption of the
mark.
c. No loss will be suffered by the Plaintiff if the
interim injunction is granted/irreparable harm
will be caused to Defendant no.2 in case an order
of interim injunction is passed
i. There is no similarity between the marks
'TYPBAR-TCV' and 'ZYVAC-TCV', therefore,
there is no infringement of the said mark as claimed
or otherwise.
ii. There is no similarity between the packaging of the
plaintiff and that of the defendant No.2, therefore, no
likelihood of confusion, as alleged or otherwise.
iii. The mark 'TCV' is highly generic and incapable
of affording exclusive protection. Assuming for the
sake of argument, that the mark 'TCV' is descriptive,
it has not acquired distinctiveness, as established by
the Plaintiff's documents.
iv. The mark 'TCV' per se is not being used by the
Plaintiff itself.
He seeks, the dismissal of the application.
CONCLUSION:
38. Having heard the learned counsel for the parties,
the issue which needs to be adjudicated in this application is
whether the plaintiff is entitled to an interim order seeking a
restraint against the defendants from using the mark
'ZYVAC-TCV'. It was contended by Mr. Chandra that
earlier three types of vaccines were available; for treating
typhoid (i) Parenteral Killed Whole Cell Vaccine; (ii) Oral-
live attenuated Vaccine; and (iii) Typhoid-Vi Capsular
Polysaccharide Vaccine. As these vaccines were not
producing immunization in children, a need was felt for a
new vaccine, which can be given to young children. It is the
case of the plaintiff that in the year 2008, it had invented a
new generation of Typhoid vaccine, being 'Typhoid Vi
Capsular Polysaccharide Tetanus Toxoid Conjugate
Vaccine' which is also referred in the industry as 'Typhoid Vi
Conjugate Vaccine IP / ViP's-TT', and accordingly coined
the abbreviation / acronym of the said vaccine as 'TCV' by
applying for the registration of two marks 'TYPBAR-TCV /
TCV' in the year 2012, which were granted in the year 2016
and 2018 respectively. It started manufacturing in May 2013
and is a prior user.
39. Mr. Chandra had stated that the revenue of the
plaintiff from the selling of the vaccine alone was INR
108.82 Crores in the year 2017-18. His case is that the
launch of 'Typhoid Conjugate Vaccine' by defendant No.2 in
the year 2018 under the name of 'ZYVAC-TCV' is apparent
violation of the plaintiff's trade mark 'TCV' / 'TYPBAR-
TCV', inasmuch as 'TCV' forms part of the mark 'ZYVAC-
TCV'.
40. The case as argued by Mr. Sapra is that, the mark
'TCV' of the plaintiff is generic abbreviation of the product
as also being descriptive of the goods it relates to, that is
'Typhoid Conjugate Vaccine' and cannot acquire any
distinctiveness through use and is therefore not entitled to
protection of law. It was also contended that the mark
'ZYVAC' is a composite mark in which 'ZY' are the first
two alphabets of 'ZYDUS' and 'VAC' are the three alphabets
of the word vaccine.
41. So, from the above, it is noted that the plaintiff
has registered marks 'TCV' and 'TYPBAR-TCV', whereas
the mark of the defendant No.2 is 'ZYVAC-TCV' for the
same vaccine.
42. So, first of all, it is necessary to look into the plea
of Mr. Sapra, that the mark 'TCV' being a generic
abbreviation / acronym of 'Typhoid Conjugate Vaccine' and
being descriptive of the goods i.e. vaccine, the marks are
incapable of trade mark protection.
43. The defendant No.2 has placed on record
literature of WHO, wherein the descriptive word, 'Typhoid
Conjugate Vaccine' has been described as one of the three
types of vaccines, other two being unconjugated 'Vi
Polysaccharide (ViPS)' and 'Live attenuated Ty21a'
available for treating Typhoid. The Division Bench of this
Court in Marico Limited (supra) has held that the
abbreviation of descriptive words cannot and should not be
given protection as a trade mark. The Division Bench also
in para 6 of the said judgment has referred to the fact that if
a person is first of the blocks in using descriptive words as a
trade mark or its abbreviation that will not entitle such
person to exclusively use the descriptive word mark or its
abbreviation as a trade mark, and for this purpose reference
has been made to the provisions of Section 9, 30 and 35 of
the Trade Marks Act. In fact, it was further held that even if
the descriptive word mark or its abbreviation is registered
even then such registration can be got cancelled. The
relevant paragraph 6 of the judgment is reproduced as
under:
"6......................it is high time that those
persons who are first of the blocks in using a
trade mark which is a purely descriptive
expression pertaining to the subject product out to
be discouraged from appropriating a descriptive
expression or an expression which is more or less
a descriptive expression as found in the English
language for claiming the same to be an exclusive
trademark and which descriptive word mark
bears an indication to the product's kind, quality,
use or characteristic etc. This is our view is in
accordance with the spirit of various sub sections
of Section 9 and Section 30 besides also Section
35 of the Act...................."
44. Similarly, in Cadila Healthcare Limited v Gujarat
Cooperative Milk Marketing Federation Limited & Ors,
2009 (41) PTC 336 (Del), wherein this Court while
considering the mark "Sugar Free" in an appeal filed against
the order of the Single Bench declining the injunction, held
that the use of the term 'Sugar Free' by the respondent (in
that case) was not in the trade mark sense but in common
descriptive adjective.
45. A Division Bench of this court, in SBL Ltd. v.
Himalaya Drug Co., 67 (1997) DLT 803, after observing that
descriptive marks are inherently incapable of being
appropriated and protected, until they assume a secondary
meaning, held as follows:
"(3) Nobody can claim exclusive right to use any
word, abbreviation, or acronym, which has become
public juris. In the trade of drugs it is common
practice to name a drug, by the name of the organ
or ailment which it treats or the main ingredient of
the drug. Such organ, ailment or ingredient being
public juris or generic cannot be owned by anyone
for use as trade mark. (emphasis supplied)
(4) Whether such feature is public juris or geris is
a question of fact. (5) If the two trade marks by two
competing traders use a generic word or an
expression public juris common to both the
trademarks it has to be seen if the customers who
purchase the goods would be guided by the use of
such word expression or would ignore it and give
emphasis to prefixes or suffixes or words used in
association therewith. The primary question to be
asked is what would remain in the memory of
customer? The surrounding circumstances such as
the presentation of goods, colour scheme and
lettering style etc., used on the packing also
assume significance."
46. In the case in hand, the mark 'TCV' as conceded
by Mr. Chandra is an abbreviation / acronym of 'Typhoid Vi
Capsular Polysaccharide Tetanus Toxoid Conjugate
Vaccine' / Typhoid Vi Conjugate Vaccine I.P. / ViP's - TT'
(see Para 10 above), which being a descriptive word / generic
term with regard to one vaccine for treating Typhoid, prima
facie the mark 'TCV' could not have been registered and the
registration to that extent is illegal.
47. Having said that, it is also a settled position of law
that a generic / descriptive term / words can be registered
provided they have acquired secondary meaning /
distinctiveness.
48. Insofar as the submission of Mr. Chandra that the
mark 'TYPBAR-TCV/TCV' has attained distinctiveness is
concerned, this Court in FDC Limited (supra), in paras 19
and 20 held as under:
"19. In Godfrey Philips India v. Girnar Food and
Beverages, 2005 (30) PTC 1 (SC) and Indian
Shaving Produtcs . Gift Pack, 1998 (18) PTC 698,
it was held that even descriptive marks are
capable of registration as trademarks, and their
unauthorized use can amount to infringement,
provided they attain that level distinctiveness,
through sustained use and reputation, that a mere
use of such generic term would immediately
signify the plaintiff as its manufacturer.
Therefore, in order to so find, that use of a
descriptive term or a term that is publici juris,
amounts to infringement, the plaintiff must
establish that use of the term has become
synonymous with its mark, or that the reputation
of the mark is of such nature that the public is
likely to get confused and would attribute the
defendants' goods to the plaintiff's. The more
descriptive the term employed or alleged to be
infringing, higher the standard of evidence
required to establish that term has in fact
acquired secondary meaning and thereby,
attained distinctiveness. (Emphasis supplied)
20. As to the standard of evidence required to
demonstrate distinctiveness, it was held, in British
Sugar [1996] RPC 281, that:
"There is an unspoken and illogical assumption
that use equals distinctiveness. The illogicality
can be seen from an example: no matter how
much use a manufacturer made of the word
"Soap" as a purported trade mark for soap the
word would not be distinctive of his goods."
(internal quotes omitted)
In Bach Flower Remedies, [2000] RPC 513, the
Court observed that:
"First, use of a mark does not prove that the
mark is distinctive. Increased use, of itself,
does not so either. The use and increased
use must be in a distinctive sense to have any
materiality."
(Emphasis supplied)
In Broadhead (1950) 67 RPC 209, the Court,
following the observation of Lord Russell in the
much celebrated Coca Cola of Canada v. Pepsi
Cola of Canada (1942) IA 2265/2007 in CS(OS)
334/2008 page No. 14 of 20 59 RPC 127, stated:
"Where you get a common denominator, you must
in looking at the competing formulae pay much
more regard to the parts of the formulae which
are not common-although it does not flow from
that that you must treat words as though the
common part was not there at all."
From the above, it is clear to establish that a
generic / descriptive term / word has attained distinctiveness /
secondary meaning, the plaintiff has to establish:
(1) That the use of the term has become
synonymous with its mark.
(2) The quality or characteristic would be a
material factor determining the purchasing
decision of significant portion of consumers.
Suffice would it be to state whether the marks 'TCV' /
'TYPBAR-TCV' have attained distinctiveness / secondary
meaning can only be established during trial. It is the case of
Mr. Sapra that there are no pleading in the plaint with regard to
distinctiveness. I say nothing on that. The same shall be seen,
at the time of final hearing following the trial.
49. In so far as the submission of Mr. Chandra that the mark
'ZYVAC-TCV' is deceptively similar to mark 'TYPBAR-
TCV' is concerned the Supreme Court, in Kaviraj Pandit
Durga Dutt (supra) has laid down a test in para 29 by stating as
under:-
"29..........But this apart, as the question arises in
an action for infringement the onus would be on
the plaintiff to establish that the trade mark used
by the defendant in the course of trade in the goods
in respect of which his mark is registered, in
deceptively similar. This has necessarily to be
ascertained by a comparison of the two marks-the
degree of resemblance which is necessary to exit to
cause deception not being capable of definition by
laying down objective standards. The persons who
would be deceived are, of course, the purchasers of
the goods and it is the likelihood of their being
deceived that is the subject of consideration. The
resemblance may be phonetic, visual or in the
basic idea represented by the plaintiff's mark. The
purpose of the comparison is for determining
whether the essential features of the plaintiff's
trade mark are to be found in that used by the
defendant. The identification of the essential
features of the mark is in essence a question of fact
and depends on the judgment of the Court based on
the evidence led before it as regards the usage of
the trade. It should, however, be borne in mind that
the object of the enquiry in ultimate analysis is
whether the mark used by the defendant as a whole
is deceptively similar to that of the registered mark
of the plaintiff." (emphasis supplied)
50. The Supreme Court, in Hofffman La Roche v. Geofrey
Manner and Co., 1969 (2) SCC 716, approvingly quoted the
following test for the comparison of marks from Pionotist Co.,
Ltd.'s Application, 23 R.P.C. 774:
"You must take the two words. You must judge of
them, both by their look and by their sound. You
must consider the goods to which they are to be
applied. You must consider the nature and kind of
customer who would be likely to buy those goods.
In fact, you must consider all the surrounding
circumstances; and you must further consider what
is likely to happen if each of those trade marks is
used in a normal way as a trade mark for the
goods of the respective owners of the marks. If,
considering all those circumstances, you come to
the conclusion that there will be a confusion- that
is to say, not necessarily that one man will be
injured and the other will gain illicit benefit, but
that there will be a confusion in the mind of the
public which will lead to confusion in the goods-
then you may refuse the registration, or rather you
must refuse the registration in that case."
(emphasis supplied)
51. The Court then proceeded to apply the test to the case and
observed:
"In order to decide whether the word
"DROPOVIT" is deceptively similar to the word
"PROTOVIT" each of the two words must,
therefore, be taken as a whole word. Each of the
two words consists of eight letters, the last three
letters are common, and in the uncommon part the
first two are consonants, the next is the same vowel
'o', the next is a consonant and the fifth is again a
common vowel 'o'. The combined effect is to
produce an alliteration. The affidavits of the
appellant indicate that the last three letters "VIT"
is a well known common abbreviation used in the
pharmaceutical trade to denote Vitamin
preparations. In his affidavit dated January 11,
1961 Frank Murdoch, has referred to the existence
on the Register of about 57 trade marks which
have the common suffix "VIT" indicating that the
goods are vitamin preparations. It is apparent that
the terminal syllable "VIT" in the two marks is both
descriptive and common to the trade. If greater
regard is paid to the uncommon element in these
two words, it is difficult to hold that one will be
mistaken for or confused with the other. The letters
'D' and 'P' in "DROPOVIT" and the corresponding
letters 'P' and 'T' in "PROTOVIT" cannot possibly
be slurred over in pronunciation and the words are
so dissimilar that there is no reasonable
probability of confusion between the words either
from the visual or phonetic point of view."
(emphasis supplied)
52. The aforesaid view was followed by the Supreme Court
in JR Kapoor v. Micronix India, (1994) Supp 3 SCC 215,
wherein the Court set aside the interim injunction in relation to
the marks 'Micronix' and 'Microtel' by holding that the word
'micro' being descriptive of the technology used for producing
electronic goods, no one could claim monopoly over the same
and also its usage was not likely to be misguiding / confusing.
The relevant paragraph reads as under:
"6. There are two things which impress us. Firstly, the
appellant is not manufacturing any one product such as
the boosters, which has been mainly taken into
consideration by the High Court. He is producing various
electrical and electronic apparatus in many of which
micro-chip technology is used. Even the boosters which
he manufactures and sells are of two types, viz.,
transistorized boosters and Integrated Circuit boosters
whereas the respondent-plaintiff manufacturers aerial
boosters only of the first type. Thus micro-chip
technology being the base of many of the products, the
word 'micro' has much relevance in describing the
products. Further, the word 'micro' being descriptive of
the micro technology used for production of many
electronic goods which daily come to the market, no one
can claim monopoly over the use of the said word.
Anyone producing any product with the use of micro chip
technology would be justified in using the said word as a
prefix to his trade name. What is further, those who are
familiar with the use of electronic goods know fully well
and are not only likely to be misguided or confused
merely by, the prefix 'micro' in the trade name. Once,
therefore, it is held that the word 'micro' is a common or
general name descriptive of the products which are sold
or of the technology by which the products are
manufactured, and the users of such products are,
therefore, not likely to be misguided or confused by the
said word, the only question which has to be prima facie
decided at this stage is whether the words 'tel' and 'nix' in
the trade names of the appellant and the respondent are
deceptive for the buyers and users and are likely to
misguide or confuse them in purchasing one for the other.
According to us, phonetically the words being totally
dissimilar are not going to create any such confusion in
the mind of the users............" (Emphasis supplied)
53. A Division Bench of this Court in Astrazeneca UK Ltd v.
Orchid Chemicals, 2007 (34) PTC 469, concluded that the
prefix 'Mero' had become publici juris, and concluded that the
marks 'Meronem' and 'Meromer' are prima facie dissimilar to
each other. In Apex Laboratories v. Zuventus Health
Care, 2006 (33) PTC 492 (Mad) (DB), a similar proposition of
law was articulated and a similar conclusion was arrived at in
relation the marks 'Zincovit' and 'Zinconia'. The Court
specifically reasoned that there was no visual or phonetic
similarity and therefore, no deceptive similarity."
54. Similarly, a Coordinate Bench of this Court in the case of
Superon Schweisstechnik India Limited v. Modi Hitech India
Ltd., MANU/DE/1319/2018, has, in paras 6 and 7 held as
under:
"6. The facts of this case show that the plaintiff
is selling its goods by using two trademarks
SUPERON and VAC-PAC, whereas the defendant is
selling its goods by use of its primary trademark
GMM/arc with addition of the words VAC-PAC on
the packaging. The colour combination of the
packaging of the plaintiff is dark yellow with use of
two other main colours being blue and black,
whereas the main packaging of the defendant is of
blue and white colour with use of the red colour for
the words 'arc' which is part of the trademark
GMM/arc, and there is also an expression 'Umesh
Modi Group' appearing on the packaging of the
defendant which is in red colour. We therefore will
look at the issue with respect to entitlement of the
reliefs claimed by the plaintiff on the ground that
whether in the facts of the present case as
hereinabove stated, can the defendant be said to be
passing off its goods as that of the plaintiff.
7. On the aspect of passing off, in my opinion, the
plaintiff has no real prospect to succeed in the suit.
This is firstly because the main trademark of the
plaintiff is SUPERON along with the added
trademark of VAC-PAC whereas the main
trademark of the defendant is totally different being
GMM/arc with the use of VAC-PAC. There is no
identity or deceptive similarity qua the aforesaid two
main trademarks of the parties and the different
trademarks are such to distinguish the goods of the
plaintiff from that of the defendant, and hence no
case is made out of passing off."
(emphasis supplied)
55. Having noted the position of law and drawing
inference from the above mentioned judgments, in the case
in hand 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. On such
exclusion what remains is 'TYPBAR' of plaintiff and
'ZYVAC' of defendant No.2. These are the essential
features of the marks of the parties and not 'TCV'. From
the comparison of these two marks, there is no deceptive
similarity between the two and as such there is no
reasonable probability for confusion between the words
either visually or phonetically. That apart, the reliance
placed by Mr. Sapra on Cadila Healthcare Limited v Dabur
India Limited, (1997) 17 PTC 417, wherein it is held that
where suffix is common, the earlier portion of the word is
natural, necessary and in fact, the actual mark of distinction
is justified.
56. Further, I note in the written statement filed by
defendant No.2, it is stated in para 13 of sub-para (iv) that
the 'TCV', per se is not being used by the plaintiff and no
evidence has been adduced to show use of the said words as
a trade mark. This stand of the defendant No.2 though
denied, has not been substantiated by any document to show
that the plaintiff is actually selling the vaccine under the
mark 'TCV'.
57. It is a settled position of law in view of Cluett
Peabody & Co. Inc. (supra), which was followed in
Veerumal Praveen Kumar (supra), on which the reliance
has been placed by Mr. Sapra, that if the mark is not used in
commerce, it affords no rights. The relevant para in Cluett
Peabody & Co. Inc. (supra) reads as under:
"37. XXX XXX XXX
(g) Registration enables the registered proprietor
to sue for infringement of registered trade mark
irrespective of the fact whether it is used or not
used. Registration confers on the proprietor a
monopoly right over the use of the mark. But,
proprietary rights in a trade mark acquired by use
are superior to rights obtained by registration
under the Act. This is the main defence put up on
behalf of the defendants in this Notice of Motion.
Therefore, prior user of the marks should be
protected against monopoly rights conferred by the
Act. (Pages 5 & 6 of Narayanan). A trade mark has
no meaning even if it is registered unless it is used
in relation to goods. Otherwise, its non-use may
lead to its death. A trade mark which drops out of
the use dies. Where there are no goods offered for
sale, there is no use of trade mark."
58. Similarly relevant portion in Veerumal Praveen
Kumar (supra) reads as under:
29. We are in agreement with the view of the
learned Single Judge of the Bombay High Court
that if there is non user for a long period of time
then by mere registration of the mark continuing
the respondents would not be entitled to any
injunction. This view is further reinforced by the
judgment in Imperial Group's case (supra) wherein
it was held that where there is no trading to give
rise to a goodwill there is no interest to be
protected by a trademark and such a trademark
cannot exist in vacuum."
59. That apart, it is also noted that the plaintiff's
packaging of the vaccine is dark blue in colour whereas the
defendant No.2's is light blue. The words 'TCV' in the
plaintiff's packaging are written in orange whereas in the
defendant No.2's packaging, they are in green colour.
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
plaintiff) and 'Typhoid Tetanus Toxoid Conjugated
Vaccine' (in the case of defendant No.2) are written. The
same clearly highlight / signifies the nature of the product,
to be vaccine, that too of similar type. So, a consumer can
easily make out what 'TCV' stands for.
60. Even the plea of Mr. Chandra that the words
'TCV' on the defendant's packaging has a protective semi-
circular shield similar to the one on the plaintiff's
packaging is also not appealing. The positioning of the
shield on 'TCV' in both the cases is different and has no
resemblance. The plea of Mr. Chandra that the plaintiff is
the first manufacturer of the 'Typhoid Conjugate Vaccine'
and as such is entitled to exclusive use of the trade mark
'TCV' is also not appealing.
61. Mr. Sapra is justified in relying on the
conclusion of this Court in Marico Limited (supra),
wherein this Court has held as under:
"6........it is high time that those persons who
are first of the blocks in using a trade mark
which is a purely descriptive expression
pertaining to the subject product out to be
discouraged from appropriating a descriptive
expression or an expression which is more or
less a descriptive expression as found in the
English language for claiming the same to be
an exclusive trademark and which descriptive
word mark bears an indication to the product's
kind, quality, use or characteristic etc. This is
our view is in accordance with the spirit of
various sub sections of Section 9 and Section
30 besides also Section 35 of the Act."
62. That apart, I have already held that 'TCV'
being an abbreviation, is not capable of being registered
as a trade mark and also that the mark 'ZYVAC-TCV' is
not deceptively similar to the mark 'TYPBAR-TCV'. So,
it is inconsequential if the plaintiff is using 'TYPBAR-
TCV' earlier to the defendants as one of the plea of Mr.
Sapra was that the plaintiff is not the first one to adopt the
words, 'TCV', inasmuch as the application for mark
'TCV' was first filed by one Sanjeev Thakkar, in relation
to medicinal preparations in the year 2009. This aspect
has not been denied by the plaintiff in its replication. The
relevant part of the same reads as under:
"D. "TCV"® has been continuously used by
Plaintiff
13. The contents of paragraphs 31 to 34 of the
Written Statement are denied in toto as false and
incorrect, and reliance is placed on the
documents and evidence placed on record with
the plaint. It is denied that the TCV per se
registration was obtained by Plaintiff without
any bona fide intent of use, and on the contrary
such trade mark has been extensively used by the
Plaintiff and is recognized as belonging to the
Plaintiff in the field of typhoid vaccines. It is
denied that the registration for TCV is liable to
be removed from the Register under Section 9 or
any other ground. It is reiterated that the non-
raising of Section 9 as an objection is clear
proof that as of 2012 when the trade mark
application was filed, Plaintiff was the first
coiner and adopter of the expression in respect
of typhoid vaccines. It is denied that there has
been no use of TCV® as a trade mark by the
Plaintiff, and on the contrary, the documents
filed with plaint show that such mark is
inextricably and indelibly associated in the
minds of the public with the Plaintiff alone. It is
further submitted that the submission regarding
distinction between "prescription drugs" and
"over the counter' drugs has no merit or basis, in
as much as it does not address the inherent
confusion in the minds of the weaker sections of
the patient population who may be sold the
Defendant's product as "TCV" belonging to the
Plaintiff."
63. In the absence of denial, it must be held that
Sanjeev Thakkar has coined the mark 'TCV' in 2009.
That apart, during his submissions it was stated by Mr.
Chandra that the plaintiff is not expected to sue all small
time infringers who may not be affecting plaintiff's
business by referring to the judgment of this Court in the
case of Pankaj Goel (supra) is concerned, the same
shall not help the case of the plaintiff as it is held by this
Court in FDC Ltd. (supra) that the existence of third
party / parties clearly depicts that medicinal products by
different entities, with similar words 'TCV' can co-exist
in the market without causing deception or confusion. It
follows, there cannot be any claim for infringement or
passing off.
64. That apart I also note, that the defendant No.2
has applied for registration of the mark "ZYVAC" only
and not 'TCV', which also demonstrate that the
defendant No.2, do not intend to use the words "TCV"
in a trade mark sense.
65. In so far as the judgments referred to by Mr.
Chandra are concerned, he referred to Satyam Infoway
Ltd. (Supra), to contend that it is not necessary to
establish long user, to establish reputation, it would
depend upon the volume of sales and extent of
advertisement. I may state here in view of my
conclusion above, this judgment, has no applicability.
66. Further he has relied upon the Judgment of
the Full Bench of the Bombay High Court in the case of
Lupin (supra) to contend that there is a strong
presumption in law as to the validity of registration of
the mark. There is no dispute on the proposition it lays
down. But in the facts of this case, as I have held, the
registration of the words 'TCV' is prima facie invalid,
the judgment has no applicability.
67. In so far as his reliance on the Judgment in the
case of Kumani Oil Industries Pvt. Ltd. (supra) to
contend that mere prefixing to a mark, the infringer
cannot defeat the legitimate rights of the plaintiff is
concerned, I have already held, that the words 'TCV'
are not capable of being used as a trade mark and the
prefix "ZYVAC" is clearly different from the mark
'TYPBAR'. The Judgment is clearly distinguishable.
68. Similarly, Patel Field Marshal Agencies
(Supra) shall also have no applicability. Rather the
word 'TCV' being incapable of registration, this Court
has prima-facie held the registration is invalid. An issue
has to be framed as to the invalidity of the mark 'TCV'
to enable defendant No.2 to approach the statutory
authority to decide the same.
69. In so far as the Judgment in the case of Sunil
Mittal and Anr. (supra) is concerned, the said Judgment
is clearly distinguishable on facts inasmuch as this Court
negated the argument that mark "Darzi" is generic /
descriptive and by holding that the mark being used by
the plaintiff for the last 20 years, granted injunction in
favour of the plaintiff against the defendant.
70. In view of my above discussion, this Court is
of the view that the plaintiff has not made out any case
for grant of interim relief, in the manner prayed for, in
its favour. The application is accordingly dismissed. It
is made clear that the aforeasaid is a tentative view.
CS(COMM) 1248/2018
71. List the matter before Joint Registrar on 3rd
July, 2020, for marking exhibits.
V. KAMESWAR RAO, J
MAY 26, 2020/jg/ak
