Apex laboratories, herein is the manufacturer of pharmaceutical products and on 16th March 1988 it adopted the trademark “ZINCOVIT” for their product, subsequently, it obtained the registration and has been using the said mark for its products.
In February 2006 Apex Laboratories came to know about the mark of Zuventus Healthcare i.e., “ZINCONIA”, which has been used for manufacture and sale of similar product as that of Apex Laboratories. For the same infringement case was brough, and an ex-parte injunction was subsequently obtained. The said decision was challenged before Delhi High Court by Zuventus, wherein the ex-parte injunction order was vacated by Single Judge holding that there is no similarity between the mark “ZINCOVIT” and “ZINCONIA” and that the word ‘zinc’ is common name in trade. Appeal to such order was made by Apex Laboratories which was the subject matter of this case.
Arguments
By Apex Laboratories i.e., Appellant:
That the mark of Zuventus, “ZINCONIA”, is deceptively similar to the mark of Apex, Apex is the registered proprietor of the mark “ZINCOVIT” and has been extensively using the mark since registration, thus injunction is ought to be given in favour of Apex Laboratories.
By Zuventus Health Care i.e., Respondent:
That the Apex laboratories is not the exclusive proprietor of the mark “ZINCO”, there are several other registered owner of the mark “ZINCO”, moreover mark of Apex, “ZINCOVIT” and mark of Zuventus, “ZINCONIA”, are not visually and phonetically similar and the essential features in both the marks i.e., colour combination, scheme of writing are entirely different.
Issue
Whether the mark of Zuventus Healthcare Ltd. i.e., “ZINCONIA” is deceptively similar to mark of Apex Laboratories i.e., “ZINCOVIT”?
Judgement
Various precedents were cited before Hon’ble Delhi High Court by the counsel of both the parties, taking them into consideration it was held by the court that the medicine of Apex Laboratories and Zuventus, contains common element zinc; therefore, the word ‘zinc’ is common to trade and public juris. Apex Laboratories cannot claim exclusive use over the word ‘zinc’. It was also observed that while comparing for infringement a mark has to be taken as whole, it would not be right to spilt the mark for purpose of injunction just because they contain the word ‘zinc’ and Apex cannot claim exclusivity by using such mark.
Thus, it was held that the marks are not visually and phonetically similar so as to cause confusion and the order of Single Judge for vacating the order of interim injunction was upheld.
By: Dhruv Dangayach, Ramaiah College of Law
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