In this case, Astra- IDL Limited (hereinafter referred to as ‘Astra’) filed the suit for permanent injunction against TTK Pharma Limited (hereinafter referred to as ‘TTK), to restrain TTK from infringing Astra’s mark “BETALOC”, which was registered under class 5 in respect of Pharmaceutical Preparation, by use of mark “BETALONG”. Astra herein claimed that TTK is using the mark which is deceptively similar to that of Astra’s, and TTK is passing off their goods as that of Astra’s. Brief facts of the case are as follows:
- That Astra is a public limited company and is carrying on business of manufacture and sale of medicinal products. Astra got registration of their mark i.e., “BETALOC” on 16th June, 1977 in class 5 of Trade Mark Merchandise Marks Act, 1958 (hereinafter referred to as Act). And since then, they have been using the said mark in respect of drug for the treatment of hypertension, angina pectoris, arrythanias etc.
- That Astra in month of November 1987 got knowledge of the mark “BETALONG” which was also used by TTK in respect of drug for treatment of hypertension, angina pectoris, arrythanias, etc.
- Subsequently, Astra served a cease-and-desist notice dated 18th November 1987 upon TTK. The said letter was duly replied, wherein TTK refused to oblige by the requisition of cease-and-desist notice. Hence, the suit was filed by Astra claiming that TTK has adopted the mark “BETALONG” with dishonest intent and has infringed the mark “BETALOC” registered in the name of Astra.
Arguments
By Astra i.e., Plaintiff
That Astra is carrying business with the registered mark “BETALOC” since 1977 and by the virtue of such registration and continuous usage they have acquired proprietary right in the mark “BETALOC” and hence they are exclusively entitled to use the mark in class 5 of the Act.
- That even after serving cease-and-desist notice TTK has been using the mark “BETALONG” which is deceptively similar to their mark. And by such usage TTK is taking the advantage of reputation and goodwill acquired by Astra, by passing-off the goods as that of Astra’s.
- That the contentions of TTK that drugs being sold through chemist on prescription of medical practitioner diminishes the chances of confusion is not true. Relying on precedents Ranbaxy Laboratories Ltd. vs. Dua Pharmaceuticals Pvt. Ltd., {1988 (8) PTC 273 (Del)}; and Burroughs Welcome (India) Ltd. vs. G. K. Sharma and King Scientific Research Centre, {(1989) 14 IPLR 60} it was contended that although drugs are dispensed on prescription, marks being deceptively similar can cause confusion.
By TTK i.e., Defendants
That the product manufactured by TTK when taken in appropriate doses blocks the effect of ‘Catecholomines’ (certain type of hormone which causes hypertension) acting on ‘beta receptors’ (located in heart) and such blocking effect is longer than other drugs. And therefore, in the mark “BETALONG”, ‘BETA’ is taken from the ‘beta receptors’ and ‘LONG’ represents longer duration for which the drug blocks ‘Catecholomines’; and such mark is coined without any reference to Astra’s mark “BETALOC”.
- That due to such abovementioned distinguishing feature of TTK’s drug it is well recognised among medical practitioners and such practitioners are not likely to get confused by alleged similarity between Astra’s mark and TTK’s mark.
- That the drugs in question are ‘Schedule-H’ drugs which can only be sold by chemist holding license on prescription of registered medical practitioner, the chances of confusion are substantially reduced. For such reliance was put on M/s. Johann A. Wulfing v. Chemical Industrial and Pharmaceutical Laboratories Ltd. {AIR1984Bom281}; and Sterwin A.G. v. Brocades (Great Britain) Ltd. {1979 RPC 481}.
- That the marks in question have to be analysed in detail. It was contented that the letters ‘LOC’ in Astra’s mark, “BETALOC”, do not convey any meaning and when taken together they are short, terse and sounds soft. Whereas the word ‘long’ in TTK’s mark has specific meaning, lengthy duration and pronunciation is lengthened and not terse. Therefore, the two marks by no means can be called deceptively similar.
Issue
The core issue involved in this case was whether the mark of TTK i.e., “BETALONG” is deceptively similar to the mark of Astra i.e., “BETALOC”.
Judgement
Hon’ble High Court of Bombay, relying on the decision of Supreme Court in the case of Corn Products Refining Co. v. Shangrila Food Products Ltd., [1960]1SCR968 observed that mark has to be observed in totality to decide upon question of deceptive similarity. It was observed by the court that:
“In the instant case in deciding whether the word ‘Betalong’ is deceptively similar to the word ‘Betaloc’, each of the two words must, therefore, be taken as a whole word. The words are so similar that there is reasonable probability of confusion between the words both from the visual and phonetic point of view. It is not a matter for microscopic inspection, but to be taken from the general and even casual point of view of a customer walking into a shop. As observed above in the instant case, apart from the syllable ‘ng’ in defendants’ mark, the two marks are identical”.
Further, it was observed by court that it cannot close its eyes to the factual reality that, in India the scheduled drugs which were supposed to be sold on prescription were sold without prescription in India, which reduced the weight to be given to this factor when evaluating deceptive similarity. The two marks in question are so deceptively similar that it “outweighs the weightage to be given to the factor that the goods are scheduled drugs.”
Thus, it was held that the mark of TTK i.e., ‘BETALONG’ was phonetically, visually and structurally similar to the mark of Astra i.e., ‘BETALOC’
By: Dhruv Dangayach, Ramaiah College of Law
Please contact us at info@origiin.com to know more about our services (Patent, Trademark, Copyright, Contract, IP Licensing, M&A of companies)
Subscribe to YouTube Channel HERE
Join Linkedin Group: Innovation & IPR
Whatsapp: +91 74838 06607
