In this case, Medley Laboratories (P) Ltd. (hereinafter referred to as Medley) filed a suit of trademark infringement against Alkem Laboratories for usage of mark “SUPAXIN” which is deceptively similar to registered trademark of Medley, “SPOXIN”. Brief facts of the case are as follows:
- Medley is registered proprietor of the trademark “SPOXIN” in respect of Pharmaceutical and Medicinal Preparations in Class 5 vide Registration number 420835. They applied for registration in year 1984 and have been using the mark since 1999, for medicinal preparations containing the generic drug SPARFLOXACIN.
- Alkem, India’s 10th largest Pharmaceutical Company (at the time of suit), started using the mark “SUPAXIN” and for the same registration application had been sent to Registrar of Trademark as ‘proposed to be used’.
- Suit for infringement and notice of motion was taken out by plaintiff to restrain Alkem from using infringing mark, initially an ex-parte injunction was passed in favour of Medley, but on another notice of motion by Alkem, parties were heard afresh and it was held by a single judge that the marks in question are not similar and therefore injunction is bound to be said aside. On such order by the Single Judge, appeal was preferred by Medley, which was the subject matter of present case.
Arguments
By Medley i.e., Appellant
- That medley is the registered proprietor of the trademark “SPOXIN” vide registration number 420835 and by virtue of registration they are entitled to exclusively use the mark and protect it.
- That Single judge has committed error of law by not granting injunction in favour of Medley, decision of Hon’ble Supreme Court in case of Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd.; {[2001]2SCR743}, was relied upon, wherein Supreme Court decided upon similar question with respect to marks being used in medical preparation. Medley contented that Apex Court held that in medical products and drugs public interest should be considered and a stricter approach has to be adopted because confusion as to medicinal product can have disastrous effect on health and in some cases on life as well.
- That balance of convenience was in favour of Medley as their mark “SPOXIN” is a registered mark and irreparable loss and injury would also be caused to them if injunction is refused, as the suit will take a long time and in spite of registered trade mark, the defendant will continue to use ‘deceptively similar’ mark SUPAXIN.
By Alkem i.e., Defendant
- That Alkem is honest user of the mark “SUPAXIN”, it has coined the term by taking into consideration two words i.e., “SUPA” which means superior and “XIN” which is a common suffix for antibiotics. That prior to applying for registration, they made an application to Registrar under rule 24 of Trade and Merchandise Marks Rules, 1959, requesting him to conduct a search and issue a search for similar marks and on basis of such search report they started using the mark “SUPAXIN”.
- That there was no dishonest intention in applying the mark and the mark is neither deceptively similar nor it would create any confusion to customers.
- That a discretionary order has been passed by Single Judge and under ordinary circumstances such orders are not interfered with by Appellate Court.
- That balance of convenience was not in favour of Medley because as per the findings of Trial Court Medley and Alkem started using the mark at around same time. That Alkem has established its bona fide usage by making search request to Registrar.
- That no evidence is produced before the court of Medley regarding the confusion, on the contrary affidavits were produced by Alkem to support that there was no likelihood of deception or confusion to doctors, or to chemists, or to patients.
Issue
The primary issue before the court was, whether the mark of Medley i.e., “SPOXIN” is deceptively similar to mark of Alkem i.e., “SPUAXIN”.
Judgement
Hon’ble Delhi High court observed that by virtue of registration Medley got the right to exclusively use the mark “SPOXIN” and the right to prevent others from using deceptively similar mark. Further court observed that the marks “SPOXIN” and “SPUAXIN” are deceptively similar and that once the mark is proved “to be identical or deceptively similar, the other factors, viz., the packing being different, number of tablets contained in the competing package is not the same, prices are not identical and/or the goods being sold on doctor’s prescription are altogether irrelevant and immaterial.”
Decision of Single Judge was overruled, as he failed to promptly apply the principles laid out of Apex Court in the case of Cadila Health Care (supra). It was held by court that:
“In our opinion, however, when the test is ”possibility’ of confusion in medicinal preparations, as held by the Supreme Court in Cadila Health Care Ltd., and the Courts have been asked by the Apex Court to take special care, in such cases, since confusion may harm and result in unpleasant consequences, if not disastrous results, the learned Single Judge ought to have granted injunction as prayed by the plaintiffs (Medley).”
As to the issue of discretionary matter it was held that when an adjudication has been made, may be prima facie, and in doing so, correct test has not been applied, it is open to the Appellate Court to interfere with the discretionary order made by the trial Court.
Thus, the appeals were allowed and Alkem’s mark was found to be deceptively similar with the mark of Medley.
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 India’s largest Linkedin Group: Innovation & IPR
