In this case, Wyeth Holdings Corporation and Ors. (Hereinafter referred to as Wyeth), who is the registered proprietor of the mark “FOLVITE”, filed an opposition for registration of the mark, “FOLV” applied by Burnet Pharmaceuticals (Pvt.) Ltd. (Hereinafter referred to as Burnet), on the grounds that Wyeth is the registered user of the mark “FOLVITE” and if registration is allowed to the mark of Burnet it will lead to infringement. Brief Facts of the case are as follows:
- Wyeth on 6th September 1946 made an application for registration of mark “FOLVITE” which was advertised in the Trade Marks Journal and on 28th April 1949 got registration of mark “FOLVITE” in class 5 in respect of a “nutritional factor of Vitamin B Complex in the treatment and prevention of vitamin deficiencies and anemias”.
- Burnet, who initially adopted the mark “FOLACID” for its products, changed in to “FOLV” for which permission was granted by Drugs Control Authority in December 2000. Later Burnet sought registration of mark “FOLV” in class 5 which was proposed to be used. When advertised in Trade Marks Journal it was duly opposed by Wyeth.
- Subsequently, registration of the mark “FOLV” as proposed by Burnet was refused by Registrar of Trademark for which appeal was preferred by Burnet which was pending before Intellectual Property Rights Appellate Board at time of institution of this suit. Briefly stated, the grounds on which registration was refused by Registrar are as follows:
- Burnet’s mark is similar to that of Wyeth and there exists likelihood of confusion since Wyeth has acquired reputation in the market.
- The mark proposed to be used by Burnet is visually and phonetically similar to that of Wyeth.
- Wyeth being a long and extensive user has acquired a reputation in the market and the use of a deceptively similar mark was likely to cause confusion to the public at large.
And the suit at hand has been instituted for infringement and passing off.
Arguments
By Wyeth i.e., Plaintiff
- That the mark “FOLVITE” was invented by Wyeth, and the said mark has earned a substantial reputation in the Market. The mark of Wyeth when compared in whole with the mark of Burnet i.e., “FOLV”, it can be seen that Burnet has used a deceptively similar mark which is likely to cause confusion. Further, use of the mark by Burnet for similar ailment and purpose increases such a chance of confusion.
- That Burnet initially adopted the mark “FOLCACID” which they later changed to “FOLV” for which no proper explanation had been provided on affidavit, which puts a benefit of doubt on Burnet claiming to be the honest user of the mark “FOLV”.
- That the contention of Burnet that Wyeth had delayed in moving the court which indicates that Wyeth had acquiescence with the business and the mark of Burnet is not true. This could be inferred from the fact that Wyeth has not abandoned their right to sue for infringement or passing-off.
- Reliance was placed by Wyeth on the decision of Hon’ble Supreme Court in the case of Cadila Healthcare Ltd. Vs. Cadila Pharmaceuticals Ltd. {[2001]2SCR743} wherein it was held by the court that in case of deceptive similarity in medicinal products a strict approach has to be adopted to protect people at large from dangerous consequences of confusion caused due to such deceptive similarity.
By Burnet i.e., Respondent
That there is no phonetic or structural similarity between the mark of Burnet and mark of Wyeth as a registered trademark is not infringed, when a mark when used in relation to goods or services, indicates inter alia the kind, quality, intended purpose or another characteristic of the goods and services.
- That Wyeth had delayed in moving the court which shows that they have acquiescence with business and trademark of Burnet.
- That the mark of Wyeth and mark of Burnet is based on the common element ‘Folic acid’ and when a mark consists of a common element, which in case of Wyeth means “FOL” derived from ‘Folic Acid’ and VIT derived from ‘Vitamin’, greater emphasis has to be given on uncommon elements i.e., letter ‘E’ which cannot be made as a ground for instituting suit of infringement.
- That the judgement of Supreme Court in Cadila Health Care Ltd. v Cadila Pharmaceuticals (supra) is not applicable to all classes of medicinal products but only to those where both the drugs are meant for curing the same ailment but the compositions are different, but in the present case, both the composition of both the drugs are same.
Issue
The core issue before Hon’ble Bombay High Court was whether the trademark of Burnet i.e., “FOLV” is deceptively similar, phonetically and visually, to the trademark of Wyeth i.e., “FOLVITE”?
Judgement
Hon’ble High Court of Bombay in this case, while citing various precedents observed that, while comparing the marks, they are to be considered as a whole, their structure has to be kept in mind and the court must look at the marks through the eyes of the purchaser having imperfect recollection. Based on such it was held the mark of Burnet, “FOLV” is deceptively similar to mark of Wyeth, “FOLVITE”
As to the contentions of Burnet, that the judgement in the case of Cadila Healthcare (supra) will not be applicable to present suit because the observation of Supreme Court must be confined to drugs having different composition, the court observed that the judgement has to be considered in its entirety, the ambit of judgement cannot be restricted by artificial process of construction, it was further observed by the court that:
“It would be inappropriate for the Court to apply a stricter standard only to a particular class of medicinal preparations. If the Court were to do this, it would have to make artificial distinctions from case to case based on whether or not the Court considers that a confusion arising out of the medicinal product in issue may or may not have disastrous effects on health and life. Such an approach is impermissible………Undoubtedly, where the competing drugs are meant to cure the same ailment but the compositions are different, mistaking one for the other may result in deleterious consequences. But, merely because the two competing marks are used for drugs with the same composition that would not justify applying a lower standard of scrutiny. For, even in such a case, the public interest lies in protecting the consumer against an unwary purchase of a deceptively similar product”
Further the argument of Burnet that, while comparing trademark more emphasis was to be placed on uncommon parts, was not accepted based on the following reasons:
- The mark “FOLVITE” does not have any English meaning, it is an invented term.
- Wyeth Mark is a composite mark; it is not open for Burnet to break down the mark. As long as mark is registered it is not open for Burnet to question the validity of registration by virtue of Section of 31(1) of the Act.
- The mark of Wyeth is registered as “nutritional factor of vitamin B”, hence it would be impermissible to equate Wyeth’s mark as preparation of ‘folic acid’ alone
Thus ultimately, it was held by Court that the mark of Burnet is deceptively similar to mark of Wyeth and that Wyeth has established prima facie case for grant of interim relief.
By: Dhruv Dangayach, Ramaiah College of Law
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