Invalidity Of Trademark Registration Not A Defense To Infringement, But May Be Relevant When Deciding The Question Of Relief: Delhi HC

Referring to the Supreme Court's decision in Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., the court reiterated that in cases dealing with claims of deceptive similarity between rival pharma preparations, public interest ought to be considered.

“…courts have to adopt a more relaxed standard while examining the aspect of deceptive similarity and be more liberal while granting injunction in such cases, so as to ensure that, owing to deceptive similarity, patients do not end up being administered, or end up consuming one preparation instead of another”.

In the facts of the case, Justice C Hari Shankar noted that not only there was phonetic similarity between the rival marks (plaintiff's TUMORIN and defendant's TUMOTIN), but also both applied to homeopathic preparations sold through common outlets and targeted the same customer base.

“Phonetically, there can be, in my opinion, little doubt that the words TUMORIN and TUMOTIN are closely similar. The only difference between the two is the 'R' in one and the 'T' in the other. The words rhyme. They share the common TUMO prefix. RIN and TIN are obviously phonetically similar. Both are homeopathic preparations, and as already noted, are sold through common outlets, targeting the same consumer segment.”

As such, it was held, that there was likelihood of confusion between the rival marks, which could not be overlooked since homeopathic preparations are available across the counter and not necessarily require advice or prescription of a registered practitioner.

“Confusion, even in the minds of the patient who visits the homoeopathic pharmacy, wanting to buy TUMORIN, and who may end up buying TUMOTIN instead, cannot, therefore, be overlooked.”

The plaintiff, being registered proprietor of the mark “TUMORIN” (under which it manufactures and sells homeopathic preparations intended to cure benign growths), had filed the application seeking interim injunction against defendant's use of “TUMOTIN” in connection with homeopathic preparations aimed at curing similar ailments.

In counter, the defendant had raised a challenge to the validity of plaintiff's registration for “TUMORIN”. However, the same was rejected by the court while observing,

“Validity of the registration of the plaintiff's mark is not a consideration envisaged by Section 29 for infringement to exist. All that Section 29 requires is that the plaintiff's mark must be registered. However, in order for the plaintiff to be entitled to relief against infringement, Section 28(1) requires that the registration be valid.”

It was added that under the Trade Marks Act, there is a presumption of validity in favor of a registered trademark. However, presence of overwhelming circumstances, as would clearly indicate that the mark's registration was invalid, can be a legitimate factor for a court to consider when deciding whether or not to grant relief against infringement, even though infringement is found to exist.

In context of the plaintiff's case, the court observed that “TUMORIN” was a registered trademark and had already survived a challenge to registration by proprietor of the mark “TUMOCIN”. Thus, Section 31(1) entitled it to a presumption of validity, at least at the prima facie stage.

After going through the material on record and hearing rival submissions, it was concluded,

“…the plaintiff, being the proprietor of the registered trade mark, TUMORIN, is entitled to a presumption of validity under Section 31(1) and, at the prima facie stage, is also entitled to relief against injunction by the use of others of marks which are deceptively similar to the plaintiff's mark under Section 28(1) of the Trade Marks Act.”

Till disposal of the suit, the defendant has been restrained from using the mark “TUMOTIN” (or another deceptively similar mark) for homeopathic preparations, or for other allied or cognate goods/services. The injunction, however, does not apply to the defendant's stocks that have already entered the market.

Advocates Varun Singh and Tanvir Nayar appeared for plaintiff

Advocates Purvesh Buttan, Prateek Narwar and Jaspreet Kaur appeared for defendant

Case Title: Bhargava Phytolab Private Limited v. LDD Bioscience Private Limited

Citation: 2023 LiveLaw (Del) 1235