Delhi High Court Refuses Interim Injunction In Trademark Infringement Suit By Mankind Pharma Against RTPCR Testing Kit 'OMISURE'

The Delhi High Court has refused to pass an ad interim injunction against Tata Medical and Diagnostics Limited, manufacturer of 'OMISURE', an RTPCR kit used for detecting COVID-19 Omicron variant.

Justice Pratibha M Singh was dealing with a suit filed by Mankind Pharma Limited seeking permanent injunction for infringement of trademark. The Plaintiff claimed to be the 5th largest pharmaceutical company in India with a large range of medicinal and pharmaceutical preparations. The Plaintiff therefore sought protection of its registered trademark 'OMIPURE' which was adopted by the Plaintiff in the year 2007.

The said registration was under class 5 in respect of pharmaceutical and medicinal preparations. While the Plaintiff sold products under the trademark 'OMIPURE' from 2007 till 2012, there was a gap of 9 years between 2012 to 2021 when there was no sale under the mark 'OMIPURE'.

Post 2012, sales under the mark 'OMIPURE' were resumed by the Plaintiff only in 2021-2022. The medicinal preparations sold by the Plaintiff under the mark 'OMIPURE' formulations containing the chemical compound "Omeprazole" which were used as antacids, anti-reflux agents, and anti-ulcerants.

The grievance of the Plaintiff was that in January, 2022, it came across certain material on the internet, including advertisements and newspaper articles, that the Defendant intended to launch RT-PCR test kits under the trademark 'OMISURE' for detection of the Omicron variant of Covid-19. The Plaintiff had then addressed a cease-and-desist notice to the Defendant on 11th January, 2021 which was stated to have been delivered on 13th January, 2021 asking the Defendant to desist from using the mark 'OMISURE' and any other trade mark which were similar to the Plaintiff's mark 'OMIPURE' in relation to any medical testing kits, and medicinal and pharmaceutical perpetrations. However, no reply was received. Thereafter, the Defendant launched the RT-PCR testing kit under the trademark 'OMISURE'.

Noting that the mark 'OMIPURE' was in respect of `pharmaceutical and medicinal preparations' under class 5, the Court observed that Diagnostic kits/testing kits are not specifically included in the said registration and that there was some doubt as to whether diagnostic kits would fall in the same class, i.e., class 5.

As per the NICE classification, such kits would be covered in Class 10 which is a different Class altogether, the Court said.

"In any event, the fact that diagnostic kits are associated with the field of medicine cannot be disputed. The Defendant's mark 'OMISURE' is for a RT-PCR kit which is used in laboratories for the purpose of detecting whether the omicron variant is present in the swab sample or not. The test kit of the Defendant sold under the mark 'OMISURE' is of a specialised nature used in laboratories for diagnosing the Omnicron variant of Covid-19 and is not sold openly by chemists to the consuming public," the Court added.

The Court opined that the two marks in question, i.e., 'OMIPURE' and 'OMISURE' were not identical and that the pharmaceutical and medical preparations for which the Plaintiff's mark was registered was not the product for which the Defendant was using the mark i.e., diagnostic kits.

"The Defendant's product being a RT-PCR test kit to test Omicron variant of the Covid-19 is claimed to be a breakthrough innovation which has been developed in India. The sale of the test kit would be required to test samples for omicron variant of Covid-19 on a day-to-day basis. Any interdicting by the Court, at this stage, would be contrary to the interest of the patients and the public who are suffering from Covid-19," the Court said.

The Court further observed that the sale of the test kit for the purpose of diagnosis of the omicron variant of Covid-19 would not cause any confusion in the market or even association between the Defendant's product and the Plaintiff's mark.

"This Court cannot stop but opine that Covid-19 is omnipresent and Courts are no exception. Disputes relating to trade marks and patents in The Defendant's product being a RT-PCR test kit to test Omicron respect of Covid-19 products have reached the doors of courts. In such cases, the Court has to strike a balance between the rights of the individual and the public interest and apply the law to the facts and circumstances of each case. While the phonetic similarities between these two marks is clearly perceptible, the present case would not be one for an ad-interim injunction. This is due to the fact that the RT-PCR test kits 'TATA MD CHECK RT-PCR OMISURE' would not be confused in any manner with the 'Omeprazole' tablets or capsules of the Plaintiff sold under the mark 'OMIPURE'," the Court said.

Accordingly, the Court directed the following:

- Proper accounts shall be maintained by the Defendant of the sale of 'TATA MD CHECK RT-PCR OMISURE' test kits and the same shall be filed bi-annually by the Defendant in the form of an affidavit of a senior official duly authorised by a Board Resolution.

- If the Defendant intends to launch any RTPCR test kits or any other diagnostic kits for use in households and for sale across the counter in future, the Defendant would ensure that no mark which is identical similar/deceptively similar to 'OMIPURE' is used by it.

- The test kits under the name 'TATA MD CHECK RT-PCR OMISURE' may continue to be manufactured and sold subject to the above conditions.

Case Title: MANKIND PHARMA LIMITED v. TATA MEDICAL AND DIAGNOSTICS LIMITED

Citation: 2022 LiveLaw (Del) 258

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