[I-Site v. Eye Site] "Phonetic Identity" An Important Index To Test Deception: Delhi High Court Grants Relief To Sun Pharma

The Delhi High Court has observed that the phonetic identity or similarity is an important index of similarity or deceptive similarity of one mark against the other competing mark and that the tests of phonetic, visual and structural similarity or identity are disjunctive and not conjunctive.

Justice Jyoti Singh was dealing with a suit for permanent injunction filed by Sun Pharmaceutical Industries Limited concerning it's trademark, prominently displayed on the website www.sunpharma.com. The plaintiffs are involved in the manufacturing of speciality pharmaceuticals and active pharmaceutical ingredients since the year 1983, having 45 manufacturing sites in 6 continents and 10 world class research centres with over 30,000 strong multi-cultural work force from over 50 different nationalities.

It was stated that in order to protect its right in the SUN (Device) mark, trademark registrations were obtained in India as well as in a few foreign jurisdictions. It was claimed that the Plaintiff was the first owner of Copyright in the SUN (Device) having exclusive right to use the same under sec. 14 of the Copyright Act.

It was further averred that the mark ISITE/I-SITE was coined by Plaintiff No.1's predecessor in the year 1997 and had been in use ever since. Plaintiffs' product under the said mark was a well-balanced combination of vital vitamins and minerals in appropriate concentrations, which had been formulated to help in formation of blood cells, improving vision, treating acne, regulating blood pressure and treating certain skin disorders.

It was the case of the plaintiffs that in the second week of May, 2021, they learnt about the Defendants' medicinal product or health supplement under the impugned mark 'EYESITE', which was deceptively similar to Plaintiffs' trademark ISITE/I-SITE and was being used for identical goods, i.e. health supplements. It was further alleged that Defendants were also using the impugned mark, i.e. KL (Device), which was deceptively similar to Plaintiffs' SUN (Device). It was averred that from the packaging of the product, it was discovered that the aforesaid products were being marketed by both the Defendants.

According to the Plaintiffs, being in pharmaceutical business, Defendants were well aware of Plaintiffs' adoption and use of the trademarks and the action of the Defendants in adopting the marks and using them, amounted to infringement of the registered trademarks and copyright as well as passing off, unfair trade practice, etc.

The Court noted that the mark ISITE was coined by the Plaintiffs' predecessor in the year 1997 and had been used for various medicinal and pharmaceutical products including health supplements. It also said that the Plaintiffs had established that they were the owners and registered proprietors of the trademarks ISITE (word and device) and thus had the exclusive right to use them. The registrations were valid and subsisting, the Court added.

"Section 28 of the Trade Marks Act confers certain rights by virtue of registration, subject to other provisions of the said Act, including the exclusive right to use the trademark in relation to goods or services, in respect of which it is registered and to obtain relief in respect of infringement of the trademark in the manner provided under the Trade Marks Act. Therefore, clearly, two rights in favour of a registered proprietor of a trademark emanate from Section 28," the Court said.

The Court was of the view that the Plaintiffs' registered mark ISITE, when compared as a whole with the impugned mark EYESITE, were phonetically identical and visually similar and that when both the words are articulated, an ordinary prudent man would be unable to distinguish them by their sounds and there would be likelihood of deception and confusion on account of their phonetic identity.

The Court said:

"While it may be true that the trademark of the Plaintiffs has a prefix 'I' to the word 'SITE' while that of the Defendants has a prefix 'EYE' and a critical comparison of the two marks may disclose some difference, however, the likelihood of confusion and deception on account of phonetic identity and overall similarity of the two marks, when taken as a whole, cannot be ruled out albeit the test is of phonetic similarity and not identity."

It added,

"It needs no reiteration that phonetic identity or similarity is an important index of similarity or deceptive similarity of one mark against the other competing mark and the tests of phonetic, visual and structural similarity or identity are disjunctive and not conjunctive."

The Court added that the adoption and use of the impugned marks by the Defendants in relation to health supplements met the threshold and amounted to infringement of the Plaintiffs' statutory rights in the registered trademark "ISITE".

"From the documents placed on record by the Plaintiffs, which include screenshots from the interactive websites of the Defendants as well as the e-pharmacy namely 'Mednear', it is evident that Defendants have adopted and are using the trademarks of the Plaintiffs with respect to health supplements and it is clear that the intention is to ride over the Plaintiffs' reputation and goodwill," the Court observed.

The Court further observed that the dishonest adoption by the Defendants lead to an inevitable conclusion that the Defendants were guilty of having committed the tort of passing off and that the same would not only lead to loss of reputation but also loss of revenue for the Plaintiffs.

"Defendants have consciously decided to keep away from the proceedings and, therefore, there is no plausible explanation as to why the Defendants adopted the marks visually deceptively similar and phonetically identical for the same products," it added.

"Courts have repeatedly affirmed that a lower threshold for determining confusion would apply in case of OTC medicinal products, since a lay consumer, lacking knowledge or skill in the field of medicine, would be unable to offset the doubtful impression created while purchasing the products with identical or deceptively similar or similar trademarks. Applying the principles to the present case, a consumer, intending to purchase the health supplement would be prone to confusion on account of the phonetic identity in the competing marks of the Plaintiffs and the Defendants as the product is an OTC and is sold without prescription."

Accordingly, the Court ordered that the suit be partly decreed in favour of the Plaintiffs and against the Defendants.

The Court restrained the Defendants, from manufacturing, selling, offering for sale, advertising, directly or indirectly dealing in health supplements under the impugned marks EYESITE or any other trademark deceptively similar to the Plaintiffs' trademark ISITE/I-SITE and its formative trademarks.

Case Title: SUN PHARMACEUTICAL INDUSTRIES LTD. AND ANR. v. KINETIC LIFESCIENCE (OPC) P. LTD. AND ANR.

Citation: 2022 LiveLaw (Del) 369

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