Test For Comparing Trademarks Of Medicinal Products Far Stricter As Any Confusion Would Result In Public Injury: Delhi High Court

The Delhi High Court has said that the test for comparison of two trademarks related to medicinal products needs to be far stricter than the one applied to other goods, as any confusion in the same would result in public injury.

Justice Navin Chawla made the observation while granting ad interim injunction in favour of FDC Limited, a pharmaceutical company, in its trademark infringement suit against Nilrise Pharmaceutical Limited, seeking protection of its registered mark "ZIPOD".

The court has temporarily restrained Nilrise Pharmaceutical Limited from manufacturing and selling pharmaceutical and medicinal preparations under its mark ZOYPOD or any deceptively similar variant of FDC Limited's mark ZIPOD, either as a standalone mark or as a prefix mark.

"In the present case, since the defendants have not been able to satisfactorily show that they are the user of the impugned mark since 2014, and even otherwise would be the later entrant into the market, and the two marks are phonetically and visually similar, the use of the impugned mark of the defendants "ZOYPOD" is liable to be restrained," Justice Chawla said in an order passed on September 23.

It was the case of FDC Limited that the mark ZIPOD was conceived by it in 2004 and has been in use since 2007 in respect of cefpodoxime based antibiotic and antibacterial preparations, which is used to treat conditions like pneumonia, sinusitis, cystitis and ear infections.

The suit challenges the adoption of the ZOYPOD mark by the defendants for the pharmaceutical product containing active pharmaceutical ingredient Cefpodoxime Proxetil.

FDC Limited argued that the impugned mark is phonetically and conceptually similar to its registered trademark ZIPOD, adding that the same amounts to infringement and passing off.

On the other hand, Nilrise Pharmaceutical Limited argued that the term "POD" is generic in nature as it is derived from the common molecular name Cefpodoxime, which falls in the list of International Nonproprietary Names (INN) and is used to treat bacterial infections. Therefore, it was argued that no one can claim an exclusive right over the same or any other mark having POD either as a prefix or suffix.

It was also submitted that the defendants have been using the impugned mark since the year 2014 and subsequently have established their own goodwill and reputation in the said mark.

However, the counsel appearing for the plaintiff submitted that the defendants' submission that the word POD is generic in nature is incorrect as the word appears only in the middle of the molecule's name and thus, the use of the same cannot be common to trade relating to pharmaceutical products.

It was also argued that documents such as CIMS Drug Book 2019-2020 and the Indian Drug Review (IDR) Compendium 2021 also do not mention the brand of the defendants' drug "ZOYPOD".

Applying the test of comparison of two trademarks as laid down by the Supreme Court in Amritdhara Pharmacy v. Satya Deo Gupta, Justice Chawla observed that prima facie, plaintiff's mark ZIPOD and defendants' mark ZOYPOD are phonetically similar.

"The dissimilarity in packing of the two products is not relevant as the plaintiff is the registered proprietor of its work mark "ZIPOD". Once the mark appear to be deceptively similar and the plaintiff is a prior adopter thereof, the plaintiff is entitled to protection of its mark from infringement thereof in terms of Section 29(2)(b) of the Trade Mark Act, 1999," the court said.

The court also rejected defendants' argument that the mark ZOYPOD has been derived from the molecular name Cefpodoxime.

"The explanation given by the defendants for adoption thereof, prima facie, does not appear to be genuine," Justice Chawla said.

The court also rejected the defendant's argument that they be permitted to use the impugned mark as they are using the prefix 'ZOY' for other medical preparations as well.

"Each mark of the defendant has to be tested on its own standing. Merely because the defendant uses the prefix "ZOY" for its other medicinal preparations, it cannot be allowed to use the impugned mark even though the same is found to be deceptively similar to an already registered mark with prior use," the court said.

It added: "Since the products in question are medicinal products, in my opinion, the test to be applied needs to be far stricter than the one applied to other goods, as any confusion would result in public injury."

Granting an ad interim injunction in plaintiff's favour, the court said that FDC Limited was able to make out a good prima facie case in its favour, adding that the balance of convenience also lied in its favour and against the defendants.

The plaintiff is likely to suffer a grave irreparable injury if the ad-interim injunction is not granted, the court added.

Advocates Shwetasree Majumdar, Prithvi Singh, Devyani Nath and Suvangna Agarwal appeared for the plaintiff. Advocate Anupriya Alok appeared for the defendants.

Title: FDC LIMITED v. NILRISE PHARMACEUTICALS PVT. LTD. AND ANR.

Citation: 2022 LiveLaw (Del) 1040

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