Wyeth Holdings Corporation & Anr. v. Burnet Pharmaceuticals (Pvt.) Ltd.

Judgment

This order will govern the Plaintiffs' Motion for interlocutory relief in an action for passing off and infringement.

2. On 6th September 1946, an application was made for the registration of the trade 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”. The mark was 2 advertised in the Trade Marks Journal and came to be registered in class-5 on 28th April 1949. The registration of the mark continues to be valid and to subsist. The First Plaintiff entered into a Registered User Agreement on 30th April 1986 with Cyanamid India Limited. The name of Cyanamid India Limited was changed to Wyeth Lederle Limited with effect from 1st January 1998. It is undisputed that the Plaintiffs are entitled to use and adopt the mark FOLVITE in a proprietary character.

3. The Defendant initially adopted the mark FOLCACID for its products. Subsequently, the mark was changed to FOL-V. Permission to do so was granted by the Drugs Control Authorities on 19th December 2000. In May 2000, the Defendant had filed an application for the registration of the mark FOL-V in respect of medicinal and pharmaceutical preparations falling in class-5. The Defendant stated that the mark was proposed to be used. Upon the mark being advertised, the Plaintiffs filed an opposition to the registration of the mark. On 15th December 2006, an order was passed by the Registrar of Trade Marks refusing registration to the 3 trade mark FOL-V of the Defendant. The principles grounds which weighed to the Registrar were thus: -(i) The Defendant's mark FOL-V bears similarity to the earlier trade mark FOLVITE of the Plaintiffs and having regard to the similarity of the goods involved, there was a likelihood of confusion on the part of the public, particularly since it was established that the mark of the Plaintiffs had acquired a reputation in the Indian Market; (ii) Though the Defendant may be right in contending that the prefix FOL was common to the trade, the mere addition of the common alphabet 'V' which denotes 'Vitamin' cannot lend sufficient distinction

to the mark of the Defendant from the mark of the Plaintiffs considered as a whole. There was an apparent danger of the public being confused and the use of the mark FOL-V would be detrimental to the distinctive character or repute of the mark of the Plaintiffs; (iii) The mark FOL-V adopted by the Defendant was visually and phonetically similar to the trade mark FOLVITE of the Plaintiffs; (iv) As a result of a long and extensive user, the mark of the Plaintiffs has acquired a tremendous reputation in the Indian Market and the user of 4 a deceptively similar mark by the Defendant was likely to cause confusion in the mind of the public and the trade.

4. The Defendant has filed an appeal against the order passed by the Registrar refusing registration to the Intellectual Property Appellate Board. The appeal is pending.

5. The suit out of which these proceedings arise has been instituted for infringement and passing off.

6. In support of the application for injunction, it has been urged on behalf of the Plaintiffs that (i) The goods of the Plaintiffs and the Defendant are identical and the mark of the Defendant is visually and phonetically similar to the mark of the Plaintiffs. Comparing the mark as a whole, it is evident that the Defendant has adopted a mark which is deceptively similar to the mark of the Plaintiffs which consists of an invented word; (ii) There is a serious likelihood of confusion since both the marks are used for the same ailment, for the same purpose, and by the same type of customers or patients and the mark of the 5 Defendant is deceptively similar; (iv) The adoption of the mark FOL-V by the Defendant is not honest and there is neither any explanation nor any traverse on affidavit of the reasons which led the Defendant to change over from the mark FOLCACID to FOL-V; (v) There is no delay or acquiescence on the part of the Plaintiffs in filing the suit and the conduct of the Plaintiffs in opposing registration of the Defendant's mark and other similar marks would be indicative of the fact that there was no abandonment by the Plaintiffs of their right to sue for infringement and passing off; (vi) The mark of the Plaintiffs was registered as a nutritional factor of the Vitamin B-Complex for the treatment of anemia and it is a misnomer to suggest that the mark as registered is confined to a folic acid preparation. FOLVITE is an invented word and so long as the registration continues to remain valid and the mark continues on the Register, the consequence of an infringement must follow; (vii) In view of the judgment of the Supreme Court in Cadila Health Care Ltd vs. Cadila Pharmaceuticals Ltd.,1 a deceptive similarity in the case of medicinal products must be dealt with by a great degree of strictness in order to protect the members of the public from the serious consequences that may ensue as a result 1 AIR 2001 SC 1952 6 of such confusion; (viii) The relevant date for the cause of action is the date on which the conduct of the Defendant commenced. In the present case, the Plaintiffs have established sales of Rs. 9.89 crores in the year 2000-01 and Rs.60 crores between 1990 and 2001 in respect of the mark FOLVITE. The Defendant has adduced no proof whatsoever of the actual sales of the other products using the prefix FOL; (ix) The Plaintiffs had opposed the registration of similar marks Fulivit and FLUOVITE – one application was abandoned while the second was withdrawn; (x) Having filed an application for the registration of FOLVITE, the Defendant cannot be heard to say that their mark is not distinctive or that the word FOL represents Folic acid and 'V', Vitamin. The argument would be self defeating.

7. On the other hand, it has been urged on behalf of the Defendant that (i) There has been a delay on the part of the Plaintiffs in moving the Court in circumstances in which an inference can be drawn that there has been an acquiescence in the conduct of business by the Defendant with the use of the offending mark. There is a distinction between registration and use of a mark and while the 7 Plaintiffs were opposing the registration of the mark, they consciously made a decision not to oppose the use of the mark, allowing the business of the Defendant to be built up over a period of seven years; (ii) The judgment of the Supreme Court in Cadila Health Care which holds that a stricter test should be applied in the case of pharmaceutical products, should not be applied to all classes of medicines but only to those cases where both the drugs are meant for curing the same ailment but the compositions are different; (iii) There is no phonetic or structural similarity between the two marks. Under Section 30(2)(a) of the Trade Mark Act, 1999, a registered trade mark is not infringed where the use in relation to goods or services indicates inter alia the kind, quality, intended purpose or other characteristic of the goods and services; (iv) The abbreviation FOL stands for FOLICACID, while the abbreviation VIT stands for Vitamin, both of which are generic descriptions common to the trade. When a word consists of a common element, greater emphasis must be laid on the uncommon elements. Consequently, in assessing where there is deceptive similarity, both sets of letters viz., “FOL” and “VIT” must be excluded. The 'e' is all that remains in the mark of the Plaintiffs. 8

8. At the outset, it would be necessary to advert to the relevant provisions of the Trade Marks Act, 1999. Section 28(1) of the Act confers upon the registered proprietor of a trade mark, the exclusive right – upon a valid registration – to the use of the trade mark in relation to goods or services in respect of which the trade mark is registered and to obtain relief in respect of infringement in the manner provided by the Act. Section 29(1) provides that a registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to the trade mark in relation to goods or services in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark. The expression “deceptively similar” is defined in Section 2(1)(h): “A mark shall be deemed to be deceptively similar to another mark if it so nearly resembles that other mark as to be likely to deceive or cause confusion.” Section 30 of the Act defines limits on the effect of a registered trade mark. Sub-section (2) of Section 30 provides for certain situations in 9 which a registered trade mark is not infringed. Among them is a situation in which a mark is used in relation to goods or services to indicate inter alia the kind, quality, intended purpose, value, geographical origin or other characteristics of the goods or services.

9. The principles which must guide the Court in determining whether the Defendant's mark is deceptively similar to the mark of the Plaintiffs were enunciated in the judgment of Mr.Justice Parker in the Pionotist Case:2 “You must take the two words. You must judge them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks. If, considering all those circumstances, you come to the conclusion that there will be a confusion – that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods – then you may refuse the registration, or rather you must refuse the registration in that case.” The dictum of Justice Parker has been cited with approval in the 2 1906(23) RPC 774 10 judgments of the Supreme Court in Amritdhara vs. Lakshmandhara,3 (at para 7) and more recently in Cadila Health Care Ltd. vs. Cadila Pharmaceuticals Ltd. (supra). The judgments of the Division Bench of this Court in Ciba Ltd. vs. M. Ramalingam,4 and Indchemie Health Specialities Pvt. Ltd. vs. Naxpar Labs Pvt. Ltd. ,5 follow the dictum.

10. Since the judgment of the Supreme Court in National Sewing Thread Co. Ltd. Chidambaram v. James Chadwick and Bros. Ltd.,6 it is a settled principle of law that the Court must assess each matter from the position of a purchaser “who must be looked upon as an average man of ordinary intelligence”. For it is such a purchaser whose reaction to a particular trade mark has to be considered and what association he would form, by looking at the trade mark and in what respect he would connect the mark with the goods he would be purchasing. In Corn Products Refining Co. vs. Shangrila Food Products Ltd.,7 the mark of the appellant,