A suit was filed by the Plaintiff against the Defendants seeking permanent injunction restraining of trademarks, passing off, unfair competition, damages/rendition of accounts of profits and delivery up, etc.
| Plaintiff’s Trade Mark | Defendant’s Trade Mark |
| PEPFIZ Molecule: Papain, Fungal Diastase and Simethicone Use: Antacid Sold in the form: Effervescent tablets and sachets TM Registration under No. 555726 dt. 2.8.1991 in Class 5. Renewed and Subsisting | PEPFIX -DSR Molecule: Rabeprazole Sodium and Domperidone Use: Antacid Sold in the form: Capsules No TM application filed. |
| MINOZ Proprietor: Plaintiff Molecule: Minocycline Use: antibiotic to treat infections, severe acne. Sold in the form: capsules, tablets, and gel formulations Earliest TM registration under no. 1171648 dt. 4.2.2003. Renewed and subsisting. | MINOZIL Proprietor: Defendant No. 1 Molecule: Minoxidil Use: to promote hair growth after hereditary hair loss Sold in the form: Liquid Solution Impugned trade mark application under no. 4759191 dated 27.11.2020, on proposed to be used basis has been opposed by the Plaintiff on 27.6.2024 vide opposition no. 1332204. Opposite party did not file a counter statement and the impugned mark shall be declared abandoned. |
Plaintiff’s contentions qua PEPFIZ and MINOZ:
It was submitted that Plaintiff coined and adopted the trade marks PEPFIZ and MINOZ in the years 1991 and 2003, and has been continuously, openly and extensively using them since the years 2004 and 2003, respectively. The said trade marks had annual sales of Rs. 22.6 million and Rs. 216 million, respectively in the FY 2023-24.
Plaintiff’s contentions qua MINOZIL and PEPFIX-DSR:
PEPFIX-DSR:
It was submitted that the competing marks are deceptively similar, which is evident from the fact that the impugned mark PEPFIX-DSR is almost identical to the Plaintiff’s trade mark PEPFIZ, with the ‘Z’ being replaced with ‘X’ in PEPFIZ, and mere addition of generic suffix DSR, which stands for Delayed-Release System or Dual-Release System, and is commonly mentioned in pharmaceutical products.
MINOZIL:
It was submitted that MINOZIL is phonetically, visually, and structurally similar to Plaintiff’s registered and prior used trade mark MINOZ, with an addition of “IL” to the Plaintiff’s mark. The same is causing confusion among consumers.
It was further contended that the adoption and use of the impugned marks amount to infringement of Plaintiff’s registered trade marks, passing off and unfair competition, which is in turn causing confusion and deception amongst the public and loss to the Plaintiff. Therefore, the Defendants ought to be restrained by way of an ex-parte ad interim injunction.
Court’s Verdict:
The Hon’ble court relied on to the case of Mahadeo Savlaram Shelke and Ors. v. Pune Municipal Corporation and Anr. (1995) 3 SCC 33, to held that if prima facie case of infringement is established, then, injunction shall follow.
The Hon’ble Court was of the opinion that Plaintiff demonstrated a prima facie case for grant of injunction and, in case, no ex parte ad interim injunction is granted, the plaintiff will suffer an irreparable loss. It was further observed that the balance of convenience lies in favour of the plaintiff, and against the Defendant.
Accordingly, the Hon’ble Court restrained the Defendants from dealing in medicinal preparations or similar or like or allied goods under the impugned marks PEPFIX-DSR and MINOZIL, or any other extensions and/or any other trade marks containing the words PEPFIX and MINOZIL, and/or any other trade marks that may be identical with and/or deceptively similar to Plaintiff’s registered trade marks PEPFIZ and MINOZ amounting to infringement of the plaintiff’s registration as well as passing off the defendant’s goods and business for those of the plaintiff’s goods and business.
Counsel for Plaintiff: Adv. Sachin Gupta, Adv. Rohit Pradhan, Adv. Ajay, Adv. Prashansa Singh, Adv. Adarsh Agarwal, Adv. Tanmay Sharma.
