Case
Sun Pharmaceutical Industries Ltd. vs. J.B. Chemicals and Pharmaceuticals Ltd. & Anr. |CS (COMM) 369/2023
Product Category: Pharmaceutical Goods
Brief:
| Particulars | Plaintiff | Defendant |
| Trade Mark | RACIRAFT | RANRAFT |
| Registration Status | Application no. 5288739 Applied on – 17.01.2022 Registered on – 26.08.2022 | Not registered |
Plaintiff filed a suit against Defendant for infringing its registered trade mark with registration no. 5288739, RACIRAFT by adopting a deceptively similar mark RANRAFT. Both the marks fall under class 5, covering pharmaceutical goods and being used for treating the same ailment.
Defendants Argument
- The term ‘Raft’ is common in pharmaceutical trade, used as either a prefix or suffix, in various products like DIGERAFT, GAVIRAFT, ARORAFT, and ULGERAFT.
- The plaintiff has not invented the word RAFT and is not the exclusive proprietor of it.
- The prefix ‘RAN’ in RANRAFT is derived from trade mark RANTAC used by Defendant no.1 for over 35 years.
- Sales of RANRAFT by Defendant no.1 amounted to INR 31 lakhs in the first month of the product’s launch and INR 4.34 Crores from October 2022 to June 2023
- Defendant no. 1 adopted RANRAFT and filed for its registration, prior to the trade mark registration for RACIRAFT indicating prior usage rights.
Defendants’ list of cases:
| Macleods Pharmaceuticals Ltd. vs. Swisskem Healthcare & Ors | it is a practice in the field of medicinal and pharmaceutical preparations to derive/coin trade marks from molecule, disease or organ etc. |
| Aviat Chemicals Pvt. Ltd. v. Intas Pharmaceuticals Ltd. 93 (2001) DLT 247 | given the ‘magnitude of sales’ of the Defendant ‘of the sale of the drug by the defendant as well it would be improper to restrain the defendant from marketing the product’ |
| Sun Pharmaceutical Laboratories Ltd.v. Hetero Healthcare Ltd. & Anr. FAO(COMM) 96/2022 | The defendants relied on this judgement to state thatadoption of pharmaceutical trademarks can be derived from the stream of science and is not restricted to only organ, ailment or active ingredients |
| South India Beverages Pvt. Ltd. Vs General Mills Markeing Inc. & Anr. (2015) 61 PTC 231 | Court may look at the dominant part of a mark for the purposes of comparison. if a composite mark comprises a descriptive/ generic component used by other members of the trade, then the said component must be subtracted for the purposes of comparison of the rival marks |
| Indo-Pharma Pharmaceutical Works Ltd. Vs. Citadel Fine Pharmaceuticals Ltd AIR1998Mad347 | An abbreviation of a generic name which still conveys to the buyer the original generic connotation of the abbreviated name, is still, ‘generic’ |
| Biofarma and Ors. Vs. Sanjay Medical Store and Ors. 1997(17) PTC355(Del) | In the case of “flavedon” and “trivedon,” the court found the two marks prima facie dissimilar, mainly due to the distinct first syllable of “trivedon.” This aligns with Supreme Court principles for assessing deceptive similarity in pharmaceuticals. The court highlighted the importance of the prescription requirement for Schedule H drugs like these, noting that this necessity reduces consumer confusion, as such medications are not sold over the counter. The ruling also referenced case law emphasizing that factors such as product nature, packaging, and sale context should be considered in trademark similarity assessments. Ultimately, the differences between the marks, combined with their prescription-only status, supported the conclusion of non-similarity, minimizing the risk of confusion among consumers. The key principle is that the context of sale, especially prescription requirements, significantly impacts the likelihood of confusion in trademark cases |
Plaintiffs Argument
- The defendants should be injuncted to protect public interest as the goods are medicinal products.
- The plaintiff has no control over manufacturing, hygiene and raw materials used by defendants which could pose health risk and harm to plaintiff’s reputation & goodwill.
- Plaintiff relied on case Automatic Electric vs. R. K. Dhawan and submitted that “RAFT” is not publici juris, as Defendant no. 1 has also sought registration for RANRAFT. Plaintiff doesn’t claim exclusive right over “RAFT” in isolation.
- The Plaintiff is a registered prior user of the trade mark “RACIRAFT” by several months, making defendant’s sales irrelevant.
- The marks must be compared as whole from the perspective of an average consumer with imperfect recollection, in line with Anti-dissection rule.
- Relying on the case Anshul Industries vs. Shiv Tobacco Company, which laid down that honesty of adoption at the initial stage itself has to be established to take benefit of concurrent registration under Section 12(3) of the Act. If the user at the inception is dishonest, subsequent concurrent user will not purify the dishonest intention. Therefore, Plaintiff asserts that Section 12 of the Act is not applicable to the defendants in an infringement suit
Plaintiffs’ list of cases:
| Midas Hygeine Industries Pvt. Ltd. vs. Sudhir Bhatia & Ors. (2004) 3 SCC 90 | In cases of infringement either of Trade Mark or of Copyright normally an injunction must follow. Mere delay in bringing action is not sufficient to defeat grant of injunction in such cases. The grant of injunction also becomes necessary if it prima facie appears that the adoption of the Mark was itself dishonest. |
| United Biotech vs. Orchid Chemicals 2012 SCC Online Del 2942 | Marks have to be compared wholistically and specific elements must never be dissected while striking a comparison as that is against the Anti-Dissection Rule |
| South India Beverages (P) Ltd. vs. General Mills Marketing Inc. 2014 SCC Online Del 1953 | The Court should not engage in ‘technical gymnastics’ to find minor differences inter se the conflicting marks |
| Corn Products. vs. Shangrila Food; AIR 1960 SC 142 | The question of similarity had to be approached from the point of view of a man of average intelligence and imperfect recollection |
| Stiefel Laboratories vs. Ajanta Pharma Ltd. 2014 SCC Online Del. 3405 | Where Plaintiff is the prior and continuous user and marks are deceptively similar, ingredients of injunction in trademark cases is made out. |
| Cadila Health Care Ltd. vs. Cadila Pharmaceuticals Ltd., 2001 SCC Online SC 578. | The threshold of deceptive similarity is stricter in cases involving pharmaceutical products. |
| Bal Pharma vs. Centaur Laboratories 2001 SCC Online Bom 1176 | Using a known mark is either negligence or gamble |
| Neon Laboratories vs. Medical Technologies Ltd. 2015 SCC Online SC 905 | .since the respondent-plaintiffs have alleged, and have prima facie supported with proof, that they had already been using their trade mark well before the attempted user of an identical or closely similar trade mark by the appellant-defendant, the former would be entitled to a temporary injunction, in light of the abovementioned “first in the market” test. |
| Nutrica Pusti Healthcare Pvt. Ltd. v. Morepen Laboratories Ltd. 2021 SCC Online Del 2631 | Defence of publici juris requires that the common suffix should relate either to salt, ailment or organ |
| Automatic Electric v. R K Dhawan; (1999) 77 DLT 292 | ‘publici juris’ is not a defence available to the Defendants when it has itself applied for registration of the mark containing the word |
| Laxmikant V. Patel vs. Chetanbhai Shah 2002 3 SCC 65 | Innocent/honest adoption is not a defence to an infringement suit |
| Cadila Pharmaceuticals vs. Sami Khatib; 2011 SCC Online Bom 484 (DB) | The innocent/ honest adoption is not a defence available in a suit of infringement of trade mark. |
| Gujarat Bottling vs. Coca Cola & Wockhardt Ltd. Vs. Eden Healthcare | ‘Use’ is not a necessary ingredient for institution of suit by a registered proprietor. |
| There is a concept of deemed user from the date of registration | |
| Anshul Industries vs. Shiv Tobacco Company | The defence of Section 12 of the Act is not available to the defendants in an infringement suit. |
Judgement
Reasoning
- The defendant cannot argue or claim that the term “RAFT” is not part of the public domain.
- The court applied essential features test to assess the similarities rather than dissimilarities. The mere replacement of “CI” with “N” does not create a significant distinction for an average customer, leading to confusion.
- Reliance on Section 12 cannot be placed as Plaintiff’s registered trademark strengthens their infringement claim keeping in view of what has been held in Goenka Institute of Education and Research vs. Anjani Kumar Goenka.
- Sales figure are not relevant when the court is dealing with an infringement suit concerning Plaintiff’s registered mark.
- The impugned mark can’t be allowed to continue as it can cause irreparable harm, loss and injury to the plaintiff, a registered proprietor of the trademark RACIRAFT.
Cases relied on by the Hon’ble Court:
| Pankaj Goel vs. Dabur India Ltd | Taking active steps to protect its mark is evidence enough to state that the said mark of the plaintiff has not been abandoned by it |
| Wockhardt Ltd. Vs. Eden Healthcare | ‘Use’ is not a necessary ingredient for institution of suit by a registered proprietor. |
| Automatic Electric v. R K Dhawan; (1999) 77 DLT 292 | use of a word by others/ third parties cannot be a defence for the defendants |
| South India Beverages (P) Ltd. vs. General Mills Marketing Inc. 2014 SCC Online Del 1953 | The Court should not engage in ‘technical gymnastics’ to find minor differences inter se the conflicting marks |
| Laxmikant V. Patel vs. Chetanbhai Shah 2002 3 SCC 65 | Innocent/honest adoption is not a defence to an infringement suit |
| Cadila Pharmaceuticals vs. Sami Khatib; 2011 SCC Online Bom 484 (DB) | The innocent/ honest adoption is not a defence available in a suit of infringement of trademark. |
| Bal Pharma vs. Centaur Laboratories | Using a known mark is either negligence or gamble |
Verdict
The Defendants are restrained from using the impugned mark “RANRAFT” or any other mark deceptively similar to Plaintiff’s registered mark “RACIRAFT”, till the pendency of the present suit.
Counsel appearing for Plaintiff: Adv. Sachin Gupta, Rohit Pradhan, Adv. Prashansa Singh, Adv. Ajay, Adv.
Counsel appearing for Defendant: Adv. Shwetasree Majumder, Adv. Prithvi Singh and Adv. Vardaan Anand
Author: Sejal (Intern – Litlegal)
