#trademark Archives - Prime Legal

2 May

Pfizer’s Landmark Victory: Delhi High Court Upholds Patent Rights, Affirms Innovation Protection in Pharmaceutical Industry

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Case Name: Pfizer Products INC v. Renovision Exports Pvt. Ltd. And Anr.

Case No.: CS(COMM) 378/2018

Dated: May 1, 2024

Quorum: Justice Sanjeev Narula

FACTS OF THE CASE:

The facts of the case are so that by requesting a permanent injunction and other ancillary reliefs, Pfizer Products Inc., the Plaintiff, hopes to protect its trademark rights in the well-known allopathic drug “VIAGRA,” which is used to treat erectile dysfunction. The defendants are trying to stop Pfizer Products Inc. from marketing their homoeopathic medicine under the confusingly similar trademark “VIGOURA,” which is purportedly used to treat sexual disorders.

Pfizer’s primary goal in filing the lawsuit was to defend their common law rights to the aforementioned mark. But later, the scope of reliefs was expanded, and Pfizer also claimed passing off in addition to trademark infringement, after securing statutory rights through the trademark registration of “VIAGRA.” As a result, the case calls into question the cross-border reputation and trademark protection of medications with names that are similar but are used for different purposes—one is a conventional allopathic drug, while the other is a traditional homoeopathic medicine.

By answering these queries, the Court will decide whether or not the Defendants’ use of “VIGOURA” constitutes a passing of trademark infringement on Pfizer’s “VIAGRA” brand.

CONTENTIONS OF THE PETITIONER:

The petitioners adamantly maintain that Pfizer is a preeminent international pharmaceutical corporation that is largely involved in the development, production, and distribution of medications for use in human and veterinary medicine. Pfizer was named the “No. 1 Company” by Fortune Magazine in 1998, and their goods are widely available in more than 150 countries.

Pfizer registered the trademark “VIAGRA” in 1995 for their ground-breaking erectile dysfunction medication, sildenafil citrate. The medication “VIAGRA” was released into the US market in 1998 after the Food and Drug Administration of the United States Department of Health and Human Services approved it on March 27, 1998, stating that it was a significant advance in the treatment of erectile dysfunction.

It was found by Pfizer that Defendant No. 1, operating under the name Renovision Exports Pvt. Ltd., was using the trademark VIGOURA to sell goods marketed as “Nervine Tonic for Men” and “Homoeopathic Medicine Invented in Germany.”

Later research uncovered “VIGOURA” product variations, including “VIGOURA 2000,” “VIGOURA 5000,” and “VIGOURA 1000.” Defendant No. 2 is said to be the producer of these items. The defendants received a cease-and-desist letter from Pfizer’s lawyers on February 3, 2005, as soon as they responded to the matter. The first day of March, 2005, a reminder letter was sent.

On March 11, 2005, Defendants received a response to the aforementioned letters in which they refuted Pfizer’s allegations and reaffirmed their ownership of the “VIGOURA” trademark. Applications for the registration of the marks “VIGOURA 2000” and “VIGOURA 5000” were submitted by Defendant No. 1.

The petitioners added that. The “VIGOURA” mark of the defendants is confusingly similar to Pfizer’s well-known “VIAGRA” trademark. The defendants’ deliberate endeavour to profit from the goodwill and reputation attached to “VIAGRA” is evidenced by this resemblance. Both marks are similar in that they have three syllables, start with the letter “Vi,” and end with the letter “Ra,” making them phonetically similar. Furthermore, there is a greater chance of confusion regarding the source and association of the products because they both cater to the same market segment—those looking for solutions for medical ailments.

CONTENTIONS OF THE RESPONDENTS:

The defendants contended that the defendants are well-known experts in the field of homoeopathy. Defendant No. 1 is a licenced oil company that has a solid track record of producing homoeopathic remedies, such as “VIGOURA 1000,” “VIGOURA 2000,” and “VIGOURA 5000.”

The products in dispute are specific medications designed to treat various medical conditions. “VIGOURA 1000” is different from the Plaintiff’s product, which treats male erectile dysfunction, in that it concentrates on women’s vitality and menstrual regulation. The product “VIGOURA 1000” is no longer relevant to the current controversy because of this differentiation.

The homoeopathic remedies “VIGOURA 2000” and “VIGOURA 5000” are made to act as non-steroid aphrodisiacs by promoting metabolic processes. Homoeopathic remedies function according to distinct principles from traditional allopathic medications, such as Pfizer’s “VIAGRA.” While “VIAGRA” is used to provide immediate relief, the defendants’ “VIGOURA” has effects that take two to three months to manifest. Customers are less likely to become confused because of the two medications’ different types and compositions as well as the fact that they are both prescribed medications.

It is sincere, real, and legitimate that Defendants have adopted the contested mark “VIGOURA.” The whimsical symbol is a play on the word “vigour” in English. Additionally, “VIGOURA 2000,” which was initially produced and sold by the Defendants in 1999, has a long history in the market for the products under dispute. In addition, on January 21, 2003, Defendant No. 1 requested trademark registration for “VIGOURA 2000” and on December 30, 2003, for “VIGOURA 5000” in class 05. Furthermore, on April 27, 2005, Defendant No. 1 accomplished the registration of a copyright for the creative work contained in the “VIGOURA 2000” package. Therefore, a considerable amount of time passed before Pfizer registered its trademark for the products made by the defendants.

Long before Pfizer, a number of other organisations obtained registration rights in trademarks that used the same name as “VIAGRA” for pharmaceutical or Ayurvedic medical products classified as class 05.

The defendants maintained that Pfizer Inc., the trademark’s owner, had not granted the plaintiff an assignment of the mark “VIAGRA.” The Plaintiff is therefore unable to assert proprietorship over the aforementioned mark.

LEGAL PROVISIONS:

Section 38 of the Trademarks Act- Assignability and transmissibility of registered trade marks. Notwithstanding anything in any other law to the contrary, a registered trade mark shall, subject to the provisions of this Chapter, be assignable and transmissible, whether with or without the goodwill of the business concerned and in respect either of all the goods or services in respect of which the trade mark is registered or of some only of those goods or services.
Section 18(1) of the Trademarks Act- Anyone claiming to be the owner of a trademark that they have used or intend to use and who wants to register it must submit an application in writing, following the prescribed process, to the Registrar.

ISSUES:

Whether the Defendants are infringing the registered trade mark of the Plaintiff “Viagra”?
Whether the Plaintiff is the proprietor of the trademark “VIAGRA”?
Whether the Plaintiff is entitled to any damages? If so, the extent thereof?
Whether other trademarks resembling and similar to the trademark of the Plaintiff have been registered, as alleged by the Defendants? If so, to what effect?
Whether the use of the mark “VIGOURA” by the Defendants amounts to passing off the goods as that of the Plaintiff?

COURT’S ANALYSIS AND JUDGMENT:

The meaning and concept of a “proprietor” are crucial to this issue, the court noted brand. A “registered proprietor” is described as under the Trademarks Act as the individual named in the Trademarks Register as the owner of the brand. Consequently, the legitimate owner is acknowledged as being the registered proprietor of the brand, with the sole authority to use the brand in relationship with particular products or services.

The court also decided that a “proprietor” means anyone who has exclusive possession of a property, not only the registered owner. rights to use the trademark in connection with particular goods or services. This possession can be proven by using the trademark in commercial actions in the market, giving rise to common law rights. Furthermore, these rights could be obtained by officially registering with the Trademarks Register. So, proprietorship can be thought of as a spectrum- from its first application in the market to its official acknowledgement by signing up.

Legal principles and factual analysis are combined in the evaluation of trademark infringement and passing off. The degree of resemblance between the contested trademarks and the events leading up to the adoption of the challenged mark are the main areas of overlap in the appraisal of each claim, even if each one calls for different legal considerations. Despite the fact that the infringement claim surfaced after the initial lawsuit filing, it is appropriate for the Court to address it first given this overlap.

The court held that misrepresentation can take many different forms, such as using identical trademarks, packaging, or marketing techniques that lead to confusion among consumers regarding the source of the products or services. The Plaintiff’s final burden of proof is to demonstrate that the Defendants’ deception caused them harm or that they will likely cause them harm. Possible manifestations of this harm include a decrease in sales, a dilution of goodwill, or damage to the Plaintiff’s trademark’s reputation.

The Defendants’ argument failed to persuade the Court. A well-established rule in trademark law states that a plaintiff may still obtain an injunction against a particular defendant in a trademark infringement case even if they choose not to file a lawsuit against other parties who might own marks that are similar to their own.

The court held that the defendants or any representatives working on their behalf are irrevocably prohibited from producing, offering for sale, or marketing, promotion, or in any other context where the trademark “VIGOURA” or any mark that is misleadingly similar to the plaintiff’s “VIAGRA” trademark in respect to any of their products as would constitute violating or passing off the Plaintiff’s registered trademark “VIAGRA.”

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Judgment reviewed by Riddhi S Bhora.

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12 Apr

Bombay HC quashes the communication that denied renewal of trademark application on the basis of delay

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Case title:- Motwane Private Ltd. Versus The Registrar of Trade Marks and Union of India

Case No:-WRIT PETITION (L) NO. 30537 OF 2023

Decided on:-16-02-2024.

Quorum:- G. S. KULKARNI & FIRDOSH P. POONIWALLA, JJ.

Facts of the case:-

The petitioner claims that it registered the trade mark “MOTWANE” (also known as “the said mark”) under the numbers 312470, 312472, and 312473. Petitioner renewed till February 17, 1983. The petitioner claims to have been using the aforementioned marks continuously for its company since 1976. The petitioner argues that these marks’ registration needed to be renewed after February 17, 1983. On the Registrar of Trade Marks’ official website, the marks, however, remained displayed as the petitioner’s registered marks in the trade mark register. It is alleged that the petitioner carried out a standard search at some point in August 2023 upon discovering that the petitioner’s registered trademarks, including the one in question, had not been renewed since 1983, of the status of such trademarks. It is further argued that the petitioner did not receive from respondent no. 1 a notice under sub-section (3) of Section 25 of the Trade Marks Act, 1999 read with Rule 58 of the Trade Mark Rules, 2017 regarding the removal of these marks as a result of the non-renewal of the registration of the said marks. In these circumstances, the petitioner, through its advocate, filed separate applications with the respondent no. 1 office under the Right to Information Act, among other things, requesting information about the issuing of any removal notice by the first respondent. The office of respondent no. 1 responded to these RTI applications, among other things by saying that with regard to any of the registrations of the subject marks, respondent no. 1 did not issue, send, or deliver a removal notice. In these due to the lack of notice under Section 25(3) of the Trade Marks Act and the fact that the marks have remained on the register of trade marks, the petitioner argues that it is implicitly recognized that the petitioner has the legal right to request the renewal of the trade marks by submitting the necessary renewal applications. Based on these premises, the petitioner attempted, via its counsel, to request for the renewal of the registration of these three symbols utilizing the online process, it was discovered that the Trade Marks Registry’s main website, which is where all applications are typically filed, did not offer a renewal option for the online module. The petitioner claimed that this was because the trade marks were not renewed on time. This was corroborated by the system’s contested rejection, which said that the petitioner’s “Application cannot be renewed (delay of more than one year)”. The petitioner has come before this court in some Circumstances.

Legal Provisions

Article 226 (1) clearly states that every High Court shall have the powers throughout the territories in relation to which it exercised jurisdiction to issue writ or orders to any person or authority.

Appellant Contentions

Mr. Kamod, the petitioner’s knowledgeable attorney, has endorsed the aforementioned Praying on the grounds that the petitioner is legally entitled to request the renewal of The registration of the disputed marks, along with the comments and explanations provided by The electronic system, would be untenable considering the clear provisions of Section 25 of the Trade Marks Act. It is submitted that a notice as per Section 25(3) of the Trade Marks Act was not received by the petitioner, which was an Admitted position as communicated by respondent no. 1, in the reply to the Petitioner’s RTI applications. It is, hence, submitted that the petitioner’s Applications for renewal of the marks, as also such applications requiring Consideration of respondent no. 1 would be the requirement of law. Section 2 It’s Claimed that as a result, the petitioner cannot be placed in a scenario where the petitioner’s requests for renewal are not upholdable.Mr. Kamod argues that the guidelines in Section 25 of the In a similar case, the Trade Marks Act was brought before the courts for consideration. He Submits that in the event that the trademarks had remained on The Registrar of Trade Marks’ register, the owner’s legal entitlement to The courts acknowledged the marks needed to have the same renewed. As stated by In this case, Mr. Kamod, it would be an explicit mandate of the provision of According to Section 25 of the Trade Marks Act, the renewal of the Marks of the petitioner should not be rejected. Regarding his submissions, Mr. Kamod has relied on the Division Bench rulings of this Court in Cipla Ltd. V. Boudhik Sampada Bhawan & Ors., Registrar of Trade Marks ; in A number of petitions in the case of Registrar of Harbans Singh Khanduja & Anr. Trademarks and Anr.2 And regarding the ruling in the Ipca Laboratories Ltd. Case. v. Trade Mark Registrar & Anr.

Respondent Contentions

Ms. Vyas discovered that Addl. Government Pleader has Rejected this petition, citing the reply affidavit submitted by Respondent No. 1’s main argument is that there has undoubtedly been a delay. Additionally, the petitioner’s tardiness in renewing the registration of the Trade marks in dispute, therefore it is unacceptable that there would be a default on the In any case, a portion of the petitioner may be considered respondent no. 1’s fault. She would argue that the petitioner’s case would be fatally affected by such a protracted delay. Nonetheless, she would legitimately argue that no notice under Section 25(3) of the Trade Marks Act and/or any removal process that the law would require Of the contested marks was ever taken by Respondent No. 1 from the trade mark register with regard to the petitioner’s trade marks in question. Furthermore, she would fairly argue that in order to apply for a mark renewal, the petitioner must follow the steps outlined in the legislation and regulations, which include filing the necessary applications and paying the necessary fees.

Court Analysis and Judgement

The impugned communication Exhibits ‘F’, ‘F-1’ and ‘F- 2’ to the effect that the applications of the petitioner cannot Be renewed, for the reason of delay of more than one year are Quashed and set aside. It is held that the petitioner is entitled to maintain Applications in the prescribed form and on payment of Prescribed fees for renewal of registration of its trademarks In question, which be granted by respondent No.1 in Accordance with law on the petitioner satisfying other Procedural requirements. The petitioner is permitted to make the requisite Applications either in the physical form or by the electronic Module (if so made available) within a period of two weeks From the day a copy of the same is made available, which be Considered and granted as per the above directions within a Period of two weeks thereafter. Rule is made absolute in the aforesaid terms.

Judgement Analysis Written by – K.Immey Grace

25 Oct

Restraining Order Stopping Anyone From Using Similar Mark As Tobacco Company AFZAL: Delhi High Court

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Title: Sopariwala Exports & Ors. Versus Ashraf V

Citation: CS(COMM) 259/2021

Decided on: 09.10.2023

Coram: Hon’ble Mr. Justice C. Hari Shankar

Introduction:

The current matter in hand is regarding the use of trademark AFZAL, Sopariwala Exports has the right to iuse the trademark as well as through trademark agreement license to use the trademark was given to other 3 others. Defendant on the other hand is using the mark AFSAL in kerala without obtaining the trademark registration.

Facts:

The plaint alleges that the defendant has infringed the plaintiffs’ registered trademarks as well as its copyright registration and is also, by using a deceptively similar trademark and a deceptively trade dress, seeking to pass off its product as the product of the plaintiffs. As the product is chewing tobacco, it is submitted that additional vigilance is required to be exercised in order to ensure that such attempts at infringement do not go unchecked.

The defendant is using the mark AFSALs and it is are phonetically nearly identical to the mark of the plaintiff, that is AFZAL. And it is added that It has to be remembered that the aspect of confusing or deceptive similarity has to be viewed from the perception of the consumer of average intelligence and imperfect recollection.

The visual similarity between the rival marks in the present case, coupled with the phonetic similarity between “Afzal” and “Afsals”, especially when viewed from the perspective of a consumer of chewing tobacco, clearly discloses the intent of the defendant to adopt the mark which is, phonetically as well as visually, as alike to the plaintiffs’ mark as possible.

Court’s Judgment and Analysis:

Court passed a decree of permanent injunction restraining defendant as well as all others acting on its behalf from using the trademark “AFSALs” or any marke similar to plantiff’s. The defendant shall also be restrained from adopting any trade dress which is deceptively similar and which would, therefore, infringe the copyright held by the plaintiffs in the aforesaid trade dress.

Written by: Sushant Kumar Sharma

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18 Oct

High Court of Delhi Seeks Reply from Capital Foods Pvt. Ltd. on the Issue of Territorial Jurisdiction.

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Title: VIMAL AGRO PRODUCTS P. LTD. V. CAPITAL FOODS P. LTD. & ANR

Decided on: 11th October 2023

C.O. (COMM.IPD-TM) 227/2023, I.A. 19904/2023 & 19905/2023

Coram: JUSTICE PRATHIBA M. SINGH

Introduction

Vimal Agro Products Private Limited has filed a rectification petition in the Delhi high court, under Section 57 of the Trademarks Act, 1999 seeking cancellation of the trademark ‘SCHEZWAN CHUTNEY’ registered by Capital Foods P. Ltd.

Facts of the Case

Delhi High Court had refused to grant interim injunction in favor of Capital Foods in Capital Foods Pvt. Ltd. v. Radiant Indus Chem Pvt. Ltd., holding that the mark “SCHEZWAN CHUTNEY” was descriptive. An ad-interim injunction was granted in connection with trade packaging, reproduction, adoption and imitation of the original works of Capital Foods with respect to its marketing and advertising contents. On appeal the order was stayed by a division bench. Ching’s Secret owner Capital Foods also claims use of mark “SCHEZWAN CHUTNEY” since year 2012. To prevent unauthorized use of its mark, Capital Foods had initially filed a suit against Vimal Agro before District Judge, Nasik. Pursuant thereto, Vimal Agro had sought leave from the Nasik Court u/s 124 of Trademarks Act to seek rectification of Capital Foods’ registration before the Bombay High Court. Upon obtaining permission, Vimal Agro moved to the Delhi High Court, instead of Bombay.

Court Analysis and Decision

The court noted two contentions of the Petitioner, that ‘SCHEZWAN CHUTNEY’ is a descriptive and a generic mark and the Registrar has granted the registration to the respondent without addressing the objection under Section 9 of the Trade Marks Act, 1999. Respondent capital foods contended that the Court did not have jurisdiction to hear the present petition, as a suit was pending between the parties before the District Judge, Nashik bearing Commercial Suit (Trade Mark) No. 2 of 2023 titled ‘Capital Foods v. Vimal Agro’, wherein the Petitioner itself admitted that the Bombay High Court alone would have jurisdiction to hear the cancellation proceedings.

According to the judge both these issues deserved consideration. In view of the prima facie finding of the Division Bench, the Court was not inclined to stay the impugned trademark registration for ‘SCHEZWAN CHUTNEY’. The issue of jurisdiction of Delhi high Court had to be considered first. So, the respondent capital foods is directed to file a reply on the issue of territorial jurisdiction of the Court within 4 weeks.

Written by- K R Bhuvanashri

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16 Oct

Delhi High Court Restrains manufacturing & selling of ‘GOOD TIME BUTTER COOKIES’ or any other mark which is identical or deceptively similar to the popular mark ‘GOOD DAY BUTTER COOKIES’

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Title: BRITANNIA INDUSTRIES LIMITED v. AMAR BISCUIT PRIVATE LIMITED & ORS.

Decided on: 12th october 2023

CS(COMM) 728/2023, I.A. 20158/2023, 20159/2023, 20160/2023

Coram: JUSTICE PRATHIBA M. SINGH

Introduction

The Delhi High Court has restrained the sale of biscuits under the mark “Good Time” or “Good Time Butter Cookies” and any other mark which is deceptively similar to Britannia’s Good Day biscuits. The order was passed in favour of Britannia considering that it is a well reputed brand selling “Good Day Butter Cookies” since a very long time as also other products under the said trade mark and trade dress.

Facts of the case

The Britannia Industries Limited has filed suit against Amar Biscuit Pvt. Ltd. and its promoters i.e., Defendant Nos. 1 & 2 to 4, from manufacturing to selling butter cookies under the mark ‘‘Good Time’ which has an almost identical packaging. The Plaintiff is one of the leading manufacturers and sellers of biscuits, crackers and various other food items under the trademark ‘Good Day’ which was adopted by the in 1986. The Plaintiff company itself is a 100 year old company of India dealing with various food products since 1918. The Plaintiff’s revenue for the financial year 2022-23, crossed over Rs.16,000 crores. It also has significant presence on online platforms such as Facebook, Twitter, Instagram and YouTube with thousands of followers.

The subject matter of the present case is the ‘Good Day Butter Cookies’ product which was launched in the year 1986. Around 1997 a distinctive packaging for the product was adopted. It is averred that the packaging has always been in the colour combination of blue and yellow, with cookie being shown in a specific form. Over the years Plaintiff has made minor modifications in the trade dress, however the essential and prominent features of it were retained. Plaintiff claims that the said packaging of ‘Good Day Butter Cookies’ is not merely a trademark label which is entitled to protection but is also an artistic work in which the Plaintiff enjoys copyright. They claim that the sale of ‘Good Day Butter Cookies’ for the financial year 2022-2023 is Rs.1889 crores and the advertisement and promotional expense for the said product is around Rs.137 crores. The Plaintiff recently learned from one of the consumers, who put a post on platform X (Twitter), about the Defendants adoption of the infringing trade mark and dress ‘Good Time’ bearing the same color combination of blue and yellow, realising this misuse as of 6th October, 2023, the Plaintiff has filed the suit.

Court Analysis and Decision

According to the court, by their very nature, butter cookies are products which are purchased by children, literate and illiterate people across urban and rural areas. The enormous turnover of the Plaintiff for the Britannia ‘Good Day’ cookies leaves no doubt in the mind of the Court that the said packaging and product achieved enormous recognition and goodwill in the market. Any attempt to imitate the name, the mark or the packaging would have to be stopped immediately in as much as the consumers are likely to get confused between the two sets of products. Considering that these are food products any chances of confusion has to be completely avoided.

Considering the overall facts, the Judge is convinced that the Plaintiff makes out a prima facie case for grant of an ad interim injunction. Balance of convenience also lies in favour of the Plaintiff considering that it is a well reputed brand selling ‘Good Day Butter Cookies’ since such a long time, as other products under the said trade mark and trade dress. If an ad interim injunction is not granted it would cause irreparable loss or harm to the Plaintiff. as the Defendants’ packaging is deceptively similar to that of the Plaintiff’s, causes confusion to the customers. Court observed that Defendants’ are taking a piggy-back ride of the Plaintiff’s goodwill and reputation in identical business.

Accordingly, till the next date of hearing, all the Defendants and others acting on their behalf are directed to restrain from manufacturing, selling, offering for sale butter cookie biscuits or any other products in the infringing packaging which is under the name ‘Good Day Butter Cookies’ or any other mark which is identical or deceptively similar to the Plaintiff’s mark ‘Good Day/ Good Day Butter Cookies’. Court has ordered the Defendants to remove any online listings of the product within 48 hours and to place a stock statement of the material bearing the impugned mark & packaging, on the next date.

Written by- K R Bhuvanashri

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