The Delhi High Court in the case of Ajanta Pharma Limited v Zuventus Healthcare Limited, CS (COMM) 336/2019, while observing the mark Amaday of plaintiff is deceptively similar with the mark of Defendants, refused to grant the relief of interim injunction on the ground that there was no material to show that the mark is being adopted dishonestly by the Defendants.
Brief Facts of the case
The Plaintiff is the registered proprietor of the mark “Amaday” (a Pharmaceutical product used for the treatment of high blood pressure and heart disease) since 1997. Plaintiffs manufacture their products in India and export it to other countries. Interestingly, Plaintiffs were not selling their products in India as they were not having the license for selling the same in India.
When Plaintiff came to know about the Defendant’s mark “Anaday” in the market, they filed an infringement suit and an application for injunction in 2019. Earlier defendants had applied for Trademark registration in the year 2008 on proposed to be used basis but the same was opposed by the plaintiffs and later got abandoned because of lack of prosecution from the defendant side. Then a second application was filed in the year 2016 with the user claim in the year 2008 and the same was again opposed by the plaintiffs.
The plaintiff’s contention were as follows-
- Plaintiff contended that the Defendants’ mark “Anaday” is deceptively similar to the mark of plaintiffs mark, and it can cause confusion in the minds of consumers that an average person would not be able to distinguish between the two marks.
- The defendant’s c;aim that the brand is used in treating two different ailments could not be accepted as the prescription does not contain the name of the salts or packaging and thus the confusion in reading the prescription would vitally affect the consumers.
- The defendants counter statement pertaining to the first application had not been uploaded on the Trademark Registry’s website. Therefore, the plaintiffs were not aware of the use of the trademark “Anaday” by the defendant.
- On the issue of delay in filing the suit, plaintiffs relied on the judgements of Hindustan Pencils (P) Ltd Vs India Stationery ProductsCo, [(2001) 21 PTC 797] to justify that mere delay in filing of the suit was not sufficient to provide a fool proof defense against infringement. Rather the delay must be inordinate and must have caused some prejudice to the defendant.
In response Defendants contentions were as follows-
- The mark was adopted bonafidely by the defendants and the same was coined by amalgamation of the name of the molecule used in the treatment of breast cancer (ANAstrozole) and the fact that the tablet is to be taken once in a DAY.
- The two marks were there to treat two different ailments i.e. Plaintiffs’ marks were used to use aliments fro heart disease and high blood pressure whereas defendants medicine was there to treat breast cancer and therefore it could not cause confusion in the minds of consumers.
- Thirdly plaintiffs were not licensed to sell their products in India, therefore the chances of confusion in the minds of consumers reduced.
- The present suit must be dismissed as there is delay in filing of the suit. The effect was amplified due to the concealment of the material fact that the plaintiff had knowledge of the defendants use of the mark “Anaday ” since 2008. And therefore the plaintiff could not file an injunction suit in the year 2019.
Findings and Decision
After going through the contentions the court held that the plaintiff’s claim of not receiving the defendant’s counter statement to the plaintiff’s notice of opposition is a concealment of a material fact. The plaintiff had knowledge of the defendant’s product “SAnaday” since 2008. Plaintiffs must have knowledge of the plaintiffs’ mark which is sold in the market and therefore plaintiffs are bound to suffer the consequence of filing late injunction and infringement suit in the court.
Secondly the court did not find any dishonesty on the part of the defendant while adopting the mark. The court accepted the explanation of the defendant side that the mark is coined mark and ruled that there is no material on record to show that defendant had dishonesty adopted the mark.
Thirdly the court held that although the mark “Amaday ” and “Anaday ” are deceptively similar but it will not cause confusion amongst the consumers as plaintiff’s products are not being sold in India therefore its reputation is not on a wide scale in India. Moreover, these marks were used for the treatment of two different ailments. Thus no confusion would be caused to any chemist on account of bad handwriting on the prescription slip.
In view of the above, the court dismissed the plaintiff’s interim application.