The balance of convenience favoured FDC limited and irreparable injury would be caused to them if the interim restriction is not granted, Delhi HC observed. (File Photo)In a trademark infringement case moved by a pharmaceutical company against another, the Delhi High Court has recently held that in the case of medicinal products, the test to be applied needs to be “far stricter” as any confusion can result in public injury.
A single judge bench of Justice Navin Chawla was hearing an application seeking interim restrictions moved by FDC Limited for trademark violation against Nilrise Pharmaceutical over the use of its trademark ‘ZIPOD’.
Allowing FDC Ltd’s application, the high court granted an “ad interim injunction” temporarily restraining Nilrise Pharmaceuticals Ltd from using the ‘ZOYPOD’ trademark or any deceptively similar variant of the ‘ZIPOD’ trademark.
Zipod is an antibiotic medicine used to treat pneumonia, sinusitis, cystitis and ear infections. The product is also available in a dry syrup form, tablet and dispersible tablet, a registered trademark since 2004. The product used ‘cefpodoxime based antibiotic and antibacterial preparations’.
FDC Ltd. was aggrieved by the adoption of the trademark ‘ZOYPOD’ by Nilrise Pharma for its product containing the active ingredient ‘Cefpodoxime Proxetil’. The company further argued that Nilrise’s trademark (ZOYPOD) is phonetically and conceptually similar to ‘ZIPOD’ and the use of the trademark ‘ZOYPOD’ amounts to “infringement and passing off”. FDC further asserted that the two marks are phonetically similar and their use is also common to both.
Nilrise Pharma, on the other hand, argued that the two trademarks are entirely different “phonetically as also structurally and visually”. They relied on the examination report of the Trade Marks Registry, who while examining the trade mark application for ‘ZOYPOD’, did not cite ‘ZIPOD’ as a conflicting trademark. They further argued that they have been using the ‘ZOYPOD’ trademark since 2014 and established their own goodwill and reputation.
They also argued that the term ‘POD’ is generic in nature and is derived from the common molecular name i.e., Cefpodoxime, which falls in the list of International Nonproprietary Names (INN) and is used to treat bacterial infections. Hence, no one can assert an “exclusive right” over it or any other mark with ‘POD’ in it as a prefix or suffix.
The high court in its November 1 order was of the prima facie opinion that the two trademarks were “phonetically similar” relying on a 1963 Supreme Court judgment which held that the test to be used in such cases is whether a man of average intelligence can get confused with two similarly sounding trademarks. The high court thereafter noted that “dissimilarity in packing of the two products is not relevant” as FDC Ltd. is the registered proprietor of the trademark ‘ZIPOD’.
“Once the mark appears to be deceptively similar and the plaintiff is a prior adopter thereof, the plaintiff is entitled to protection of its mark from infringement thereof in terms of Section 29(2)(b) of the Trade Mark Act, 1999,” the court said.
Rejecting the argument of ‘POD’ being generic in nature with no exclusive rights over it, the high court held that ‘POD’ appears in the middle of the molecule name and is “neither the opening nor the closing part”. “The explanation given by the defendants for adoption thereof, prima facie, does not appear to be genuine,” the high court held.
The high court was of the view that Nilrise had not been able to “satisfactorily show” that they are the user of the ‘ZOYPOD’ trademark since 2014, and was a late entrant to the market. The court further opined, “Since the products in question are medicinal products, in my opinion, the test to be applied needs to be far stricter than the one applied to other goods, as any confusion would result in public injury.”
The high court further rejected Nilrise Pharma’s argument that they are using the prefix ‘ZOY’ for other medicinal products. “Each mark of the defendant has to be tested on its own standing. Merely because the defendant (Nilrise) uses the prefix ‘ZOY’ for its other medicinal preparations, it cannot be allowed to use the impugned mark even though the same is found to be deceptively similar to an already registered mark with prior use,” the court held.
The HC was of the “prima facie view” that FDC had a good case in its favour. The balance of convenience favoured FDC limited and irreparable injury would be caused to them if the interim restriction is not granted, it observed.