20 Nov 2023 8:00 AM GMT
Finding a prima facie case of infringement, the Delhi High Court recently granted injunction in favour of Dr. Reddy’s-AZIWOK against defendant’s AZIWAKE, noting that the minuscule difference between the two words was too slight to detract from the overall phonetic similarity between them.“To the ear of the consumer of average intelligence and imperfect recollection, it is, therefore,...
Finding a prima facie case of infringement, the Delhi High Court recently granted injunction in favour of Dr. Reddy’s-AZIWOK against defendant’s AZIWAKE, noting that the minuscule difference between the two words was too slight to detract from the overall phonetic similarity between them.
“To the ear of the consumer of average intelligence and imperfect recollection, it is, therefore, clear that the words “AZIWOK” and “AZIWAKE” are phonetically deceptively similar,” the court said.
Perusing the competing marks, it was observed that there was a likelihood of confusion involved.
“Applying the initial interest test, a consumer of average intelligence and imperfect recollection, who has once come across the plaintiff’s AZIWOK product and, later, comes across the defendant’s AZIWAKE product, has every chance of being placed in a state of wonderment or confusion as to whether he has seen the mark earlier … That, by itself, is sufficient to result in “likelihood of confusion”.
Justice C. Hari Shankar added that since the decision in Cadila Health Care Ltd v. Cadila Pharmaceuticals Ltd, the plea that likelihood of confusion between similar marks used for pharmaceutical products is lessened because they are prescribed by doctors and dispensed by chemists who are supposed to know the difference between one drug and another, no longer remains available.
“It would be unrealistic to expect that every doctor would be aware of the distinction between AZIWOK and AZIWAKE, especially when both marks are used in regard to azithromycin … confusion could always take place at the end of the dispensing chemist, or the purchasing customer”.
During the analysis, the test of infringement was reiterated thus:
“When assessing infringement, the comparison has to be on mark-to- mark basis. Added matter, or attendant circumstances, cannot mitigate infringement where, on mark-to-mark basis, it is seen that there is deceptive similarity between the marks, and likelihood, as a result, of confusion, or of a consumer of average intelligence and imperfect recollection associating the mark of the defendant with the mark of the plaintiff, is seen to exist”.
On behalf of the defendant, a preliminary objection regarding maintainability was raised, averring that Dr. Reddy’s had not exhausted the channel of pre-institution mediation. It was also contended that it was common practice for pharma products to be named after abbreviation of the active pharma ingredient (API).
Referring to the Supreme Court’s decision in Yamini Manohar v T.K.D. Keerthi, the court held that if a plea for interim relief is genuine, the plaint must be entertained without requiring the plaintiff to exhaust pre-institution mediation.
“The general principle that, in intellectual property suits involving infringement or passing off, continuation of the alleged infringement would result in loss and injury which cannot be compensated in monetary terms and that therefore, the suit could be instituted without, in the first instance, exhausting the remedy of pre-institution mediation under Section 12A of the Commercial Courts Act, continues, therefore, to hold the field.”
Comparing Dr. Reddy’s averments regarding urgency with those made before the Single Judge in Yamini Johar, Justice Shankar said that the assertions in the case at hand were far more comprehensive. As the Supreme Court had found the averments in Yamini Johar sufficient to justify dispensation with pre-institution mediation, Dr. Reddy’s was held entitled to the same relief and the preliminary objection rejected.
The defendant’s common to trade plea was also found by the court to be misconceived. It was noted that Dr. Reddy’s was not claiming exclusivity for the prefix “AZI” (abbreviation of the API i.e. azithromycin).
“AZIWAKE is not phonetically deceptively similar to AZIWOK merely because of the common “AZI” prefix, but because the two marks, seen as a whole, are phonetically similar.”
So far as the defendant had contended that the competing marks were both used for azithromycin, and thus, administration of one instead of the other could not be injurious, the court remarked that every formulation of an API may not be equally efficacious. Rejecting the argument, it was added,
“The need to avoid confusion between pharmaceutical preparations, caused by similar trade marks or brand names, is not, therefore, limited to cases in which the rival marks are used for preparations containing different APIs, but also extends … to cases in which the two marks are used for preparations containing the same API.”
Of significance was another observation by the court to the effect that the word “deception” and “confusion”, though etymologically different, are dovetailed into one another by Section 2(1)(h) of the Trade Marks Act.
“While the concluding words of the definition, “deceive or cause confusion”, seem to indicate that “deception” and “confusion” are recognised as distinct concepts, this impression stands dispelled by the fact that, whether the mark deceives, or confuses, it is “deemed to be deceptively similar”.
Dealing with the aspects of balance of convenience and irreparable loss, the court noted that Dr. Reddy’s claimed use of mark AZIWOK since 2003. As there was a possibility of one preparation being mistakenly prescribed, dispensed, or taken instead of the other, continuing infringement was likely to dilute the brand value as well as prejudice Dr. Reddy’s.
“… defendant has been using the impugned mark only since 2022, and, even if injunction was granted, would only be required to adopt a non-infringing mark”.
Accordingly, the court granted the injunction. In effect, it restrained the defendant from using AZIWAKE w.r.t. pharma preparations, or other allied/cognate goods or services. The injunction, it said however, did not apply to existing batches of the defendant’s product (whether stocked or in circulation).
Notably, Dr. Reddy’s had been assigned the registration of AZIWOK in 2020 by Wockhardt, under which name, it had been selling azithromycin in various strengths. It had filed the suit, being aggrieved by the defendant’s use of mark AZIWAKE for azithromycin formulations, of which knowledge was statedly acquired in 2023.
Mr. Ranjan Narula, Mr. Shashi Ojha, Ms. Aishani Singh and Ms. Shivangi Kohli, Advocates appeared for Dr. Reddy’s
Ms. Archana Sahadeva, Mr. Siddharth Raj Choudhary and Mr. Harshit Bhoi, Advocates appeared for defendant
Case Title: Dr Reddys Laboratories Limited v. Smart Laboratories Pvt Ltd
Citation: 2023 LiveLaw (Del) 1143
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