IN THE HIGH COURT OF DELHI AT NEW DELHI
(CIVIL ORGINIAL COMMERCIAL, IP DIVISION)
C.O. (COMM. IPD - TM) NO. ____ OF 2024
CATEGORY CODE: 48002
IN THE MATTER OF:
Emami Limited …Petitioner
Versus
M/s Gufic Biosciences Limited & Anr. …Respondents
CASE LAW INDEX
Sr. No. Case Name Court Citation Held Releva Page
nt Para No.
No.
Different form and composition of medicines
1. Sun DEL (2019) The Delhi High Court in this Paras
Pharma HC 260 DLT Judgement again reiterated the 11,12,1
Laboratori 212 principles laid down in the Cadila 3 & 21
es Ltd. v. case and held that if the product
Ajanta cures same disease but uses a
Pharma different composition of medicine,
Ltd a stricter test must be applied to
check whether the trade mark
infringement would cause
deception in the eyes of average
Indian whose mother tongue is not
English. The court held that a
lesser degree of proof is required to
establish confusion in case of such
medicines
Thus, the settled law in passing off
is that of probability or likelihood
of confusion and not actual
confusion. In Cadila, the Supreme
Court has warned that in case of products
used for the same ailments but with
different composition, a more stringent
test needs to be adopted.
2. Novartis DEL (2009) The Delhi HC said that it does not Paras
AG v. HC 41 PTC matter whether the medicines are 20,21,2
Crest 57 available in different forms 2
Pharma because it is settled law that it is
(P) Ltd., not required to prove that actual
confusion has been caused even if
there is likelihood of confusion
then also the injunction can be
granted.
The court also said that it is more
dangerous and harmful in trade if
the same trademark is used with
different ingredients/salt as it
would be harmful for consumers
who consume this.
Infringement arising from similarity in names of medicines has to be dealt more strictly
3. FDC Ltd. V DEL (2022)295 The Hon’ble High Court of Delhi Paras
Nilrise HC DLT 437 held that the overall similarity from 24 to
Pharmaceut 28,32,33
the point of view of a man with
icals average intelligence and imperfect
recollection must be seen in an
infringement suit. The Hon’ble
Delhi High Court was concerned
with two medicines of similar
names ZOYPOD vis-à-vis ZIPOD.
The plaintiff demanded ad interim
injunction against the Defendants.
The defendant argued that the term
POD is generic in nature, derived
from the common molecular name
i.e., Cefpodoxime, which falls in
the list of International Non-
proprietary Names (INN) and thus
no exclusivity can be claimed over
it. Furthermore, it argued that it is
using ZOY as a prefix to all its
other products and thus going by
that logic using it for the present
product is bona fide. The defendant
also argued that since both the
drugs are Schedule H drugs and
need a prescription, there cannot be
any confusion between
them. Relying on a plethora of
previous decisions on a similar
issue including the decisions on the
Cadila Health Care Ltd. case and
Amritdhara Pharmacy v. Satya Deo
Gupta, the court dismissed the
arguments by Defendant and ruled
its mark ZOYPOD to be
deceptively similar to Plaintiff’s
prior ZIPOD mark thereby passing
an order for an interim injunction
against it
4. Cadila SC (2001)5 This is a landmark judgment from the Paras
Health SCC 73 Hon’ble Supreme Court where it laid 18 to
Care Ltd vs down guidelines for trademarks 20,22,2
Cadila relating to medicines. The court held 5,27,32
Pharmaceut that the test to determine trade mark to 36
icals deceptive similarity is to check the
level of similarity and not the
dissimilarity. The court held that
Phonetic similarity is not to be
ignored when the competing words
are written different. Move rover the
Court emphasised that the question of
trademark has to be approached from
the point of view of an Indian of
average intelligence. The Indian
market consists of a huge number of
people who don’t know English or are
illiterate, thus such consumers are
supposed to be considered prior to
making any decision as the confusion
regarding the identity of the product
might lead to grave effects on public
health. Hence even a less degree of
similarity is enough to grant
temporary injunction against the trade
mark.
5. Mankind DEL (2023)4 In this case, the plaintiff sought for a Paras
Pharma HC HCC(del) temporary injunction against the 31 -32
Limited v. 320 defendant by the way of restraining
Nova kind them from using the plaintiff’s family
BioScience of marks with the word ‘Kind’ as an
s Pvt Ltd element of a brand name, ‘Novakind
Bio Sciences Private Limited’,
‘Defzakind’ as a brand name for
medicinal and pharmaceutical
preparations. The court cited the
judgment of the Supreme Court in the
case of Cadila Health Care Ltd vs.
Cadila Pharmaceuticals Ltd wherein it
was held that confusion between
medicinal products can be life
threatening and the test of confusing
similarity is modified when
pharmaceutical products are involved.
The court said that the argument that
the drugs differ on the point that they
are distributed by doctors or are
prescribed by chemists. The moment,
there is possibility of confusion in the
mind of such a consumer, the test of
deceptive similarity stands satisfied.
Furthermore, the court emphasised
the potential association between the
two marks in the minds of average
consumers. Such perceived
associations could lead to
misconceptions. This is because the
two marks are deceptively similar and
are applied to identical goods. the
court underlined the importance of
clarity, especially in the
pharmaceutical sector, noting that
even the slightest confusion
regarding medicines, particularly
prescription drugs, is unacceptable.
The medications must be clearly
distinguishable from each other.
Rights of prior user override the rights of prior registration
6. Neon SC The Hon’ble supreme Court in this Para 9
Laboratorie court held that the right of the prior to 12
s Limited vs user will override those of a
Medical subsequent user even though
Technologie subsequent user had been accorded
s Limited registration. The Court granted
temporary injunction based on the
“first in the market” test. A trademark
application was filed by the appellant
in 1992, and the trademark “ROFOL”
was granted in 2001. However, till
2004 the product was not used by
them in the open market. On the other
hand, the drug “PROFIL was
introduced by the respondent in 1998”
Due to this, the respondent had a prior
usage benefit, and the appellant had a
prior registration. The case was in
favour of the Respondent as they had
earned substantial goodwill in that
period because they had already
begun their production and
distribution. Because of this
Trademark, “ROFOL” was under
injunction. The balance of
convenience and substantial damages
and loss factor of temporary
injunction favoured the respondent.
International Non-proprietary Names
7. Sun DEL 2024 The Delhi High court held that it is Para
Pharma HC SCC an established law no trademark 18,19,
Laboratori OnLin can be used if it is taken from INN 24,25
es Ltd. v. e Del and has become publici juris.
Narender 2193 However, whether a word has
Kumar become publici juris is an issue of
fact and has to be decided at the
stage of trial. At the pre stage trial
enough evidence has to be given to
prove that the word has become
publici juris. The defendants could
not provide enough evidence to
prove that the word has become
publici juris and hence the
injunction was granted to the
plaintiff. The court also considered
that the price of the medicine of the
defendant was higher than the
plaintiff and hence it could be said
that the defendant was riding on the
goodwill of the plaintiff.
