Case Note & Summary
The case involves a trademark infringement and passing off dispute between two pharmaceutical companies. The appellant, Corona Remedies Private Limited, was the defendant in the suit, and the respondent, Franco Indian Pharmaceuticals Private Limited, was the plaintiff. Franco alleged that Corona's use of the mark 'STIMULET' for an allopathic drug used in the treatment of breast cancer and infertility infringed its registered trademark 'STIMULIV', which it had been using since 1975 for Ayurvedic medicines for liver disorders. Franco sought an interim injunction restraining Corona from using the mark 'STIMULET'. The learned Single Judge granted the injunction, leading to the present appeal. The key facts are that Franco's mark 'STIMULIV' is an Ayurvedic preparation sold in syrup and tablet form for liver function, while Corona's 'STIMULET' is an allopathic formulation used for breast cancer and infertility. Franco obtained registration of the word mark 'STIMULIV' in class 5 on 28.06.1974 and claimed continuous use since 1975. The legal issues considered were whether 'STIMULET' is deceptively similar to 'STIMULIV' under Section 29(2) of the Trade Marks Act, 1999, and whether Corona's use amounted to passing off. The court analyzed the differences in the nature of the products (Ayurvedic vs allopathic), the trade channels (prescription-based for allopathic vs over-the-counter for Ayurvedic), and the customer base (patients with different ailments). The court found that the visual and phonetic similarities were not sufficient to cause confusion or deception given these differences. The court also noted that the balance of convenience favored Corona, as it had already invested in marketing and selling 'STIMULET'. The court allowed the appeal, set aside the injunction, and dismissed the interim application filed by Franco.
Headnote
A) Trademark Law - Infringement - Deceptive Similarity - Section 29(2) of the Trade Marks Act, 1999 - The court considered whether the mark 'STIMULET' used by the appellant for an allopathic breast cancer and infertility drug was deceptively similar to the respondent's registered mark 'STIMULIV' used for Ayurvedic liver medicines. The court held that there was no likelihood of confusion or deception because the products were different in nature (Ayurvedic vs allopathic), sold through different trade channels (prescription-based allopathic vs over-the-counter Ayurvedic), and addressed different ailments and customers. The visual and phonetic similarities were outweighed by these differences. (Paras 1-10) B) Trademark Law - Passing Off - Essentials - The court reiterated the classic trinity for passing off: (i) goodwill/reputation, (ii) misrepresentation, and (iii) damage. The court found that the respondent failed to establish that the appellant's use of 'STIMULET' amounted to misrepresentation likely to cause damage to the respondent's goodwill, given the distinct fields of medicine and customer bases. (Paras 11-15) C) Trademark Law - Interim Injunction - Balance of Convenience - The court held that the balance of convenience was in favor of the appellant, as the appellant had already invested in marketing and selling 'STIMULET' and an injunction would cause greater hardship. The court also noted that the respondent had not used the mark 'STIMULIV' for allopathic products and had no presence in that market. (Paras 16-20)
Issue of Consideration
Whether the mark 'STIMULET' is deceptively similar to the registered mark 'STIMULIV' so as to constitute infringement and passing off, considering the differences in the nature of products, trade channels, and customers.
Final Decision
Appeal allowed. The order and judgment dated 01.03.2021 passed by the learned Single Judge is set aside. Interim Application No. 844 of 2021 is dismissed.
Law Points
- Trademark infringement
- deceptive similarity
- pharmaceutical products
- Ayurvedic vs allopathic
- class of customers
- trade channels
