Case Note & Summary
The petitioner, Ferring Pharmaceuticals Pvt. Ltd., challenged an interim injunction order dated 05.03.2010 passed by the District Judge-3, Ahmednagar, in Trade Mark Suit No. 02 of 2009. The respondent, Sun Pharmaceuticals Industries Ltd., had instituted the suit under Sections 27(2), 28, 29 read with Sections 134 and 135 of the Trade Marks Act, 1999, seeking a perpetual injunction restraining the petitioner from infringing its registered trade mark 'Aerotide' and from passing off deceptively similar goods under the name 'Ferotide', along with damages and rendition of accounts. Both parties are pharmaceutical companies. The respondent claimed that it had been using the mark 'Aerotide' since 1995 and had obtained registration in 1997, while the petitioner adopted the mark 'Ferotide' in 2008. The trial court granted an interim injunction, which the petitioner challenged. The High Court examined the phonetic and structural similarity between the marks and found them deceptively similar, as both are used for similar pharmaceutical products. The court noted that the petitioner had knowledge of the respondent's mark and adopted a similar mark, leading to a likelihood of confusion. The balance of convenience was in favor of the respondent, and the petitioner failed to make out a case for interference. The writ petition was dismissed, and the interim injunction was confirmed.
Headnote
A) Trade Marks - Infringement - Deceptive Similarity - Sections 27(2), 28, 29, 134, 135 of the Trade Marks Act, 1999 - The plaintiff, owner of registered trade mark 'Aerotide', sought injunction against defendant's use of 'Ferotide' for pharmaceutical products. The trial court granted interim injunction. The High Court upheld the order, holding that the marks are phonetically and structurally similar, likely to cause confusion among medical practitioners and consumers. The court found that the defendant adopted the mark with knowledge of the plaintiff's prior registration, and the balance of convenience favored the plaintiff. (Paras 1-10)
Issue of Consideration
Whether the trial court's order granting interim injunction restraining the defendant from using the mark 'Ferotide' pending disposal of the suit was justified on the grounds of deceptive similarity with the plaintiff's registered trade mark 'Aerotide'.
Final Decision
Writ petition dismissed. The order dated 05.03.2010 passed by the District Judge-3, Ahmednagar, below Exhibit 13 in Trade Mark Suit No. 02 of 2009 is confirmed. Rule discharged. No order as to costs.
Law Points
- Trade mark infringement
- deceptive similarity
- phonetic similarity
- interim injunction
- balance of convenience
- prima facie case
Case Details
2010 LawText (BOM) (10) 18
Writ Petition No.6007 of 2010
Mr. S.G. Ladda for petitioner; Mr. H.W. Kane with Mr. S.B. Deshpande, Mr. Swapnil Joshi and Mr. S.S. Patunkar i/by J.P. Legal Associates for respondent
Ferring Pharmaceuticals Pvt. Ltd.
Sun Pharmaceuticals Industries Ltd.
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Nature of Litigation
Civil writ petition challenging interim injunction order in a trade mark infringement and passing off suit.
Remedy Sought
Petitioner sought to set aside the interim injunction order restraining it from using the mark 'Ferotide'.
Filing Reason
Petitioner challenged the trial court's order granting interim injunction in favor of the respondent.
Previous Decisions
Trial court (District Judge-3, Ahmednagar) passed order dated 05.03.2010 granting interim injunction below Exhibit 13 in Trade Mark Suit No. 02 of 2009.
Issues
Whether the marks 'Aerotide' and 'Ferotide' are deceptively similar?
Whether the trial court correctly granted interim injunction?
Submissions/Arguments
Petitioner argued that the marks are not deceptively similar and that the trial court erred in granting injunction.
Respondent contended that the marks are phonetically and structurally similar, and the injunction was justified.
Ratio Decidendi
In trade mark infringement cases, phonetic and structural similarity between marks used for similar goods, especially pharmaceuticals, can lead to likelihood of confusion. The court must consider the overall impression and the class of consumers. Interim injunction is justified if the plaintiff has a prima facie case and balance of convenience favors it.
Judgment Excerpts
Petitioner herein – original defendant is raising exception to the order dated 05.03.2010, passed by District Judge3, Ahmednagar, below Exhibit13 in Trade Mark Suit No.02 of 2009.
Respondent herein – original plaintiff instituted suit under the provisions of Sections 27(2), 28 and 29 read with Sections 134 and 135 of the Trade Marks Act, 1999, claiming decree of perpetual injunction against the defendant restraining it from infringing plaintiff’s Trade Mark 'Aerotide' and further restraining it from passing off deceptively similar goods in the name of 'Ferotide' and further relief of damages as well as for rendition of accounts.
Procedural History
The respondent filed Trade Mark Suit No. 02 of 2009 before the District Judge-3, Ahmednagar, seeking injunction. The trial court passed an interim injunction order on 05.03.2010. The petitioner challenged this order by filing Writ Petition No. 6007 of 2010 before the Bombay High Court, Aurangabad Bench. The High Court heard the matter and dismissed the petition on 19.10.2010.
Acts & Sections
- Trade Marks Act, 1999: 27(2), 28, 29, 134, 135
