Case Note & Summary
The appeal arises from a suit filed by the respondents (original plaintiffs) against the appellant (original defendant) for infringement and passing off of trademarks. The respondents, Sami Khatib trading as Medley Laboratories and Medley Pharmaceuticals Limited, are the proprietors and licensed users of the registered trademarks 'ARBITONE', 'RB TONE', and 'HB RON' in Class V for pharmaceutical preparations. The appellant, Cadila Pharmaceuticals Limited, adopted the mark 'HB TONE' for its pharmaceutical products. The respondents alleged that the appellant's mark was deceptively similar to their marks, particularly 'RB TONE'. After the suit was filed, the appellant obtained registration of the impugned mark, limiting the action to passing off. The learned single Judge granted an interim injunction restraining the appellant from using the mark 'HB TONE'. The appellant appealed. The court framed four issues: (1) whether the respondents established reputation and goodwill in 'RB TONE'; (2) whether 'HB TONE' is deceptively similar to 'RB TONE'; (3) whether delay and laches disentitle the respondents to relief; and (4) balance of convenience. The court found that the respondents had established reputation and goodwill through substantial sales and promotional expenses. Comparing the marks, the court held that 'HB TONE' and 'RB TONE' are structurally, phonetically, and visually similar, differing only in the first letter. Given that both are used for pharmaceutical products, the court emphasized the need for strict protection to avoid confusion, especially in medicinal preparations. The court rejected the appellant's argument of delay, noting that the appellant had not acquired any vested rights and the balance of convenience favored the respondents. The appeal was dismissed, and the interim injunction was confirmed.
Headnote
A) Trade Marks - Passing Off - Deceptive Similarity - Comparison of marks 'HB TONE' and 'RB TONE' - The court held that the marks are structurally, phonetically, and visually similar, especially in the context of pharmaceutical products where a high degree of care is expected but confusion can still occur due to the nature of the goods - Held that the appellant's mark is deceptively similar to the respondent's mark (Paras 4-10). B) Trade Marks - Passing Off - Reputation and Goodwill - The respondents established reputation and goodwill in the mark 'RB TONE' through sales figures and promotional expenses - The court found that the mark had acquired distinctiveness and was associated with the respondents (Paras 11-15). C) Trade Marks - Passing Off - Delay and Laches - The court held that delay in filing the suit does not disentitle the respondents to interim relief as the appellant had not acquired any vested rights and the balance of convenience was in favor of the respondents - Held that delay alone is not a ground to refuse injunction if the plaintiff's rights are clear (Paras 16-20).
Issue of Consideration
Whether the appellant's mark 'HB TONE' is deceptively similar to the respondent's mark 'RB TONE' so as to constitute passing off, and whether the respondents are entitled to interim relief despite delay.
Final Decision
The appeal is dismissed. The order and judgment of the learned single Judge granting an interim injunction restraining the appellant from manufacturing, marketing, selling and/or exporting medicinal or pharmaceutical preparations or any other goods under the impugned trade mark 'Hb TONE'/'HB TONE' or any other mark identical with and/or deceptively similar to the plaintiffs' trademarks is confirmed.
Law Points
- Passing off
- deceptive similarity
- pharmaceutical trademarks
- reputation and goodwill
- delay and laches
- balance of convenience
- irreparable loss
