Case Note & Summary
The plaintiff, Serum Institute of India Limited, a pharmaceutical company, filed a suit for trade mark infringement and passing off against Green Signal Bio Pharma Pvt. Ltd. and another, alleging that the defendants' use of the mark 'BCG ONCO' for medicinal preparations infringed its registered trade mark 'ONCO BCG' (Registration No. 1481471 in Class 5). The plaintiff had conceived the mark in 2006, obtained registration on 24 August 2006, and commenced use in 2007 after obtaining necessary drug manufacturing permissions. The plaintiff's product, containing the generic drug Bacillus Calmette Guerin (BCG), achieved sales of Rs. 5.80 lakhs in 2006-2007, rising to Rs. 176.44 lakhs in 2009-2010, with promotional expenditure of Rs. 7,08,575. The defendants, also in the pharmaceutical business, adopted the mark 'BCG ONCO' for similar goods. The plaintiff sought an interim injunction restraining infringement and passing off. The defendants argued that 'BCG' is a descriptive generic term and that the plaintiff's registration disclaimed exclusive use of 'BCG', so the transposition of words did not cause confusion. The court analyzed the marks and found that despite the disclaimer, the composite mark 'ONCO BCG' is distinctive. The court held that mere reversal of words does not avoid deceptive similarity, especially in the pharmaceutical field where confusion could have serious consequences. The court noted that the marks are visually, phonetically, and structurally similar, and the defendant's adoption appeared to be with knowledge of the plaintiff's mark. The court concluded that the plaintiff had made out a strong prima facie case for infringement and passing off, and the balance of convenience favored granting an injunction. Accordingly, the court allowed the Notice of Motion and restrained the defendants from using the mark 'BCG ONCO' or any deceptively similar mark pending the suit.
Headnote
A) Trade Marks - Infringement - Deceptive Similarity - Sections 28, 29 Trade Marks Act, 1999 - Plaintiff registered mark 'ONCO BCG' for medicinal preparations containing BCG - Defendant used 'BCG ONCO' for similar goods - Court held that mere transposition of words does not avoid infringement; marks are deceptively similar and likely to cause confusion among medical professionals and patients - Held that plaintiff is entitled to interim injunction restraining defendant from using 'BCG ONCO' or any deceptively similar mark (Paras 1-10). B) Trade Marks - Passing Off - Common Law Remedy - Plaintiff established prior use and reputation in 'ONCO BCG' since 2007 with substantial sales and promotional expenditure - Defendant's adoption of 'BCG ONCO' was likely to mislead purchasers into believing defendant's goods originate from plaintiff - Held that plaintiff made out a strong prima facie case for passing off (Paras 4-10). C) Trade Marks - Descriptive Mark - Exclusive Use - Section 17 Trade Marks Act, 1999 - Plaintiff's registration disclaimed exclusive use of 'BCG' as it is a generic drug name - However, the composite mark 'ONCO BCG' is distinctive and entitled to protection - Defendant cannot appropriate the whole mark by merely reversing the order - Held that the disclaimer does not permit defendant to use a mark that is deceptively similar as a whole (Paras 3, 10).
Issue of Consideration
Whether the defendant's use of the mark 'BCG ONCO' for pharmaceutical preparations infringes the plaintiff's registered trade mark 'ONCO BCG' and amounts to passing off, despite the common descriptive element 'BCG'.
Final Decision
The Notice of Motion is allowed. The defendants are restrained by an order of injunction from infringing the plaintiff's registered trade mark 'ONCO BCG' by using the mark 'BCG ONCO' or any other deceptively similar mark, and from passing off their goods as those of the plaintiff, pending the disposal of the suit.
Law Points
- Trade mark infringement
- passing off
- deceptive similarity
- pharmaceutical products
- common descriptive element
- likelihood of confusion
- interim injunction
