Case Note & Summary
The plaintiff, Sun Pharmaceuticals Industries Limited, filed a suit for infringement and passing off against Emcure Pharmaceuticals Limited, alleging that the defendant's mark 'SUSTINEX' was deceptively similar to its registered mark 'SUSTEN', both used for pharmaceutical products under Class 5. The plaintiff's mark 'SUSTEN' was registered with effect from 16 June 2000, and the plaintiff had been using it since November 2000 for progesterone soft gelatin capsules prescribed to sustain pregnancy in critical conditions. The defendant's mark 'SUSTINEX' was registered with effect from 21 June 2001, and the defendant started using it from 19 November 2010 for a product prescribed to male patients for pre-mature ejaculation. The plaintiff had also filed a rectification application against the defendant's registration, which was pending. Since both marks were registered, the court considered only the passing off claim at the interim stage. The court examined whether the marks were deceptively similar. The judge initially had a first impression that they were not similar but reserved judgment to carefully consider the matter, especially given the nature of the products and the potential disastrous consequences if a female patient consumed the defendant's product instead of the plaintiff's, or if a male patient consumed the plaintiff's product. However, after a detailed comparison, the court concluded that the marks 'SUSTEN' and 'SUSTINEX' are not deceptively similar. The court noted that the marks differ in spelling, sound, and overall appearance. The plaintiff's mark is a six-letter word ending with 'EN', while the defendant's mark is an eight-letter word ending with 'NEX'. The prefix 'SUST' is common, but the suffixes are distinct. The court held that the public interest in avoiding confusion does not warrant an injunction where the marks are not deceptively similar. Consequently, the notice of motion for interim relief was dismissed.
Headnote
A) Trademark Law - Passing Off - Deceptive Similarity - Trade Marks Act, 1999, Sections 27(2), 28(3) - The court considered whether the marks 'SUSTEN' and 'SUSTINEX' are deceptively similar in a passing off action where the defendant's mark is also registered. The court held that despite the plaintiff being the prior user and the products being pharmaceuticals with potential adverse consequences if confused, the marks are not deceptively similar. The court applied the test of overall impression and found that the differences in spelling, sound, and appearance outweigh the similarities. The court emphasized that the public interest in avoiding confusion does not justify granting an injunction where the marks are not deceptively similar. (Paras 1-6)
Issue of Consideration
Whether the defendant's mark 'SUSTINEX' is deceptively similar to the plaintiff's registered mark 'SUSTEN' so as to constitute passing off, given that both marks are registered under Class 5 for pharmaceutical products.
Final Decision
The Notice of Motion is dismissed. No order as to costs.
Law Points
- Trademark infringement
- Passing off
- Deceptive similarity
- Prior user
- Pharmaceutical products
- Public interest
