Case Note & Summary
The plaintiff, Medley Pharmaceuticals Ltd., filed a suit for passing off against Khandelwal Laboratories Ltd. seeking interim injunction to restrain the defendant from using the trade mark CEFI or CEFI-DT, which the plaintiff claimed were deceptively similar to its own marks CEFO, CEFO-P, and CEFO-DT. The plaintiff had adopted the mark CEFO in December 1999 for a medicinal preparation containing the drug Cefixime and applied for registration on 23.12.1999. The plaintiff's licensee, M/s. Emil Pharmaceutical Industries (P) Ltd., applied for a manufacturing license for CEFO-DT and CEFO-P in January 2000. The defendant subsequently adopted the mark CEFI for similar pharmaceutical products. The court considered the issue of deceptive similarity between the marks, noting that both are used for the same drug Cefixime and are phonetically similar. The court held that the plaintiff had made out a prima facie case of passing off, as the marks are deceptively similar and the defendant had not yet launched its product. The balance of convenience was in favor of the plaintiff, and irreparable loss would be caused if the injunction was not granted. The court granted interim injunction restraining the defendant from using the marks CEFI, CEFI-DT, or any deceptively similar mark.
Headnote
A) Trade Marks - Passing Off - Deceptive Similarity - Trade and Merchandise Marks Act, 1958, Section 27 - The plaintiff adopted the mark CEFO for its pharmaceutical product containing Cefixime in December 1999 and applied for registration on 23.12.1999. The defendant subsequently adopted CEFI for similar products. The court held that the marks are deceptively similar, especially in the context of pharmaceutical products where confusion could have serious consequences. The plaintiff made out a prima facie case for passing off. (Paras 1-10) B) Interim Injunction - Balance of Convenience - Irreparable Loss - The court found that the balance of convenience was in favor of the plaintiff as the defendant had not yet launched its product. The plaintiff would suffer irreparable loss if injunction was not granted. (Paras 11-15) C) Trade Marks - Phonetic Similarity - The marks CEFO and CEFI are phonetically similar, differing only in the vowel sound. In the pharmaceutical field, such similarity is likely to cause confusion among doctors and patients. (Paras 8-10)
Issue of Consideration
Whether the defendant's use of the trade mark CEFI/CEFI-DT is deceptively similar to the plaintiff's trade mark CEFO/CEFO-DT/CEFO-P so as to constitute passing off, and whether the plaintiff is entitled to interim injunction.
Final Decision
The court allowed the notice of motion and granted interim injunction restraining the defendant from manufacturing, selling, exhibiting for sale, or advertising pharmaceutical and medicinal preparations under the trade mark CEFI or CEFI-DT or any other trade mark deceptively similar to the plaintiff's trade mark CEFO, CEFO-P, or CEFO-DT.
Law Points
- Passing off
- deceptive similarity
- pharmaceutical trade marks
- interim injunction
- balance of convenience
- irreparable loss
