Case Note & Summary
The Plaintiff, Charak Pharma Pvt. Ltd., filed a suit against Glenmark Pharmaceuticals Ltd. seeking a perpetual injunction restraining the Defendant from infringing its registered trademark 'EVANOVA' and from passing off its goods under the mark 'ECONOVA'. The Plaintiff had been using the mark 'EVANOVA' since 1999 for ayurvedic medicinal preparations for menopause treatment. The Defendant adopted the mark 'ECONOVA' in early 2006 for probiotic capsules for bacterial vaginosis. The Plaintiff discovered the Defendant's use in September 2006 and filed the suit. The court examined the phonetic and visual similarity between the marks and held that they are deceptively similar, particularly in the pharmaceutical field where confusion could lead to serious health risks. The court found that the Plaintiff had a prima facie case and the balance of convenience favored granting an injunction. Accordingly, the court allowed the Notice of Motion and restrained the Defendant from using the mark 'ECONOVA' pending the suit.
Headnote
A) Trade Marks Act, 1999 - Infringement - Deceptive Similarity - Section 29 - The court considered whether the marks 'EVANOVA' and 'ECONOVA' are deceptively similar for medicinal products. The court applied the test of phonetic and visual similarity and held that the marks are deceptively similar, especially in the context of pharmaceutical products where confusion could have serious consequences. (Paras 1-5)
B) Trade Marks Act, 1999 - Temporary Injunction - Prima Facie Case - Balance of Convenience - The court found that the Plaintiff had made out a prima facie case of infringement and passing off. The balance of convenience was in favor of the Plaintiff as the Defendant had not yet launched the product on a large scale. The court granted a temporary injunction restraining the Defendant from using the mark 'ECONOVA'. (Paras 1-5)
Issue of Consideration
Whether the Defendant's mark 'ECONOVA' is deceptively similar to the Plaintiff's registered trademark 'EVANOVA' so as to warrant a temporary injunction restraining the Defendant from using the mark 'ECONOVA'.
Final Decision
The Notice of Motion is allowed. The Defendant is restrained by an order of temporary injunction from manufacturing, marketing, selling, or dealing in any medicinal preparations/products under the mark 'ECONOVA' or any other mark deceptively similar to the Plaintiff's registered trademark 'EVANOVA' pending the disposal of the suit.
Law Points
- Trademark infringement
- deceptive similarity
- pharmaceutical products
- temporary injunction
- Section 29 Trade Marks Act 1999
- Section 2(1)(zb) Trade Marks Act 1999
Case Details
2014 LawText (BOM) (01) 31
Notice of Motion No. 2529 of 2007 in Suit No. 1851 of 2007
Dr. B.B. Saraf, along with Ms. Pooja Kshirsagar, Mr. Rahul Dhote and Mr. Hemant Thadhani, instructed by M/s. Sunil & Company, for the Plaintiff. Mr. Virag V. Tulzapurkar, Senior Advocate, instructed by Mr. Mahesh A. Mahadgut, for the Defendant.
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Nature of Litigation
Suit for trademark infringement and passing off with a Notice of Motion for temporary injunction.
Remedy Sought
Plaintiff sought a perpetual injunction restraining Defendant from infringing its registered trademark 'EVANOVA' and from passing off its goods under the mark 'ECONOVA', and a temporary injunction pending suit.
Filing Reason
Plaintiff alleged that Defendant's mark 'ECONOVA' is deceptively similar to its registered trademark 'EVANOVA' for medicinal preparations.
Issues
Whether the Defendant's mark 'ECONOVA' is deceptively similar to the Plaintiff's registered trademark 'EVANOVA'.
Whether the Plaintiff is entitled to a temporary injunction restraining the Defendant from using the mark 'ECONOVA'.
Submissions/Arguments
Plaintiff argued that 'ECONOVA' is phonetically and visually similar to 'EVANOVA', and both are used for pharmaceutical products, leading to confusion.
Defendant argued that the marks are different and there is no likelihood of confusion.
Ratio Decidendi
In pharmaceutical products, even slight phonetic or visual similarity between marks can cause confusion, and the court must grant an injunction to prevent potential harm to public health. The Plaintiff's mark 'EVANOVA' and Defendant's mark 'ECONOVA' are deceptively similar, and the Plaintiff has a prima facie case for infringement.
Judgment Excerpts
The Plaintiff has filed the present Suit against the Defendant, inter alia, for a perpetual order and injunction, restraining the Defendant from infringing the registered trademark of the Plaintiff 'EVANOVA' and also from passing off their goods/products as those of the Plaintiff by use of the mark 'ECONOVA' or any other mark deceptively similar to the Plaintiff’s registered mark.
The Defendant is engaged in the business of manufacturing and marketing of medicinal and pharmaceutical preparations in India and abroad.
The Plaintiff therefore by its notice dated 15th September, 2006 called upon the Defendant to cease and desist from using the mark 'ECONOVA'.
Procedural History
The Plaintiff filed Suit No. 1851 of 2007 on an unspecified date. The Plaintiff also filed Notice of Motion No. 2529 of 2007 seeking a temporary injunction. The court heard arguments and reserved judgment on 30th September 2013, pronouncing it on 21st January 2014.
Acts & Sections
- Trade Marks Act, 1999: Section 29, Section 2(1)(zb)
- Trade Mark Rules, 2002: Fourth Schedule
