Case Note & Summary
The Plaintiff, Emcure Pharmaceuticals Ltd., filed a suit for trademark infringement and passing off against Corona Remedies Pvt. Ltd., alleging that the Defendant's use of the marks COROFER and COROFER-XT infringed its registered marks OROFER and OROFER-XT, used for medicinal products. The Plaintiff sought interim reliefs including an injunction. The Defendant argued that the marks were not deceptively similar, that the Plaintiff's marks were not cited during its registration application, and that the Plaintiff had acquiesced to its use since 2001, barring the claim under Section 33 of the Trade Marks Act, 1999. The court, after hearing arguments, found prima facie that the marks were deceptively similar, both structurally and phonetically, and that the Defendant's use constituted infringement and passing off. The court rejected the acquiescence defense, noting no evidence of the Plaintiff's knowledge or consent. The court granted the injunction, making the Notice of Motion absolute.
Headnote
A) Trade Marks - Infringement - Deceptive Similarity - Section 29 Trade Marks Act, 1999 - Plaintiff's registered marks OROFER and OROFER-XT for medicinal products held to be deceptively similar to Defendant's marks COROFER and COROFER-XT - Court found that the marks are structurally and phonetically similar, and given the pharmaceutical context, likelihood of confusion is high - Held that the Defendant's use infringes the Plaintiff's registered marks (Paras 1-20). B) Trade Marks - Passing Off - Section 135 Trade Marks Act, 1999 - Plaintiff established reputation and goodwill in OROFER and OROFER-XT - Defendant's use of similar marks likely to cause confusion and deceive consumers - Held that the Defendant is passing off its goods as those of the Plaintiff (Paras 1-20). C) Trade Marks - Acquiescence - Section 33 Trade Marks Act, 1999 - Defendant claimed Plaintiff acquiesced to use of marks since 2001 - Court found no evidence of actual knowledge or consent by Plaintiff - Mere delay in filing suit does not amount to acquiescence - Held that Section 33 does not bar the Plaintiff's claim (Paras 2, 3, 20).
Issue of Consideration
Whether the Defendant's use of marks COROFER and COROFER-XT infringes the Plaintiff's registered marks OROFER and OROFER-XT and constitutes passing off, and whether the Plaintiff is barred by acquiescence under Section 33 of the Trade Marks Act, 1999.
Final Decision
Notice of Motion made absolute; interim injunction granted restraining the Defendant from using the marks COROFER and COROFER-XT or any deceptively similar mark.
Law Points
- Trademark infringement
- passing off
- deceptive similarity
- acquiescence
- Section 33 Trade Marks Act 1999
- interim injunction
