Case Note & Summary
The Plaintiff, Neon Laboratories Ltd., filed a suit for trademark infringement and passing off against Themis Medicare Ltd. (Defendant No. 1) and Ciron Drugs & Pharmaceuticals Pvt. Ltd. (Defendant No. 2). The Plaintiff claimed that since 1987, it has been using the mark LOX for its pharmaceutical products, including LOX 2% ADRENALINE, LOX 4%, LOX 5%, LOX HEAVY 5%, LOX VISCOUS, LOXALPRIN, LOXALPRY, LOXIMLA, PLOX, and RILOX (collectively the LOX Family). These marks are registered under the Trade Marks Act, 1999. The Defendants market and manufacture pharmaceutical products under the XYLOX family of marks, including XYLOX 2%, XYLOX HEAVY, XYLOX GEL, XYLOX ADRENALINE, and XYLOX 2% Jelly. The Plaintiff alleged that the Defendants' marks are deceptively similar to its LOX marks, causing infringement and passing off. The Plaintiff sought interim relief, including an injunction and appointment of a Court Receiver. The Defendants opposed the application, arguing that LOX is a common abbreviation for lignocaine (a local anaesthetic), that both parties derived their marks from a common source, and that the Plaintiff had acquiesced due to delay. The Court, after hearing arguments, found that the Plaintiff had made out a strong prima facie case. The Court held that the marks LOX and XYLOX are structurally, phonetically, and visually similar, and the addition of the prefix 'XY' does not sufficiently distinguish them. The Court rejected the defence of common origin, noting that there was no evidence of any agreement or consent. The Court also rejected the defence of acquiescence and delay, stating that mere delay without prejudice does not bar an injunction. The Court found that the balance of convenience was in favour of the Plaintiff and that irreparable loss would ensue if the injunction was not granted. Accordingly, the Court made the Notice of Motion absolute, granting an interim injunction restraining the Defendants from using the XYLOX marks or any deceptively similar marks.
Headnote
A) Trade Marks - Infringement - Deceptive Similarity - Sections 28, 29 Trade Marks Act, 1999 - Plaintiff's registered LOX family marks and Defendants' XYLOX family marks - Court held that the marks are structurally, phonetically, and visually similar, and the addition of prefix 'XY' does not distinguish them; likelihood of confusion among medical professionals and patients is high (Paras 1-22). B) Passing Off - Goodwill and Reputation - Plaintiff's LOX marks have acquired substantial goodwill since 1987; Defendants' use of XYLOX marks is likely to cause confusion and deception, leading to passing off (Paras 4-10, 18-22). C) Interim Injunction - Prima Facie Case, Balance of Convenience, Irreparable Loss - Plaintiff made out a strong prima facie case; balance of convenience in favour of Plaintiff; irreparable loss would ensue if injunction not granted (Paras 3, 22). D) Defence - Common Origin - Defendants claimed that LOX is a common abbreviation for lignocaine and that both parties derived marks from a common source - Court rejected this defence as there was no evidence of common origin or consent (Paras 11-17). E) Acquiescence and Delay - Defendants argued that Plaintiff acquiesced due to delay in filing suit - Court held that mere delay without prejudice does not bar injunction, and there was no evidence of acquiescence (Paras 11-17).
Issue of Consideration
Whether the Defendants' use of the XYLOX family of marks infringes the Plaintiff's registered LOX family of marks and constitutes passing off, and whether the Plaintiff is entitled to interim relief.
Final Decision
Notice of Motion made absolute. Defendants restrained from using the XYLOX family of marks or any deceptively similar marks pending disposal of the suit.
Law Points
- Trademark infringement
- Passing off
- Deceptive similarity
- Pharmaceutical marks
- Interim injunction
- Prima facie case
- Balance of convenience
- Irreparable loss
- Common origin defence
- Acquiescence
- Delay
