Case Note & Summary
The plaintiff, Sun Pharma Laboratories Ltd, filed a suit for trademark infringement and passing off against The Madras Pharmaceuticals and Sanofi India Ltd. The plaintiff claimed that the defendant's mark 'METOSAN' infringed its registered trademark 'METOSARTAN' (Registration No. 2041169 in Class 05, used since 2010). The plaintiff's product contained Metoprolol Succinate and Telmisartan, prescribed for hypertension with comorbidities. The defendant's product contained only Metoprolol. The court analyzed the marks for deceptive similarity, considering phonetic and visual aspects. It noted that 'METOSARTAN' is a composite mark with the suffix 'SARTAN' indicating a class of drugs (ARBs), while 'METOSAN' lacks this suffix. The court found the marks to be distinct and not likely to cause confusion, especially given the different compositions. The court also noted that the plaintiff's sales were substantial but that did not create a monopoly over the prefix 'METO'. The court dismissed the notice of motion for interim relief, holding that the plaintiff failed to make out a prima facie case for infringement or passing off.
Headnote
A) Trade Marks - Infringement - Deceptive Similarity - Section 17, Trade Marks Act, 1999 - The court considered whether the mark 'METOSAN' is deceptively similar to 'METOSARTAN' - Held that the marks are not deceptively similar as they are phonetically and visually distinct, and the products have different compositions, reducing the likelihood of confusion (Paras 1-20). B) Trade Marks - Passing Off - Likelihood of Confusion - The court examined whether the use of 'METOSAN' by the defendant amounts to passing off - Held that the plaintiff failed to establish a likelihood of confusion among consumers, especially given the different active ingredients and the fact that the marks are not similar (Paras 21-30).
Issue of Consideration
Whether the mark 'METOSAN' is deceptively similar to the registered mark 'METOSARTAN' so as to constitute infringement and passing off.
Final Decision
Notice of Motion dismissed. No interim relief granted. The court found no prima facie case for infringement or passing off.
Law Points
- Trademark infringement
- passing off
- deceptive similarity
- pharmaceutical trademarks
- composite marks
- phonetic similarity
- visual similarity
- likelihood of confusion
- honest concurrent use
- Section 17 Trade Marks Act
- 1999
