Case Note & Summary
The dispute arose from Torrent Pharmaceuticals Limited's claim that Wockhardt Limited and East African (India) Remedies Pvt. Ltd. were passing off their product 'CHYMTRAL FORTE' as that of the plaintiff by using a mark deceptively similar to its registered 'CHYMORAL' and 'CHYMORAL FORTE' marks. Torrent acquired the CHYMORAL brands from Elder Pharmaceuticals in 2014, and the marks had been in use since 1962 for anti-inflammatory enzyme preparations. The plaintiff discovered in June 2016 that the first defendant was marketing CHYMTRAL FORTE, a product with similar composition (trypsin, chymotrypsin, and paracetamol) and sought an interim injunction in a commercial suit filed in 2017. The learned single Judge dismissed the notice of motion, finding that the three tests for interim injunction—prima facie case, balance of convenience, and irreparable injury—were not satisfied, though the defendants were directed to maintain sales accounts. Torrent appealed under Section 13 of the Commercial Courts Act, 2015. On appeal, the High Court examined the marks for phonetic, visual, and structural similarity. It observed that while 'CHYMORAL' and 'CHYMTRAL' shared some phonetic elements, the overall trade dress, color scheme, and packaging were distinctly different. Both products were Schedule H prescription drugs, reducing the likelihood of confusion as they are dispensed by pharmacists on medical prescription. The court also noted significant price difference—plaintiff’s product cost approximately Rs. 150 per strip while defendant’s was around Rs. 68—making the defendant’s product more accessible to the public. Moreover, the plaintiff delayed about seven months after discovering the defendant’s mark before seeking injunctive relief, which militated against urgency. Balancing these factors, the court held that the plaintiff failed to make out a strong prima facie case of passing off, that the balance of convenience tilted in favor of the defendant due to public interest and delay, and that no irreparable injury would ensue because monetary compensation could remedy any eventual loss. Consequently, the appeal was dismissed, confirming the single Judge’s order and declining interim relief.
Headnote
A) Trade Marks - Passing Off - Interim Injunction - Tests of Prima Facie Case, Balance of Convenience, Irreparable Injury - Trade Marks Act, 1999, Sections Not mentioned - The plaintiff sought interim injunction to restrain the defendant from using the mark 'CHYMTRAL FORTE' claiming phonetic similarity and passing off. The court assessed the three tests for interim relief. Held that no strong prima facie case was made out as the marks are structurally and visually distinct, and trade dress differences reduce confusion. Balance of convenience favoured the defendant given plaintiff's delay and public interest in lower-priced medicine. Irreparable injury not established as damages could be computed (Paras 5-6, 60-80). B) Trade Marks - Passing Off - Phonetic Similarity - No Absolute Rule - Trade Marks Act, 1999, Sections Not mentioned - The court considered that phonetic similarity, though relevant, is not decisive in isolation. For prescription drugs dispensed by pharmacists and prescribed by doctors, the likelihood of confusion is diminished as the purchasing process involves professional scrutiny. The overall impression and nature of the product are critical (Paras 66-74). C) Civil Procedure - Interim Injunction - Balance of Convenience and Public Interest - Commercial Courts Act, 2015, Section 13 - The court noted that the defendant's product was significantly cheaper, and granting an injunction would remove a more affordable option from the market, harming public interest. This factor tipped the balance of convenience against the plaintiff (Paras 85-90). D) Trade Marks - Passing Off - Delay and Acquiescence - Trade Marks Act, 1999, Sections Not mentioned - The plaintiff became aware of the defendant's mark in June 2016 but filed the suit and notice of motion only in January 2017. Delay of about seven months without sufficient explanation weakened the claim for urgent interim relief (Paras 91-95). E) Evidence - Trade Dress - Comparison of Get-Up - Trade Marks Act, 1999, Sections Not mentioned - The court compared the packaging and found significant differences in color scheme, layout, and branding between the two products. Held that visual dissimilarity in trade dress offsets any phonetic resemblance, reducing the likelihood of confusion, especially for pharmaceutical products (Paras 70-73).
Issue of Consideration
Whether the plaintiff is entitled to an interim injunction restraining the defendants from using the mark 'CHYMTRAL FORTE' on the ground of passing off, given the phonetic similarity with 'CHYMORAL FORTE'
Final Decision
Appeal dismissed; the order of the single Judge dated 15 March 2017 dismissing the Notice of Motion is upheld; no interim injunction granted, but defendants directed to maintain accounts of sales under the CHYMTRAL FORTE mark
Law Points
- interim injunction in passing off
- prima facie case
- balance of convenience
- irreparable injury
- phonetic similarity
- trade dress comparison
- public interest
- Schedule H drugs
- prescription medicines
- delay and acquiescence
- registration of defendant's mark
