India, being a common law country, recognises the superior trademark rights through prior use against the statutory rights obtained through Registration. Relying on this, the Delhi High court has recently confirmed the preliminary injunction against Lupin in a suit for infringement and passing off filed by Sun Pharma. The Plaintiff claiming to be proprietor and user of the trademark TRIVOLIB since 2011, filed a suit seeking injunction against the use of the mark TRI-VOBIT along with other remedies. Earlier, the court passed an interim injunction restraining the defendant from dealing in medicinal preparations under the trade mark TRI-VOBIT which has been challenged by the Defendant in the vacation application. The primary arguments taken by Defendant were its trademark registration for the mark TRI-VOBIT and its prior use of the mark VOBIT since 2008. As the Defendant was also the registered proprietor of the mark, the court could not decide the preliminary injunction application on the infringement issue and the only relief which the court could have granted was on the passing off. The Plaintiff refuted the Defendant's arguments by submitting that they do not have any objections on Defendant's use of the mark VOBIT or TRI but argued that the defendant cannot be permitted to use the word TRI-VOBIT as it is structurally and phonetically similar to the Plaintiff's registered trade mark TRIVOLIB.

The court noted that the passing off rights are considered to be superior to that of registration rights. It was observed that passing off in common law is considered to be a right for protection of goodwill in the business against misrepresentation caused in the course of trade and for prevention of resultant damage on account of the said misrepresentation. The court noted that plaintiff is a prior user of the trade mark TRIVOLIB and it commenced use of the trade mark in October 2011 and in the very first year, it had a turnover of Rs.2.86 crores. In support of this, the Plaintiff submitted a certificate by Chartered Accountants certifying the sales figures for TRIVOLIB from October 2011 to March 2012 and for the subsequent years. On the other side, the defendants commenced use of its trade mark TRI-VOBIT in October 2012.  While looking at the sales figures of Plaintiff, the court held that plaintiff has made out a prima facie case of having built substantial goodwill and reputation in the market and being the prior user of the brand TRIVOLIB, it was held that the Plaintiff has vested rights in the said trade mark.

Referring to prior use of the mark VOBIT by the Defendant and that it has only added a prefix TRI, the court held the full words have to be compared and not a part of the word. The mark TRI-VOBIT has to be compared with TRIVOLIB and while comparing these two words, the court held that TRI-VOBIT is structurally and phonetically similar to the trade mark of the plaintiff TRIVOLIB. The court disagreed with the Defendant's argument that merely because it was using VOBIT earlier cannot be a ground to plead that the words have to be split and then compared.

While granting the injunction, the court highlighted that the test is to see as to whether the essential features of the trade mark of the plaintiff have been adopted by the defendants and held that phonetic similarity would be considered an important index. Based on this, the court ruled in favour of Plaintiff by holding the phonetic and structural similarity between the Defendant's mark TRI-VOBIT and the Plaintiff's trade mark TRIVOLIB and disallowed the contentions of the defendant.

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