The Delhi High Court (Court) in the case of Ajanta Pharma Limited v Zuventus Healthcare Limited, CS (COMM) 336/2019, while observing that the trade mark 'AMADAY' of Ajanta Pharma Limited (Plaintiff) is deceptively similar to the trade mark 'ANADAY' of Zuventus Healthcare Limited (Defendant), refused to grant the relief of interim injunction on the ground that there was no material on record to show that the Defendant had dishonestly adopted the mark 'ANADAY' and that the rival products were for treatment of completely different aliments. Further, the Plaintiff's concealment of the fact that it had knowledge of the use of the Defendant's mark 'ANADAY' since 2008 was the clinching factor for the Court in refusing injunctive relief in favour of the Plaintiff.

Factual Background

The Plaintiff was the registered proprietor of the mark 'AMADAY' (a pharmaceutical product used for treatment of high blood pressure and heart disease) since July 1997. The Plaintiff had been manufacturing the product bearing the mark 'AMADAY' in India and exporting the same. Interestingly, the Plaintiff's product bearing the mark 'AMADAY' was not sold in India, as the Plaintiff did not have requisite licence for selling the same in India.

When the Plaintiff chanced upon the Defendant's product 'ANADAY' in the market, the Plaintiff filed this suit for infringement and the application for injunction in 2019. Prior to 2019, the Defendant had filed two trade mark applications in respect of its mark 'ANADAY', one on 4 February 2008 on a proposed to be used basis (First Application), which was opposed by the Plaintiff and subsequently, abandoned for lack of prosecution by the Defendant, which was recorded vide order of the Trade Marks Registry dated 11 March 2016 (Order) and second on 8 October 2016 with a user claim of 28 February 2008 (Second Application), which is currently opposed by the Plaintiff.

Rival Contentions

The Plaintiff contentions were as follows:

  1. 'ANADAY' being deceptively similar to the Plaintiff's prior applied and registered mark 'AMADAY', would cause confusion and/or deception amongst consumers and that an average person would not be able to distinguish between the two.
  2. The Defendant's claim that the rival marks were used for treating 2 different ailments could not be accepted as the prescriptions do not contain the name of the salts or packaging and thus, the confusion in reading the prescriptions would vitally affect the consumers. The Plaintiff relied on Wockhardt LimitedvEden Healthcare Pvt Ltd [2013 (54) PTC 320 (Del)] and Cadila Pharmaceuticals Ltd v Sami Khatib and others [2014 (58) PTC 14 (Bom)] to support this contention.
  3. The export of products bearing the mark 'AMADAY' amounted to use of the mark 'AMADAY' under Section 56 of the Trade Marks Act, 1999 (Act) and the Plaintiff was in no manner precluded from marketing its products in India and had the right to re-launch the same.
  4. The Defendant's Counter Statement pertaining to the First Application had not been uploaded on the Trade Marks Registry's website. Thus, the Plaintiff was not aware of use of the mark 'ANADAY' by the Defendant.
  5. On the issue of delay in filing the suit and the application, the Plaintiff countered the same by relying on the case of Hindustan Pencils (P) LtdvIndia Stationery ProductsCo, [(2001) 21 PTC 797] to justify that mere delay in filing a suit was not sufficient to provide a fool proof defence against infringement. Rather, the delay must be inordinate and must have caused some prejudice to the Defendant. Further, the fact that the Plaintiff was under the impression that the Defendant had never used the mark 'ANADAY', having not assailed the abandonment Order in respect of its First Application.

In response, the Defendant's contentions were as follows:

  1. The adoption of the mark 'ANADAY' was bonafide as the same was coined by amalgamation of the name of the molecule used in the treatment of breast cancer (ANASTROZOLE) and the fact that the tablet is to be taken once a DAY.
  2. The rival products are being used to treat different ailments - 'AMADAY' for heart disease and blood pressure and 'ANADAY' for breast cancer Hence, the rival products not being OTC (over the counter) drugs, would never cause any confusion or deception amongst consumers.
  3. The chances of confusion and/or deception was further reduced by the fact that the Plaintiff did not have a licence for selling its products bearing the mark 'AMADAY' in India, hence 'AMADAY' was not sold in India.
  4. Though the Plaintiff claimed that it never received a Counter Statement from the Trade Marks Registry in respect of the Defendant's First Application, a perusal of the documents revealed that the Plaintiff had filed a reliance letter on 4 June 2012, relying upon the contents of the notice of opposition. Moreover, in the said reliance letter, no averments of the Counter Statement were refuted by Plaintiff. The said reliance letter, being subsequent to the Counter Statement of the Defendant, made it apparent that the Plaintiff received the Counter Statement and had concealed this material fact of knowledge of Defendant's use of the mark 'ANADAY'.
  5. The present suit and the application were liable to be dismissed as there had been considerable delay in filing the same. The effect of the delay was amplified due to the concealment of the material fact that the Plaintiff had knowledge of the Defendant's use of the mark 'ANADAY' since 2008. Thus, the Plaintiff having acquiesced to the use of the mark 'ANADAY' since 2008 could not claim injunction in 2019. The Plaintiff's acquiescence was evident from the perusal of the prosecution history of the Defendant's First Application, wherein, the Defendant had mentioned in its Counter Statement that they had commenced marketing the products bearing the mark 'ANADAY' and that the Plaintiff failed to refute the averments made in the Counter Statement.

Findings and Decision

Upon going through the rival submissions, the Court held that the Plaintiff's claim of not having received the Defendant's Counter Statement to the Plaintiff's Notice of Opposition is a concealment of a material fact. The Plaintiff had knowledge of the Defendant's use of its product 'ANADAY' since 2008. The Court held that the abandonment of the First Application of the Defendant does not mean abandonment of the sale of the product bearing the mark 'ANADAY'. There was no due diligence by the Plaintiff to ensure if the products bearing the mark 'ANADAY' were being sold in the market. Thus, the Plaintiff is bound to suffer the consequences of delay in seeking the injunction.

Secondly, the Court went on examine that even if there was a delay in bringing an action by the Plaintiff, whether there was dishonesty on the part of the Defendant in adopting the mark 'ANADAY'. The Court accepted the explanation provided by the Defendant in coining/adopting the term 'ANADAY' and opined that there was no material on record to show that the Defendant had dishonestly adopted the mark 'ANADAY'.

Thirdly, while the Court accepted that the marks 'ANADAY' and 'AMADAY' were deceptively similar, it held that there would be no likelihood of confusion and/or deception, since the Plaintiff's product bearing the mark 'AMADAY' was not sold in India and thus, no corresponding goodwill was accrued in favour of the Plaintiff in India. Moreover, the rival products were used for treating different ailments, thus, the goodwill, if any, that was earned by the Plaintiff could not be utilised by the Defendant. Thus, no confusion would be caused to any chemist on account of bad handwriting on the prescription slip.

In view of the above, the Court dismissed the Plaintiff's interim application.

Comment

Typically, in cases where the Court is convinced on the similarity between the rival marks, the Court tends to injunct the defendant. However, this decision is a deviation by the Court, especially in respect of pharmaceutical products. In spite of multiple factors being in favour of the Plaintiff, including, close similarity between the rival marks, the concealment of a material fact by the Plaintiff and the delay in approaching the Court were the clinching factors which turned the case against the Plaintiff and in favour of the Defendant.

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