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High Court Of Delhi
KHANDELWAL LABORATORIES LIMITED - Appellant
Versus
FDC LIMITED - Respondent
Interim Application 7146 of 2001
Decided On : 08/21/2001
Trade Mark - Pharmaceutical Preparations - Indian Companies Act - Trade and Merchandise Marks Act - [Indian Companies Act, Trade and Merchandise Marks Act] - The court examined the phonetic similarity between the trade marks 'CEFI' and 'ZIFI' and their potential to cause confusion. The plaintiff claimed that the defendant's use of the trade mark 'ZIFI' amounted to passing off their goods as that of the plaintiff. The defendant argued that the trade marks were different phonetically and visually, and that the use of 'ZIFI' was not driven by an attempt to copy the plaintiff. The court considered the Supreme Court judgment in Cadila Healthcare Ltd Vs. Cadila Pharmaceuticals Ltd. and held that there may be a bar on claiming trade mark rights in a generic word or a phonetic equivalent thereof, but there is no bar in claiming trade mark right in a mark derived from the generic word. The court also emphasized that the meaning conveyed by the trade marks, if not known to the consumer, is an irrelevant factor, and that the phonetic similarity is the relevant consideration. The court concluded that the use of trade mark 'ZIFI' by the defendant was not likely to cause any confusion or deception in the mind of consumers, and vacated the ex-parte ad interim injunction granted to the plaintiff.
Fact of the Case:
The plaintiff, a pharmaceutical company, filed a suit for permanent injunction against the defendant, alleging that the defendant's use of the trade mark 'ZIFI' for medicinal and pharmaceutical preparations was likely to cause confusion with the plaintiff's trade mark 'CEFI'. The plaintiff claimed that it had spent a huge amount in popularizing its product under the trade mark 'CEFI' and had attained high reputation and goodwill for its products. The defendant opposed the grant of injunction, arguing that the trade marks were different phonetically and visually, and that the use of 'ZIFI' was not driven by an attempt to copy the plaintiff.
Finding of the Court:
The court found that the use of trade mark 'ZIFI' by the defendant was not likely to cause any confusion or deception in the mind of consumers. The court considered the phonetic similarity between the trade marks and emphasized the relevance of the Supreme Court judgment in Cadila Healthcare Ltd Vs. Cadila Pharmaceuticals Ltd. The court concluded that the balance of convenience was in favor of the defendant and vacated the ex-parte ad interim injunction granted to the plaintiff.
Issues: The central issue was whether there was phonetic similarity between the two trade marks 'CEFI' and 'ZIFI' and whether the defendant's use of the trade mark 'ZIFI' was likely to cause confusion or deception in the mind of consumers.
Ratio Decidendi: The court emphasized the relevance of the Supreme Court judgment in Cadila Healthcare Ltd Vs. Cadila Pharmaceuticals Ltd, which held that there may be a bar on claiming trade mark rights in a generic word or a phonetic equivalent thereof, but there is no bar in claiming trade mark right in a mark derived from the generic word. The court also highlighted that the meaning conveyed by the trade marks, if not known to the consumer, is an irrelevant factor, and that the phonetic similarity is the relevant consideration.
Final Decision: The court dismissed the plaintiff's application for permanent injunction and allowed the defendant's application for vacation of the ex-parte ad interim injunction granted to the plaintiff.
(AUGUST 21, 2001) 2001 (TLS)125625
2001-DLT-94-141 :: 2001-AD (Del)-6-756
KHANDELWAL LABORATORIES LIMITED Vs. FDC Limited
A. K. SIKRI
( 1 ) THE plaintiff is a company incorporated under the Indian Companies Act which is carrying on business, inter alia, of manufacturer and seller of pharmaceuticals and medicinal preparations. It claims to be a well known pharmaceutical company enjoying very high reputation for its products because of excellent quality and efficacy. Total turnover of plaintiff company for the year 2000-2001 was more than 35 crores. One of its drugs is under the Trade Mark CEFI. This medicine is used for the treatment of typhoid, lower respiratory Tract Infection, Urinary Tract Infection and Otitis Media and contains cefixime. The plaintiff has filed present suit for permanent injunction restraining, passing off, delivery of infringing goods, rendition or accounts etc. against the defendant with the allegations that in relation to same medicinal and pharmaceutical preparations defendant has adopted the Trade Mark ZIFI which is phonetically similar to that of plaintiff s Trade Mark cefi and, therefore, is bound to cause confusion in the minds of consumers as they may treat the defendant s goods as that of the plaintiff. Thus, according to the plaintiff, defendant s Trade Mark ZIFI being similar to, trade Mark CEFI, sale of medicines under the Trade Mark zifi by the defendant amounts to an act of passing of their goods as that of the plaintiff.
( 2 ) FACTS are more or less admitted. It is the case of the plaintiff that in July, 2000 it conceived and invented the Trade Mark CEFI for its medicinal preparations. Application for registration of this trade Mark was submitted to Trade Mark Registry on 17/8/2000. On 24/11/2000 the Food and Drug adminiatration granted permission to the plaintiff to manufacture the drug cefixime tablets USP 200 mg and cefixime Dispersible Tablets 100 mg and cefixime for oral Suspension USP. On 23/4/2001 the plaintiff launched its preparations under the Trade Mark CEFI and cefi DT as well as CEFI Dry Syrup. The plaintiff further claims that it spent huge amount in popularizing its said product, through advertisements etc. and that because of well established and reputed pharmaceutical concern, the Trade Mark CEFI has also attained high reputation and goodwill for its products. During April, 2001-July,2001 the plalntiff sold their products worth Rs. 1,99,61,290. 00. It is further alleged that on 23/7/2001 plaintiff came across the defendant s product bearing the trade mark ZIFI-100 DT and ZIPI-200 which also contains cefixime and the two products being phonetically and deceptively similar to the trade mark cefi, present suit is filed.
( 3 ) BY order dated 1/3/2001 in IA. 6867/2001, the ex-parte ad-interim injunction order was granted restraining the defendants from using the trade mark zifi and/or any other trade mark deceptively similar to the plaintiff s trade mark CEFI in respect of medicinal and pharmaceutical preparations. The defendant, after it was served with the summons in the suit and notice in the aforesaid injunction application filed ia. 7146/2001 under Order XXXIX Rule 4 Civil Procedure Code for vacation of the said ex-part ad interim injunction granted on 1-8-2001 by alleging that plaintiff had obtained the injunction by making mis-representation. The opposition of the defendant to the grant of injunction is founded on the following submissions :
1. The defendant has a family of trade marks starting with the letter z Includinh ZOCON, ZOSPAR, zo, ZOXAN AND ZEFRICH. The adoption of the trademark zifi is bonafide and not driven by an attempt to copy or take undue advantage of the plaintiff. 2. The plaintiff s user is just about two months (i. e. 23/4/2001) prior to the date of institution of the suit. This is about the shortest user possible in an action for passing off. 3. The plaintiff s mark CEFI is derived from the chemical compound or salt Cefixime and there ar
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