Deceptive similarity of trademarks and trade dress can constitute trademark infringement and passing off.

JUDGMENT (Oral)

CS(COMM) 436/2021

1. The plaintiff alleges infringement, by the defendant, of the plaintiff's trademark, RAZO, by use of the mark RAZOFAST, for identical pharmaceutical products.

2. The active ingredient of the product of the plaintiff and the defendant is the same, i.e. Rabeprazole.

3. The plaintiff holds the following registrations:

These registrations are stated to be valid and subsisting as on date.

4. The following photographs of the packs in which the plaintiff markets its products have also been provided in the documents filed with the plaint:

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5. The plaint alleges that, towards the second week of August, 2021, the plaintiff came to know that the defendant was manufacturing, marketing and selling rabeprazole tablets, under the mark RAZOFAST.

6. This, alleges the plaint, was a transparent attempt at capitalising on the plaintiff's goodwill and creating an association between the product of the defendant and the mark of the plaintiff, with the suffix "FAST" added to the name to make it appear that the product would provide faster relief. It is alleged that the overall trade dress adopted by the defendant in respect of its product is also such as would enhance the possibility of confusion between the marks of the defendant and the plaintiff. Photographs of the defendant's packs are also provided with the plaint, and may be reproduced thus:

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7. The impugned mark, RAZOFAST, stands registered in favour of the defendant on 25 June, 2018. The defendant claims user since 6 February, 2017, whereas the plaintiff claims user since 2002.

8. Predicated on these facts, the plaintiff has instituted the present suit against the defendant, praying thus:

"It is, therefore, prayed that this Hon'ble Court may be pleased to grant the following reliefs:

i. An order for permanent injunction restraining the Defendant, its partners, officers, servants, employees, dealers, agents, representatives, stockiest, distributors and all other persons acting on behalf the Defendant from manufacturing, marketing, supplying, selling and offering for sale including online sale, advertising, directly or indirectly medicinal and pharmaceutical preparations under the trademark RAZOFAST and/or any other mark identical or deceptively similar to the Plaintiff's mark RAZO and/or in any other manner whatsoever as may be likely to cause confusion or deception amounting to infringement of the Plaintiff's trade mark registrations as mentioned in paragraph No. 9 of the plaint;

ii. An order for permanent injunction restraining the Defendant, its partners, officers, servants, employees, dealers, agents, representatives, stockiest, distributors and all other persons acting on behalf the Defendant from manufacturing, marketing, supplying, selling and offering for sale including online sale, advertising, directly or indirectly medicinal and pharmaceutical preparations under the trademark RAZOFAST and/or any other mark identical or deceptively similar to the Plaintiff's mark RAZO and/or in any manner whatsoever as may be likely to cause confusion or deception amounting to passing off its goods and business as and for those of the Plaintiff;

iii. For disclosure of information by Defendant about sale of the total products under the impugned mark RAZOFAST and provide the last batch number of product manufactured under the mark RAZOFAST with details of payments received;

iv. For delivery upon affidavit by the Defendant to the Plaintiff all the offending material, goods, cartons, labels, dies, wrapping and other material bearing the offending trade marks for purposes of destruction and/or obliteration as the case may be;

v. An order directing the Defendant to remove all listings of the impugned mark RAZOFAST from its websites, B2B websites or any other online directories, B2B, B2C website or portals that may be used by the Defendant to promote the