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IN THE HIGH COURT OF DELHI AT NEW DELHI
C. Hari Shankar, J.
Sun Pharmaceutical Industries Ltd. - Appellant
Versus
Protrition Products Llp & Ors. - Respondents
CS(COMM) 533 of 2022; I.A. 12259 of 2022
Decided On : 24-11-2023
Trade Marks - Pharmaceutical and Medicinal Preparations - Trade Marks Act, 1999 - Section 29, Section 30(2)(e) - The court found that the defendants' use of the mark ABBZORB for whey protein, which falls within Class 5, was deceptively similar to the plaintiff's mark ABZORB, and thus constituted infringement. The court also held that the defendants' marks were not registered in Class 5, and therefore, the plea of non-entitlement to registration was not available to the defendants. The court restrained the defendants from using the impugned marks pending disposal of the suit.
Fact of the Case:
The plaintiff, the proprietor of marks for pharmaceutical and medicinal preparations, alleged that the defendants' use of deceptively similar marks for whey protein, falling within Class 5, constituted infringement.
Finding of the Court:
The court found that the defendants' use of the mark ABBZORB for whey protein was deceptively similar to the plaintiff's mark ABZORB, constituting infringement. The court also restrained the defendants from using the impugned marks pending disposal of the suit.
Issues: The issues involved the alleged infringement of the plaintiff's marks by the defendants' use of deceptively similar marks for whey protein falling within Class 5.
Ratio Decidendi: The court held that the defendants' use of the deceptively similar mark ABBZORB for whey protein, falling within Class 5, constituted infringement under Section 29 of the Trade Marks Act, 1999. The court also found that the defendants' marks were not registered in Class 5, and therefore, the plea of non-entitlement to registration was not available to the defendants.
Final Decision: The court restrained the defendants from using the impugned marks pending disposal of the suit.
JUDGMENT
IA 12259/2022 [under Order XXXIX Rules 1 and 2 of the CPC] in CS(COMM) 533/2022
1. The plaintiff is the proprietor of the following marks, registered in its favour under the Trade Marks Act, 1999 in Class 5 of the Nice classification, for "pharmaceutical and medicinal preparations for human and veterinary use":
| Trade Mark | Registration No. and Date | Date of use claimed |
| ABZORB | 1642043 16 January 2008 | 1 March 1993 |
| ABZORBEC | 2051003 9 November 2010 | Proposed to be used |
| ABZORB SYNDET | 3282128 12 June 2016 | Proposed to be used |
2. Defendant 2 is also the proprietor of the following marks registered under the Trade Marks Act:
| Trade Mark | Registration No. and Date | Date of use claimed | Class | Goods |
| ABBZORB | 4029712 17 December 2018 | Proposed to be used | 29 | Meat, fish, poultry and game, milk and milk products; edible oils and fats, etc. |
| ABBZORB | 4029713 17 December 2018 | Proposed to be used | 30 | Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee, vinegar, etc. |
| ABBZORB | 4029720 17 December 2018 | Proposed to be used | 31 | Agricultural, horticultural and forestry products and grains not included in other classes, etc. |
| ABBZORB | 4029724 17 December 2018 | Proposed to be used | 32 | Beers, mineral and aerated waters, and other non-alcoholic drinks, etc. |
|
| 4064497 22 January 2019 | Proposed to be used | 30 | Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee, vinegar, etc. |
|
| 4064512 22 January 2019 | Proposed to be used | 29 | Meat, fish, poultry and game, milk and milk products; edible oils and fats, etc. |
| ABBZORB NUTRITION | 4065797 23 January 2019 | Proposed to be used | 30 | Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee, vinegar, etc. |
| ABBZORB NUTRITION | 4067021 24 January 2019 | Proposed to be used | 29 | Meat, fish, poultry and game, milk and milk products; edible oils and fats, etc. |
3. It will thus be seen that the defendants have no subsisting registration of any mark in Class 5. On this aspect, learned Counsel are ad idem.
4. Under the marks ABZORB, ABZORBEC and ABZORB SYNDET, the plaintiff is manufacturing and selling anti-fungal pharmaceutical preparations. Anti-fungal pharmaceutical preparations fall indisputably, within Class 5. As such, the plaintiff is using its registered trademark in respect of goods for which registration was granted, in the class in which the marks are registered.
5. The plaintiff is aggrieved by the use, by the defendants, of the marks ABBZORB and ABBZORB NUTRITION. From the list of Defendant 2's registered marks provided earlier, it would be seen that Defendant 2 does possess registrations in respect of the marks ABBZORB and ABBZORB NUTRITION, but in Classes 29 and 30. Class 29 covers meat, fish, poultry and game, milk and milk products, edible oils and fats, etc. Class 30 covers coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee, vinegar, etc. The defendants are, however, using ABBZORB NUTRITION for manufacturing and selling whey protein. It is not in dispute that whey protein is appropriately classifiable under Class 5 of the Nice classification. Thus, unlike the plaintiff, the registered marks of Defendant 2 are not being used in accordance with their registration, either for the Class, or the goods, in respect of which the marks are registered.
6. Defendant 1 has also ventured into Class 5, for registering the mark ABBZORB, on three occasions. None has, however, fructified in a registration.
7. Defendant 2's first application for registration of the ABBZORB word mark in Class 5 was on 17 December 2018. In the First Examination Report (FER) issued by the Trademarks Registry by way of objection to Defendant 2's application, the plaintiff's ABZORB mark was cited as a rival, and deceptively similar, mark. Defendant 2
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