Phonetic similarity between AZIWOK and AZIWAKE creates likelihood of confusion, warranting injunction to prevent trademark infringement.

JUDGMENT

I.A. 20597/2023(Order XXXIX Rules 1 and 2 of the CPC)

Facts

1. The trade mark AZIWOK was registered under Section 23 of the Trade Marks Act 1999, in favour of Wockhardt Ltd in Class 5, covering "medicinal, pharmaceutical and veterinary preparations and sanitary substances" with effect from 30 December 1994. The registration is valid and subsisting as on date. Wockhardt assigned the registration of the mark AZIWOK in favour of the plaintiff vide Assignment Deed dated 9 June 2020, along with goodwill earned by the mark. The plaintiff has applied to the Registry of Trade Marks on 7 September 2020 for substitution of the name of the plaintiff in place of Wockhardt as the proprietor of the trade mark AZIWOK.

2. AZIWOK is admittedly a portmanteau of "AZI" and "WOK". "AZI" is an abbreviation for azithromycin, which is the Active Pharmaceutical Ingredient (API) of the product. "WOK" is an abbreviation for "Wockhardt". Under the name AZIWOK, Wockhardt and, later, the plaintiff has been selling azithromycin in various strengths. Azithromycin, it may be recollected, is one of the most frequently prescribed antimicrobials, which was used fairly extensively during the COVID-19 pandemic.

3. The brand name AZIWOK, asserts the plaint, has been in use by Wockhardt since 1994, when it was registered. Cumulative sales figures of AZIWOK have been provided for the financial years 2020-21, 2021-22 and 2022-23. Sales of AZIWOK have earned, for the plaintiff, Rs.14,27,15,095/- in the 2020-2021, Rs.21,62,34,124/- in 2021-2022 and Rs.18,05,33,887/- in 2022-2023.

4. Mr. Ranjan Narula has also drawn my attention to the following documents evidencing use of the trade mark AZIWOK, by the plaintiff, at least since 2003:

(i) In Essentials of Medical Pharmacology, 6th edition by Professor K.D. Tripathi, published in 2003, there is a reference to "AZITHRAL 250, 500 mg cap and 250 mg per 5 ml dry syr; AZ IWOK 250 mg cap, 100 mg kid tab, 100 mg/5 ml and 200 mg/5 ml susp. AZIWIN 100, 250, 500 mg tab, 200 mg/5 ml liq. Also, AZITHRAL 500 mg inj."

(ii) In the abstract of the article "Voltammetric determination of azithromycin at the carbon paste electrode" by Othman Abd EI-Moaty Farghaly and Niveen Abdel Latif Mohamed, published on 27 February 2004 in Volume 62 of the journal Talanta, Issue 3, the following figures:

"The work presented here shows that a new method for determining azithromycin at trace level in pure, dosage forms (Aziwok powder for oral suspension and Xithrone capsules samples) and in the biological samples (spiked and real urine samples), using square-wave anodic adsorptive stripping voltammetry at a paraffin oil CPE. At present, only few studies dealing with azithromycin electrochemical oxidation behavior have been reported [7], [19]. The voltammetric determination of azithromycin by a square-wave stripping voltammetry at a paraffin oil modified carbon paste electrode has not been studied yet."

(iii) In the journal Emkay Research dated 2 November 2012, the topmost 25 brands, constituting 69% of overall domestic sales have been tabulated, in which AZIWOK figures at the 14th place.

(iv) Similarly, in the list of essential medicines released by the State of Rajasthan in 2013, azithromycin tablets of 500 mg strength figured at Serial No. 129, with the common brands of azithromycin being noted as AZITHRAL, AZEE and AZIWOK.

(v) In the article "cost analysis of commonly used drugs under price control in India; assessing the fact on drug price order on brand price variation", AZIWOK figured.

(vi) AZIWOK 500 mg tablet found mention in an article titled "Good news: Drugs in India just got cheaper. List inside" published in the Economic Times on 12 May 2016.

(vii) AZIWOK was one of the medicines enlisted by Wockhardt in its response to a notice inviting tenders issued by M/s. Bharat Heavy Electricals Ltd on 15 March 2017.

Thus, submits Mr. Narula, Wockhardt was using the brand name AZIWOK continuously since the time of its registration, and evidence of such use at