The court established that the test for confusing similarity in pharmaceuticals is stringent, with prior registered marks holding superior rights that protect against consumer confusion.

JUDGMENT :

TUSHAR RAO GEDELA, J.

1. Present petition has been filed under Section 57 of the Trade Marks Act, 1999, (hereinafter referred to as “Act”) to rectify, cancel and remove the entry relating to the registered trademark “KREOFLAT” bearing no.4694743 in Class 05 made in the name of the respondent no.1/Registry of Trade Marks.

BRIEF FACTS:-

2. The history of the petitioner is stated to date back to the year 1888 when its founder Dr. Wallace Calvin Abbott began manufacturing alkaloid medicine granules. Sometime in the year 1894, the petitioner was incorporated through its parent company, “Abbott Alkaloidal Company”, a medical publisher and manufacturer. It claims to have established itself in India in the year 1910 and is one of the oldest, leading healthcare companies devoted to the discovery, development, manufacture and sale of healthcare products and services. Abbott India Limited i.e., the Indian subsidiary, was incorporated in the year 1944.

3. The predecessors in interest and title of the petitioner sincerely and bonafidely coined the unique mark “PANKREOFLAT” for the purpose of using the mark to identify, promote and distinguish their goods in the marketplace. On 16.03.1964, the petitioner obtained registration of the mark “PANKREOFLAT” bearing Registration No.221220, which is valid and subsisting till date. The petitioner claims to have undertaken numerous efforts to promote, publicize and popularize the said mark including conducting advertising campaigns.

4. The said “PANKREOFLAT” mark is specifically used for a medicinal formulation designed to treat digestive issues and bloating, containing Pancreatin and Dimethicone. Petitioner states that the said mark has been used continuously since the 1970s. On account of the extensive, continuous and uninterrupted use of “PANKREOFLAT” mark over six decades in connection with the medicinal products, the said mark has garnered immense goodwill and reputation across India. As a result thereof, the public, including the medical community, trade professionals and more importantly, the consumers exclusively associate “PANKREOFLAT” with the petitioner’s goods.

5. The sales figures in relation to the goods marketed under “PANKREOFLAT” mark in India, which were Rs.21.1 crores in 2017, have risen substantially to Rs.34.7 crores in the year 2024. The petitioner claims to have invested an immense amount of resources, time and money in the promotion of the “PANKREOFLAT” product across India via print media, online platforms and various social media platforms. The promotional expenses under the said mark in India amounted to over Rs.1.43 crores for the year 2024.

On account of the aforesaid, the petitioner claims: (a) that the “PANKREOFLAT” mark is a well-known mark; (b) that the documents on record establish adoption and prior use of the said mark since the year 1963 and (c) that the petitioner has established uniqueness and distinctiveness to its marks and earned goodwill and reputation to the extent that the mark “PANKREOFLAT” is exclusively associated with the petitioner and its predecessors.

6. Petitioner claims that sometime in the first week of October, 2024, it came across a trademark bearing registration no.4694743, dated 15.04.2021, for the mark “KREOFLAT” registered in the name of respondent no.1 in respect of Class 5, which are identical goods to those manufactured by the petitioner. Respondent no.1’s products serve the same primary function as those