The court ruled that the marks 'RACIRAFT' and 'EsiRaft' are not deceptively similar, thus denying the plaintiff's claim for trade mark infringement and passing off.

ORDER :

SHARMILA U. DESHMUKH, J.

1. The suit has been filed for infringement of trade mark and passing off.

2. The Plaintiff and Defendant No. 1 are pharmaceutical companies and Defendant No. 2 is the manufacturer of the impugned product for the Defendant No 1. The rival products are used for treatment of identical ailment i.e. heartburn and indigestion and have identical molecules namely Sodium Alginate, Sodium Biocarbonate and Calcium Carbonate sold in form of oral suspension/syrup.

PLAINTIFF’S CASE :

3. The grievance is as regards the infringement of the Plaintiff’s registered trade mark ‘RACIRAFT’ by the Defendant by use of its mark ‘EsiRaft’. The trade mark “RACIRAFT” was conceived and adopted by the Plaintiff in January, 2022 by arbitrarily combining the words ‘RACI’ which is misspelling of the word ‘RACY’ which suggest full of zest and vigour and ‘RAFT’ which means foam like formation caused by sodium alginate. The Plaintiff’s product used for treatment of heartburn and indigestion contains molecules namely Sodium Alginate, Sodium Bicarbonate and Calcium Carbonate and is sold in the form of oral suspension/ syrup. The Plaintiff applied for registration of its trade mark on 17^th January, 2022 and secured registration in Class 5. The annual sales turn over in respect of its product sold under the trade mark ‘RACIRAFT’ for the year 2022-2023 was around 11.85 Crores and for the year 2023-2024 was 24.49 Crores.

4. The Defendant No 1’s product uses an identical/deceptively similar trade mark and is used for treating identical ailment. The dishonest adoption of the mark by the Defendant No 1 is demonstrated as the impugned product is caused to be manufactured from Defendant No 2,who is the manufacturer of the Plaintiff’s product under an agreement, which restricts the Defendant No 2 from manufacturing product of third parties bearing identical/deceptively similar trademark.

5. It is stated that in order to come as close as possible to the Plaintiff’s registered mark, the Defendant No1 has used two colour combination for ‘ESI’ and ‘RAFT’ in a similar manner as that of the Plaintiff. The Defendant No. 1 has filed an application on 21st March, 2024 for registration of the impugned mark ‘ESIRAFT’ on a ‘proposed to be used basis’. In reply to the examination report where third party marks ‘ESIRAFT’ and ‘EASYRAFT’ were cited, the Defendant No 1 has stated that its mark has distinct pronunciation due to emphasis on ‘si’ diphthong and will not be pronounced as “Easy” , whereas in the present case the stand taken is that the impugned mark will be pronounced as “Easy” or “Esy”.

DEFENDANT’S CASE:

6. The rival marks contains the common word ‘RAFT’ which is generic and common to the trade of medicinal and pharmaceutical preparations and no exclusivity can be claimed in “RAFT.” The Plaintiff is not the lawful proprietor of the trade mark ‘RACIRAFT’ as the search of the trade mark registry reveals existence of various proprietors of marks containing the prefix ‘RACI’/ ‘RACY’. The use of two colour combination, one for the prefix and other for the suffix, is common in use, particularly for treatment for indigestion. The Plaintiff cannot claim exclusivity in the colour combination as the Plaintiff’s registration i