Delhi High Court
Fdc Limited vs Nilrise Pharmaceuticals Pvt. Ltd. And ... on 23 September, 2022
Author: Navin Chawla
Bench: Navin Chawla
* IN THE HIGH COURT OF DELHI AT NEW DELHI
Reserved on: 02.09.2022
Date of decision: 23.09.2022
+ CS(COMM) 427/2022
FDC LIMITED ..... Plaintiff
Through: Ms.Shwetasree Majumdar,
Mr.Prithvi Singh, Ms.Devyani
Nath, Ms.Suvangna Agarwal,
Advs.
versus
NILRISE PHARMACEUTICALS PVT. LTD. AND ANR.
..... Defendants
Through: Ms.Anupriya Alok, Adv.
CORAM:
HON'BLE MR. JUSTICE NAVIN CHAWLA
I.A. 9647/2022
1. This application, under Order XXXIX Rules 1 and 2 read with
Section 151 of the Code of Civil Procedure, 1908 (hereinafter referred to
as „the CPC‟), has been filed by the plaintiff praying for an order of a
temporary injunction restraining the defendants, their proprietors,
principal officers, directors, servants, representatives and agents or any of
them, from manufacturing, marketing or selling pharmaceutical and
medicinal preparations under the mark ZOYPOD or any deceptively
similar variant of the plaintiff's registered trademark ZIPOD either as a
standalone mark or as a prefix mark or in any manner whatsoever
amounting to an infringement of the plaintiff's registered trademark
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ZIPOD or passing off their pharmaceutical preparations as those of the
plaintiff.
PLAINTIFF'S CASE:
2. It is the case of the plaintiff that the trade mark „ZIPOD‟ was
conceived by the plaintiff in the year 2004 and has been in use since 2007
in respect of cefpodoxime based antibiotic and antibacterial preparations.
The preparation is used to treat conditions like pneumonia, sinusitis,
cystitis and ear infections. The said products are available in a dry syrup
form, tablet and dispersible tablet. The said products have been a
phenomenal success and currently hold a significant market share. The
plaintiff is also the registered proprietor thereof under the registration
no.1300578 as under:
Trade Registrati Date of Class Goods Details Status
Mark on No. Application/
Registration
ZIPOD 1300578 05.08.2004 05 Medicinal, Registered
Pharmaceutical
and Veterinary
preparations
3. The plaintiff asserts that its net sales and promotional expenses for
the brand „ZIPOD‟, with its variants since 2007, have increased from
Rs.5,58,12,359/- and Rs.36,07,566/- respectively in the year 2007-08 to
Rs.16,83,55,600/- from April 2021 till December 2021 and
Rs.15,00,800/- between April 2021 to 22nd January 2022. The plaintiff
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sells a number of products using the trade mark ZIPOD with suffixes to
indicate their potency or their combination, such as ZIPOD 200, ZIPOD
100dt, ZIPOD 100DS, ZIPOD 50DS, ZIPOD 50DT ZIPOD CV 200 and
ZIPOD O. The plaintiff asserts that it has been rigorously protecting its
rights in the said trade mark and has been granted protection by this
Court in other litigations.
4. The plaintiff is aggrieved by the adoption of the mark "ZOYPOD"
by the defendants for the pharmaceutical product containing the active
pharmaceutical ingredient Cefpodoxime Proxetil. The plaintiff asserts
that the mark is phonetically and conceptually similar to the plaintiff‟s
registered trade mark "ZIPOD" and the use of the mark "ZOYPOD",
therefore, amounts to infringement and passing off.
5. The plaintiff further asserts that it is only in January 2022 that it
gained knowledge of use of the said mark by the defendant no.1, who
was selling products under the mark ZOYPOD which was being used as
a prefix for a number of its formulations such as ZOYPOD 200,
ZOYPOD CV 325, ZOYPOD 100, etc.
6. On conducting a search on the database of the Trade Marks
registry, the plaintiff came across the registration of the device mark
bearing no.3924887 in the name of defendant no.2. The
plaintiff, thereafter, not only served a cease-and-desist notice on the
defendant no.1, but also filed an application seeking rectification of the
Trade Marks Register.
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SUBMISSIONS OF THE DEFENDANTS:
7. On the other hand, it is the case of the learned counsel for the
defendants that the term „POD‟ is generic in nature and is derived from
the common molecular name i.e., Cefpodoxime, which falls in the list of
International Nonproprietary Names (INN) and is used to treat bacterial
infections. Therefore, no one can claim an exclusive right over the same
or over any other mark having „POD‟ either as a prefix or suffix. In
support, she places reliance on the judgments of this Court in Sun
Pharmaceutical Laboratories Ltd. v. Hetero Healthcare Ltd. & Ors.,
2022 SCC OnLine Del 2580, and Astrazeneca UK Limited and Ors. v.
Orchid Chemicals and Pharmaceuticals Ltd., 2011 SCC OnLine Del
2669.
8. It is further asserted that there are several applications which have
been filed under class 05 in the name of different business entities with
the term „POD‟ as a prefix or suffix, which are used to treat bacterial
infections. Some of them are registered and some of them are pending,
hence, no exclusive right to sue over the term „POD‟ can be claimed by
the plaintiff.
9. It is asserted that as the defendant no.2 is the registered proprietor
of the trade mark/label " ", suit for infringement is
not maintainable against the said defendant.
10. It is further asserted that the marks of the plaintiff and the
defendant no.1 are entirely different- phonetically as also structurally and
visually. They rely on the examination report issued by the Trade Marks
Registry, who while examining the trade mark application of defendant
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no.2 for registration of the above-mentioned mark, did not cite the
plaintiff‟s trade mark as a conflicting trade mark for raising objections
under Section 11 of the Trade Marks Act.
11. It is asserted by the learned counsel for the defendants that the
defendants have been using the impugned mark since 2014, and
subsequently have established the defendants‟ own goodwill and
reputation in the said mark.
12. The learned counsel for the defendants submits that ordinary
people relate to the said trade mark to the goods of the defendants on
account of long and continuous user since 2014, and hence, neither the
suit for passing off nor infringement is maintainable.
13. The learned counsel for the defendants asserts that delay is fatal in
a passing off action, in so far as grant of interim injunction is concerned.
14. The learned counsel for the defendants also asserts that since the
drugs in question are Schedule „H‟ drugs, they are only available on
prescription. In this regard, she also submitted that the packaging of the
said drugs is different.
15. She also contends that the defendants used the term "ZOY" in
various pharmaceutical products like ZOYCLO-M, ZOYBEC,
ZOYCLO-S, ZOYCEF, ZOYDEF, ZOYNIM, ZOYRAB, ZOYLIV,
ZOYCIT, ZOYPRED, etc. Therefore, the adoption of the impugned mark
by the defendants is bona fide.
SUBMISSIONS OF THE LEARNED COUNSEL FOR THE
PLAINTIFF:
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16. The learned counsel for the plaintiff submits that the marks of the
plaintiff and the defendants are phonetically similar. Moreover, the goods
for which they are used for are common.
17. As far as the defense of the learned counsel for the defendants that
the word "POD" is generic and derived from the common molecular
name i.e. Cefpodoxime, the learned counsel for the plaintiff submits that
the same, on the face of it, is incorrect as the word "POD" appears only
in the middle of the said molecule‟s name and the use of the same cannot
be common to trade relating to pharmaceutical products.
18. On the submission of the learned counsel for the defendants that
there are other marks that are registered with the word "POD", the
learned counsel for the plaintiff submits that apart from the fact that the
said registration is irrelevant without any proof of actual usage, even
otherwise, in the list of marks so provided by the learned counsel for the
defendants, all the marks starting with the alphabet „Z‟ have now been
either been cancelled or abandoned or refused. The list of such marks is
given as under:
Mark Status Pg.No. of Defendants‟
documents
ZEFPOD Cancelled 96
ZYPOD Abandoned 97
ZENPOD Abandoned 97
ZEFPOD-CV Refused 98
ZEFPOD-100 Refused 98
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DT
ZEEPOD Abandoned 99
ZEFPOD 200 Abandoned 100
Z-POD Abandoned 102
ZEKPOD Abandoned 108
ZYPODOX Refused 136
ZINPOD Refused 136
19. She further submits that the defendants, having itself obtained the
registration of the mark, is estopped from contending that such mark is
generic and publici juris in nature. In support of her contention, she relied
upon the judgement of this Court in Anchor Health and Beauty Care
Pvt. Ltd. v. Procter & Gamble Manufacturing (Tianjin) Co. Ltd. &
Ors., 2014 SCC OnLine Del 2968.
20. On the claim of the defendant of using the impugned mark since
2014, the learned counsel for the plaintiff submits that the same is also
false, inasmuch as, the defendants, in support of such claim, have filed on
record, inter-alia, a copy of an invoice dated 07.07.2015. The said
invoice is of the year 2015 but refers to a GSTIN number, while the GST
regime itself came into existence only in the year 2017. Moreover, the
GST Registration Certificate in favour of the defendants itself has been
issued only on 16.04.2019. Relying upon the intimation letter dated
08.05.2019, issued by the Office of the Assistant Commissioner, Food &
Drugs Control Administration, Ahmedabad, she submits that even the
license under Drug & Cosmetic Act, 1940 has been issued in favour of
the defendants only on 08.05.2019, for the address mentioned in the
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purported invoice dated 07.07.2015. She submits that the defendants,
having relied upon the false documents, are not entitled to claim any
protection of this Court.
21. Further, placing reliance on the extract from the CIMS Drug Book
2019-2020 and the Indian Drug Review (IDR) Compendium 2021, she
submits that these documents, which list out the available drugs in the
market, do not mention the brand of the defendants‟ drug "ZOYPOD".
22. On the plea that the defendants are also the registered proprietors
of the mark, she submits that the plaintiff, being the prior adopter of the
mark, has a more substantial right and therefore, an order of injunction
can be passed even against the registered proprietor of the mark. In
support, she places reliance on the judgment of this Court in Somany
Ceramics Ltd. v. Shri Ganesh Electric Co & Ors., CS(COMM)
678/2021.
23. On the submission of the learned counsel for the defendants that
the drug in question is a Schedule „H‟ drug and therefore, is available
only on prescription, she submits that the same is also irrelevant. In
support of her submission, she places reliance on the judgment of the
Supreme Court in Cadila Health Care Ltd. v. Cadila Pharmaceuticals
Ltd., (2001) 5 SCC 73.
ANALYSIS AND FINDINGS:
24. I have considered the submissions of the learned counsels for the
parties.
25. The two marks in question are "ZIPOD" of the plaintiff and
"ZOYPOD" of the defendants. The test for comparison of the two marks
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has been laid down by the Supreme Court Amritdhara Pharmacy v.
Satya Deo Gupta, AIR 1963 SC 449, wherein it has been held as under:
"7. Let us apply these tests to the facts of the case
under our consideration. It is not disputed before us
that the two names "Amritdhara" and "Lakshman-
dhara" are in use in respect of the same description of
goods, namely a medicinal preparation for the
alleviation of various ailments. Such medicinal
preparation will be purchased mostly by people who
instead of going to a doctor wish to purchase a
medicine for the quick alleviation of their suffering,
both villagers and townsfolk, literate as well as
illiterate. As we said in Corn Products Refining
Co. v. Skangrila Food Products Ltd. [(1960) (1) SCR
968] the question has to be approached from the point
of view of a man of average intelligence and imperfect
recollection. To such a man the overall structural and
phonetic similarity-of the two names "Amritdhara" and
"Lakshmandhara" is, in our opinion, likely to deceive
or cause confusion. We must consider the overall
similarity of the two composite words "Amritdhara"
and "Lakshmandhara". We do not think that the
learned Judges of the High Court were right in saying
that no Indian would mistake one for the other. An
unwary purchaser of average intelligence and
imperfect recollection would not, as the High Court
supposed, split the name into its component parts and
consider the etymological meaning thereof or even
consider the meaning of the composite words as
"current of nectar" or "current of Lakshman". He
would go more by the overall structural and phonetic
similarity and the nature of the medicine he has
previously purchased, or has been told about, or about
which has otherwise learnt and which he wants to
purchase. Where the trade relates to goods largely sold
to illiterate or badly educated persons, it is no answer
to say that a person educated in the Hindi language
would go by the etymological or ideological meaning
and see the difference between "current of nectar" and
"current of Lakshman". "Current of Lakshman" in a
literal sense has no meaning; to give it meaning one
must further make the inference that the "current or
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stream" is as pure and strong as Lakshman of the
Ramayana. An ordinary Indian villager or townsman
will perhaps know Lakshman, the story of the
Ramayana being familiar to him; but we doubt if he
would etymologise to the extent of seeing the so-called
ideological difference between "Amritdhara" and
"Lakshmandhara". He would go more by the similarity
of the two names in the context of the widely known
medicinal preparation which he wants for his ailments.
8. We agree that the use of the word "dhara" which
literally means "current or stream" is not by itself
decisive of the matter. What we have to consider here is
the overall similarity of the composite words, having
regard to the circumstance that the goods bearing the
two names are medicinal preparations of the same
description. We are aware that the admission of a mark
is not to be refused, because unusually stupid people,
"fools or idiots", may be deceived. A critical
comparison of the two names may disclose some points
of difference, but an unwary purchaser of average
intelligence and imperfect recollection would be
deceived by the overall similarity of the two names
having regard to the nature of the medicine he is
looking for with a somewhat vague recollection that he
had purchased a similar medicine on a previous
occasion with a similar name. The trade mark is the
whole thing-the whole word has to be considered. In
the case of the application to register "Erectiks"
(opposed by the proprietors of the trade mark
"Erector") Farwell, J., said in William Bailey
(Birmingham) Ltd. Application [(1935) 52 RPC 137] :
"I do not think it is right to take a part of the word and
compare it with a part of the other word; one word
must be considered as a whole and compared with the
other word as a whole.... I think it is a dangerous
method to adopt to divide the word up and seek to
distinguish a portion of it from a portion of the other
word."
(Emphasis supplied)
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26. Applying the test in the abovementioned case, in my prima facie
opinion, the mark of the plaintiff "ZIPOD" and the mark of the
defendants "ZOYPOD" are phonetically similar.
27. The dissimilarity in packing of the two products is not relevant as
the plaintiff is the registered proprietor of its work mark "ZIPOD". Once
the mark appear to be deceptively similar and the plaintiff is a prior
adopter thereof, the plaintiff is entitled to protection of its mark from
infringement thereof in terms of Section 29(2)(b) of the Trade Mark Act,
1999.
28. As far as the submission of the learned counsel for the defendants
that the mark "ZOYPOD" has been derived from the molecular name i.e.,
Cefpodoxime, also cannot be accepted. "POD" appears in the middle of
the molecule name; it is neither the opening nor the closing part and is
the irrelevant part of the said molecular name. The explanation given by
the defendants for adoption thereof, prima facie, does not appear to be
genuine.
29. In Sun Pharmaceutical Laboratories Ltd.(supra), the Court was
considering the marks "LETROZ" and "LETERO", which contains the
active ingredients of "LETROZOLE". The Court held that by adoption of
initial letters of the active ingredient, no monopoly could be claimed by
the appellant therein.
30. Similarly, in Astrazeneca UK Limited and Ors. (supra), the marks
in question were "MEROMER" and "MERONEM" which were derived
from the drug "MEROPENEM". The marks in both the above cited cases
used and contained the initial alphabets of the name of the drug, unlike in
the present case and, therefore, cannot come to the aid of the defendants.
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31. It is also relevant to note that the defendants, having obtained the
registration of its mark, though in a device form, of which the word itself
is the only and pre-dominant part, cannot contend that the said mark is
generic in nature. Reference in this regard be made to the judgment of
this Court in Anchor Health and Beauty Care Pvt. Ltd (supra) and
Automatic Electric Limited v. R.K. Dhawan & Anr., 1999 SCC OnLine
Del 27.
32. On the question of Schedule „H‟ drugs, this Court in FDC Limited
v. Tas Med (India) Pvt. Ltd. & Anr, 2021 SCC OnLine Del 5289,
placing reliance on the judgment of the Supreme Court in Cadila Health
Care Ltd. (supra), reiterated that:-
"To say that the medicinal preparations in the
present case being „Scheduled-H‟ drugs requiring
a prescription, no confusion would arise, would
be limiting the test. As observed in several other
cases, such as USV Limited v. IPCA Laboratories
Limited, 2002 SCC OnLine Mad 870, a mistake
can occur while reading the prescription on
account of the similarity of the names."
33. In Cadila Health Care Ltd. (supra), the Supreme Court had
observed:-
"27. As far as the present case is concerned, although
both the drugs are sold under prescription but this
fact alone is not sufficient to prevent confusion which
is otherwise likely to occur. In view of the varying
infrastructure for supervision of physicians and
pharmacists of medical profession in our country due
to linguistic, urban, semi-urban and rural divide
across the country and with high degree of possibility
of even accidental negligence, strict measures to
prevent any confusion arising from similarity of
marks among medicines are required to be taken."
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34. In view of the above, the submission of the learned counsel for the
defendants that as the medicinal preparations in question are Schedule
„H‟ drugs and are only available on a prescription and, therefore, no
confusion is possible, is ill founded.
35. The submission of the learned counsel for the defendants that the
defendants, being the registered proprietor of their mark, cannot be
injuncted, is also liable to be rejected. It is no longer res-integra that the
rights of the prior user are superior to that the registered proprietor and,
in case of any conflict or dispute between two registered proprietors, the
prior adopter of the mark would succeed. In this regard, reference may be
made to the judgment of this Court in Somany Ceramics Ltd. (supra).
36. On the assertion of the defendants that there are other marks with
the terms "POD" which have been granted registration by the Registrar of
Trade Marks, it must be observed that the plaintiff has been prima facie
able to show that registration of marks starting with alphabet „Z‟, as are
in question in the present case are either abandoned/not renewed/refused.
The other marks appearing in the search report, do not appear to be
similar to that of the plaintiff. Therefore, the list filed by the defendants,
cannot come to the aid of the defendants.
37. Even otherwise, the mere presence of such marks in the Register of
Trade Marks, is not evidence of their use. In this regard, I may place
reference on the judgment of the Supreme Court in Corn Products
Refining Co. v. Shangrila Food Products Ltd., (1960) 1 SCR 968, as
also the judgment of this Court in Century Traders v. Roshan Lal
Duggar & Co., 1977 SCC OnLine Del 50.
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38. This brings me to the submission of the learned counsel for the
defendants that the defendants have been using the said mark since 2014.
In support of this assertion, the defendants have placed certain invoices
on record. The invoice dated 07.07.2015 is reproduced herein:
39. The said invoice reflects a GSTIN number, even though, the GST
regime had not been introduced on that date. The invoice is of the year
2015, while the GST Regime came into force in 2017. When confronted,
the learned counsel for the defendants stated that this may be a printing
error as the software had been updated by the defendants. This
explanation also prima facie appears to be incorrect inasmuch as the
previous invoice annexed by the defendants is of 01.04.2014 and the
subsequent invoice inter-alia is of 01.11.2016, both of which do not
reflect a GSTIN number. It appears that this invoice has been fabricated
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by the defendants for the purpose of the present suit. This casts a doubt
on the authenticity of the other invoices as well.
40. Even otherwise, the defendants have not disclosed the amount of
the sales made by them using the impugned mark nor of any
advertisement expenses incurred by them in promoting the said mark. It
has also not been explained as to why its drug does not find mention in
CIMS Drug Book 2019-2020 and the Indian Drug Review (IDR)
Compendium 2021. Therefore, at this stage, the plea of the learned
counsel for the defendants of the defendants using the impugned mark
since 2014, cannot be accepted.
41. The submission of the learned counsel for the defendant that they
be permitted to use the impugned mark as they are using the prefix
"ZOY" also with respect to their other medicinal preparations, also
cannot be accepted. Each mark of the defendant has to be tested on its
own standing. Merely because the defendant uses the prefix "ZOY" for
its other medicinal preparations, it cannot be allowed to use the impugned
mark even though the same is found to be deceptively similar to an
already registered mark with prior use.
42. Since the products in question are medicinal products, in my
opinion, the test to be applied needs to be far stricter than the one applied
to other goods, as any confusion would result in public injury.
43. In the present case, since the defendants have not been able to
satisfactorily show that they are the user of the impugned mark since
2014, and even otherwise would be the later entrant into the market, and
the two marks are phonetically and visually similar, the use of the
impugned mark of the defendants "ZOYPOD" is liable to be restrained.
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44. In view of the above, I find that the plaintiff has been able to make
out a good prima facie case in its favour. The balance of convenience
also lies in favour of the plaintiff and against the defendants. The plaintiff
is likely to suffer a grave irreparable injury if the ad-interim injunction is
not granted.
45. Accordingly, an ad-interim injunction is granted in favour of the
plaintiff and against the defendants, restraining the defendants, their
proprietors, principal officers, directors, servants, representatives and
agents or any of them from manufacturing, marketing or selling
pharmaceutical and medicinal preparations under the mark „ZOYPOD‟ or
any deceptively similar variant of the plaintiff's registered trademark
„ZIPOD‟, either as a standalone mark or as a prefix mark or in any
manner whatsoever amounting to an infringement of the plaintiff's
registered trademark „ZIPOD‟ or passing off their pharmaceutical
preparations as those of the plaintiff, during the pendency of the present
suit.
46. It is clarified that any and all observations made therein are only
prima facie in nature and shall not in any manner influence this Court at
the trial.
47. The application is allowed in the above terms.
CS(COMM) 427/2022
48. List before the learned Joint Registrar (Judicial) for further
proceedings on 1st November, 2022.
NAVIN CHAWLA, J.
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