The appellant, Modi-Mundipharma Pvt. Ltd., filed a suit alleging that the respondents’ use of the mark FEMICONTIN infringed its registered trademarks FECONTIN-F and CONTIN, part of its “CONTIN family of marks” used for pharmaceutical products, claiming long-standing use and market reputation. The respondents contended that CONTIN was descriptive, that the rival marks were visually and phonetically different, and that FEMICONTIN originated from “FE” denoting iron and “CONTIN” suggesting continuous release, a common industry term.
Procedurally, the appellant had previously filed suits in other forums, withdrawn them due to jurisdictional objections, and finally pursued the present suit, which was dismissed by the learned Single Judge on March 23, 2023. The appellant then filed this appeal under the Commercial Courts Act, 2015.
The dispute centered on whether the appellant could claim exclusive rights over the mark CONTIN either as a standalone mark or within a family of marks, and whether the respondents’ use of FEMICONTIN infringed FECONTIN-F or amounted to passing off.
In discussion, the Court noted the appellant had not used CONTIN as a standalone mark and that “FE” was a descriptive prefix relating to iron, while “CONTIN” referred to the drug’s continuous release feature. The Court emphasized that descriptive or generic parts of a mark cannot be monopolized, drawing from judgments like Midas Hygiene Industries (P) Ltd. v. Sudhir Bhatia, (2004) 3 SCC 90 and Power Control Appliances v. Sumeet Machines (P) Ltd., (1994) 2 SCC 448. It found that FEMICONTIN and FECONTIN-F differed in composition, packaging, price, and appearance, reducing the likelihood of confusion.
The Court ultimately upheld the learned Single Judge’s dismissal of the suit, holding that the appellant failed to establish infringement or passing off. It noted the mark CONTIN was never used per se by the appellant and the descriptive elements could not be exclusively claimed.
No comments:
Post a Comment