Introduction
In the realm of intellectual property law, where trademarks serve as the bedrock of brand identity, a recurring conundrum surfaces: Can one registered trademark proprietor sue another for infringement when their marks are deceptively similar? This question, steeped in statutory interpretation and judicial precedent, took center stage in the Delhi High Court case of Raj Kumar Prasad & Anr. vs. Abbott Healthcare Pvt. Ltd., decided on September 10, 2014. The case pitted a pharmaceutical giant against a smaller player, unraveling the interplay between exclusive rights under the Trademarks Act, 1999, and the judiciary’s power to grant interim relief. This landmark ruling not only resolved a trademark tussle but also clarified the legal framework governing such disputes, offering a beacon for future litigants.
Detailed Factual Background
The dispute originated with Abbott Healthcare Pvt. Ltd., a subsidiary of Abbott Laboratories Chicago, a global leader in pharmaceuticals. Abbott claimed ownership of the trademark "ANAFORTAN," used for Camylofin Dihydrochloride formulations, tracing its lineage back to 1988 through Khandelwal Laboratories Pvt. Ltd., which registered the mark under serial No. 501608 in Class 5. Through a series of assignments—first to Nicholas Piramal India Ltd. (later Piramal Healthcare Ltd. and then Piramal Enterprises Ltd.) on April 15, 2008, and subsequently to Abbott on September 8, 2010—Abbott asserted continuous use and substantial goodwill, evidenced by sales of Rs. 7.84 crores in late 2010 and Rs. 23.047 crores in 2011. The conflict arose when Raj Kumar Prasad, operating as Birani Pharmaceuticals, began selling a similar formulation under the trademark "AMAFORTEN," registered under No. 1830060 in Class 5, with manufacturing support from Alicon Pharmaceuticals Pvt. Ltd. Abbott alleged deceptive similarity—both phonetic and visual—between "ANAFORTAN" and "AMAFORTEN," compounded by a mimicking golden trade dress for their tablet strips. Abbott sought to rectify the defendants’ registration and secure an injunction, claiming prior use and reputation since 1988 against the defendants’ entry around 2012.
Detailed Procedural Background
Abbott filed a suit (CS(OS) No. not specified in the document) in the Delhi High Court, accompanied by an application for interim injunction (IA No. 23086/2012). The learned Single Judge, on April 25, 2014, granted the injunction, restraining the defendants from using "AMAFORTEN" or any deceptively similar mark. Aggrieved, Raj Kumar Prasad and Alicon Pharmaceuticals appealed (FAO(OS) 281/2014) before a Division Bench comprising Justice Pradeep Nandrajog and Justice Mukta Gupta. The appeal, argued on September 5, 2014, and decided on September 10, 2014, saw Abbott represented by Senior Advocate Sanjeev Sindhwani and Mr. Manav Kumar, while the appellants were represented by Mr. Mohan Vidhani, Mr. Rahul Vidhani, and Mr. S.B. Prasad. The Bench tackled territorial jurisdiction, stamp duty on assignments, and the core issue of trademark rights between registered proprietors, affirming the Single Judge’s order with detailed reasoning.
Issues Involved in the Case
The central issue was whether a registered trademark proprietor could sue another registered proprietor for infringement based on deceptive similarity, despite both holding valid registrations. Ancillary issues included the Delhi High Court’s territorial jurisdiction, the validity of assignment agreements due to alleged stamp duty deficiencies, and the interplay between Sections 28 and 124 of the Trademarks Act, 1999, particularly regarding interim relief and rectification proceedings. The case also raised questions about balancing prior use, goodwill, and statutory rights in trademark disputes.
Detailed Submission of Parties
Abbott argued that "AMAFORTEN" was deceptively similar to "ANAFORTAN," risking consumer confusion, especially in pharmaceuticals where precision is critical. They emphasized their long-standing use since 1988, inherited goodwill, and substantial sales, asserting a prima facie case for infringement. Abbott relied on Section 124, contending that a suit against another registered proprietor was maintainable, with rectification proceedings as a parallel remedy, and sought interim protection pending such action. They also justified Delhi’s jurisdiction via their branch office and sales presence.
The appellants countered that Section 28(3) of the Trademarks Act granted mutually exclusive rights to registered proprietors of similar marks, barring one from suing the other. They challenged jurisdiction, claiming no sales in Delhi, and attacked the assignment deeds for inadequate stamp duty, though without specifics. They defended "AMAFORTEN" as a legitimate registered mark since July 12, 2011 (applied for on June 17, 2009), arguing that Abbott’s suit was untenable without first invalidating their registration.
Detailed Discussion on Judgments Along with Their Complete Citation Cited by Parties and Their Respective Context Referred in This Case
The appellants did not cite specific case law in the judgment text, relying instead on a literal reading of Section 28(3) to argue mutual exclusivity. Abbott, while not directly citing precedents in the provided document, implicitly drew on principles from Wander Ltd. & Anr. vs. Antox India P. Ltd., 1990 (Supp.) SCC 727, as noted by the court. This Supreme Court decision established the framework for interim injunctions—prima facie case, balance of convenience, and irreparable injury—guiding the court’s assessment of Abbott’s prior use and goodwill against the appellants’ later entry. The Single Judge and Division Bench leaned on statutory interpretation rather than extensive precedent, though Wander provided the legal lens for injunctive relief. The appellants’ jurisdictional and stamp duty pleas were dismissed for lack of evidence, aligning with procedural norms rather than specific citations.
Detailed Reasoning and Analysis of Judge
Justice Pradeep Nandrajog, authoring the judgment, began with the jurisdictional issue, affirming a prima facie finding of Delhi’s competence due to Abbott’s sales office, pending trial evidence. On stamp duty, he found the appellants’ vague objections insufficient, upholding the assignments’ validity for interim purposes. The crux lay in reconciling Sections 28 and 124 of the Trademarks Act. Section 28(1) granted exclusive rights to a registered proprietor, while Section 28(3) suggested that identical or similar marks’ proprietors could not sue each other, only third parties. However, Section 124 permitted infringement suits where a defendant’s registration was challenged as invalid, allowing stays for rectification while empowering interim orders under Section 124(5).
The court harmonized these provisions, rejecting a rigid interpretation of Section 28(3) that would bar all suits between registered proprietors. It held that Section 124’s mechanism—staying suits for rectification while preserving interlocutory relief—indicated legislative intent to protect prior users like Abbott pending validity disputes. The phonetic and visual similarity between "ANAFORTAN" and "AMAFORTEN" was deemed ex-facie deceptive, especially for identical pharmaceutical goods, trade channels, and consumers. Abbott’s 1988 precedence and goodwill trumped the appellants’ 2011 registration, with the latter’s non-disclosure of market entry reinforcing Abbott’s case. Applying Wander principles, the court found a strong prima facie case, tipping the balance of convenience and irreparable harm in Abbott’s favor, particularly given ongoing rectification proceedings initiated by Abbott.
Final Decision
The Division Bench dismissed the appeal, upholding the Single Judge’s order of April 25, 2014, granting an interim injunction against the appellants’ use of "AMAFORTEN" or any deceptively similar mark. Costs were imposed on the appellants, payable to Abbott, affirming the restraint pending suit resolution.
Law Settled in This Case
The ruling clarified that a registered trademark proprietor can sue another registered proprietor for infringement if the marks are deceptively similar, despite Section 28(3)’s apparent exclusivity. Section 124 enables such suits, allowing interim relief while rectification proceedings address registration validity, ensuring protection of prior use and goodwill. This harmonized interpretation balances statutory rights with equitable remedies, reinforcing trademark law’s flexibility in safeguarding established brands.
Disclaimer: The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.
Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi
