Trademarks "RACIRAFT" and "RANRAFT" Held to Be Deceptively Similar:
Background of the Case:
This case concerns a dispute between Sun Pharmaceutical Industries Ltd., the plaintiff, and J.B. Chemicals, the defendant, over the use of trademarks related to pharmaceutical products. Sun Pharmaceutical, a company established in 1978 as a proprietary firm and later converted into a partnership in 1982, has a long history of marketing, manufacturing, and trading pharmaceutical goods. Over the years, it has gained a reputation for its products in the pharmaceutical industry and has established trademarks for its goods, including the trademark "RACIRAFT."
J.B. Chemicals, on the other hand, is a company involved in a similar business. The defendant sought to use the trademark "RANRAFT" for its pharmaceutical products, which led to a conflict with Sun Pharmaceutical. The crux of the dispute is whether the defendant’s trademark "RANRAFT" infringes upon the plaintiff's registered trademark "RACIRAFT."
Issue of the Case:
The core issue in this case is whether Sun Pharmaceutical is entitled to seek an injunction restraining J.B. Chemicals from using the trademark "RANRAFT." Sun Pharmaceutical asserts that the defendant's mark is deceptively similar to their registered trademark "RACIRAFT," creating a likelihood of confusion among consumers.
Sun Pharmaceutical contends that their mark, having been in use earlier and having acquired a registered status, should be protected under the Trade Marks Act, 1999. The defendant's application for trademark registration of "RANRAFT" is still pending, and Sun Pharmaceutical argues that the use of this mark infringes upon their exclusive rights as the registered proprietor of "RACIRAFT."
Contentions of the Parties:
Plaintiff's Contentions (Sun Pharmaceutical):
Sun Pharmaceutical made several key arguments in support of its claim:
Deceptive Similarity: Sun Pharmaceutical argued that the trademarks "RACIRAFT" and "RANRAFT" are deceptively similar, especially in the way they are pronounced and perceived by consumers. The plaintiff highlighted that both trademarks share a common prefix ("RA") and suffix ("RAFT"), which creates a high degree of resemblance. Given that the goods involved (pharmaceutical products) are often purchased by consumers who may not pay close attention to minor differences, Sun Pharmaceutical claimed that the similarity between the marks could lead to confusion.
First Use and Registration: Sun Pharmaceutical emphasized that they were the first to enter the market with their trademark "RACIRAFT" and that they are the registered proprietors of the mark. They argued that, as the prior adopter and user, their rights over the trademark should be respected, and any subsequent use of a similar mark by another party would amount to infringement.
Likelihood of Confusion and Consumer Protection: The plaintiff contended that the adoption of the mark "RANRAFT" by the defendants would likely mislead consumers into believing that the defendant's products are associated with or originate from Sun Pharmaceutical. This could lead to dilution of the plaintiff's brand and goodwill. Moreover, in the context of pharmaceutical products, which are often prescribed by doctors or purchased by patients with limited knowledge of the specifics, any confusion could result in serious harm to consumers.
Injunction Against Infringement: Sun Pharmaceutical argued that the defendant's use of the trademark "RANRAFT" should be immediately restrained by an ad interim injunction, as the continued use of a deceptively similar mark would cause irreparable harm to their business and reputation. They further emphasized that the defendant's pending application for registration of "RANRAFT" could not be used as a defense, as registration does not confer the right to infringe upon a previously registered mark.
Defendant's Contentions (J.B. Chemicals):
While the document does not provide the specific arguments raised by the defendants, in such cases, defendants typically present the following defenses:
Distinctiveness: The defendant may argue that their trademark "RANRAFT" is sufficiently distinct from the plaintiff's mark "RACIRAFT" and that there are notable differences in terms of appearance, pronunciation, and market positioning. They may contend that consumers are unlikely to confuse the two brands.
No Likelihood of Confusion: The defendant could assert that there is no real likelihood of confusion between the trademarks, particularly if the products are marketed through different channels or cater to different groups of customers. They may claim that their target market can easily differentiate between the two brands.
Pending Registration: The defendant might point out that their application for the registration of the trademark "RANRAFT" is still pending, and they are entitled to use the mark until the matter is resolved.
Issues Dealt with by the Court:
The court had to examine several key aspects in determining whether an interim injunction should be granted in favor of Sun Pharmaceutical:
Degree of Resemblance Between the Trademarks: The court analyzed the visual, phonetic, and structural similarities between the trademarks "RACIRAFT" and "RANRAFT." The focus was on whether an average consumer with an imperfect recollection could distinguish between the two marks, particularly given the similarity in their prefixes and suffixes.
Nature of the Products: The court considered the nature of the goods being sold under the trademarks, both of which involved pharmaceutical products. Since pharmaceuticals are goods that affect health and are often prescribed by medical professionals, even a small amount of confusion could have serious implications.
Trade Channels and Consumer Base: The court assessed the channels of trade and targeted customers for both parties' products. Since pharmaceutical goods are typically purchased by the general public, which may not scrutinize trademarks closely, the risk of confusion was heightened.
Legal Principles on Deceptive Similarity: The court referred to legal precedents and the principles laid out in the Trade Marks Act regarding deceptively similar marks and the rights of registered proprietors. These principles guide courts in determining whether a mark infringes upon the rights of a trademark owner.
Balance of Convenience and Irreparable Harm: The court considered whether the balance of convenience lay in favor of the plaintiff or the defendant. The court had to assess whether the plaintiff would suffer irreparable harm if the injunction was not granted and whether the defendant's business would be unfairly affected by the injunction.
Reasoning and Final Decision:
After carefully reviewing the arguments and evidence presented by the plaintiff, the court concluded that the trademarks "RACIRAFT" and "RANRAFT" were indeed deceptively similar. The court’s reasoning was based on the following factors:
Similarity of the Marks: The court found that both trademarks shared a common structure and sound, with only slight differences in the middle letters. Both marks began with the letters "RA" and ended with "RAFT," creating a strong likelihood that an average consumer with imperfect recollection might confuse one mark with the other. The court emphasized that in trademark law, it is not necessary for the marks to be identical; it is enough if there is a substantial similarity that could cause confusion.
Imperfect Recollection and Consumer Confusion: The court noted that consumers purchasing pharmaceutical products often rely on their imperfect recollection of trademarks. Given the similarity between "RACIRAFT" and "RANRAFT," consumers could easily be misled into thinking the products were from the same source, especially since both products fall within the pharmaceutical category.
Registered Proprietor’s Rights: The court reaffirmed that Sun Pharmaceutical, as the registered proprietor of the trademark "RACIRAFT," held the exclusive right to use the mark. The defendant’s pending application for the registration of "RANRAFT" did not grant them the right to use the mark if it infringed upon an already registered trademark.
Balance of Convenience: The court found that the balance of convenience favored Sun Pharmaceutical. The plaintiff had a long-standing reputation in the market, and allowing the defendant to use a deceptively similar mark would cause irreparable harm to the plaintiff’s business, reputation, and goodwill. The court also noted that the defendant had not established any compelling reason why they should be allowed to continue using the infringing mark.
Final Order:
The court granted an ad interim injunction in favor of Sun Pharmaceutical, restraining J.B. Chemicals and its directors, assignees, licensees, and other related parties from manufacturing, selling, advertising, or offering for sale any products under the trademark "RANRAFT" or any other mark that is deceptively similar to "RACIRAFT." This injunction was issued to protect the plaintiff’s trademark rights while the case continued to be litigated.
Conclusion:
The court’s decision in this case reaffirms the importance of protecting registered trademarks from deceptive imitation, especially in industries such as pharmaceuticals where consumer confusion could have serious consequences. The ruling underscores the need for businesses to carefully evaluate the similarity of their trademarks to avoid infringing upon the rights of established brands.
Case Citation: Sun Pharmaceutical Vs J.B. Chemicals: 12.09.2024: CS(COMM) 369/2024: 2024:DHC: 7430: Delhi High Court: Saurabh Banerjee, H.J.
Written by: Advocate Ajay Amitabh Suman
IP Adjutor [Patent and Trademark Attorney] United & United
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