Glenmark Pharmaceuticals Ltd vs Gleck Pharma Opc Pvt Ltd

Structural and Phonetic Similarity of Trademarks and Interim Injunctions

I. Introduction:

Trademark infringement cases often hinge on the concept of deceptive similarity, where the disputed marks are not identical but so similar that they are likely to cause confusion. This article explores a specific legal dispute involving the trademarks "ZITA-MET" and "XIGAMET," focusing on the legal principles related to structural and phonetic similarity whereby interim injunction was granted to the Plaintiff.

II. Factual Background:

The Plaintiff, a pharmaceutical company, markets an anti-diabetic drug under the registered trademark “ZITA-MET.” Initially, from April 2013 to January 2014, the drug contained Sitagliptin as the active molecule. In 2015, the Plaintiff modified the drug's composition to include Teneligliptin and Metformin. The trademark “ZITA-MET” is registered in Class 5, which covers pharmaceuticals.

In August 2020, the Plaintiff discovered that Defendant No.1 had applied for the trademark “XIGAMET” also in Class 5. The Plaintiff filed a suit alleging trademark infringement, arguing that “XIGAMET” was deceptively similar to “ZITA-MET.”

Defendant No.1 countered that a court order from Srinagar, dated February 19, 2024, prevented the Plaintiff from interfering with the sale and distribution of “XIGAMET.” Furthermore, the Defendant challenged the jurisdiction of the current court, claiming that they did not manufacture, sell, or stock their products within the court’s territorial jurisdiction.

III. Legal Principles:

A. Structural and Phonetic Similarity:

The determination of deceptive similarity involves both structural and phonetic analysis. Structural similarity considers the visual appearance of the marks, including the number of letters, their arrangement, and any distinctive elements. Phonetic similarity assesses how the marks sound when pronounced. Courts consider the overall impression created by the marks rather than focusing on specific elements.

B. Interim Injunction:

An interim injunction is a provisional remedy granted to prevent irreparable harm to the plaintiff during the pendency of a lawsuit. Courts considered several factors when deciding on interim injunctions i.e. Prima facie case, Balance of convenience and Irreparable harm.

IV. Analysis of the Court:

A. Structural Similarity:

The trademarks “ZITA-MET” and “XIGAMET” both consist of seven letters and share the suffix "-MET." This suffix could be interpreted as indicative of the common ingredient Metformin, used in anti-diabetic medications. The prefixes "ZITA-" and "XIGA-" both follow a consonant-vowel-consonant pattern, enhancing their structural resemblance.

B. Phonetic Similarity:

Phonetically, “ZITA-MET” and “XIGAMET” sound remarkably similar. The initial sounds "ZITA" and "XIGA" can be easily confused, especially in the pharmaceutical context where precise pronunciation by consumers might not be common. This phonetic resemblance increases the likelihood of confusion, particularly among consumers who might rely on oral recommendations or prescriptions.

C. Likelihood of Confusion:

Given that both trademarks are used for anti-diabetic drugs, the potential for confusion is significant. The similarity in structure and phonetics can lead to mistaken purchases, adversely affecting consumer safety and the Plaintiff’s business. The average consumer, even with a degree of attentiveness, might not distinguish between the two marks, especially when faced with handwritten prescriptions or verbal instructions.

V. Interim Injunction:

The Court observed that the Plaintiff has established a prima facie case of trademark infringement by demonstrating the deceptive similarity between “ZITA-MET” and “XIGAMET.” The balance of convenience favors the Plaintiff, as allowing the continued use of “XIGAMET” could cause substantial harm to its business reputation and consumer trust. The potential for irreparable harm is considerable, given the risk of consumer confusion in the pharmaceutical market. Accordingly interim injunction was granted to the Plaintiff.

VI.Conclusion:

In conclusion, the structural and phonetic similarities between “ZITA-MET” and “XIGAMET” create a high likelihood of consumer confusion, justifying the grant of an interim injunction. The Plaintiff has demonstrated a prima-facie case of trademark infringement on the basis of phonetic and structural similar between the competing Trademarks in question , resulting in grant of interim injunction in favour of Plaintiff.

Case Citation: Glenmark Pharmaceuticals Ltd vs Gleck Pharma Opc Pvt Ltd.: 13.06.2024: Commercial IP Suit No. 30149 of 2023:2024:BHC:OS:8628: Firdosha P.PooniwaliaH.J. .

Disclaimer:

Ideas, thoughts, views, information, discussions and interpretation expressed herein are being shared in the public Interest. Readers' discretion is advised as these are subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Written By: Advocate Ajay Amitabh Suman
D/1027/2002 [United & United]
IP Adjutor [Patent and Trademark Attorney]
Email: amitabh@unitedandunited.com
Mob No.:+91-9990389539

Pidilite Industries Limited Vs Astral Limited

Mosaicing and design registration

Introduction:

The issue of design registration and its infringement has become increasingly significant with the growth of industries that rely heavily on distinct packaging for branding and consumer recognition. This article delves into the legal nuances of mosaicing in the context of design registration, illustrated through a case involving the Plaintiff's M-SEAL PV SEAL containers and the Defendant's SOLVOBOND containers.

Background:

In 2018, the Plaintiff pioneered the use of Coex plastic containers for its solvent cement products, M-SEAL PV SEAL, transitioning from traditional tin containers. By 2019, these plastic containers were fully integrated into the market, completely replacing tin containers by 2023. In 2024, the Plaintiff accused the Defendant of infringing upon its design rights by marketing solvent cement products in containers under the SOLVOBOND brand, which allegedly mimicked the Plaintiff’s container design.

Legal Framework:

The Court's assessment of design infringement hinged on several core principles:

Ocular Appeal:The design's appeal to the eye as a whole is the definitive test of its validity. The Court emphasized that this assessment must be objective, avoiding subjective biases.

Whole Article Comparison:The design must be evaluated in its entirety. Isolated comparisons of individual parts, such as caps or body shapes, are impermissible.

Mosaicing: The practice of breaking down a design into constituent parts and comparing these with elements from other designs is not allowed. A design should be considered as a unique whole, not a patchwork of known designs.

Prior Art and Publications: Prior art must be substantially similar to the contested design to invalidate it. The filing of a patent application does not equate to prior publication unless it visually discloses the design in a manner recognizable to the eye.

Court's Analysis and Findings:

Ocular Appeal: The Court found that the Plaintiff’s container design appealed to the eye as a whole, fulfilling the requirement for design protection.

Comparison of Designs: The Defendant’s evidence of prior art was not sufficiently similar to the Plaintiff’s design. The Court noted substantial differences between the Plaintiff's registered design and the prior art presented by the Defendant.

Impermissible Comparisons: The Defendant’s strategy of comparing individual components (e.g., caps or bottle bodies) in isolation was rejected. The Court maintained that the design must be viewed holistically.

Mosaicing: The Court reinforced that mosaicing is not a valid defense. The Plaintiff’s design was not merely an aggregation of known designs but a distinctive, original creation. Mosaicing cannot be used to dismantle and discredit the uniqueness of a registered design.

Patent Application: The Court ruled that the Plaintiff’s prior patent application did not constitute prior publication. The application did not visually disclose the design in a way that would affect its registration validity.

Implications of the Decision:

Holistic Design Evaluation: This case underscores the importance of considering the design as an integrated whole rather than dissecting it into parts. This approach protects the unique character of a design against piecemeal challenges.

Objective Standard Application: By applying an objective standard, the Court avoids subjective biases that could undermine the consistency and fairness of design infringement rulings.

Defense Strategies: Defendants in design infringement cases should focus on presenting prior art that is substantially similar in its entirety to the contested design rather than relying on mosaicing or isolated comparisons.

Patent and Design Distinction: This case clarifies that the mere existence of a patent application does not invalidate a subsequent design registration unless the design is explicitly disclosed in a manner that is visually recognizable.

Conclusion:

The Court's ruling in favor of the Plaintiff reinforces critical principles in design registration and infringement cases. The prohibition of mosaicing and the requirement for holistic evaluation protect the integrity of registered designs. This case sets a precedent that emphasizes the need for objective standards and comprehensive comparison methods in legal assessments of design infringement.

Case Citation: Pidilite Industries Limited Vs Astral Limited: 09.05.2024: Commercial IP Suit No. 13638 of 2024:2024:BHC:OS:8629: Firdosha P.PooniwaliaH.J.

Disclaimer:

Ideas, thoughts, views, information, discussions and interpretation expressed herein are being shared in the public Interest. Readers' discretion is advised as these are subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Written By: Advocate Ajay Amitabh Suman
D/1027/2002 [United & United]
IP Adjutor [Patent and Trademark Attorney]
Email: amitabh@unitedandunited.com
Mob No.:+91-9990389539

Pocket FM Pvt. Ltd. Vs Novi Digital Entertainment Pvt. Ltd.

Copyright Infringement and the Protection of Ideas in Intellectual Property Law

Introduction:

The intersection of mythology and intellectual property law presents a complex legal landscape. This is particularly evident in the case of Pocket FM Private Limited v. Disney+Hotstar, where the plaintiff, Pocket FM, claimed copyright infringement over a character and storyline that are deeply rooted in ancient mythology. The dismissal of the plaintiff's application for an interim injunction by the court provides significant insights into the nuances of copyright law, particularly concerning the protection of ideas versus the expression of those ideas.

Background of the Case:

Pocket FM, an online platform offering audio series and audiobooks, had entered into an agreement with Mr. Anand Usha Borkar on July 18, 2023, securing exclusive rights to his literary work titled "Yakshini." The plaintiff adapted and published this work as an audio series on their platform, launching it officially on May 30, 2021.

In early June 2024, Pocket FM's representatives discovered a trailer for a television series titled "Yakshini" on Disney+Hotstar's YouTube channel. Believing that this series was an unauthorized adaptation of their audio series, Pocket FM sought an interim injunction against Disney+Hotstar to prevent the broadcast of the television series.

Defendant's Arguments:

Disney+Hotstar resisted the injunction, arguing that "Yakshini" is a mythological character with extensive historical and cultural references. They pointed to the character's presence in Buddhism, Hinduism, Jainism, and other traditions, supported by references from sources like Wikipedia. The defendant contended that their television series did not derive its idea from Pocket FM's audio series but from the abundant existing literature about the character.

Court's Analysis and Decision:

The court dismissed the application for an interim injunction, highlighting the following key points:

Ideas vs. Expression of Ideas:

The court emphasized the fundamental principle of copyright law that protects the expression of ideas rather than the ideas themselves. While Pocket FM's audio series may have been an original adaptation, the underlying idea of "Yakshini" as a mythological character was not protectable under copyright law.

Historical and Cultural Roots:

The court noted that "Yakshini" is a character with deep roots in various mythological traditions. Given its historical and cultural significance, it is not exclusive to any single author or creator. The character's existence in ancient texts and its depiction across different cultures precludes any single entity from claiming exclusive rights over it.

Lack of Prima Facie Evidence of Copyright Infringement:

The court found no prima facie evidence to support the claim that Disney+Hotstar had infringed upon the copyright-protected expression of Pocket FM's audio series. The similarities cited by Pocket FM, such as the character of Yakshini, the presence of an Aghori, and certain scenario descriptions, were not sufficient to establish copyright infringement. These elements were considered too general and rooted in mythology, rather than unique expressions of the plaintiff's work.

Legal Implications and Analysis:

The decision in this case underscores several important aspects of copyright law:

Distinction Between Idea and Expression:

The ruling reaffirms the essential distinction between an idea and its expression. While the idea of a character like Yakshini cannot be copyrighted, a specific portrayal or narrative involving the character can be protected. However, proving infringement requires demonstrating substantial similarity in the expressive elements, not just the general idea.

Public Domain and Mythological Characters:

Characters that are part of the public domain, particularly those rooted in mythology and folklore, pose unique challenges in copyright protection. The court's decision reflects the difficulty in claiming exclusive rights over such characters, given their widespread historical and cultural usage.

Burden of Proof in Copyright Infringement:

The case highlights the burden of proof required in copyright infringement cases. Plaintiffs must provide clear evidence showing that the defendant's work is substantially similar to the protected elements of their original work. General similarities in themes or characters are insufficient without concrete proof of copying the specific expression.

Conclusion:

The case of Pocket FM Private Limited v. Disney+Hotstar serves as a critical reminder of the limitations of copyright protection when it comes to ideas and mythological characters. While creators can protect their unique expressions and adaptations, they cannot monopolize characters or concepts that are part of the cultural and historical fabric shared by humanity. This decision reinforces the balance that copyright law seeks to maintain between protecting original works and ensuring the free flow of ideas and cultural heritage.

Case Citation: Pocket FM Pvt. Ltd. Vs Novi Digital Entertainment Pvt. Ltd: 13.06.2024: CS (COMM) 524 of 2024 : 2024:DHC:4752: Delhi High Court:

Neena Bansal Krishna H. J.

Disclaimer:

Ideas, thoughts, views, information, discussions and interpretation expressed herein are being shared in the public Interest. Readers' discretion is advised as these are subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Written By: Advocate Ajay Amitabh Suman

D/1027/2002 [United & United]

IP Adjutor [Patent and Trademark Attorney]

Email: amitabh@unitedandunited.com

Mob No.:+91-9990389539

Independent News Service Private Limited Vs Ravindra Kumar Choudhary

Trademark Infringement and the Interim Injunction in the Case of Independent News Service Private Limited vs. Ravindra Kumar Choudhary

Introduction:

The case of Independent News Service Private Limited vs. Ravindra Kumar Choudhary addresses critical issues in trademark law, particularly concerning the alleged infringement of well-known trademarks in the media industry. The plaintiff, Independent News Service Private Limited, sought a permanent injunction against the defendants for using trademarks that were deceptively similar to their well-established marks, "INDIA TV" and "AAP KI ADALAT." The Delhi High Court's decision to grant an ad interim ex parte injunction highlights the judiciary's approach to protecting trademark rights and maintaining the integrity of established brands.

Case Background:

Independent News Service Private Limited, the plaintiff, operates the well-known news channel "INDIA TV" and the popular television show "AAP KI ADALAT." These trademarks have gained significant recognition and goodwill over the years. The defendants, led by Ravindra Kumar Choudhary, were accused of using the trademarks "INDIA TV" and "BAAP KI ADALAT," which the plaintiff argued were deceptively similar to their trademarks, potentially causing confusion among the public.

Legal Issues:

The primary legal issues in this case revolve around:

Trademark Infringement:

Whether the defendants' use of the trademarks "INDIA TV" and "BAAP KI ADALAT" constitutes infringement of the plaintiff's trademarks under the Trade Marks Act, 1999.

Deceptive Similarity:

Whether the defendants' trademarks are deceptively similar to the plaintiff's trademarks, leading to confusion among the public.

Interim Injunction:

Whether the plaintiff is entitled to an ad interim ex parte injunction to prevent the defendants from using the allegedly infringing trademarks pending the final decision of the court.

Court's Analysis:

Prima Facie Case:

The court found a strong prima facie case in favor of the plaintiff. The trademarks "INDIA TV" and "AAP KI ADALAT" are well-known in the media industry, enjoying substantial recognition and goodwill. The defendants' use of similar trademarks was likely to cause confusion among the public, leading them to believe there was an association or endorsement by the plaintiff.

Balance of Convenience:

The balance of convenience was in favor of the plaintiff. The plaintiff had invested significant resources in building their brand reputation, and allowing the defendants to use similar trademarks could cause irreparable harm to the plaintiff's goodwill and brand equity.

Irreparable Harm:

The court noted that the plaintiff would suffer irreparable harm if the defendants were allowed to continue using the deceptively similar trademarks. The potential confusion and dilution of the plaintiff's trademarks could not be adequately compensated by damages.

Ad Interim Ex Parte Injunction:

Considering the strong prima facie case, the balance of convenience, and the potential for irreparable harm, the court granted an ad interim ex parte injunction against the defendants. This injunction restrained the defendants from using the trademarks "INDIA TV" and "BAAP KI ADALAT" pending the final decision in the case.

Implications of the Judgment:

The court's decision to grant an ad interim ex parte injunction in favor of the plaintiff underscores several important principles in trademark law:

Protection of Well-Known Trademarks:

The judgment reinforces the protection afforded to well-known trademarks, emphasizing the need to safeguard the substantial recognition and goodwill associated with such marks.

Deceptive Similarity:

The case highlights the court's willingness to intervene when there is a high likelihood of confusion due to the deceptive similarity of trademarks. This serves as a deterrent to parties seeking to capitalize on the reputation of established brands.

Interim Relief in Trademark Infringement Cases:

The judgment demonstrates the court's readiness to grant interim relief to prevent further harm to the trademark owner's rights while the case is pending. This is crucial in maintaining the status quo and protecting the interests of the trademark owner.

Conclusion:

The case of Independent News Service Private Limited vs. Ravindra Kumar Choudhary provides a significant precedent for the protection of well-known trademarks in India. By granting an ad interim ex parte injunction, the Delhi High Court has underscored the importance of preventing deceptive similarity and protecting the goodwill and reputation of established brands.

Case Title: Independent News Service Private Limited Vs Ravindra Kumar Choudhary

Judgment/Order Date: 30.05.2024

Case No. CS Comm 498 of 2024

Neutral Citation: NA

Name of Court: Delhi High Court

Name of Hon'ble Judge:Anish Dayal

Disclaimer:

Ideas, thoughts, views, information, discussions and interpretation expressed herein are being shared in the public Interest. Readers' discretion is advised as these are subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Written By: Advocate Ajay Amitabh Suman

IP Adjutor [Patent and Trademark Attorney]

United & United

Email: amitabh@unitedandunited.com

Ph No: 9990389539

Infosys Limited Vs Southern Infosys Limited

The Bad Faith Adoption of Trademark and Defense of Delay and Acquiescence

Introduction:

In trademark law, the adoption of a well-known trademark in bad faith by another entity and the defenses of delay and acquiescence often surface as contentious issues. A recent case highlighting these issues is the lawsuit filed by Infosys, a global leader in information technology and consulting services, against Southern Infosys Limited. This case provides a crucial insight into how courts assess trademark infringement, the significance of trademark recognition, and the defenses raised by the alleged infringer.

Case Background:

Infosys, established in 1981, is a powerhouse in the IT industry, boasting a market capitalization of approximately $93.6 billion USD. The company's extensive recognition and distinctiveness are underscored by its well-maintained online presence and its official website, www.infosys.com, which has been operational since 1992. The trademark 'INFOSYS' has been declared a 'well-known' mark by both the courts and the trademark registry, affording it extensive protection under the law.

The lawsuit, filed under Section 29(5) of the Trademarks Act, 1999, by Infosys, aimed to prohibit Southern Infosys Limited from using the 'INFOSYS' trademark as part of its corporate name. Section 29(5) explicitly prohibits the use of a registered trademark as part of a corporate name in a manner that could imply a business connection or endorsement by the trademark owner, potentially leading to public confusion.

Arguments and Allegations:

Infosys argued that the defendant's use of 'INFOSYS' in their corporate name constituted infringement, given the substantial reputation and recognition of the 'INFOSYS' trademark. On the other hand, Southern Infosys Limited contended that there was a significant delay and acquiescence on the part of Infosys. They highlighted that their company, initially listed as Disha Financial Services Ltd. in 1997, changed its name to Southern Infosys Limited in 1998. This change went uncontested for nearly two decades, with the company being listed on the Bombay Stock Exchange (BSE) in 2016. Southern Infosys argued that Infosys, given its active presence on the BSE, must have been aware of their existence and business operations long before filing the lawsuit in 2023.

Bad Faith Adoption:

The court, in its analysis, acknowledged that Southern Infosys Limited adopted the term 'Southern Infosys Limited' in 1998, 17 years after Infosys had established and registered its trademark. Despite the 'INFOSYS' trademark not being classified as 'well-known' at that point, the court highlighted the expectation of due diligence on the part of the defendant. Given that both companies operate in the same industry, the defendant had constructive notice of the plaintiff's registered trademark. The failure to perform due diligence indicated a lack of good faith, suggesting an attempt to capitalize on Infosys's established goodwill and reputation.

Defense of delay and acquiescence:

The court further addressed the defense of delay and acquiescence. It noted that mere delay in asserting trademark rights does not amount to acquiescence. Legal precedents stipulate that for acquiescence to be a valid defense, there must be unequivocal evidence of positive acts of encouragement by the trademark owner, not just silence or inaction. In this case, there was no evidence to suggest that Infosys had explicitly consented to or encouraged the defendant's use of the 'INFOSYS' trademark.

Conclusion:

The court's decision to restrain Southern Infosys Limited from using the 'INFOSYS' trademark underscores the stringent protection afforded to well-known trademarks and the critical importance of good faith in adopting corporate names. This case highlights that the defense of delay and acquiescence requires clear evidence of the trademark owner's positive encouragement or explicit consent, and mere inaction is insufficient. The ruling serves as a cautionary tale for companies about the necessity of thorough due diligence and the risks associated with attempting to leverage the established reputation of well-known trademarks.

Case Title: Infosys Limited Vs Southern Infosys Limited

Judgment/Order Date: 27.05.2024

Case No. CS Comm 257 of 2024

Neutral Citation: 2024:DHC:4724

Name of Court: Delhi High Court

Name of Hon'ble Judge:Sanjeev Narula, H.J.

Disclaimer:

Ideas, thoughts, views, information, discussions and interpretation expressed herein are being shared in the public Interest. Readers' discretion is advised as these are subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Written By: Advocate Ajay Amitabh Suman

IP Adjutor [Patent and Trademark Attorney]

United & United

Email: amitabh@unitedandunited.com

Ph No: 9990389539

Emerge Classes Private Limited Vs Kashmir Institute of Excellence and another

Jammu & Kashmir and Ladakh High Court Upholds Injunction in "EMERGE" and "EMERGE KIE HOPE Mission Ne" Trademark Dispute

In a recent appellate decision, the Jammu & Kashmir and Ladakh High Court at Srinagar upheld a trial court's order restraining Emerge Classes Private Limited from using the trademarks "EMERGE" and "EMERGE KIE HOPE Mission Ne." The appeal, filed by the appellant/defendant Emerge Classes Private Limited, challenged the initial injunction imposed by the trial court in favor of the respondent/plaintiff, Kashmir Institute of Excellence.

The crux of the dispute involved the use of the trademarks "EMERGE" and "EMERGE KIE HOPE Mission Ne." The trial court's order, which was challenged, had restrained the appellant from using these trademarks on the grounds that the respondent was the prior user. Upholding this order, the appellate court noted the respondent's precedence in the usage of the trademark, thereby affirming the trial court's decision.

This case underscores the importance of prior usage in trademark disputes, emphasizing that courts are inclined to protect the rights of the party who can establish an earlier use of the contested trademark. The decision also highlights the judicial reluctance to interfere with trial court orders unless there is a significant reason to do so, maintaining the integrity and consistency of judicial decisions across different levels of the court system.

Case Title: Emerge Classes Private Limited Vs Kashmir Institute of Excellence and another

Judgment/Order Date: 17.05.2024

Case No. FAO No.18 of 2024

Neutral Citation: N.A.

Name of Court: Jammu & Kahsmir and Ladakh High Court at Srinagar

Name of Hon'ble Judge:Sanjay Dhar, H.J.

Disclaimer:

Ideas, thoughts, views, information, discussions and interpretation expressed herein are being shared in the public Interest. Readers' discretion is advised as these are subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Written By: Advocate Ajay Amitabh Suman

IP Adjutor [Patent and Trademark Attorney]

United & United

Email: amitabh@unitedandunited.com

Ph No: 9990389539