Raj Kumar Prasad & Another v/s Abbott Healthcare Pvt.Ltd.
- By Kanishka
- Judgment Analysis
Name of the Case -Raj Kumar Prasad & Another v/s Abbott Healthcare Pvt.Ltd.
FAO(OS) No. 281 of 2014 Decided On, 10 September 2014
At, High Court of Delhi By, THE HONOURABLE MR. JUSTICE PRADEEP NANDRAJOG & THE HONOURABLE MS. JUSTICE MUKTA GUPTA
For the Appellants: Mohan Vidhani, Rahul Vidhani, S.B. Prasad, Advocates. For the Respondent: Sanjeev Sindhwani, Sr.Advocate instructed by Manav Kumar, Advocate.
ISSUE
Whether a registered owner of a trademark can sue another registered owner for passing off or infringement, claiming deceptive similarity between the marks, particularly when both marks are registered under the Trademarks Act, 1999?
RULE
Section 28(1) of the Trademarks Act, 1999 grants the most exclusive right to the registered owner of a trademark to imply and use the mark in connection with the goods and services for which it was registered and to seek any relief against infringement. But Section 28(3) excepts this exclusivity by adding that where two or more individuals are registered owners of trademarks that are the same or nearly look alike, none of them shall be entitled to exclusive rights as against the other solely because of registration. Rather, each is entitled only as against third parties. Additionally, Section 124 of the Act deals with the case where the registrability of a registered trademark is questioned in a suit. According to it, the suit will be stayed so that rectification proceedings can be instituted before the Registrar or Appellate Board but makes an exception under sub-section (5) that the stay does not preclude the court from granting interlocutory (interim) reliefs such as injunctions. Therefore, even if both sides have registered marks, courts are vested with jurisdiction to investigate prima facie validity and deceptive similarity with a view to granting interim relief.
ANALYSIS
In the current case, the Court held that while both trademarks “ANAFORTAN” (Abbott) and “AMAFORTEN” (Raj Kumar Prasad) were registered, its predecessor had been using the mark of Abbott since 1988 and had built large goodwill and market space. The mark “AMAFORTEN” was registered in 2011 only, and the defendants did not provide the precise date of its first use. When compared visually and phonetically, the Court held the two marks to be deceptively similar considering that both were used for medicinal products sold to the same group of consumers via the same channels of trade. The Court reiterated that in the field of pharmacy, the requirement for confusion has to be lower on account of public health. Based on Section 124, the Court held that Abbott had filed rectification proceedings and was hence entitled to continue the suit for infringement and obtain interim relief. Following this, the Court confirmed the Single Judge’s order restraining the defendants from using the mark “AMAFORTEN,” holding that the balance of convenience and prima facie case were in favour of Abbott.
CONCLUSION
The Court held that a registered proprietor may sue another registered proprietor where there is deceptive similarity and challenge to the validity of registration. It upheld Abbott’s interim injunction, thereby safeguarding the goodwill of its long-standing mark “ANAFORTAN.” Raj Kumar Prasad’s appeal was rejected, and costs were granted to Abbott. I Agree with this judgement since it appropriately gives importance to public health and market fairness while interpreting the provisions of the Trademarks Act, 1999 harmoniously.
