Court: Delhi High Court

Issue:

1. Whether the phonetic similarity of AZIWOKE (product by Dr Reddys Laboratories Limited) and AZIWAKE (product by Smart Laboratories Pvt Ltd) amount to being “deceptively similar”?
2. Whether a lawsuit can be filed without first exhausting the pre-institution mediation remedy mandated under Section 12A of the Commercial Courts Act.

Rules:

1. Section 23 of the Trade Marks Act 1999– The mark shall be registered by the registrar, given:

• There is no opposition to the same
• Any opposition against the same has been decided in favour of the applicant
• The Central Government has directed otherwise

2. Section 2(1)(h) of the Trade Marks Act 1999– Defines “deceptively similar” as a mark being so similar to another, that it is likely to cause deception or confusion.
3. Section 12A of the Commercial Courts Act – Unless there is no application for urgent interim relief, it is required that mandatory pre-mediation be done in case of a commercial suit.
4. Rule 1 of the Code of Civil Procedure, 1908 (CPC) – Empowers courts to issue a temporary injunction in cases related to property dispute, damage to property, and breach of contract.

Analysis:

1. Issue 1:  The respondents argued that since these medications are handled by doctors and chemists who are required to know the difference between the two drugs, the likelihood of confusion between the similar marks is heavily reduced.

However, the court contended that owing to the fact that both the marks are used in relation to azithromycin, confusion is likely to occur at the end of the chemists or customers purchasing the said medication. It also cannot be expected that every doctor would know the difference between “AZIWOK” and “AZIWAKE”.

It further added that the words “AZIWOK” and “AZIWAKE” are phonetically deceptively similar, stating that the possible confusion caused when one comes across AZIWAKE, is likely to result in “deceptive confusion”.

2. Issue 2: The court held that in suits related to Intellectual Property, if continued infringement or passing off of the mark could potentially cause loss of life or injury which cannot be compensated in monetary terms, a suit can be instituted without the requirement of exhausting the remedy of pre-institution mediation. Here, confusion between “AZIWOK” and “AZIWAKE” may have medical repercussions on patients and damage the reputation of Dr Reddys Laboratories Limited.

Additionally, citing judgement from Kaviraj Pandit Durga Dutt Sharma vs Navaratna Pharmaceutical Laboratories 1964, the court upheld the eighteen stellar principles which deal with trademark infringement and have stood the test of time since they were laid out.

Conclusion:

In Dr Reddys Laboratories Limited vs Smart Laboratories Pvt Ltd, the Delhi High Court found a prima facie case of trademark infringement.

The court ruled in favour of the plaintiff, granting injuction as requested, noting that the negligible phonetic difference between “AZIWOK” and the defendant’s “AZIWAKE” may amount to deceptive confusion for a reasonable consumer and create complications for doctors and chemists as well.

The court, however, restrained the injunction order for the existing batches of the defendant’s product, requiring an affidavit be submitted regarding the expiration information of the same within 5 days.