India: "SOREX Deceptively Similar To COREX"

Last Updated: 2 June 2011
Article by Sonam Lhamu Bhutia and Vasundhara Kamath S

In the case of Pfizer Products, Inc & Anr v. Vijay Shah & Ors, the Plaintiffs, being the subsidiaries of the multinational pharmaceutical company, Pfizer Inc., had been engaged in the manufacture of an array of products including vitamin, supplements, antibiotics etc. They had been producing the popular drug "COREX" worldwide for the treatment of cough and for allergic or infective conditions of the respiratory passage. In India the mark was registered in 1963 in the name of the First Plaintiff, Pfizer Product Inc. and was thereafter being sold by them.

In 2007, the Plaintiffs came to know that Stallion Laboratories Pvt. Ltd. (hereinafter referred to as Defendant No. 2) was manufacturing and marketing a cough syrup under the mark "SOREX", which was similar to their mark and had an identical label, packaging and get-up. In the wake of such finding, they sought for an injunction restraining the Defendants and their officers, etc, from manufacturing, marketing or advertising SOREX or any other mark that was identical or deceptively similar to the Plaintiff's registered Trademark. It was their contention that the Defendants were trying to ride upon their goodwill and reputation. According to them there was also likelihood that such similarity would create an impression in the minds of the customers as to their association with the Defendant's product and with regard to likeness of the quality of the two products.

They also prayed for an injunction restraining the Defendants from reproducing and/or using the Plaintiff's trade-dress comprised of get-up, layout, colour scheme and the arrangement of the features in the packaging for its product. Besides injunction, they also prayed before the Court for rendition of accounts and damages from the Defendant.

Vijay Shah (hereinafter referred to as Defendant No. 1) was the Managing Director of Defendant No. 2 Company. Defendant No. 3 was marketing the product. While Defendants No. 1 and 2 did not contest the suit, the third Defendant filed its Written Statement. They contended that there were vast differences in their product and that of the Plaintiff's with respect to several factors such as contents on the label, size of the bottle, colour of the liquid etc. It was also stated that the Defendant's product was a narcotic drug for which a prescription by a doctor was a must. Furthermore, the Court was also informed that the production and marketing of SOREX had been terminated. After the filing of the Written Statement, the third Defendant was also proceeded ex parte.

The Plaintiffs, thereafter, filed their Affidavit, in which they alleged that the product of the Defendant not only carried visual, structural and phonetic similarity, but also had an identical get-up, layout and arrangement of words and colour scheme. In order to substantiate the same, photographs of the two products were also produced before the Court.

In addition, the Plaintiffs relied on Section 28 of the Trademarks Act as per which the registered proprietor of the mark has the exclusive right to use the same in relation to the goods and services in respect of which it was registered. It also allowed the registered proprietor to obtain relief in respect of the infringement of the Trademark in the manner provided in the Act. The Plaintiff clearly elucidated the circumstances that would lead to infringement and passing off and also identified the differences between the two.

It was observed by the Court that in case of passing off, the Defendant would be absolved of its liability if it were able to establish that on account of the packaging, get-up etc, an ordinary buyer could distinguish between its goods from those of the Plaintiff. Such was not the case with regard to the Defendant's goods since the differences were rather trivial.

The Court stressed on the need for honesty in adopting of a name for a product so that the goodwill and reputation of another would not be usurped. Care was to be taken to avoid fraudulent or deceptive copying of the trademark of another, since the same would amount to a false misrepresentation to the public. The need for the same was highlighted from the viewpoint of the customer and the manufacturer.

In response to the claim by the Defendants that their product was a prescription drug, the Court pointed out that in India cough syrups were often available over the counter without prescription and hence, small townsfolk possessing average intelligence would not be able to distinguish the features between the two products.

The observation of the Supreme Court in Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., 2001 PTC 541 (SC) was considered, wherein, the need for vigilance was underlined in cases of passing off with regard to products meant for the same ailments but containing different compositions. The need was felt more so in India since purchasers of such goods often had no knowledge of the English language.

On the basis of the abovementioned reasons, the Court found it expedient to grant injunction against the Defendants.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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