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The disputes surrounding pharmaceutical product names or
companies are not new to India. Of late, Cadila in a row against
three companies using similar names was decided against in an
infringement matter. However, in the case of Hamdard National
Foundation v. Abdul Jalil [IA 7385/2004 in CS (OS) 1240/2004]
the matter dealt with the use of the name Hamdard by the reverting
party with respect to Rice, even though the mark had been
registered with respect to the class of products covering the
same.
In a suit to prevent infringement of its trademark, copyright
and to prevent passing off of its goods, Hamdard National
Foundation filed a suit for permanent injunction restraining Abdul
Jalil from committing any of these acts. An ad-interim injunction
had earlier been granted ex-parte. Hamdard Foundation's
trademark in the word "Hamdard" and the visual mark were
in contention. The Foundation is registered under the Societies
Act, 1860, while Jalil formed a wakf (a trust under Muslim law akin
to a common law trust) having its office in Delhi. The Hamdard
Foundation offering a range of Unani products has Hamdard as a
widely recognized house mark and has acquired distinctiveness to
it. Hamdard holds 37 registrations of the mark HAMDARD and the eye
design, in relation to diverse goods and products. They alleged
Jalil of using the word mark HAMDARD in relation to processing and
marketing rice, necessitating the present suit. Hamdard averred
that they came across the infringing mark in 1992 in relation to
rice, resulting in issuance of a cease and desist notice.
Hamdard at the very outset sought to dispel the contention that
they had acquiesced in the Jalil' use of the word mark as well
as the eye device. They stated that even a disclaimer would not
reduce the deceptive similarity among the marks. It was pointed out
that Hamdard had registered their mark under Class 30 in all of its
goods, which includes rice. In this regard, there was a chance that
Hamdard could use the mark in relation to rice and rice products
too. They also urged that the trade channels of products of the two
parties overlapped. In such circumstances, they stated that the
likelihood of goods being available under the same roof and the
possibility of confusion and deception was real.
It was averred by Jalil that they bona fide adopted the mark
since 1989 with respect to its goods and that mark had become
distinctive with respect to their brand of basmati rice. They claim
entitlement to protection as an honest concurrent user. Further
they alleged that the suit suffered from acquiescence, delay,
laches, estoppel and waiver. It is claimed that the delay of twelve
years from the issue of legal notices in 1992 is sufficient to bar
the suit, since Hamdard had allowed them to continue with the
label, which amounted to acquiescence in law.
The Court stated that is the appropriate standard to adjudge
infringement of a registered trademark was well determined for over
four decades now and that the standard to be adopted in such cases
was that of 'likelihood of confusion' and not actual
deception and damage. The Court reiterated the following
considerations to be kept in mind while determining cases of
infringement:
The broad and essential features of the of competing marks will
have to be viewed,
The marks will have to be considered as a whole in their
respective contexts,
The similarities rather than dissimilarities will have to be
taken note of; and
The marks must be judged from the point of view of unwary
purchaser of average intelligence and imperfect recollection.
Abdul Jalil contraverted its position stating that they had been
using the mark since 1989 and that Hamdard being aware of this, had
issued a cease and desist notice, but did not choose to take any
action. They stated that fifteen years later that they could not
seek to disturb its well entrenched business. They claimed
distinctiveness in relation to its products for the last 15 years;
and according to it, its sales had climbed; for the last three
years, by about Rs. 2 crores, annually. They contended that the
goods of Hamdard were unrelated, and therefore, there existed no
likelihood of confusion or deception.
The Court noted that the goods were dissimilar; yet there
existed a likelihood of confusion or deception, on account of
overlapping trade channels. The Court stated that the argument
regarding both the parties' goods being available with the same
seller could not be negated and hence injuncted Jalil to prevent
Hamdard to further suffer commercially.
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This suit filed by Fiat Chrysler appears to be an attempt to safeguard its sales and profits in the American market, rather than a design infringement case.
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