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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