CONFLICT BETWEEN TWO REGISTERED PROPRIETORS

Franco Indian Pharmaceuticals Pvt. Ltd. (‘Plaintiff’) filed an infringement suit against Corona Remedies Pvt. Ltd. (‘Defendant’) for passing-off of the Plaintiff’s mark “STIMULIV” by open advertisement of the registered mark “STIMULET” by the Defendant.

The counsel for the Defendant argued that the products of the parties are different as the one sold by the Defendant is an allopathic preparation for the treatment of breast cancer or infertility, while the Plaintiff’s formulation is Ayurvedic used as liver supplement. Additionally, while relying on Section 28 (3) of the Trade Marks Act, 1999, the Defendant argued that when there are two registered proprietors of trademarks which are identical, neither party shall have the exclusive right to use their mark against the other.

The Bombay High Court (‘Court’) applied two distinct approaches while assessing the deceptive similarity:

One with respect to the common perception upon seeing the marks; and

Second based on the Defendants conduct.

On the first account, the Court noted that because of the niche segregation in goods of the parties, even the slightest amount of confusion shall not be permitted.

On the second account, the Court noted that the moment the Defendant sought the registration of the mark “STIMULET” there was an implicit acceptance that the mark as a whole is distinctive and capable of being distinguished, therefore the Defendant could not have argued that the word “STIMUL” is common to the trade. Resultantly, the Court observed that the two marks are deceptively similar.

The Court observed that when there is a conflict between two registered proprietors, the evaluation of rights in common law was essential to enable the Court to determine whose rights were better and superior. In view of the same, the Court noted that the registration and the use of the Plaintiff’s mark is greater by at least two decades coupled with the fact that its sales are incomparably higher than that of the Defendant. Thus, an injunction order was issued against the Defendant for usage in the mark ‘STIMULET’.

SOURCE: COMM IP SUIT NO.136/21