The Plaintiff's case:
- The trademark registration for AMADAY dated to
July 1997 , but the use commenced in the year 2001. AMADAY is used for the treatment of heart disease related to high blood pressure; - Zuventus's mark ANADAY is confusingly similar to Ajanta's registered trademark AMADAY which amounted to the claimed infringement.
-
Zuventus's first trademark application for ANADAY was filed in
February 2008 , on intent to use basis, which was opposed by Ajanta and the said application was abandoned owing to non-prosecution; -
The second application for ANADAY was filed in
October 2016 , with user claim ofFebruary 28, 2008 , which was also opposed; -
In
June 2019 , Ajanta found that Zuventus was using the mark ANADAY for a medicine used to treat breast cancer. -
Though Ajanta's products are meant for exports, however, such export amounts to use for the purposes of the Trademarks Act, 1999, and Ajanta is not precluded from marketing its product in
India and has a right to re-launch the same.
The Plaintiff also stated that Zuventus's claim that the two medicinal preparations are used to treat two different ailments cannot be accepted as the prescriptions do not contain the name of the salt or trade dress/ packaging and the confusion in reading the prescription would amount to a serious lapse which may vitally affect the lives of the consumers.
Defendant's counter:
- Ajanta had no license for the sale of drug AMADAY in
India and with no sale, no case to cause likelihood of confusion inIndia is made out; - The suit is delayed as Ajanta had prior knowledge of Zuventus's use of the impugned mark since 2008. Owing to such delay, no interim injunction can be granted to Ajanta;
-
Even in its second application, Zuventus had claimed use since
February 28, 2008 ; -
The goods of both the parties are not available in the same country and by its admission, Ajanta's AMADAY last use in
India was in the year 2002; - Zuventus's drug is sold only on the prescription of Oncologist and not any other Doctor, hence the defendants rebutted the claim of likelihood of any confusion;
- Adoption of ANADAY is bona fidee. coined by an amalgamation of the molecule name used in the treatment of breast cancer i.e. ANASTROZOLE and that the tablet is taken once a DAY.
The Court made the following observations which were crucial in deciding non-grant of an interim injunction:
Use of a trademark in case of exports
Ajanta placed reliance on Section 56 of the Trade Marks Act i.e. if the goods are exported outside
Zuventus placed reliance on Section 28 read with Section 30(2)(b) of the Trade Marks Act i.e. use of a trade mark by a third-party having regard to the conditions or limitations placed on the registered trade mark, does not amount to infringement of the registered trade mark.
On reviewing judicial principles set in previous cases, the Court found the Defendant's argument flawed on the ground that there is no territorial restriction on the use of the mark by Ajanta by the virtue of registration of the trademark and after obtaining the necessary licenses required under the other enactments, Ajanta can sell its drugs under the mark in
Delay and concealment of material facts
Zuventus claimed that Ajanta cannot claim an injunction in the year 2019 since the latter had acquiesced to the use of the trademark ANADAY by Zuventus since 2008. Also, in case of its first application (which was abandoned), Zuventus had filed a Counter Statement stating that on or around
Moreover, Ajanta claimed that a Counter Statement was not received from the Trade Marks Registry, however, Ajanta filed a reliance letter in
In its rejoinder to its injunction application, Ajanta did not deny receipt of Counter Statement, however, stated that the same was not uploaded on online records of Registry nor it could be found in the records maintained by them.
The above fact was construed against Ajanta as it was evident that the Counter Statement was received and such material fact of knowledge of Zuventus' sale of goods after obtaining necessary approval around
After carefully assessing the meanings of inordinate delay, laches and acquiescence in previously set precedents for grant of interim and/or permanent injunction, the Court went on to observe that the important factor for consideration is that even if there is a delay in bringing the action by the plaintiff, it is to be seen and adjudged on whether the adoption of the mark of the defendant is dishonest. In case the defendant's adoption is dishonest, the plaintiff would be entitled to grant of an injunction.
In the present case, Zuventus had already explained the coinage of the word ANADAY. Even though ANADAY and AMADAY are confusingly similar, however, there is no material on record to show that Zuventus dishonestly adopted the mark ANADAY to ride on the reputation and/or goodwill of Ajanta's mark AMADAY since Ajanta had no sales in
Vis-ŕ-vis Plaintiff's concern of likelihood of confusion i.e. if ANADAY is given instead of AMADAY, the consequences could be worrisome, the Court commented that by its own admission, Ajanta is only exporting its drug AMADAY and not selling the same in
Hence, the relief of an interim injunction was not granted to Ajanta pending disposal of the suit.
Originally published by LexOrbis,
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