GSK’s Win in Otrivin

The Delhi High Court, in a civil suit between Plaintiff GSK Consumer Healthcare S.A and Defendants, EG Pharmaceuticals, Zydus Healthcare Ltd. and Biochem Pharmaceuticals Industries Ltd, gave out several valuable pointers on legal drafting, renewal actions, infringement, acquiescence and passing off. This suit stands amicably settled between the parties and final decree has been passed.

This contentious IP suit came up when Plaintiff filed an injunction suit against Defendants to restrain them from infringing former’s registered trademark OTRIVIN by using BIOTRIVIN for same goods i.e. nasal decongestant and to stop its passing off. Both sides elaborated on their stances and put forth exhaustive contentions namely:

Plaintiff

  • Registered proprietor of trademarks OTRIVIN, and OTRIVIN PERFECT NIGHT;
  • OTRIVIN product was first launched in Finland in the year 1956 and in 1980s in India;
  • BIOTRIVIN Application was opposed by Plaintiff, however opposition was filed too late and was refused;
  • BIOTRIVIN trademark registration was not renewed;
  • Online sale of BIOTRIVIN products surfaced in April 2019.

Defendants

  • BIOTRIVIN is not deceptively similar to OTRIVIN;
  • Defendant has been continuously using BIOTRIVIN since 2007 and being registered owner of the said trademark, its rights are protected against another registered proprietor of similar mark (Plaintiff);
  • Registrar has not issued any official notice for renewal of BIOTRIVIN registration;
  • Defendant’s products are sold in market since 2008 and Plaintiff had such knowledge, hence acquiesced to the use of the trademark.

Following observations were made by the Court which were crucial in deciding grant of interim injunction against the Defendants:

  1. Similarity– The mark BIOTRIVIN is prima facie deceptively similar to OTRIVIN and is capable of causing confusion more so when both are nasal decongestants. The exparte injunction was not granted only because the Plaintiff was aware of the BIOTRIVIN mark since the year 2008. The Defendant’s claim that their mark is read as “BIO” “TRIVIN” was disallowed being meritless since in practicality the Defendant used the mark as BIOTRIVIN without spaces. The Court observed that such shallow argument of Defendant constitutes an admission of deceptive similarity between rival marks;
  2. Confusion– The Court looked into possibility that OTRIVIN consumer may assume that BIOTRIVIN is the variant of the former. Court considered that even though both products are nasal decongestants, they had different chemical compositions and it was highly possible that BIOTRIVIN could trigger a reaction/s like increased heart rate and allergy in previous OTRIVIN user;
  3. Lapse of Defendant’s registration– The Defendant’s BIOTRIVIN application was filed in November 2005 and placed on register in March 2018 i.e. after more than a decade. In this scenario, the Rule 58(3) of Trade Marks Rules, 2017 comes into play wherein the Defendant may file for renewal within period of 6 month from date of its issuance of registration certificate. This is subject to the Registrar issuing an official renewal notice directing the registered proprietor to file the renewal request. Since no such notice was issued to the Defendant, it was concluded that Defendant’s registration cannot be considered as lapsed;
  4. Infringement– Use of the BIOTRIVIN mark was not infringing the Plaintiff’s registered rights in OTRIVIN trademark since the Defendant was itself the registered proprietor of BIOTRIVIN and hence, the Defendant’s rights were safeguarded by Section 28(3) of Trade Marks Act, 1999;
  5. Passing off– This ground was opposed by Defendant’s counsel who pleaded defence of acquiescence. Section 33 of Trade Marks Act, 1999 recognises the “effect of acquiescence” from the view of the proprietor of an earlier trade mark. This provision refers to the proprietor of an earlier trade mark and does not refer to “registered proprietor” or “proprietor of an earlier registered trade mark”. It was interpreted that this provision protects the registered rights of the subsequent proprietor as against the unregistered rights of prior user if the latter has acquiesced for a continuous period of five years in the use of a registered trade mark by the former. Based on this reasoning, it was concluded that Plaintiff being the registered proprietor of OTRIVIN trademark, the Defendant cannot seek protection under plea of acquiescence against the Plaintiff. Further, the Court disallowed the Defendant’s defence of acquiescence on the ground that Defendant was notified of the opposition filed by proprietor of earlier registered mark OTRIVIN;

It was considered that it is highly possible that OTRIVIN consumer from another jurisdiction may confuse BIOTRIVIN product of the defendant being sold in India to be that of the Plaintiff’s. This possibility of confusion was held to entitle the relief of injunction to the Plaintiff on the ground of passing off.

In order to safeguard public interest and Plaintiff’s goodwill, the Defendants were restrained from manufacturing, offering for sale any product under BIOTRIVIN mark or any other mark similar or deceptively similar to Plaintiff’s OTRIVIN mark.

Further, Defendant’s repetitive stance of denying each and every contention in the plaint was duly criticised. Court observed that both GSK Consumer Healthcare SA and Zydus Healthcare Ltd. are renowned pharmaceuticals companies in same space. Hence, it cannot be believed that such companies were not keeping a tab on each other, more so when there is so much information available in public domain. Denial of every one of the averments which is otherwise verifiable, will extend the timelines unnecessarily as this will put the opposite party to proof of each and every averment in the pleading.

This in turn frustrates the very purpose under which the Commercial Courts were established i.e. expedited disposal of commercial suits. This order reiterates the comparatively stricter policy followed by the Courts in case of trademark infringement/passing off involving pharmaceutical products which bear close/similar trademarks/brands. The well-founded principle is that threshold for trademark confusion with regard to medicines and pharmaceuticals is low as the same may potentially lead to disastrous consequences.

Therefore, keeping this mind, the pharmaceutical companies doing business in India should be diligent and perform proper trademark search before adopting any trademark in relation to their pharmaceutical products since no instance of confusion can be permitted under law. In overall, adoption of similar trademarks to prior existing trademarks should be discouraged at all costs.


Article by Manisha Singh and Akanksha Kar

1st published on Lexology

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