Low Threshold of Confusion between TUMORIN and TUMOTIN

Low Threshold of Confusion between TUMORIN and TUMOTINA trademark is the symbol of a brand. It not only acts as the brand but adds value to it. The reason a trademark is supposed to be distinctive from others is that the same can be associated with its proprietor and not be confused with the business, goods or services of another proprietor. However, in the pharmaceutical industry, a trademark is oftentimes based on the ailment that they seek to cure, the compound constituting the ingredient or the organ which the preparation intends to heal. There is an element of public interest in this practice, which has also been noted by the Indian Supreme Court.

In the case of Bhargava Phytolab Private Limited vs. LDD Bioscience Private Limited, the plaintiff sought an interlocutory injunction against the defendant to restrain the use of its mark TUMOTIN. The plaintiff submitted that it was a registered proprietor of the mark TUMORIN in class 5 for homeopathic preparations, which was intended to cure benign growth. The plaintiff further submitted that the sales for the product under its trademark TUMORIN in the year 2019-20 itself exceeded INR 2 crores. It was alleged that the defendant was using a deceptively similar mark, TUMOTIN, for homeopathic preparations, with the only difference being that the plaintiff’s product, under their mark, TUMORIN, was safe for lactating mothers. Further, it was also submitted that the defendant has used their mark since 2020, whereas the plaintiff has been continuously using its mark since at least 2018. The defendant argued that they were a pioneer in the field of homeopathic preparations for the last 40 years and had been using the mark TUMOTIN for the last three years. The defendant alleged that the plaintiff had acquiescence to the use of the defendant’s mark since three years had passed from when the defendant had been using its mark. Further, the defendant raised objections against the validity of the Plaintiffs’ prior registered mark under Section 11 (1)(b) of the Trade Marks Act, 1999 (“the Act”) by stating that there already existed the mark TUMOCIN in the Trade Marks Register and thus, plaintiff’s mark should not have been granted registration. Further, the defendant also objected under Section 9 (1)(b) of the Act, contending that the plaintiff’s mark was descriptive of the ailment it sought to cure and was a combination of two English dictionary words, “TUMOR” and “IN”. However, candidly and inadvertently, the defendant also mentioned that the products under the two sets of the mark were sold in the same stores/outlets selling homeopathic remedies.

The Court heard both sides and observed that the various circumstances in which a trademark was found to be infringed were listed in Section 29 of the Act. Further, the Court stated that in the case of comparing two-word marks, the phonetic similarity between the two played an important role, and in the present case, the marks TUMORIN and TUMOTIN were deceptively/closely similar, and the words rhymed as well. The difference of a letter within the marks was held to be a mere cosmetic change having no effect. Further, the defendant’s mark was also intended to be used for homeopathy medicines similar to the plaintiff’s products under its mark TUMORIN. The Court also relied on the “triple identity test” to conclude if any likelihood of confusion between the two marks existed. The “triple identity test” laid out three requisites, which included the marks being similar/identical, the marks catering to the same consumer base, and the product under the said marks being available in the same store/outlet. In the present case, all three requisites were available as the marks were phonetically, visually and structurally similar. Further, the products under the said marks were being used for homeopathy medicines, and lastly, the defendant candidly admitted that the products under both sets of trademarks were sold in the same stores/outlets. It was also observed that since homeopathy medicines were not “Schedule H” drugs, they did not require a doctor’s prescription and were capable of being bought across the counter. Thus, the likelihood of confusion amongst the class of consumers buying them would be immense and could not be overlooked. The Court also held that the plaintiff emerged victorious in overcoming the mark TUMOCIN. It is also pertinent to note that the Court relied on the judgement Cadila Healthcare Ltd. vs. Cadila Pharmaceuticals Ltd. and observed that the coining of marks for pharmaceutical preparations was generally based on the ailment or the organ or the composition of the preparation and was intended to facilitate persons, who prescribed such preparations, or who dispensed such medicines, to easily recollect the name of the medicines. Thus, it cannot be said that the plaintiff’s mark, TUMORIN, was descriptive under Section 9 of the Act. Further, the Court also held that where infringement was seen to exist, mere delay in approaching the Court was no impediment against the grant of an injunction, and acquiescence as a ground to disentitle the plaintiff’s claim for infringement only existed when there would have been a delay for a continuous period of five years since the use of the defendant’s mark. Thus, the Court held that the plaintiff was successful in establishing a prima facie case against the defendant seeking an interlocutory injunction. However, an application was filed to refer the case to mediation, and the case was referred to the mediation centre for the next date on February 28, 2024.

First Published By: Lexology Here

Authors: Manisha Singh and Garima Chopra