Opella Healthcare Group v. Vaibhav Vohra & Anr.

10. It is to be noted that the petitioner has been operating, marketing and selling its products in India through its sub-licencees, Rhone Poulenc India Ltd., since 1995, and Abbott Healthcare Pvt. Ltd. since 2010, through sublicensor, Piramal Pharma Ltd. Thus, on account of the same, it becomes manifest that in India, the petitioner has been extensively, continuously and regularly using its trademarks, PHENSEDYL/ PHENSEDYL, and.

11. On the other hand, the respondent no. 1 has claimed user in his impugned mark, i.e. „PHENSERYL‟ since 01st Furthermore, there is no supporting evidence brought on record to show any sales or user of the said mark by respondent no. 1. The contention as put forth by the said respondent is solely on the lines of its registrations being granted by the Trade Marks and Copyrights Registry, and a blanket denial of deception or resemblance with the petitioner‟s marks or artistic work, therein.

12. Hence, it is indisputably established that the marks of the petitioner have a prior user, with the petitioner having its user in India, since 1995. While, the user of the respondent no. 1 is claimed to be only since 01st

13. It would be pertinent to compare the two marks, along with the artisitic works therein. A compartive table is reproduced, as under: DESCRIPTION PETITIONER RESPONDENT NO. 1 Trade Mark (Word & Label/Device)

14. Comparions of the two marks, makes it evident that the respondent no. 1‟s mark „PHENSERYL‟ is visually and phonetically similar to the petitioner‟s mark, „PHENSEDYL‟. Further, the colour dark blue in the trade dress/packaging and the white font to depict the name, are the prominent and dominant part of both the marks and/or the artistic work, therein.

15. The artistic work in the packaging/label, as shown above, indicates that the respondent no. 1 has attempted to bring his packaging as close as possible, to that of the petitioner‟s packaging. The usage of the dark blue colour, white font, blue and pink/red combination as is being used by the petitioner in their packaging, is being used by respondent no. 1 in a similar manner.

16. Further, it is to be noted that the products, i.e. cough syrups, are also similar in their manner of design, especially, to the aspect of usage of the dark blue colour, white font and the blue-pink/red combination, which is the theme as followed by the petitioner in their products and in a similar manner by respondent no. 1, in their products.

17. Therefore, it is manifest that the marks of the respondent no. 1 are likely to cause confusion and give the general impression that the same may be associated with the petitioner. The consumers and members of the trade, are likely to be confused, or deceived into believing, that the respondent NO. 1 is associated with the petitioner, or is selling the goods originating from the petitioner.

18. Holding that Courts have to maintain the purity of the Register and the Register should not contain marks, which are likely to confuse or deceive an unwary purchaser, the Division Bench of Bombay High Court in the case of Ciba Ltd. Basle Switzerland Versus M. Ramalingam and S. Subramaniam trading in the name of South Indian Manufacturing Co., Madura and another, 1957 SCC OnLine Bom 45, has held as follows: “xxx xxx xxx

5. Now, in considering both S. 46 and S. 10 it has got to be remembered that the primary duty of the Court is towards the public and the maintenance of the purity of the register. When a case is sought to be made out that a particular trade mark is likely to deceive or cause confusion, the contest is not so much between the parties to the litigation as it is a contest between the party defending his right to a particular trade mark and the public, and the duty of the Court must always be to protect the public irrespective of what hardship or inconvenience it may cause to a particular party whose trade mark is likely to deceive or cause confusion. The object of maintaining a trade mark register is that the public should know whose goods they are buying and with whom particular goods are associated. It is therefore essential that the register should not contain trade marks which are identical or which so closely resemble each other that an unwary purchaser may be likely to be deceived by thinking that he is buying the goods of a particular person or a particular firm or a particular industry, whereas he is buying the goods of another person or firm or industry. xxx xxx xxx” (Emphasis Supplied)

19. Likewise, holding that deceptive similarity or confusion is the principle criterion for determining applications both for registration as also for rectification, and that purity of register is to be maintained, Supreme Court in the case of Khoday Distilleries Limited Versus Scotch Whisky Association and Others, 2008 SCC OnLine SC 975, has held as follows:-

29. Indisputably, the purity of the register is to be maintained. Indisputably again, the public interest has to be kept in view. An application for registration has also to be considered keeping the public interest in view. What is therefore necessary for the Registrar is to arrive at a conclusion as regards registration of mark, is as to whether having regard to the nature of the mark sought to be registered and the use thereof as also the class of buyers (sic they) would be deceived or confused with the mark registered or not.

30. An application for rectification and correction of the register may be entertained if any of the grounds specified therein exist viz. contravention or failure to observe the condition entered on the register or in relation thereto. An application for rectification and correction of the register would also be maintainable if a person is aggrieved by the absence or omission from the register of any entry or by any entry made in the register without sufficient cause or by any entry wrongly remaining on the register or by any error or defect in any entry in the register.

31. The power of the Registrar in terms of Section 56 of the Act is wide. Sub-section (2) of Section 56 of the Act used the word “may” at two places. It enables a person aggrieved to file an application. It enables the Tribunal to make such order as it may think fit. It may not, therefore, be correct to contend that the delay or acquiescence or waiver or any other principle analogous thereto would apply under no circumstances. Purity of register as also the public interest would indisputably be relevant considerations. But, when a discretionary jurisdiction has been conferred on a statutory authority, the same although would be required to be considered on objective criteria but as a legal principle it cannot be said that the delay leading to acquiescence or waiver or abandonment will have no role to play. (See Ciba Ltd. v. M. Ramalingam [AIR 1958 Bom 56]). In determining the said question, therefore, conduct of the person aggrieved in filing the application for rectification would be relevant. For the aforementioned purpose, whether it is a class or group action or a private action although would be relevant but may not be decisive. It is one thing to say that class or group action will receive special attention of the statutory authority vis-à-vis a private action. But, in both types of cases, public interest should remain uppermost in the mind of the authority. The question which is required to be posed therefore would be as to whether the public in general or the class of buyers would be deceived or be confused if the existing mark is allowed to remain on the register. Thus, deceptive similarity or confusion is the principal criterion for determining applications both for registration as also for rectification.

20. It is also apposite to consider that the products sold by the parties are clearly those which are sold as Over the Counter products. Therefore, the argument by learned counsel for respondent no. 1, that the products are sold through doctor‟s prescription, is unacceptable. Furthermore, the same being pharmaceutical products, require a higher degree of scrutiny and care. Thus, Supreme Court in the case of Milmet Oftho Industries and Another v. Allergan Inc., (2004) 12 SCC 624, while holding that judicial scrutiny is required in case of medicinal products, even if the same are prescription drugs, but which look alike or sound alike, has held as follows:

7. In the case of Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. [(2001) 5 SCC 73: 2001 PTC 300] the question was whether the marks “Falicigo” and “Falcitab” were deceptively similar. The trial court refused interim injunction. The appeal was also dismissed. This Court did not interfere on the ground that the matter required evidence on merits but laid down principles on which such cases were required to be decided. This Court held that in a passing-off action for deciding the question of deceptive similarity the following facts had to be taken into consideration: (SCC p. 95, para 35) “35. (a) The nature of the marks i.e. whether the marks are word marks or label marks or composite marks i.e. both words and label works. (b) The degree of resembleness between the marks, phonetically similar and hence similar in idea.

(c) The nature of the goods in respect of which they are used as trade marks.

(d) The similarity in the nature, character and performance of the goods of the rival traders. (e) The class of purchasers who are likely to buy the goods bearing the marks they require, on their education and intelligence and a degree of care they are likely to exercise in purchasing and/or using the goods. (f) The mode of purchasing the goods or placing orders for the goods. (g) Any other surrounding circumstances which may be relevant in the extent of dissimilarity between the competing marks.” In respect of medicinal products it was held that exacting judicial scrutiny is required if there was a possibility of confusion over marks on medicinal products because the potential harm may be far more dire than that in confusion over ordinary consumer products. It was held that even though certain products may not be sold across the counter, nevertheless, it was not uncommon that because of lack of competence or otherwise mistakes arise specially where the trade marks are deceptively similar. It was held that confusion and mistakes could arise even for prescription drugs where similar goods are marketed under marks which looked alike and sound alike. It was held that physicians are not immune from confusion or mistake. It was held that it was common knowledge that many prescriptions are telephoned to the pharmacists and others are handwritten, and frequently the handwriting is not legible. It was held that these facts enhance the chances of confusion or mistake by the pharmacists in filling the prescription if the marks appear too much alike.

21. This Court in the case of Hugo Boss Trademark Management GmbH and Company Versus Sandeep Arora Trading as Arras the Boss and Others, 2023 SCC OnLine Del 7956, while dealing with a case, wherein, the copyright registration in favour of the respondent therein, was found to be infringing the trademarks registration of the petitioner therein, held that though trademarks and copyrights operate under different statutes, rights in an artistic work for copyrights, could overlap with label marks registrable under the Trade Marks Act. It was held that an identical mark being used as an artistic work, as copyright, would result in infringement of an existing trademark. Thus, it was held as follows:

15. This Court notes that Section 45 of the Act clearly specifies that when any person is seeking copyright registration for artistic works used or potentially used in connection with goods or services, the application for copyright registration must include a statement acknowledging this use. Additionally, the said application must include a certificate from the Registrar of Trade Marks that no trade mark identical or deceptively similar to the artistic work has been registered or applied for by anyone other than the applicant. This requirement ensures that the artistic work does not infringe upon existing trade marks. Section 45 of the Act is set out below: “45. Entries in register of copyrights.— (1) The author or publisher of, or the owner of or other person interested in the copyright in, any work may make an application in the prescribed form accompanied by the prescribed fee to the the register of copyrights: Provided that in respect of an artistic work which is used or is capable of being used in relation to any goods or services, the application shall include a statement to that effect and shall be accompanied by a certificate from the Registrar of Trade Marks referred to in Section 3 of the Trade Marks Act, 1999 (47 of 1999), to the effect that no trade mark identical with or deceptively similar to such artistic work has been registered under that Act in the name of, or that no application has been made under that Act for such registration by, any person other than the applicant. (2) On receipt of an application in respect of any work under sub-section (1), the Registrar of Copyrights may, after holding such inquiry as he may deem fit, enter the particulars of the work in the register of copyrights.”

16. Vide judgment dated 20-4-2018, this Court in Marico Ltd. v. Jagit Kaur [Marico Ltd. v. Jagit Kaur, 2018 SCC OnLine Del 8488] had observed that though trade marks and copyrights operate under different statutes, since rights in an original artistic work could overlap with label marks registrable under the Trade Marks Act, 1999, the legislature in its wisdom added a proviso to Section 45 in the Copyright Act. Clearly, this proviso has been inserted into the Act to prevent unscrupulous persons from copying label marks with the intention of passing off and taking shelter under a false claim of ownership of copyright in an artistic work. Unquestionably, this proviso would be applicable in this case as well. xxx xxx xxx

26. In terms of Section 13(1)(a) of the Act, in order to be able to obtain copyright protection, an artistic work would be required to meet the threshold of originality. After perusing the above table, it is evident that the impugned artistic work is definitely not an original artistic work and primarily consists of the mark “BOSS”, which does not belong to Respondent 1. Even the colour scheme of the petitioner has been substantially imitated by Respondent 1, which would also supplement the finding that the impugned registration is not an original work.

27. Recently, vide judgment dated 6-9-2023, this Court in, Manju Singal v. Deepak Kumar [Manju Singal v. Deepak Kumar, 2023 SCC OnLine Del 5503], while referring to the commentary, The Modern Law of Copyright and Designs, 4th Edn. by Laddie, Prescott and Vitoria, has emphasised that in discussions of “originality” and “substantial part”, it is crucial to understand that if there is substantial similarity between two works, the later work cannot be considered original. The relevant extract from the same is set out below: (SCC OnLine Del para 22) “22…. The key question is, therefore: has the second man taken a substantial part of what the first man has created? The expression „work‟ refers to a human creation; the artefact is merely the object in which the creation is embodied, as may be seen from the fact that the copyright in the work survives accidental destruction of the artefact. As was well put by Prichard, J. in a New Zealand case: It is not enough that there is a causal connection with a drawing in which the plaintiff owns copyright. There must also be such similarity between the article made by the defendant and a drawing in which the plaintiff has copyright that it be seen that a substantial amount of the skill and effort which was devoted to can making the drawing was appropriated by the defendant. ∗ ∗ ∗

4.37. Whether or not a substantial part has been reproduced must be determined by reference to the copyright work and not the work that is alleged to infringe. The question in any particular case is whether the features found to have been copied from the copyright work formed a substantial part of that work as an artistic work. That is a question of judgment or impression. However, in answering it, it is not generally relevant to consider whether the features that are alleged to have been copied also comprise a substantial part of the alleged infringing work. As a result, even though the alleged infringing work may not look particularly similar to the copyright work, it may amount to an infringement. That said, in certain cases it may still be important still not to lose sight of the differences between the copyright work and the alleged infringement since they may help to decide whether copying has taken place at all.

28. Registration of copyright can be granted only in respect of original works. It is inexplicable how the Trade Marks Registry issued a clear search report in respect of the impugned work, when clearly in respect of the respondent's trade mark application, the petitioner's marks were cited as conflicting. The search report itself is rid with inaccuracies and contrary to the register of trade marks. If any person or entity misdescribes the work as an original work, when it is actually not and it is also a substantial imitation of a registered trade mark and label, such registration would be a registration wrongly remaining on the register of copyrights. In view of this position and the prior and superior rights enjoyed by the petitioner, the respondent's registration is an entry, which is wrongly made and is also wrongly remaining in the register.”

22. The aforesaid discussion brings forth that the petitioner is the prior user of the mark „PHENSEDYL‟ and respondent no. 1‟s usage of the mark „PHENSERYL‟ shows a clear attempt by respondent no. 1 to bring his marks and packaging visually and phonetically, as close to that of the petitioner. Furthermore, marks of both the parties fall under the same class, i.e. Class 05, for similar goods which are pharmaceutical/medicinal products that require a high degree of caution. Therefore, the impugned mark and the copyright would clearly cause confusion and deception, and is therefore, liable to be removed from the Registers.

23. Accordingly, the following directions are issued: 23.[1] The trademark registration for the mark PHENSERYL/ registered in favour of respondent no. 1, bearing registration no. 3791026 in Class 5, is hereby cancelled. 23.[2] The copyright registration with respect to the artistic work, registered in favour of respondent no. 1, bearing Copyright registration no. A-130319/2019, is hereby cancelled. 23.[3] The Registrar of Trademarks and the Registrar of Copyrights, are directed to remove and expunge the aforesaid entries from the Register of Trademarks and Copyrights, respectively.

24. The Registry is directed to supply a copy of the present order to the Office of the Controller General of Patents, Designs and Trade Marks of India, on E-mail Id: llc-ipo@gov.in, for compliance.

25. The present petitions are, accordingly, disposed of, with the aforesaid directions. MINI PUSHKARNA, J NOVEMBER 12, 2024