The Bombay High Court has held that the use of the words ‘deceptively similar to such name’ in Section 13 of the Trade Marks Act, 1999 takes within its fold even the clipped version. Section 13 prohibits registration of names of chemical elements or international non-proprietary names (‘INN’).
The Court was hence of the view that there was no prima facie case for infringement of trademark and passing off in the case where the plaintiff was using the mark ‘ACECLO’ derived from INN Aceclofenac, while the defendant was using the mark ‘ACECLOHEAL’, i.e., by suffixing it with the name of its company – ‘Heal’.
Plaintiff’s contention that the use of the words ‘deceptively similar name’ in Section 13 would mean a similar sounding name such as Aceclofenac or so and that Aceclo is not the same as Aceclofenac, was thus rejected.
According to the High Court, where the rival marks are derived from an INN and incorporates letters of the INN, the usual test of deceptive similarity by reason of the entire mark being subsumed in the impugned mark cannot constitute the sole criteria.
The Court in this regard noted that prima facie the rival marks were depicted in different style, there was vast difference in pricing of the two products, which was not denied by the Plaintiff, and there was no possibility of causing confusion as the marks were dissimilar. Considering this, the Court also held that there was no material to prima facie hold that the defendants designed their goods in a manner as to ‘pass off’ its goods as that of the plaintiffs.
It may be noted that the Court in Aristo Pharmaceutical Private Limited v. Healing Pharma India Private Limited & Others was also of the view that it is not necessary for the defendants to challenge the validity of the plaintiff’s registration as the plaintiff’s cannot monopolise an INN. It was noted that no entity can claim exclusive rights over generic or descriptive words which are prima facie publici juris.
Thus, according to the High Court, the registration of the plaintiff’s trademark will not prevent the use of an INN by the defendants.