Delhi High Court: V. Kameswar Rao J. rejected an application for permanent injunction by a pharmaceutical company against a rival brand, seeking an order to restraint it from infringing its registered trade mark.
The plaintiff had trademarked the terms ‘TCV’ and ‘Typbar–TCV’ in 2012 in relation to a revolutionary Typhoid vaccine for children. They averred that the defendants began promoting a similar Typhoid vaccine, named ‘ZYVAC-TCV’ in late-2018, which was similar, if not identical, in composition to their product. Consequently, they filed for a permanent injunction against the defendants, seeking to prevent them from infringing its trademark, rendition of accounts/ damages and delivery, etc. The plaintiffs, claiming to be a leading manufacturer of specialised vaccines in India with a significant global presence, contended that the launch of the defendant’s vaccine is a flagrant infringement of their trademarked ‘TCV’ and that the publication and intended launch of a similar product with the ‘TCV’ trademark is confusing and, therefore, inherently a misrepresentation to the consuming public.
The defendants denied the plaintiffs claims by pleading that their mark, ‘ZYVAC-TCV,’ when considered as a whole is entirely different from the plaintiffs’ mark and that its essential feature is ‘ZYVAC.’ Moreover, the term ‘TCV’ is generic and descriptive of a category of vaccine called ‘Typhoid Conjugate Vaccine,’ which is not entitled to legal protection. They refute the plaintiff’s trademark by alleging that another entity had applied for the registration of the ‘TCV’ trademark in 2009, and the plaintiffs are, therefore, not the creator nor the prior user of the mark as claimed.
High Court accepted the defendant’s plea claiming that ‘TCV’ was a ‘descriptive adjective’ and could not receive any protection under the law, citing literature of WHO and previous judgements of the Delhi High Court where it had repeatedly held that the first use of a descriptive word as a brand mark would not entitle such a user to exclusively treat/register it as a trademark. As far as the similarity of the two competing product names are concerned, the learned Judge found that after excluding ‘TCV’ as a trademark, the terms ‘TYPBAR’ and ‘ZYVAC’ appear to have no deceptive similarity or reasonable probability for confusion between the words either phonetically or visually. Similarly, there was found to be no deceptive similarities in the packaging of the two products. Since the plaintiffs did not deny the defendant’s contention that they were not the first ones to adopt the words ‘TCV,’ the Court found the earlier entity responsible for coining the term in 2009 and used the existence of third parties selling medicinal products with the term ‘TCV’ as a sign that different products with this term can coexist in the market without confusion. The Court rejected the plaintiff’s application citing insufficient grounds for granting interim relief.[Bharat Biotech International Ltd. v. Optival Health Solutions (P) Ltd., 2020 SCC OnLine Del 852 , decided on 26-05-2020]