Delhi High Court: A plaint was filed by Zydus Wellness Products Ltd (plaintiff) challenging products of Cipla Healthcare Ltd (Cipla) (defendant) alleging the defendant’s marks ‘GLUCO-C’ and ‘GLUCO-D’ are deceptively similar to the plaintiff registered trade marks ‘GLUCON-C’ and ‘GLUCON-D’. C Hari Shankar, J., held that the defendants marks Prolyte Gluco-C ++ and Prolyte Gluco D ++ infringe the plaintiff registered marks GLUCON-C and GLUCON-D, especially as they are used for identical products
The plaintiff manufactures and sells the product, combining Glucose and Vitamin D to be mixed with water and consumed as an energy drink. The plaintiff alleges that the defendants marks are deceptively similar to the plaintiff‘s registered trade marks, the trade dress adopted by the defendant infringes the copyright of the plaintiff in the trade dress of its and the trade dress of the defendant‘s product is, even otherwise, so similar to the trade dress of the plaintiff‘s product as to exacerbate the possibility of confusion and deception for the purposes of Section 29(2)(b)1 of the Trade Marks Act, 1999.
On the aspect that the plaintiff possesses registrations, in its favour, of the word marks GLUCON-C and GLUCON-D. However, the mark GLUCON-C has not been abandoned by the plaintiff and continues to be a valid and subsisting registered trade mark even though the said mark has not been used by the plaintiff for a considerable amount of time. The Court observed that though non-use is a ground on which cancellation of a registered trade mark may be sought, no such application has been preferred by anyone, against the mark GLUCON-C. Thus, the plaintiff would be entitled to the benefit of Section 28(1) in respect of both the marks GLUCON-C and GLUCON-D and, consequently, to protect both the marks against infringement under Section 29.
The Court noted that as reflected on the face of the pack of the defendant‘s product, it is seen that Gluco-C ++ and Gluco-D ++ are prominently visible in a much larger lettering and font than the mark Prolyte. The intent to project the Gluco-C ++ and Gluco-D ++ parts of the defendants mark is therefore apparent. If, therefore, Gluco-C and Gluco-D parts of the defendants marks are infringing of the plaintiff GLUCON-C and GLUCON-D marks, the defendants cannot seek amnesty on the ground that their marks are Prolyte Gluco-C ++ and Prolyte Gluco-D ++.
Thus, the Court held that the marks Gluco-C and Gluco-D are deceptively similar to the marks GLUCON-C and GLUCON-D respectively.
On the aspect of the trade dress of the defendants product being confusingly or deceptively similar to the trade dress of the plaintiff product, the Court noted that the trade dress of the defendants product cannot be treated as deceptively similar to that of the plaintiff, insofar as a customer of average intelligence and imperfect recollection is concerned, the allegation of passing off, levelled by the plaintiff against the defendants, cannot, prima facie, sustain.
The Court observed that the differences in the trade dresses and appearance of the packs of the plaintiff‘s GLUCON-D and the defendants‘ Gluco-C, or Gluco-D, are sufficient to negative, at a prima facie stage at least, any possibility of the defendants being able to pass off their product as that of the plaintiff. Equally, it cannot be said that, by using the mark Prolyte Gluco-C ++ or Prolyte Gluco-D ++ in conjunction with a trade dress that is not deceptively similar to that of the plaintiff, the defendants are seeking to pass off its product as that of the plaintiff. The fact that, on the face of the product of the defendants, the defendants identity Cipla Health Care is also depicted is an additional factor in that regard.
Thus, the Court held that the plaintiff would be entitled to an injunction against the use, by the defendants, of the mark Prolyte Gluco-C ++ or Prolyte Gluco-D ++, as they infringe the plaintiff registered mark GLUCON-C and GLUCON-D respectively.
[Zydus Wellness Products Limited v. Cipla Health Limited, 2023 SCC OnLine Del 3785, decided on 03-07-2023]
Advocates who appeared in this case :
Mr. Chander M. Lall, Sr. Advocate, Mr. Vanshika Arora, Ms. Ananya Chugh, Ms. Anuradha Salhotra, Mr. Sumit Wadhwa and Mr. Ayush Samaddar, Advocates for the Plaintiff;
Mr. Amit Sibal, Sr. Advocate with Ms. Archana Sahadeva, Ms. Brinda Nagaraja, Ms. Anjuri Saxena, Mr. Siddharth Raj Choudhary, Mr. Rishabh Sharma and Mr. Saksham Dhingra, Advs. for the D-1.
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