Delhi High Court: C. Hari Shankar, J.*, held that prime facie, defendants’ mark ABBZORB was deceptively similar to plaintiff’s mark ABZORB, even if mark ABBZORB was seen as a device mark, rather than a word mark. The Court thus restrained defendants from manufacturing, selling, offering for sale, advertising, directly or indirectly dealing in dietary/health supplements, nutraceuticals, apple cider vinegar and promotional material such as t-shirt, shaker, bags, face mask or any other goods under the marks ABBZORB, ABBZORB NUTRITION, 
, and 
or any other trade mark as might be deceptively similar to plaintiff’s trade mark ABZORB.
Background
Plaintiff was proprietor of marks ‘ABZORB’, ‘ABZORBEC’ and ‘ABZORB SYNDET’, registered in its favour under the Trade Marks Act, 1999 (‘Act’) in Class 5 of the Nice classification, for “pharmaceutical and medicinal preparations for human and veterinary use”. Defendant 2 was proprietor of marks ‘ABBZORB’, ‘ABBZORB NUTRITION’ and 
. Under the marks ‘ABZORB’, ‘ABZORBEC’ and ‘ABZORB SYNDET’, plaintiff was manufacturing and selling anti-fungal pharmaceutical preparations, which fall within Class 5. Plaintiff was aggrieved by the use, by defendants, of marks ‘ABBZORB’ and ‘ABBZORB NUTRITION’. Defendant 2 possessed registrations in marks ABBZORB and ABBZORB NUTRITION, but in Classes 29 and 30. Class 29 covered meat, fish, poultry and game, milk and milk products, edible oils, and fats, etc, and Class 30 covered coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee, vinegar, etc. Defendants were, however, using ‘ABBZORB NUTRITION’ for manufacturing and selling whey protein, which was classifiable under Class 5 of the Nice classification. Thus, unlike plaintiff, the registered marks of Defendant 2 were not being used in accordance with their registration, either for Class, or goods, in respect of which marks were registered.
Plaintiff submitted that defendants’ marks were phonetically identical, and were otherwise structurally similar, to plaintiff’s mark, as the only difference between the marks was an extra letter “B”. Further, plaintiff’s earliest registration for mark ABZORB dates to 2008, whereas earliest application of Defendant 2, for registration of ABBZORB word mark in Class 5, was in 2018. Subsequently, two further applications were filed by Defendant 1 for registration of ABBZORB device marks in Class 5, but they were under objection and were yet to be registered.
Analysis, Law, and Decision
Deceptive similarity and likelihood of confusion
The Court opined that the aspect of infringement had to be determined, under Section 29 of the Act, on a mark-to-mark comparison and if, mark compared to mark, there was likelihood of confusion or deception, or a presumption of association, there was infringement. The Court also opined that “the possibility of likelihood of confusion had to be assessed from the consumer’s point of view of average intelligence and imperfect recollection who seeks the marks at different points of time. The test had to be applied at the initial interest stage, meaning, when defendant’s mark was initially seen by the consumer and if, on viewing it, he, having earlier seen plaintiff’s mark, was placed in a state of wonderment as to whether the two marks were the same, or associated, there was infringement”.
The Court stated that the sole extra letter “B” in defendants’ ABBZORB, as compared to plaintiff’s ABZORB, was hardly likely to impress itself on the psyche of a consumer of average intelligence and imperfect recollection and there was every likelihood of the consumer confusing one product for the other, or at the very least, presuming an association between the two products as a result of the similarity between the two marks. The Court thus opined that Section 29(2)(b) of the Act was applicable in the present case and phonetic identity between two marks justifies likelihood of confusion between ABZORB and ABBZORB.
The Court opined that “any difference between the visual appearance of marks ABZORB and ABBZORB, when seen as labels, was of no consequence”. Thus, the Court held that prime facie, mark ABBZORB was deceptively similar to mark ABZORB, even if mark ABBZORB was seen as a device mark, rather than a word mark.
Plea of non-entitlement to registration
The Court stated that defendants having themselves applied for registration of ABBZORB mark, it was not open to defendants to contend that plaintiff could not have obtained registration of the ABZORB mark as it was a word of common English usage. The Court opined that “there was no absolute proscription to registration of words of common English usage”.
Plea of mala fide intent
The Court opined that once defendants were made aware of plaintiff’s mark, registered in Class 5, defendants were clearly required to ensure that they did not use an identical, or deceptively similar, mark, for goods in Class 5 itself. They, however, proceeded to do so with impunity, and must, therefore, suffer the consequences. The Court relied on Midas Hygiene Industries (P) Ltd. v. Sudhir Bhatia, (2004) 3 SCC 90, wherein the Supreme Court held that “where a prima facie case of infringement existed, then an injunction must necessarily follow”.
The Court thus restrained defendants from manufacturing, selling, offering for sale, advertising, directly or indirectly dealing in dietary/health supplements, nutraceuticals, apple cider vinegar and promotional material such as t-shirt, shaker, bags, face mask or any other goods under the marks ABBZORB, ABBZORB NUTRITION, 
, and 
or any other trade mark as might be deceptively similar to plaintiff’s trade mark ABZORB, pending disposal of the present suit.
[Sun Pharmaceutical Industries Ltd. v. Protriton Products LLP, 2023 SCC OnLine Del 7467, decided on 24-11-2023]
*Judgment authored by: Justice C. Hari Shankar
Advocates who appeared in this case :
For the Plaintiff: Sachin Gupta, Rohit Pradhan, Manan Mondal, Advocates
For the Defendants: Sanjay Ghose, Senior Advocate; Akshay Goel, Paras Arora, Vinay Parashar, Namrita Tiwari, Pranav Sapna, Advocates
Buy Trade Marks Act, 1999 HERE
