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Apex Laboratories Ltd. v. Zuventus Health Care Ltd. Responden.
Factual and Procedural Background
Apex Laboratories Limited, the appellant, manufactures pharmaceutical products and adopted the trademark “Zincovit” in 1988, which is registered and renewed. The appellant filed multiple suits against trademark infringement and obtained injunctions previously. In February 2006, the appellant discovered that the respondents were manufacturing and selling pharmaceutical products under the trademark “Zinconia”. The appellant alleged trademark infringement and passing off, filing C.S. No. 216 of 2006 along with applications for injunction (O.A Nos. 244 and 245 of 2006). The respondents opposed the injunction, arguing that “Zinco” is common to multiple registered trademarks and that the marks “Zincovit” and “Zinconia” are visually and phonetically dissimilar. An interim ex parte injunction granted to the appellant was vacated by the Single Judge who found no likelihood of confusion or deception. The appellant appealed against this order.
Legal Issues Presented
- Whether the use of the trademark “Zinconia” by the respondents constitutes infringement and passing off of the appellant’s registered trademark “Zincovit”.
- Whether the marks “Zincovit” and “Zinconia” are deceptively similar such that an injunction should be granted.
- Whether the word “Zinc” is exclusive to the appellant or is a common term in trade that cannot be monopolized.
Arguments of the Parties
Appellant's Arguments
- The appellant claimed exclusive rights over the trademark “Zincovit” and alleged infringement and passing off by the respondents using “Zinconia”.
- The appellant relied on prior decisions supporting injunctions against deceptively similar trademarks to prevent consumer confusion.
Respondents' Arguments
- The respondents contended that “Zinco” is not exclusively owned by the appellant, as several registered trademarks contain this word.
- They argued that the marks “Zincovit” and “Zinconia” are visually, phonetically, and conceptually dissimilar.
- They presented packaging (cardboard cartons) to demonstrate the differences and argued there was no likelihood of consumer deception.
Table of Precedents Cited
| Precedent | Rule or Principle Cited For | Application by the Court |
|---|---|---|
| Ciba Geigy Limited & Hindustan Ciba-Geigy Ltd. v. Croslands Research Laboratories Ltd. (1995 IPLR 375) | Similarity of marks and packaging justifies injunction to prevent consumer confusion. | Illustrated the necessity of injunction when marks and packaging are strikingly similar. |
| Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. ((2001) 5 SCC 73) | Factors to consider for deceptive similarity, especially in pharmaceutical trademarks, and the need for strict measures to prevent confusion. | Outlined multi-factor test emphasizing phonetic similarity, nature of goods, purchaser class, and surrounding circumstances. |
| Corn Products Refining Co. v. Shangrila Food Products Ltd (AIR 1960 SC 142) | Marks must be considered as a whole, and phonetic similarity must be judged in the context of local language and usage. | Supported the approach of holistic comparison of marks rather than isolated parts. |
| J.R Kapoor v. Micronix India. (1994 Supp (3) SCC 215) | Common descriptive elements in trademarks do not grant exclusive rights and do not cause confusion if the marks are phonetically and visually dissimilar. | Demonstrated that descriptive prefixes like “MICRO” do not create deceptive similarity when the overall marks differ. |
| SBL Ltd. v. Himalaya Drug Co. (1997 (17) PTC (DB)) | Generic or publici juris terms in trademarks cannot be monopolized and consumers focus on distinctive elements. | Held that common terms like “LIV” do not cause confusion when other elements differ significantly. |
| Roche & Co. v. G. Manner & Co. ((1969) 2 SCC 716) | Common descriptive abbreviations in pharmaceutical trademarks do not create confusion if the distinctive parts differ. | Emphasized that attention to uncommon elements in marks prevents confusion. |
| William Bailey (Birmingham) Ltd's application (1935 (52) RPC 136) | Marks must be compared as wholes and not by dissecting parts to avoid misleading conclusions. | Reinforced the principle that partial comparison of trademarks is a dangerous approach. |
Court's Reasoning and Analysis
The court analyzed the marks “Zincovit” and “Zinconia” by applying established principles from precedents concerning trademark similarity and infringement, especially in the pharmaceutical sector where even minor confusion can be hazardous. It acknowledged that the word “Zinc” is a common and generic term in trade (publici juris) and cannot be exclusively claimed by the appellant. The court emphasized the principle that trademarks must be compared as wholes, not by dissecting common parts, referencing William Bailey’s application. It found the marks to be phonetically and visually dissimilar, reducing the likelihood of confusion among consumers. The court also considered the packaging and the nature of purchasers, aligning with the multi-factor test from Cadila Health Care Ltd. The learned Single Judge’s decision to vacate the interim injunction was upheld as correct, given the absence of deceptive similarity or likelihood of confusion.
Holding and Implications
The court DISMISSED the appeal filed by Apex Laboratories Limited and upheld the vacatur of the interim injunction. The decision directly affects the parties by allowing the respondents to continue using the trademark “Zinconia” without injunction. No costs were awarded, and the connected miscellaneous petitions were also dismissed. The opinion does not establish any new precedent but reaffirms established principles regarding the non-exclusivity of common descriptive terms in trademarks and the necessity of holistic comparison to determine deceptive similarity.
Prabha Sridevan, J.:— Apex Laboratories Limited, the appellant herein are the manufacturers of pharmaceutical products and have adopted the trademark “Zincovit” on 16.03.1988 for their product viz., syrup and tablets and have also applied for its registration as a proposed mark and obtained registration of the Trade mark, which has been renewed and is in force. It is claimed that they have filed a number of suits against infringement of their trademark “Zincovit” and have also obtained injunction orders. Sometime during February, 2006, it came to the knowledge of the appellants that the respondents are manufacturing and selling pharmaceutical products under the trade mark “Zinconia”. The appellant's claim is that the respondents are guilty of infringement of the trademark and also of passing off. Therefore, they filed C.S No. 216 of 2006 and applied for injunction in O.A Nos. 244 and 245 of 2006.
2. The respondents resisted the application claiming that there are several registered owners of trade mark containing the word “Zinco” and the appellant is not the exclusive proprietor of the word “Zinco”. It is also claimed that the marks are visually and phonetically dissimilar and there are no oral, visual or conceptional similarities and the essential features in both the marks i.e, colour combination, scheme of writing are entirely different.
3. Interim injunction granted ex parte was vacated by the learned Single Judge holding that there is no likelihood of causing confusion in the mind of the purchaser and there is no similarity and deceptivenes in the names “Zincovit” and “Zinconia” and further that “Zinc” is the common name in trade. Against this order, the appeal has been filed.
4. The learned counsel for the appellant relied on several decisions to support the case for injunction. The learned counsel for the respondent produced the card-board cartons to show the dissimilarities and stated that there was no way the consumer could be deceived into thinking that the respondent's product is actually the appellant's product.
5. Several decision were relied on by the learned counsel.
(i) In Ciba Geigy Limited & Hindustan Ciba-Geigy Ltd. v. Croslands Research Laboratories Ltd., (1995 IPLR 375), the Division Bench of this Court held that EUGEL was strikingly similar to EMULGEL and the products were sold identically in hand designed cartons and tubes and, therefore, injunction must necessarily be granted.
(ii) In Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd.. ((2001) 5 SCC 73 : AIR 2001 SC 1952) : 2001 PTC (21) 300 (SC), the Supreme Court held that,
“Although the possibility of confusion in a drug being sold across the counter may be higher, the fact that a drug is sold under prescriptionor only to physicians cannot by itself be considered a sufficient protection against confusion. The physicians and pharmacists are trained people yet they are not infallible and in medicines, there can be no provisions for mistake since even a possibility of mistake may prove to be fatal. In view of the varying infrastructure for supervision of physicians and pharmaceuticals of medical profession in our country due to linguistic, urban, semi-urban and rural divide across the country and with high degree of possibility of even accidental negligence, strict measures to prevent any confusion arising from similarity of marks among medicines are required to be taken.”
and for deciding the question of deceptive similarity, the following factors must be considered—
“(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, and
(g) Any other surrounding circumstances which may be relevant in the extent of dissimilarity between the competing marks.
Weightage to be given to each of the aforesaid factors depends upon facts of each case and the same weightage cannot be given to each factor in every case.”
(iii) In Corn Products Refining Co. v. Shangrila Food Products Ltd , (AIR 1960 SC 142) : PTC (Suppl) (1) 13 (SC) it was held:
“The question whether the two marks are likely to give rise to confusion or not is a question of first impression. It is for the court to decide that question. English cases proceeding on the English way of pronouncing and English word by English men, which is not always the same, may not be of much assistance in our country in deciding questions of phonetic similarity. It is well recognised that in deciding a question of similarity between two marks, the marks have to be considered as a whole.”
(iv) In J.R Kapoor v. Micronix India., (1994 Supp (3) SCC 215) : 1994 (14) PTC 260 (SC) the two trademarks in question were MICRONIX and MICROTEK. The Supreme Court held that those who are fern??? liar with the use of electronic goods are not likely to be misguided or confused merely bv the ‘MICRO’ in the tradename, since ‘MICRO’ is the descriptive of the m???uo technology used for production of many electronic goods which daily come to the market and no one can claim monopoly over the use of the said word. The Supreme Court held that the two names are not only phonetically different, even their visual impression of them are different. Therefore, it was held that there was not even the remotest chance of the buyers and users being misguided or confused.
(v) In SBL Ltd. v. Himalaya Drug Co., 1997 (17) PTC (DB), the marks were Tiv. 52’ and ‘LIV-T’ The Division Bench of the Delhi High Court held that the word ‘Liv’ is a generic term and publici juris and no one can claim an exclusive right and that as regards the two rival marks 52 and T which contain a common feature ‘LIV that customer will not consider the common feature and pay more attention to the descriptive features.
(vi) Similarly in Roche & Co. v. G. Manner & Co., (1969) 2 SCC 716 : AIR 1970 SC 2062) where the question was whether DROPOVIT and PROTOVIT were deceptively similar, the Supreme Court held that ‘VIT is a well known abbreviation used in pharmaceutical trade to denote vitamin preparation and it was both descriptive and common to the trade and if attention is paid to the uncommon element in the two words, there is not scope for mistake or confusion.
6. In the case on hand, both the medicine preparations contain ‘Zinc’ and, therefore, the word ‘Zinc’ is common to the trade and is publici juris. The appellant cannot claim ownership over the said word. Further, it would be dangerous to split the word into two and grant injunction merely because both the trade names contain the word ‘Zinc’. In William Bailey (Birmingham) Ltd's application (1935 (52) RPC 136) Farwell, J. said,
“I do not think it is right to take a part of the word and compare it with a part of the other word; one word must be considered as a whole and compared with the other word as a whole…. I think it is a dangerous method to adopt to divide the word up and seek to distinguish a portion of it from a portion of the other word.” It is no doubt, true, when prescriptions are telephonic or handwriting, the chances of confusion or mistake cannot be ruled out if the marks appear too much alike when handwritten or sound too much alike when pronounced.
7. But as regards ‘Zincovit’ and ‘Zinconia’, the two words are phoneticaly. dissimilar and the visual impression of the said names are also different and hence, are hardly likely to cause confusion in the mind of a common consumer.
8. The learned Judge was right in vacating the order of interim injunction and we are not interfering with the same. The appeal is therefore, dismissed. No order as to costs. The connected miscellaneous petitions are also dismissed.
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