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Synopsis

A Single Judge Bench of Justice C. Hari Shankar of the Delhi High Court recently while allowing an application moved by NOVARTIS AG against trademark infringement of its mark held that a prima facie case of infringement had been established by the petitioner.

The court observed that there was a lot of visual similarity in the marks ‘NOVAEGIS’ and ‘NOVARTIS’(the size of the mark, colour scheme) which could be confusing for the customers and it was easy to pass off the products of NOVAEGIS (India) Pvt. Ltd. as that of the plaintiff.

Further, it was observed that the phonetic similarity of the two marks at prima facie was not coincidental, and an average customer could be deceived by this similarity.

Moving the high court, the plaintiffs claimed to have adopted the name ‘NOVARTIS’ as their house mark/company name/ trade name in 1996. The mark ‘NOVARTIS’ figures not only on the medicines manufactured by the plaintiff but also on the buildings, offices, packaging products, promotional materials, stationery, and other goods and services belonging to the plaintiffs or in which plaintiffs were engaged. The earliest registration possessed by the plaintiffs was in Class 5 and therefore dated 1996.

The plaintiffs were aggrieved by the use of the mark ‘NOVARTIS’ by the defendant for which the defendant had sought registration under Class 35 which dealt with retailing, wholesaling, import, and export of pharmaceuticals, advertising, business management, business administration, office functions. The plaintiffs and the defendant both used the disputed mark on the packets and strips on which they sell their pharmaceutical products.

The court opined that ‘NOVAEGIS’ was phonetically identical to ‘NOVARTIS’ when tested from the point of view of a customer of average intelligence and imperfect recollection.

Thus, the court stated,“It was difficult for this Court, at a prima facie stage, to believe that the phonetic similarity between the two marks was merely coincidental and that the defendant was an innocent adopter of the impugned mark”.

Court noted, “...both marks were written in bluish green, with the difference in colour being too minor to pass muster, and both the marks were preceded by a pictorial symbol which, given the size of the marks as would be reflected on the packages on which the marks figure, were also similar”.

 Therefore, the court opined that this element of doubt was sufficient to make out a case of ‘confusing’ or ‘deceptive’ similarity.

Court held that a prima facie case of deceptive similarity between the marks of the plaintiff and the defendant was, therefore, made out. Further, the Court held that within the meaning of Section 29(2)(b), a prima facie case of infringement was also made out. Court relied on Laxmikant V. Patel v. Chetanbhai Shah (2002) and Midas Hygiene Industries (P) Ltd v. Sudhir Bhatia, wherein the Supreme Court has held that an injunction must follow where such a prima facie case existed.

Thus, the court granted an ad-interim injunction in favor of ‘NOVARTIS’ and held that till the next date of hearing, the defendant, and all others acting on its behalf, should stand restrained from using the mark ‘NOVAEGIS’ or in any form or manner, whether as part of its brand name or trade name or as a part of the corporate name which was displayed on the products of the defendant or its website or otherwise.

Cause Title: Novartis AG & Anr. vs. Novaegis (India) Pvt. Ltd.