AMADAY Vs. ANADAY – It is not phonetically similar – Do you know why?
CASE STUDY by UNIMARKS
FORUM: DELHI HIGH COURT
NAME OF THE JUDGE: MUKTA GUPTA
DETAILS OF THE PARTIES:
CASE CITATION: CS (COM) 336/2020
DATE OF THE JUDGEMENT: 6TH MAY, 2020
FACTS OF THE CASE:
Plaintiff filed a case for grant of interim/ permanent injunction against the Defendant for the use of the mark: ANADAY (impugned mark), which is deceptively similar to the mark of the Plaintiff: AMADAY for restraining its directors, assignees, distributors, or other intermediaries for sale, purchase, manufacture, and use of the impugned mark. DETAILS OF THE MARK:
|Nature of Classification||Plaintiff||Defendant|
|Name of the mark||AMADAY||ANADAY|
|Application no.||747783 1305303 1518017COMPLETED- REGISTERED||1649587- OPPOSED- ABANDONED. 3384539- OPPOSED- PUBLISHED PENDING|
ISSUES: The marks are deceptively similar and can cause a likelihood of confusion in the minds of the public.
RELIEF SOUGHT: Plaintiff seeks for grant of interim injunction to restrict Defendant from using or carrying the business from the name- “ANADAY” and to pass off the packaging materials, dye, etc. bearing the mark – ANADAY
1. Different medicine for different ailment:
The defendants argued that the drugs were used for treating different ailments and have no connection with each other. Therefore, there are no chances of drugs being displaced or replaced for either of the diseases. “AMADAY” for treating heart disease, blood pressure has no connection with “ANADAY” for treating breast cancer. However, the plaintiffs contested that- the slight difference is the name of the medicine and to err is human- might lead to impulsive effects on a person’s health. The Court can avoid such massive damage by granting the interim application. The Hon’ble Court denied the contention put forth by the Plaintiff.
2. Delay in the filing of the suit by Plaintiff:
- The defendants presented specific facts and evidence on previous applications of the trademark and oppositions stating that Plaintiff was aware of the use of the mark “ANADAY” since 2008 but still delayed in filing the case- this makes the suit to be dismissed.
- In any case, Defendant has placed its sales figures since the year 2008. Thus, Plaintiff has not done due diligence to see since the impugned product is under sale under the impugned mark.
- Thus, Plaintiff has not bothered to determine whether the Defendant’s drug is being sold in the market under the mark ANADAY despite due notice and is bound to suffer the consequences of delay in seeking the injunction.
3. The territorial advantage to Defendant- no sales in India:
- The defendants argued that Plaintiff’s sell their medicine on an export basis. There are no recorded sales of medicine in India since 2002.
- The Plaintiff’s to which replied that according to Section 56– if the goods are exported outside India, then for Indian Law, that mark is said to be used in India. Thus section 56 would apply to an action for infringement of the trademark is applied in India to goods to be exported from India as the same is deemed to constitute use of a trademark concerning those goods for any purpose for which such use is material under the Act.
- Thus, Defendant’s defense was carefully and with the due interpretation of provisions rejected by the Court.
4. Can be prescribed by the Oncologist:
The Defendants contended that- the said medicine “ ANADAY” could be given only upon the prescription by ONCOLOGIST- and specifically for treating BREAST CANCER. Therefore, the pharmacy will have no confusion in issuing the medicine with the right name.
5. Coined term:
The Defendants established that their mark is a coined term – ANASTROZOLE and dosage: one per DAY === ANADAY.There is no implied case of dishonest use of the name.
HOLDING: The Court rejected the arguments by the Plaintiff and declined the grant of interim injunction. The grounds of rejection are given below.
RATIO DECENDI: The Court held that:
- The products of both Companies are not similar as the medicines are used for treating different ailments. Customers will use Plaintiff’s medicine for treating blood pressure, heart disease, etc. In contrast, Customers will use Defendant’s medicine for treating breast cancer. Since the nature of the business is different, there cannot be any likelihood of confusion.
- The Court also pointed out that Plaintiff has been selling the product outside India from the facts and arguments presented above. There are no recorded sales of the same in India since 2002. The Defendant has been in the market for the past decade now, the chances of confusion are significantly less.
- The Court also relied upon the Honest and Concurrent use policy and exclaimed that the use of the mark by Defendant is honest and defendants can ascertain no attributes of encroachment of goodwill.
Therefore, the grant of injunction in favor of Plaintiff is rejected.
TAKEAWAYS FROM THE CASE
- Always use coined terms for trademarks- it has better chances of approval. For a complete guide on the selection of trademark, click here.
- Suppose a mark is registered in India for export purposes. In that case, there is no restriction on the sale of the product in India after a point in time.
- The nature of business plays an essential factor in deciding the infringement cases.
- Precedents are the best way to argue the contentions. Always find a relevant precedent for the arguments put forth.
- Prior use through a good defense may fail sometimes.
- Have a record of all the sales and services rendered under the mark.
Hire a professional to conduct a trademark search to avoid such infringement cases.