• Contributor: Mohan Dewan, R K Dewan & Co., Mumbai, India

INTA Bulletins Law & Practice—Asia-Pacific Subcommittee
 
Verifier: Sushant Singh, Supreme Court of India & High Court of Delhi, Delhi, India 
 
Hindustan Syringes and Medical Devices Ltd. (Hindustan) owns the DISPOCANN and DISPOVAN marks, while Disposafe Health & Life Ltd. & Ors. (Disposafe) owns the DISPOSAFE mark. Disposafe began using the DISPOCAN mark while Hindustan was applying for registration of the DISPOSAFE mark. Both parties are engaged in the business of producing disposable syringes.
 
The two parties filed cross suits for trademark infringement, seeking injunction against each other at the Delhi High Court. The court granted an interim injunction against Disposafe with a blanket restraint from using DISPOCAN and any other marks containing the prefix “Dispo.” No order of injunction was passed in favor of Disposafe.
 
Not satisfied with these orders, Disposafe appealed before the Division Bench of Delhi High Court. In its ruling, pronounced on May 3, 2019, the court allowed Disposafe’s appeal in part. Disposafe Health & Life Ltd. & Ors v. Rajiv Nath & Anr, FAO(OS) (COMM) 269/2018, CAV 1074/2018 & C.M. APPL. 48680-48681/2018.
 
Disposafe argued that Hindustan could not claim proprietary rights over the prefix “Dispo,” even though it had exclusive rights to use the device marks DISPOVAN and DISPOCANN. Hindustan countered that since it had multiple marks containing the prefix “Dispo,” members of the trade and public associated the prefix with its products only. The court noted that there was no evidence on record to this effect, and therefore disagreed with Hindustan’s contention.
 
The Division Bench of Delhi High Court held that the relief sought by Hindustan was to restrain Disposafe from using DISPOCAN and such other marks containing “Dispo.” However, it had no word mark protection for the DISPOSAFE mark per se. The court observed that “Dispo” was derived from the word “disposal” and was a generic term or a commonly used prefix. It also noted that the expression “Disposafe” is a portmanteau word (a word formed from fragments or parts of two separate words). The court stated, “‘Dispo’ was clearly descriptive as it described the quality of the product to be ‘disposable.’”
 
Based on this rationale and subject to Disposafe’s undertaking not to use the marks DISPOCANN and DISPOVAN, the court dismissed the impugned order against Disposafe without any order as to costs.
 
This article first appeared in the INTA Bulletin and was reprinted with permission from the International Trademark Association (INTA).
 
 
 

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