Macleods Pharmaceuticals Limited (Macleods) is engaged in the manufacture of a broad range of pharmaceutical products across therapies in multiple dosage forms. It had adopted the mark ‘SETFRAC’ and ‘SETFRAC PLUS’ in the year 2013 which was duly registered w.e.f. July, 2013, in Class 5 in respect of medicinal, pharmaceutical and veterinary preparations.
Sometime in November 2021, Macleods came to know about the use of the mark ‘SAFEFRAC’ and ‘SAFEFRAC PLUS’ by Aareen Healthcare Private Limited (Aareen), Maxcure Nutravedics Limited (Maxcure), and PharmaGenica Healthcare Pvt. Ltd. (PharmaGenica), which were also engaged in the manufacture, sale, and marketing of similar products. ‘SAFEFRAC’ was also applied for registration by Aareen, claiming prior use from 2015 in its trademark application no. 3892826. Interestingly, the application currently stands opposed by a third party, viz., Tablets (India) Limited.
Shortly afterwards, Macleods issued a legal notice to all these three parties asking them to cease the manufacture and sale of their preparations under the mark ‘SAFEFRAC’ and/or any other mark deceptively similar to it, which was replied to in negative. The parties justified the refusal to comply and continual use of ‘SAFEFRAC’ by the act of Trademark Registry wherein the Examination Report gave a green signal for proceeding with its advertisement in the Trade Mark Journal.
Aggrieved, Macleods filed a suit in the Delhi High Court for trademark infringement & passing off against Aareen, Maxcure, and PharmaGenica seeking permanent injunction restraining them from infringement and passing off of both marks, i.e. ‘SETFRAC’ and ‘SETFRAC PLUS’.
The Hon’ble Court, on careful perusal, concluded that the marks ‘SETFRAC’ and ‘SAFEFRAC’ were phonetically and ocularly similar and would likely cause confusion, especially when the products bearing the marks in question were prescription drugs and the manner in which they would be written on a doctor's prescription could also lead to confusion to chemists, patients etc.
Accordingly, an interim injunction was granted by the Hon’ble Court in favour of Macleods restraining Aareen, MaxCure, and PharmaGenica from manufacturing, distributing, selling, and/or offering for sale, the pharmaceutical preparations under the mark ‘SAFEFRAC’ and ‘SAFEFRAC PLUS’ till the next date of hearing.
