While it’s unquestionable that an owner of a registered trademark can defend his rights in the same by the virtue of the relevant provisions of the Trade Marks Act, 1999, can these rights still be enforced in cases where the application has been actively opposed by third parties? The recent order by Delhi High Court in United Biotech Pvt. Ltd. v. Mr. Gaurav Aggarwal CS (COMM) 289/2022 seems to have cleared some air on this.
United Biotech Private Limited (United Biotech) manufactures prescription-based products/injections administered to patients who suffer from serious life-threatening ailments originating from bacterial, hospital-acquired, intra-abdominal and uterine infections etc. United Biotech is the owner of the mark “TAZIN” under which it markets and sells a semi-synthetic antibiotic. United Biotech acquired the mark ‘TAZIN’ in the year 2001 and applied the mark for registration under No. 1721850 (concerned application) in class 05.
Aggrieved by the fact that a certain ‘Indian Healthcare’ was manufacturing an identical formulation of Tazobactam and Piperacillin under the namesake mark ‘TAZIN’, United Biotech approached the Delhi High Court seeking an interim injunction against Indian Healthcare as well as Kasturi Pharmaceuticals and Ropoz Lifesciences Pvt. Ltd., which were found in trading of the infringing products.
United Biotech put it on record that even though its rights in the mark ‘TAZIN’ had already been recognized by the Delhi High Court in United Biotech (P) Ltd. v. Schon Pharmaceuticals Ltd. CS (OS) No.1400/2008, the trademark registration for the same was still pending. United Biotech submitted that while two of its marks bearing application nos. 1144251 and 1721850 were facing opposition by third parties, the concerned application was still at the objection stage.
The Hon’ble Court duly perused the products for determining deceptive similarity on account of many pharma-related trade journals showing United Biotech as the only manufacturer of injections under the mark ‘TAZIN’.
Source – Judgement
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The Court took serious cognizance of the fact that the packaging (white-purple) in which Indian Healthcare was selling the infringing product was identical to the trade dress of that of injections. Referring to the Supreme Court judgement of Cadila Healthcare Ltd. , which laid down the principle for the test of deceptive similarity for pharmaceutical products, the Court opined that the sale of any of those drugs which were considered ‘Schedule-H’ needed to be strictly monitored and by extension, any confusion due to the use of an identical mark ought to be thoroughly eliminated.
Therefore, after careful perusal of all the facts and circumstances, the Court held that United Biotech had been successful in making out a prima facie case for the grant of an ex-parte ad-interim injunction. The Court further held that if Indian Healthcare and the other parties were not timely restrained in this case, then United Biotech was likely to suffer irreparable harm and injury.
Accordingly, till the next date of hearing, the Court directed that Indian Healthcare and the other parties working in tandem would stand restrained from using the mark ‘TAZIN’ or any other mark deceptively similar (or identical) to it. It was stressed that this included the trade dress as well as any color combination identical to that of the TAZIN’s packaging, in respect of any pharmaceutical preparations like injections, vials, tablets, capsules, etc.
