Cardiocontin vs. Nitrocontin: Delhi HC Warns of Life-Threatening Confusion Over Pharma Trademarks

Justice Mini Pushkarna, on November 13, 2024, observed that the similarities between the trademarks could cause confusion among consumers, particularly given that both companies operate in the pharmaceutical industry, where errors in identification could have severe, life-threatening consequences.

The court was dealing with a suit was filed by Modi-Mundipharma Pvt. Ltd. and another (the plaintiffs) seeking permanent injunction against Win Health Pharma and its proprietor (the defendants) restraining infringement of trademark, passing off, infringing of copyright, rendition of accounts, damages, etc., regarding the defendants‟ use of the mark CARDIOCONTIN, trademark/ trade name/ domain name „WIN HEALTH PHARMA‟, trade dress, etc.

The plaintiffs filed an application under Section 124 of the Trade Marks Act, 1999 read with Section 151 of the Code of Civil Procedure, 1908, seeking permission to challenge the validity of two trademarks registered by the defendant – "WIN HEALTH PHARMA" bearing numbers 2445342 and 3123543.

The plaintiffs claimed prior rights to trademarks containing the word "CONTIN" and "WIN" in the pharmaceutical industry. They argued that their "CONTIN" trademarks, including "NITROCONTIN" for Nitroglycerine Tablets with a pink and white or purple and white bottle design, have been in use since 1982. Additionally, they claimed to be the prior user and registered proprietor of the trademarks "WIN-MEDICARE" (since at least 1981) and "WIN-HEALTH CARE" (since at least 2005).

The lawsuit stemmed from the defendant's alleged use of the trademark "CARDIOCONTIN" for Nitroglycerine Tablets with a similar white and pink packaging, and the mark "WIN HEALTH PHARMA" as a brand name, domain name, and product name. The plaintiffs believed these uses are deceptively similar to their own trademarks.

The defendant has claimed ownership of the "WIN HEALTH PHARMA" trademark, prompting the plaintiffs to file the application to challenge its validity and potentially have it removed.

It was alleged that the defendant intentionally chose the trademark "WIN HEALTH PHARMA" to capitalize on the goodwill established by the plaintiffs' "WIN-MEDICARE" and "WIN-HEALTHCARE" brands. They argued that the defendant's presence in the market with a similar-sounding name implies they were aware of the plaintiffs' well-established trademarks and product, "NITROCONTIN."

Therefore, the plaintiffs submitted the defendant's trademark registrations are invalid and should be removed due to a deceptive similarity that could mislead consumers.

The defendants countered the plaintiffs' claims by arguing that the registration of "WIN MEDICARE" doesn't grant exclusive rights to the word "WIN" itself. Similarly, they believed "HEALTHCARE" is not a term the plaintiffs can claim exclusive ownership of. Since the plaintiffs can't claim sole rights to these common elements, the defendant asserts their legal right to use "WIN," "HEALTH," and "PHARMA" in their brand name.

Furthermore, the defendants denied any deceptive similarity between their trade name "WIN HEALTH PHARMA" and domain name "winhealthpharma.com" with the plaintiffs' trademarks. They argued that any restrictions imposed on the use of "WIN" and "HEALTHCARE" negate a case for deceptive similarity.

Finally, the defendants highlighted their established market presence since 2012, suggesting the plaintiffs' application comes at a delayed stage. They argued that consumers and traders already recognize their brand, making the removal of their trademark potentially disruptive.

Citing precedents, the court emphasized the need to evaluate trademarks from the perspective of an average consumer with imperfect recollection. Given the significant overlap in product offerings, trade channels, and customer base, the court found prima facie merit in the plaintiffs’ claims. It observed;

“Vide order dated 31st March, 2022, this Court granted an ex-parte injunction in favour of the plaintiffs and against the defendants, restraining them from using the mark CARDIOCONTIN or any other mark consisting of the term CONTIN. Subsequently, defendant no.1 filed its written statement, wherein, it was pleaded that the defendant no.1 was the registered proprietor of the mark „WIN HEALTH PHARMA‟. Pursuant thereto, the present application was filed by the plaintiffs."

“It is evident that defendant no.1 is using the mark „WIN HEALTH PHARMA‟, as a mark, trade name and as part of the domain name, being winhealthpharma.com, which is deceptively similar to the plaintiffs‟ trademarks „WIN HEALTHCARE‟, „WIN MEDICARE‟, „WIN NATURALS‟, etc. Further, even the product of the defendants bears the trade name „WIN HEALTH PHARMA‟.”

“This Court notes that though the registration no. 2445342 and 3123543 have been obtained by the defendant no.1 under Class 35, the same are being used on pharmaceutical products, falling under Class 5, including, the defendants‟ products sold under the name „CARDIOCONTIN‟. Thus, it is evident that the trademark/ trade name of defendant no.1 is being used for identical goods and services as that of the plaintiffs, i.e., pharmaceutical products, wherein, the confusion would be life threatening. Further, the products of the plaintiffs and defendants are sold vide the same trading channels, including, retail outlets, street shops, chemists and industries, having identical customer base.”

“It is to be noted that the standard of comparison to be adopted in judging the resemblance is from the point of view of a man of average intelligence and imperfect collection. (See: Amritdhara Pharmacy Versus Satya Deo Gupta, 1962 SCC OnLine SC 13). Further, it is well known that the question whether the two marks are likely to give rise to confusion or not, is a question of first impression. In deciding a question of similarity between two marks, the marks have to be considered as a whole. (See: Corn Products Refining Co. Versus Shangrila Food Products Ltd., 1959 SCC OnLine SC 11)”

“In these circumstances, this Court finds prima facie merit in the contentions raised by the plaintiffs regarding the plea of invalidity of the registrations in favour of the defendants. The plaintiff has raised substantial questions regarding the validity of the registered trademark of the defendants.”

As a result, the court framed issues for further adjudication, including whether the defendant’s registrations are invalid and should be cancelled. Proceedings have been adjourned for three months under the provisions of the Trade Marks Act, 1999. It noted;

“Accordingly, the following issues are framed:

Whether the registration of the defendants‟ mark „WIN HEALTH PHARMA‟ under registration no. 2445342 in Class 35 is invalid and liable to be removed/ cancelled from the Register of Trademarks? OPP 17.2 Whether the registration of the defendants‟ mark „ ‟ under registration no. 3123543 in Class 35 is invalid and liable to be removed/ cancelled from the Register of Trademarks? OPP”

“ The proceedings are adjourned for a period of three months, in view of Section 124(1)(b)(ii) of the Trade Marks Act, 1999.”

To view the original judgement, click on the link below:

https://indiankanoon.org/doc/146648801/