HC relief to Sun Pharma, restrains Delhi firm from using ABBZORB mark for health supplements similar to ABZORB

In its judgement pronounced on November 24, 2023, the Delhi High Court ruled in favour of Sun Pharma and restricted Protrition from manufacturing, selling, offering for sale, advertising, directly or indirectly dealing in dietary/health supplements, nutraceuticals, apple cider vinegar and promotional material such as t-shirt, shaker, bags, face mask or any other goods under the marks ABBZORB, ABBZORB NUTRITION or any other trade mark deceptively similar to Abzorb, until the lawsuit is resolved

The plaintiff, Sun Pharmaceutical Industries Ltd., asserted ownership of several registered trademarks under Class 5 of the Trade Marks Act, 1999. These trademarks included ABZORB, ABZORBEC, and ABZORB SYNDET, which are used for manufacturing and distributing anti-fungal pharmaceutical preparations.

The defendants, Protrition Products Llp & Ors., however, owned marks such as ABBZORB and ABBZORB NUTRITION, registered under different classes—Classes 29 and 30—pertaining to products like meat, fish, poultry, coffee, tea, cocoa, and similar goods. Despite this, the defendants were found manufacturing and selling whey protein under the ABBZORB NUTRITION mark, which falls under Class 5 where the plaintiff's ABZORB mark was registered.

Sun Pharma contended that the defendants' marks, differing only by an additional 'B', were deceptively similar to their registered marks and were being used in the same class for similar products. Sun Pharma accused Protrition Products of copying its registered trademark ‘Abzorb’ for its whey-protein product called ‘Abbzorb Nutrition’.

In response, Protrition Products argued against the validity of Sun Pharma's brand Abzorb, contending that it was essentially a variation of the commonly used English word 'absorb'. The company questioned the originality and uniqueness of Sun Pharma's mark, emphasizing doubts regarding its distinctiveness. Additionally, Protrition Products asserted that any potential confusion between their product and Sun Pharma's anti-fungal preparation would be of greater concern if consumers mistakenly used the pharmaceutical product instead of the intended whey protein.

Highlighting the substantial disparity in pricing and the distinct target consumer bases for the two products, Protrition Products further argued that this significant price difference would prevent any confusion in the market.

However, the court dismissed Protrition Products' claims and determined the matter to be, on a prima facie basis, a case of trademark infringement. The court acknowledged that the additional 'B' did not significantly alter the phonetic or visual similarity between the marks. It observed;

"Phonetically, both the words are identical. Even if one were to refer to the individual spellings of the two words, the only difference is one letter "B", which makes little difference to the overall appearance of the two words and makes no difference whatsoever to their individual pronunciations. The sole extra letter "B" in the defendants' ABBZORB, as compared to the plaintiff's ABZORB, is hardly likely to impress itself on the psyche of a consumer of average intelligence and imperfect recollection. There is every likelihood of the consumer confusing one product for the other, or at the very least, presuming an association between the two products as a result of the similarity between the two marks."

The court's analysis emphasized the principles of deceptive similarity, likelihood of confusion, and infringement under Sections 29 and 30 of the Trade Marks Act. It observed that, from a consumer's perspective, the similarity in the marks could cause confusion or lead to an association between the products.

Additionally, the court dismissed the defendants' arguments about visual differences in labels and price differentiation, asserting that these factors were irrelevant in determining infringement. It clarified;

"The distinguishing features emphasized by learned Senior Counsel for the defendants, Sanjay Ghose, in the form of the visual difference between the two labels, and the price difference between the products, are of no consequence when one considers the aspect of infringement, which has to be assessed on mark-to-mark basis. Mark to mark, there is clear likelihood of confusion between ABZORB and ABBZORB."

"It is, prima facie, beyond doubt that the mark ABBZORB is deceptively similar to the mark ABZORB, even if the mark ABBZORB is seen as a device mark, rather than a word mark. A prima facie case of infringement, therefore, exists."

Subsequently, the judgment restrained the defendants from manufacturing, selling, or advertising products under the disputed marks, pending further proceedings in the case. The court highlighted that the views expressed were preliminary and not binding, emphasizing the need for a full adjudication in the pending suit. It held;

"In view of the aforesaid discussion and observations, pending disposal of the suit, the defendants, as well as all others acting on their behalf, shall stand restrained from manufacturing, selling, offering for sale, advertising, directly or indirectly dealing in dietary/ health supplements, nutraceuticals, apple cider vinegar and promotional material such as t-shirt, shaker, bags, face mask or any other goods under the impugned marks ABBZORB, ABBZORB NUTRITION, , and or any other trade mark as may be deceptively similar to the Plaintiff's trade mark ABZORB, pending disposal of the present suit. "

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

https://indiankanoon.org/doc/93329166/