No violation of Abbott's trademark: Delhi HC upholds trademark of Mebufen against Brufen

Abbott claimed that "Mebufen" was confusingly similar to its well-known analgesic brand "Brufen”, and could lead to consumer confusion, especially given that both products are medicinal.

In a recent ruling on October 22, 2024, Justice Amit Bansal of the Delhi High Court dismissed the appeal filed by Abbott challenging the Registrar of Trademarks’ decision.

Abbott owns the trademark "BRUFEN," which has been in use since 1973 and includes analgesics and anti-inflammatory drugs. The company acquired rights to this trademark through a Deed of Assignment from The Boots Company PLC, UK, in 1995 and has been using it globally, including in India.

In September 2005, Meridian Medicare Limited, through its director Vinod Gupta, applied for the trademark "MEBUFEN" under Class-5, covering medicinal and pharmaceutical products. The application claimed that Meridian had been using "MEBUFEN" since April 1988.

After publication in 2006, Abbott opposed the registration, contending that "MEBUFEN" was deceptively similar to "BRUFEN" and would confuse consumers due to its similar use in pain relief products containing ibuprofen.

Abbott counsel, Tusha Malhotra, argued that the Registrar of Trademarks failed to apply the precedent set in the Cadila Healthcare Ltd. vs. Cadila Pharmaceuticals Ltd. case, which establishes that competing trademarks must be evaluated as a whole rather than dissected syllable by syllable.

Abbott contended that merely adding "ME" to "BRUFEN" did not make the two marks distinctive enough, particularly as both drugs contain ibuprofen. Abbott further argued that the marks were phonetically similar and could cause confusion among customers with "average intelligence and imperfect recollection," as established in other judgments on trademark similarity.

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On behalf of Meridian, Amit Singha argued that "MEBUFEN" and "BRUFEN" were structurally, visually, and phonetically distinct, sharing only the suffix “FEN.” He contended that "FEN" is derived from "IBUPROFEN" and is commonly used in pharmaceutical trademarks, with over 5,000 other trademarks incorporating it. Meridian emphasized that Abbott could not claim exclusivity over "FEN," and that the unique prefixes, "BRU" and "MEBU," made the marks easily distinguishable. Additionally, the packaging and branding styles of "MEBUFEN" and "BRUFEN" were different enough to avoid consumer confusion.

Justice Bansal evaluated the arguments, referencing important judgments regarding deceptive similarity, especially in the context of pharmaceuticals where public safety is a concern. The judge cited the F. Hoffmann-LA Roche & Co. Ltd. vs. Geoffrey Manners & Co. Pvt. Ltd. case, which held that trademarks should not be dissected letter-by-letter but should be evaluated in totality for structural and phonetic resemblance.

Examining the matter, the judge found "BRUFEN" and "MEBUFEN" to be sufficiently different in both structure and sound, noting that the prefixes "BRU" and "MEBU" create a clear distinction. It observed;

“There is no structural or phonetical similarity between the rival marks "BRUFEN" and "MEBUFEN". The dicta of Hoffmann-LA Roche (supra) is fully applicable in the present case. The marks "BRUFEN" and "MEBUFEN" are quite dissimilar and I cannot foresee any confusion being caused while pronouncing the said marks by a person of average intelligence or any possibility of confusion being caused in the market.”

It further clarified that;

“The rival marks have different prefixes i.e., "BRU" and "MEBU", which are strikingly dissimilar. The common suffix "FEN" used in both marks, is derived from the chemical element "IBUPROFEN" which is used in both medicines. Therefore, the petitioner cannot claim exclusivity over "FEN". The Respondent No.2 has placed on record details of various medicinal products using "FEN" as a part of their name.”

In context of Abbott’s reference to two cases to support its claim of similarity between "Brufen" and "Mebufen.", it mentioned that in a Bombay High Court case involving "Brufen" and "Croffen," the court found structural and phonetic similarity and cancelled the "Croffen" trademark. Similarly, the Delhi High Court's Division Bench upheld an injunction in a case involving "Indamet" and "Istamet," noting their structural and phonetic resemblance.

Deliberating this, the court found that previous cases cited by Abbott, such as "BRUFEN" vs. "CROFEN," involved more similarities in structure and sound than the present case of "BRUFEN" vs. "MEBUFEN," and thus were not directly applicable.

After considering the factors, the court concluded that "MEBUFEN" did not pose a risk of confusion with "BRUFEN" and upheld the Registrar of Trademarks' decision to allow Meridian Medicare’s registration of "MEBUFEN." Justice Bansal dismissed Abbott appeal, affirming that the trademark "MEBUFEN" could coexist with "BRUFEN" without causing confusion in the market.

The court said;

“In my considered view, both the aforesaid judgments would not come to the aid of the Appellant since there is a clear element of structural and phonetic similarity between the competing marks that were the subject matter 2002 SCC OnLine Bom 300. of the aforesaid judgments, which is not discernible in the marks "BRUFEN" and "MEBUFEN that are the subject matter of the present appeal. In view of the discussion above, no grounds are made out for interference with the impugned order passed by the Registrar of Trademarks. Consequently, the appeal is dismissed.”

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

https://indiankanoon.org/doc/187553401/