Usually, common suffixes or prefixes do not come in the way of distinctiveness. The nature of certain trades may require common suffix/ prefix for the purpose of familiarity. The distinctive nature of the word would then depend on the remaining part of the word attached to these common suffixes and prefixes. A term would be considered as a prefix or suffix only if they are derived from common or generic words. It is in this scenario the case under comment comes into limelight. The Madras High Court in Apex Laborataries Ltd v. Zuventus Health Care Ltd, 2006 (33) PTC 492 (Mad.)(DB) ruled that "Zincovit" and "Zinconia" are two words phonetically dissimilar and the visual impressions are also different and hence, it is hardly likely to cause confusion.
Apex laboratories Limited (Appellants), the manufacturers of the Pharmaceutical products adopted trademark "Zincovit in 1988. It is their claim that they have at times filed case against infringement of their said mark and secured injunctions. In early 2006, they came to know that the respondents were carrying on trade under the trademark "Zinconioa." It is alleged that the respondents are guilty of infringement and passing off and hence have filed the civil suit and injunction.
The respondents on the other hand resisted the application raising the contention that there are several registered trademark owners registered with the word ‘Zinco." Further, there is no likelihood of confusion as there is no phonetic, visual or conceptual similarity is attached to the said marks. The exparte injunction already granted was vacated on the ground that there is no likelihood of confusion in the minds of the purchaser.
The appeal preferred by the Apex Laboratories is against the vacation of expatre injunction.
A catena of cases was cited for substantiating the contentions. The court referred to Ciba Geigy Limited & Hindustan Ciba-Geigy Ltd. v. Croslands Research Laboratories Ltd., 1995 IPLR 375; where the division bench granting the injunction held that EUGEL was strikingly similar to EMULGEL.
On the question of similarity, which being the moot issue in this case, the Court relied on Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., 2001 PTC 300(SC), where the apex court held that the drug even if sold under the prescription or only to the physicians cannot itself be considered as a sufficient ground against confusion. The factors to be adequately considered for deciding the question of similarity are
- The nature of marks i.e. where it is a word mark or label mark or composite mark;
- The degree of resemblances;
- The nature of goods;
- The similarity in nature, character, performance of rival traders;
- The class of purchasers;
- The mode of purchasing the goods;
- The other surrounding circumstances;
The court for buttressing the conclusion relied on Corn Products Refining Co. v. Shangria Food Products Ltd, AIR 1960 SC 142; where it was held that the question whether the two marks are likely to give rise to confusion or not is a question of first impression.
On the question of generic term and publici juris, the court buttressed the argument by relying on SBL LTD. v. Himalaya Drug Co, 1997 (17) PTC (DB) and Roche & Co. v. G. Manner & Co, AIR 1970 SC 2062; where it was categorically held that no one can claim an exclusive right to a generic term and the customer will not consider the common feature and would pay more attention to the descriptive features. It is common in the pharmaceutical trade that abbreviations for vitamins and chemical names are extensively used. The court observes that if the term is both descriptive and common to the trade, more attention is to be paid to the uncommon element in the two words, and then there would not be any confusion.
The present Court engineered with the above precedents held that as both the medical preparations contains ‘Zinc’ and that the word is common to the trade and hence it is definitely publici juris. The Apex Laboratories have no right to claim ownership over the above word and as both the trade names contain the word ‘Zinc, it would be dangerous to split the word into two and grant injunction. Cardboard cartons were produced before the court to substantiate the claim that there were broad dissimilarities and the court was convinced to the same. The court ruled that ‘Zincovit’ and ‘Zinconia’ are phonetically dissimilar and the visual impressions are also different and hence there is least chance for causing confusion and there by the appeal is dismissed.
The rules regarding deceptive similarity take a special connotation with regard to pharmaceutical trade names. As the drugs are prescribed by registered medical practitioners and dispensed by qualified pharmacists, the chances of confusion arising out of two products being deceptively similar are considerably reduced. To this extent, some similarity is allowed. Further many names are common to the trade and hence fall under publici juris, but it is always a matter of concern for the judiciary, where to draw the line, as whose impression is to be weighed, literates’ or illiterate’s, in deciding trademarks cases. It is clear from the precedents that the matter is not yet crystallized, and judicial mind is required to be exercised in each case according to the facts and circumstances.