SIMILAR PREFIX CASES

Astrazeneca Uk Ltd. And Anr. vs Orchid Chemicals And ... on 16 May, 2006
Equivalent citations: 2006 (32) PTC 733 Del
Marks in question: Meromer and Meronem
The allegation of the plaintiff is that defendant's mark is identical or nearly resembles the
mark of the plaintiff. If the marks of plaintiffs and defendant are identical or resemble and
both are registered, then both of them are not entitled to exclusive right to use any of the
registered trademark against each other. Section 28 of the Trade Marks Act,1999 is as under:
28. Rights conferred by registration.--
(1) Subject to the other provisions of this Act, the registration of a trade mark shall, if valid,
give to the registered proprietor of the trade mark the exclusive right to the use of the trade
mark in relation to the goods or services in respect of which the trade mark is registered and
to obtain relief in respect of infringement of the trade mark in the manner provided by this
Act.
(2) The exclusive right to the use of a trade mark given under Sub-section (I) shall be subject
to any conditions and limitations to which the registration is subject.
(3) Where two or more persons are registered proprietors of trade marks, which are identical
with or nearly resemble each other, the exclusive right to the use of any of those trade marks
shall not (except so far as their respective rights are subject to any conditions or limitations
entered on the register) be deemed to have been acquired by any one of those persons as
against any other of those persons merely by registration of the trade marks but each of those
persons has otherwise the same rights as against other persons (not being registered users
using by way of permitted use) as he would have if he were the sole registered proprietor.
The plaintiffs and the defendant are marketing the molecule `meropenem' and the only
difference between the two products is the shelf life and of course the price as the drug
marketed by the defendant is much cheaper. Relying on Section 144 of the Act it was
contended that trade practices have also to be taken into consideration. Referring to added
material it was pleaded that there is no likelihood of passing off. According to defendant
marks `Meronem' and 'Meromer' are not phonetically, visually or in any other manner
deceptively similar to each other.
The non descriptive words `NEM' and ' MER' in two trademarks of the plaintiffs and defendant
cannot be slurred over in pronunciation and there is no reasonable possibility of confusion. As
already observed in order to assess the similarity and dissimilarity in words, not only the letters
but their placement is also relevant and material. In the circumstances, the submission of the
plaintiffs that in two non-descriptive words `NEM' and `MER' the difference is in letters `N' and
`R' and the letters `E' and `M' are common, does not reflect similarities because the placement of
letters has not been considered. In my view the non descriptive words `NEM' and 'MER` are
distinctly dissimilar.
Macleods Pharmaceuticals Ltd vs Swisskem Healthcare And Anr on 2 July, 2019
The present Suit is filed by the Plaintiff against the Defendants for infringement of the Plaintiff's
registered trade marks "PANDERM" and "PANDERM +" bearing registration Nos.1309828 and
1849407 respectively both in Class 5 and passing off. The Plaintiff has inter alia sought a
permanent order and injunction against the Defendant from using the trade mark POLYDERM +,
which according to the Plaintiff is deceptively similar to the Plaintiff's registered trade marks.
Even in the present case the Plaintiff, and possibly the Defendants have derived their respective
mark PANDERM / PANDERM+ and POLYDERM+ for their dermatological product from the
stream of science to which the product belongs viz. DERMATOGLOGY. The marks involved in
the present case are word marks. There is no visual or structural similarity in the Plaintiff's
registered trade mark PANDERM and the Defendants' trade mark POLYDERM. Keeping aside
the descriptive suffix DERM which is indicative of a dermatological product, the only similarity
between the rival trade marks is the first letter in both marks i.e. "P". It is neither the Plaintiff's
case, nor would it be fair to allow the Plaintiff to monopolize the suffix DERM in respect of
pharmaceutical preparations. In this respect it would be important to consider the practical
aspects to ascertain the possibility of confusion. As this Court has held before in cases such as
the present one where a part of the rival mark is descriptive, greater regard must be paid to the
uncommon element in the two marks, which in this case are PAN and POLY. The Plaintiff's
trade mark consists of two Nitin 30 / 37 COMIP-32-2011-F.doc syllables as against the
Defendants' trade mark which consists of three syllables. In my view, the first syllables of the
rival wordmarks PANDERM and POLYDERM are sufficiently dissimilar to rule out any chance
of confusion. I am of the opinion that an average consumer is unlikely to be confused between
the rival trade marks since the pronunciation of the rival marks are easily distinguishable.
As already observed, earlier my first impression was and still remains that there is no phonetic or
visual similarity between the rival trade marks PANDERM and POLYDERM+.