The Gujarat High Court in a recent case has reaffirmed that trade channels, class of purchasers, the extent of reputation of the parties and all the other relevant factors play a crucial role in determining whether there has been an infringement or not. The decision was the result of taking into consideration the following facts;

The plaintiff company, Corona Remedies Private Limited, is a very prominent name in the business of manufacturing and marketing pharmaceutical and other drugs. In connection with this, they have a registered trademark for CORONA HC-NIC REMEDIES. This is the mark that the plaintiff’s claim that the defendant is infringing;

This mark has been applied for medicinal and pharmaceuticals preparations. On the other hand, the defendant is USV Limited, a public limited company, who is also engaged in similar line of business. However, they were not selling any medicines or drugs under the name “Corona” but had recently established a new sales division under the trade name “Corona”. For the purpose of recruiting people, the defendant company had posted advertisements in local newspapers. This is how the plaintiffs came across the use of their mark and filed the said suit along with an interim application for injunction which was rejected by the City Civil Court.

Plaintiff says that:

Their mark has earned reputation and goodwill in the market since 2000 and are thus entitled to seek protection against any infringement of the trademark. They also contended that the defendant had adopted a deceptively similar mark in a bid to cash in on their reputation and goodwill.

Defendant says that:

The word “Corona” is a common to trade and also happens to be a generic name. No one can claim exclusive rights to such a generic name. The defendant further clarified that there will not be any stripes of medicines on which the defendant will use the word but is only what its sales division will go by, a division engaged for promotion of the medicines relating to coronary diseases by way of distributing brochures and pamphlets. The defendant further stated that there were about 50 companies which exist on the Register of companies with the word “Corona” present in its trade name. The defendant also clarified that their audience are the highly qualified and educated doctors who may prescribe the company’s drugs to their patients and not the patients themselves. In other words, it is not something that can be purchased over the counter like the plaintiff’s medicines.

The Court says that:

The class of purchasers and the trading channels were very different and thereby there will not be any confusion that can possibly arise. An excerpt from the judgement which lays stress on how the trade channel and class of purchasers are important factors to consider is reproduced here:

The brochures of the Defendant containing the word CORONA is supplied principally to the doctors who in turn may be persuaded to subscribe such drugs in appropriate cases if the consulting doctor considers the drug appropriate and the product of the Defendant Company reliable. The end consumers may be the purchasers of the drugs on the basis of the prescription drawn by the doctors, nevertheless the brochure is for the consumption of the consultant who by necessity would be a highly educated and qualified professional.

Also, the Court compared the two relative marks and held that the Plaintiff’s mark contain a certain design which uses the word CORONA besides word REMEDIES and the Defendant’s mark is USV Limited with the word CORONA written besides it. Moreover, the defendant had also clarified that they will not be using the word on any of their medicines.

The court while dismissing the appeal held that there was no such similarity between the Defendant’s mark with that of the Plaintiff’s registered trademark as to create confusion or deception amongst the trade. So going by this judgement, if one can prove that the class of consumers and trading channel are different then they might just get away with the infringement!

This article has been authored by Durga Bhatt, an IP Law practitioner.

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