When I first came across the medicines SIZOPIN and SYZOPIN, I honestly thought it might have just been a typographical error and that they originate from the same source. Much to my astonishment, they are in fact two different drugs used for treating almost the similar thing. So naturally there had to be a suit for infringement by the one against the other.

Interestingly, in this instance, the defendant using the mark SYZOPIN from 2002 had filed a rectification petition against the plaintiff’s mark SIZOPIN who had been using it since 1995. A rectification petition can be filed on grounds of non-use and a cancellation petition can be filed on the ground of lack of bonafide intention of use by the applicant (article on rectification and cancellation). Thereafter, the plaintiff filed the present case of infringement against the defendant and relied on the following grounds:

1.Phonetic similarity

That the marks are deceptively similar to each other on account of it being phonetically similar. In my opinion, and going by common sense and logic, the marks are quite obviously phonetically similar and any person even if he has above average intelligence would get confused between SIZOPIN and SYZOPIN. More so, since the drugs are over the counter medicines, any one would be bound to get confused.

2.Prior and continuous user

This is one of the most common line of arguments that people in India take because India is a Country where cases of infringement and passing off are decided on the basis of first to use as opposed to first to file. So naturally there is a lot of weightage given to who the prior user of a mark is. Consequently, the plaintiff also relied heavily on it being the prior user to obtain an injunction against the defendant.

The plaintiff also produced many documents as evidence in support of its argument to show that they have been using the mark since 1995. The evidence included things like invoice copies and medical journals and like things.

3.Association between the parties

The plaintiff also contended that the defendant is deliberately and with a mala fide intention to create an impression in the minds of the public that their products also emanate from the plaintiff’s group of companies is using the trademark SYZOPIN. They went on to argue that an ordinary man with average memory and imperfect recollection would not be in a position to differentiate between two phonetically identical marks and there is every likelihood that the defendant’s mark being passed off as and for the plaintiff’s well renowned mark in view of phonetic similarity.

On the other hand, the defendants relied on the following arguments to establish that there is no prima facie case for granting an injunction against them;

1.Coined term

That they have coined the term SYZOPIN by prefixing the term “SYZO” from the defendant’s similar sounding of trade name PSYCO [PSYCO REMEDIES] and suffixing “PIN” from the generic drug name CLOZAPINE which was the main ingredient of their product;

2.Common to trade

This is one line of argument that works more against you than in your favour as in essence you are conceding to the fact that even you do not have exclusive rights to the said trademark which will not be helpful if you want to file an infringement suit later on against another person who is infringing on your goods. The defendants contended that the syllable SIZO is very common to the pharmaceutical trade and several marks have been so registered.

3.Difference in packaging

Since both the drugs are Schedule H drugs which can be bought only if prescribed by a registered medical practitioner, there will not be any confusion caused. Further, they argued that there was a substantial difference in the writing style and packaging of the products

4.Delay or Laches and acquiescence?

Probably one of the most resorted to defences is that of delay on part of the plaintiff in filing the suit or even better, the plaintiff had acquiesced its right by not taking any action against. For this contention, the defendant relied on Medical Journals from 2008 to evidence that both the marks were present in the journals to show that the plaintiff had the knowledge about the mark and sat on it without taking any action against the defendants.

Sizopin and syzopin – Acquiescence makes no sense?

Despite it being a prima facie case of infringement, the Court took into consideration the fact that the plaintiff did not take any action prior to the defendant filing a rectification application against the plaintiff. The Judge also briefly distinguished between delay in taking action and the plaintiff having acquiesced its rights. Delay in taking an action is basically when the plaintiff did not have the knowledge of the defendant’s products being in existence and thus was delayed in taking action. Acquiescence on the other hand essentially means that you passively consent to some other person using your registered trademark despite having the knowledge that someone else is using your trademark.

In order to come to the conclusion that the plaintiff had in fact acquiesced its right, the Court looked into the evidence like the Medical Journals as produced by the plaintiff and held that since both the marks were published since 2008, the plaintiff now cannot say that it wasn’t aware of existence of the defendant’s mark as it clearly was. As mentioned in one of my earlier articles on acquiescence, maybe it is time to wake up before it gets too late!

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