Trade mark similarity in medicines: whole-mark comparison, prior use and territorial business activity supported infringement and passing off

A trade mark dispute over AMLOBET and AMLOVATE/AMLOVATE-A discusses infringement and passing off in medicinal products, applying comparison of the marks as a whole and a stricter deception test because confusion in medicines may affect public health. The court also considered prior use, finding that earlier and continuous use supported the passing-off claim, and it accepted electronic documentary proof where the statutory certificate was not seriously challenged. Territorial jurisdiction was upheld on evidence of business activity in Delhi, including office operations, an agent, and sales there. The damages claim failed for lack of sufficient proof, although injunctive, accounting and costs relief followed.

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Issues: (i) Whether the defendants infringed the plaintiff's registered trade mark by using AMLOVATE/AMLOVATE-A; (ii) Whether the defendants passed off their goods as those of the plaintiff; (iii) Whether the Court had territorial jurisdiction; (iv) Whether the plaintiff was entitled to damages.

Issue (i): Whether the defendants infringed the plaintiff's registered trade mark by using AMLOVATE/AMLOVATE-A.

Analysis: The plaintiff's mark AMLOBET was a registered trade mark and the plaintiff was the registered proprietor entitled to the statutory protection attached to registration. The competing marks had to be compared as a whole. Although the prefix AMLO was common to trade and derived from the generic salt, the remaining features of the rival marks disclosed overall phonetic and structural resemblance. The marks were used for medicinal products for the same ailment, requiring a stricter standard because confusion in medicines may have serious consequences. On that basis, the Court found a likelihood of confusion in the mind of an average consumer with imperfect recollection.

Conclusion: The issue was decided in favour of the plaintiff and against the defendants.

Issue (ii): Whether the defendants passed off their goods as those of the plaintiff.

Analysis: The plaintiff proved prior and continuous commercial use of AMLOBET since 1997 through unchallenged sales material and supporting records, while the defendants' use of AMLOVATE commenced much later. The proximity of the marks, the common field of activity, and the surrounding circumstances supported an inference that the adoption of the rival mark was dishonest. The defendants' objection to the documentary proof based on electronic records was rejected because the statutory certificate under the evidence law was treated as an acceptable mode of proof absent any serious challenge to accuracy.

Conclusion: The issue was decided in favour of the plaintiff and against the defendants.

Issue (iii): Whether the Court had territorial jurisdiction.

Analysis: The plaintiff showed business activity within Delhi, including office operations, liaison work necessary for regulatory approvals, an agent based in Delhi, and sales in Delhi evidenced by invoices and lease documentation. These facts satisfied the requirement of carrying on business within the territorial limits of the Court for the purpose of the trade mark action.

Conclusion: The issue was decided in favour of the plaintiff and against the defendants.

Issue (iv): Whether the plaintiff was entitled to damages.

Analysis: The material on record was insufficient to justify the quantified claim for damages. The plaintiff therefore did not establish entitlement to monetary damages in the amount sought, although it remained entitled to costs and to other consequential reliefs flowing from the decree.

Conclusion: The issue was decided against the plaintiff.

Final Conclusion: The suit succeeded substantially on the claims for infringement, passing off, territorial jurisdiction and consequential relief, but the claim for damages was not proved. The plaintiff obtained injunctive and accounting relief with costs.

Ratio Decidendi: In an action involving medicinal products, rival marks must be judged as a whole on the test of deceptive similarity from the standpoint of an average consumer with imperfect recollection, and a stricter standard applies because confusion may endanger public health; prior use and territorial business activity, when proved, support passing off and jurisdiction.

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