MANKIND PHARMA LIMITED…………Plaintiff

VS

TATA MEDICAL AND DIAGNOSTICS LIMITED……. Defendant

CS(COMM) 192/2022 & I.As. 4838-40/2022

Facts of the Case

The Plaintiff – Mankind Pharma Limited has filed the present suit seeking a permanent injunction for infringement of trademark, rendition of accounts, delivery up, damages, etc. The Plaintiff claims to be the 5th largest pharmaceutical company in India with a large range of medicinal and pharmaceutical preparations. In the present suit, Plaintiff seeks to protect its registered trademark ‘OMIPURE’ bearing registration no. 1588335 dated  8th August 2007, which was adopted by Plaintiff in the year 2007. The said registration is under class 5 in respect of pharmaceutical and medicinal preparations. The registration is valid and subsists in the name of Plaintiff. It is not in dispute that Plaintiff sold products under the trademark ‘OMIPURE’ from 2007 till 2012. However, it is also admitted by Plaintiff that there was a gap of 9 years between 2012 to 2021 when there was no sale under the mark ‘OMIPURE’. Post-2012, sales under the mark ‘OMIPURE’ have been resumed by Plaintiff only in 2021-2022. The medicinal preparations sold by Plaintiff under the mark ‘OMIPURE’ formulations contain the chemical compound “Omeprazole”, which is used as antacids, anti-reflux agents, and anti-ulcerants. The grievance of the Plaintiff in the present case is that in January 2022, it came across certain material on the internet, including advertisements and newspaper articles, that the Defendant- Tata Medical and Diagnostics Ltd. intends to launch RT-PCR test kits under the trademark ‘OMISURE’ for detection of the Omicron variant of Covid-19. The Plaintiff then addressed a cease-and-desist notice to the Defendant on 11th January 2021, which is stated to have been delivered on 13th January 2021, asking the Defendant to desist from using the mark ‘OMISURE’ and any other trademark which are similar to the Plaintiff’s mark ‘OMIPURE’ in relation to any medical testing kits, and medicinal and pharmaceutical perpetrations. However, no reply was received. After that, Defendant launched the RT-PCR testing kit under the trademark ‘OMISURE’. Mr. Sibal, ld. Sr. counsel appearing for the Plaintiff submits that ‘OMIPURE’ being a registered trademark under Class 5, the use of the mark.  ‘OMISURE’ for a diagnostic kit would be an infringement of Plaintiff’s registered trademark under Section 29(2) of the Act as also under Section 29(3) of the Trade Marks Act, 1999. He further submits that apart from mere confusion on the part of the public, there is also a likelihood of `Blurring’ by the association between the two products, inasmuch as the consuming public could get an impression that the product under the mark ‘OMISURE’ is associated or related to the Plaintiff.

Issues

1) whether the defendant has infringed the plaintiff’s mark omipure?

2) should the court ask the defendant’s mark omipure to be taken down, keeping in mind the public demand?

Contentions of Both Plaintiff and Respondent

Plaintiff

Mankind Pharma Limited has filed the present suit seeking a permanent injunction for infringement of trademark, rendition of accounts, delivery up, damages, etc. The Plaintiff claims to be the 5th largest pharmaceutical company in India with a large range of medicinal and pharmaceutical preparations. In the present suit, Plaintiff seeks to protect its registered trademark ‘OMIPURE’ bearing registration no. 1588335 dated  8th August 2007, which was adopted by Plaintiff in the year 2007. The said registration is under class 5 in respect of pharmaceutical and medicinal preparations. The registration is valid and subsists in the name of Plaintiff. It is not in dispute that Plaintiff sold products under the trademark ‘OMIPURE’ from 2007 till 2012. However, it is also admitted by Plaintiff that there was a gap of 9 years between 2012 to 2021 when there was no sale under the mark ‘OMIPURE’. Post-2012, sales under the mark ‘OMIPURE’ have been resumed by Plaintiff only in 2021-2022. The medicinal preparations sold by Plaintiff under the mark ‘OMIPURE’ formulations contain the chemical compound “Omeprazole”, which is used as antacids, anti-reflux agents, and anti-ulcerants. The grievance of the Plaintiff in the present case is that in January 2022, it came across certain material on the internet, including advertisements and newspaper articles, that the Defendant- Tata Medical and Diagnostics Ltd. intends to launch RT-PCR test kits under the trademark ‘OMISURE’ for detection of the Omicron variant of Covid-19. The Plaintiff then addressed a cease-and-desist notice to the Defendant on 11th January 2021, which is stated to have been delivered on 13th January 2021, asking the Defendant to desist from using the mark ‘OMISURE’ and any other trademark which are similar to the Plaintiff’s mark ‘OMIPURE’ in relation to any medical testing kits, and medicinal and pharmaceutical perpetrations. However, no reply was received.

After that, Defendant launched the RT-PCR testing kit under the trademark ‘OMISURE’. Mr. Sibal, ld. Sr. counsel appearing for the Plaintiff submits that ‘OMIPURE’ being a registered trademark under Class 5, the use of the mark.  ‘OMISURE’ for a diagnostic kit would be an infringement of Plaintiff’s registered trademark under Section 29(2) of the Act as also under Section 29(3) of the Trade Marks Act, 1999. He further submits that apart from mere confusion on the part of the public, there is also a likelihood of `Blurring’ by the association between the two products, inasmuch as the consuming public could get an impression that the product under the mark ‘OMISURE’ is associated or related to the Plaintiff.  It is submitted by Mr Sibal that the application of the test laid down in the judgment of the Supreme Court in Cadila Healthcare Ltd. v.  Cadila Pharmaceutical Ltd. 2001 (5) SCC 73 would clearly lead to a conclusion that the Defendant’s product/mark ‘OMISURE’ is likely to be confused with the mark ‘OMIPURE’ of the Plaintiff. Reliance is also placed upon Caterpillar Inc. vs Mehtab Ahmed and Ors. 99 (2002) DLT 678 to argue the point of the likelihood of blurring by association.

Defendant

Defendant submits that the trademark of Defendant ‘OMISURE’ is derived from the Omicron variant of Covid-19 that the diagnostic kit detects. Diagnostic kits generally use the word ‘SURE’ as a suffix. The RT-PCR test kit has been launched by Defendant, which is a well-known company, Tata Medical and Diagnostics Ltd., The product was approved by the ICMR on 28th December 2021 with the name ‘TATA MD CHECK RTPCR OMISURE’. He submits that the product packaging has also been approved. He seeks to refute the issue of confusion raised by the

Plaintiff by arguing that the said test kit is being used only at the point of first-line testing, i.e., laboratories and is not sold over the counter openly to customers. Mr. Nayar, ld. Sr. counsel also emphasises that the sale figures of ‘OMISURE’ is Rs.21.38 crores in the last two months, since its launch. On the other hand, Plaintiff’s sales figure for the product under the mark ‘OMIPURE’ is only Rs.1.8 crores for 2021-2022. It is his submission that Plaintiff’s mark does not enjoy any goodwill as there was a nine-year gap between 2012 to 2021 during which period no product of the Plaintiff was sold under the mark ‘OMIPURE’. 15. Mr Nayar submits that the mark ‘TATA MD CHECK RT-PCR OMISURE’ has to be read together, and the word ‘OMISURE’ cannot be read in isolation. Further, there cannot be any monopoly over the word ‘OMI’, as the term ‘OMI’ has been derived from Omicron in the present case. He finally submits that Defendant has been supplying a large volume of test kits across the country and the WHO. Thus, in the public interest, the sale of Defendant’s product under the mark ‘OMISURE’ ought not to be restrained. Finally, the test laid down in Cadila v. Cadila (supra) is placed before the Court to argue that the present case would not be a fit case for grant of interim injunction.

Broad Difference Between the Trademarks of Both Plaintiff and Defendant

a) The Plaintiff’s product is a capsule/tablet for gastro-resistant intestinal ailments, which is sold across the counter and consumed directly by patients. But the Defendant’s product is an RT-PCR test kit used for the detection of the omicron variant of the Covid-19 in human swab samples only by laboratories.

b) The Plaintiff’s product is sold across the counter to the customers, whereas the Defendant’s product is of a specialised nature used only in laboratories and is not sold over the counter to the general public

c) Insofar as the goodwill and association argument raised by the Plaintiff is concerned, the fact that there have been no sales for a period of 9 years is quite telling inasmuch as dilution can only be of a mark which is in extensive use and can be protected for dissimilar goods. However, that is not the case with ‘OMIPURE’. The sale figures of the Defendant in the last two months or so show considerable volumes of high monetary value. The chances of blurring are thus negligible

Rule of Law

 A perusal of Section 29(2) of the Act shows that Section 29(2)(a),(b),(c) of the Act stipulates different varieties of confusion that can take place under Section 29(2) of the Act. If the trademarks are identical and the goods/services covered by the registered trademarks are also identical, then there is deemed confusion as per section 29(3) of the Act. However, in the present case, perusal of the two marks in question, i.e., ‘OMIPURE’ and ‘OMISURE’, shows that the marks are not identical. Moreover, pharmaceutical and medical preparations for which the Plaintiff’s mark is registered are not the product for which the Defendant is using the mark, i.e., diagnostic kits. Thus, this would not be a case of identifying marks or identical goods.

The Court decision 

The Defendant’s product being an RT-PCR test kit to test the Omicron variant of the Covid-19 is claimed to be a breakthrough innovation that has been developed in India. The sale of the test kit would be required to test samples for the omicron variant of Covid-19 on a day-to-day basis. Any interdicting by the Court, at this stage, would be contrary to the interest of the patients and the public who are suffering from Covid-19. This is, however, not to say that Defendant ought not to have conducted a search of the Trademark Register prior to adopting the mark ‘OMISURE’. Such a search ideally ought to have been undertaken. But the factum of the search having not been conducted cannot automatically result in an injunction. Since the trademark ‘OMISURE’ is now in use in full form as ‘TATA MD CHECK RT-PCR OMISURE’. Due to the factors set out above, this Court is of the opinion that the sale of the test kit for the purpose of diagnosis of the omicron variant of Covid-19 would not cause any confusion in the market or even association between the Defendant’s product and the Plaintiff’s mark.  This Court cannot stop but opine that Covid-19 is omnipresent, and Courts are no exception. Disputes relating to trademarks and patents in respect of Covid-19 products have reached the doors of courts. In such cases, the Court has to strike a balance between the rights of the individual and the public interest and apply the law to the facts and circumstances of each case. While the phonetic similarities between these two marks are clearly perceptible, the present case would not be one for an ad-interim injunction. This is due to the fact that the RT-PCR test kits ‘TATA MD CHECK RT-PCR OMISURE’ would not be confused in any manner with the ‘Omeprazole’ tablets or capsules of the Plaintiff sold under the mark ‘OMIPURE’. 

In the overall facts and circumstances of the case, the following directions are issued:

I)Proper accounts shall be maintained by the Defendant of the sale of ‘TATA MD CHECK RT-PCR OMISURE’ test kits, and the same shall be filed bi-annually by the Defendant in the form of an affidavit of a senior official duly authorised by a Board Resolution.

II) If Defendant intends to launch any RTPCR test kits or any other diagnostic kits for use in households and for sale across the counter in future, Defendant will ensure that no mark which is identical similar/deceptively similar to ‘OMIPURE’ is used by it.

III)The test kits under the name ‘TATA MD CHECK RT-PCR OMISURE’ may continue to be manufactured and sold subject to the above conditions.

Disclaimer: The present article intends to provide general guidance on the subject, and you can also consult us in your specific case.

Author

  • Title

    Shreeja Shyama Praharaj is a law graduate from KIIT School of Law with intellectual property rights as my specialization. Currently, she is pursuing a master's From the School of Law, Renaissance University, Indore, Madhya Pradesh. She is looking forward to building a growthful career in Intellectual Property law.