IPR Newsletter: STIMULIV vs. STIMULET – Bombay High Court mulls Infringing Similarity between Two Registered Marks-Sep 2021

Franco Indian Pharmaceuticals Pvt. Ltd VS Corona Remedies Pvt. Ltd.

FACTS OF THE CASE

Franco Indian Pharmaceuticals Pvt. Ltd (“Franco”) filed an infringement suit against Corona Remedies Pvt. Ltd. (“Corona”) for unauthorized passing-off of the Franco`s mark “STIMULIV” by open advertisement of the registered mark “STIMULET” by Corona.

Corona argued that the products of the parties are different as the one sold by Corona is an allopathic preparation for the treatment of breast cancer or infertility while the Franco’s formulation is Ayurvedic used as liver supplement. Additionally, while relying on Section 28 (3) of the Trade Marks Act, 1999, Corona argued that when there are two registered proprietors of trademarks which are identical, neither party shall have the exclusive right to use their mark against the other.

ANALYSIS AND JUDGEMENT

The Bombay High Court applied two distinct approaches while assessing the deceptive similarity:

• One with respect to the common perception upon seeing the marks; and

• Second based on Corona’s conduct.

On the first account, the Court noted that because of the niche segregation in goods of the parties, even the slightest amount of confusion is not permitted.

On the second account, the Court noted that moment Corona sought the registration of the mark “STIMULET” there was an implicit acceptance that the mark as a whole is distinctive and capable of being distinguished, therefore Corona could not have argued that the word “STIMUL” is common to the trade.

The Court observed that the two marks are deceptively similar. The Court observed that when there is a conflict between two registered proprietors, the evaluation of rights in common law was essential to enable the Court to determine whose rights were better and superior. In present case, the Court noted that the registration and the use of the Franco’s mark is greater by at least two decades coupled with the fact that its sales are incomparably higher than that of Corona. Thus, an injunction order was issued against Corona for usage of the mark ‘STIMULET’.

Importance of Trademark Registration

Trademark registration provides rights for the exclusive use, protection from unauthorised use and helps the business establishment in developing its goodwill. A registered trademark helps to avoid confusion in the minds of the customers with respect to the goods and services offered by various competitors. The Trademarks Act also provides protection from infringement of registered trademarks from unauthorised users. It aims to avoid confusion with respect to different trademarks of various business establishments in the minds of the customers.

“A trademark helps a business to develop its goodwill through creating a unique identity and is treated as an asset for the business”

CONCLUSION

In a growing economy with a vast number of businesses operating, each competing to maximize their market share, the customers often are not able to distinguish between different product offerings. In order to distinguish their products and services, business establishments use trademarks that are usually visual marks like colours, logo, symbols, etc and are used to indicate a particular business’s products and services.

“Trademarks allow businesses in creating a unique identity and also help the customers in making prudent decisions”.

With the substantial ease of doing business in India, there has been an increase in the number of start-up businesses registering their trademarks in the country which is evident from the increase in the number of applications for registration. The Trademark Act helps to simplify a customer’s decisions and promote healthy competition in the market. The increasing accessibility of internet and media makes it pertinent for business establishments to get their trademarks registered, in order to restrict any unauthorised or fraudulent use thereof thus it is important that such intellectual property rights are protected from any violation.