28 January 2016

Trademarks – Composite marks to be compared as a whole

Considering the principles laid down by the Apex Court in the case of Cadila Healthcare v. Cadila Pharmaceuticals, the Delhi High Court has held that alleged use of the mark BECTODINE by the defendants subsequent to the documented use of the trademark BETADINE by the petitioner, by about 34 years, was fraught with malafide and dishonesty. Noticing that meticulous comparison of two marks, letter by letter and syllable by syllable is not the right practice, the court observed that all composite marks are to be compared as whole. The Court on 4-1-2016 in this regard noted that the degree of similarity between the two rival marks depends upon the first impression- whether visual or phonetic and in case, it is found that there is a risk of confusion which is the matter of public interest, it should not be authorised.
It was observed that competing marks BETADINE and BECTODINE when compared in its entirety are deceptively and confusingly similar. It was also held that in pharmaceutical cases the entire conduct of the defendants is to be examined, as far as the use of the mark and packaging thereof are concerned and that they are not allowed to split the mark for the purpose of comparison in the cases of infringement, as it is imperative to compare the impugned mark as a whole with the registered trademark of the plaintiff. Finally, noticing that colour scheme, get up, layout and combination of colours is covered under the action for passing of also, it was held that the defendant was guilty of infringement of copyright and passing off their goods as the goods of the plaintiff. The ad-interim injunction granted earlier was hence made absolute.


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