ALDIGESIC vs. ALGESIC – deceptively similarity of trademarks

Alkem Laboratories granted injunction in trademark infringement of ALDIGESIC

– VISHISHTA MISHRA : student, University of Petroleum and Energy Studies, Dehradun

In this case, the plaintiff alleged infringement of their registered trademark “ALDIGESIC P,” under which they manufacture and market tablets containing Aceclofenac and Paracetamol. The plaintiff claims to have adopted the mark “ALDIGESIC” in 1999 and is continuously and uninterruptedly using the mark since 2010.

The defendant is also manufacturing and marketing its product, containing Aceclofenac and Paracetamol, under the brand name of “ALGESIC-P,” again in 5 x 3 blister packs of peach color tablets. The visual similarity in the products of the plaintiff and the defendant is evident.

As such, the plaintiff alleges that the defendant has not only infringed the plaintiff’s trademark but has the unique trade dress associated with the tablets. The defendant’s mark, admittedly, is unregistered as of date. In these circumstances, the plaintiff has sought an injunction against the defendant for manufacturing or marketing its Aceclofenac and Paracetamol tablets in packages similar to those of the plaintiff.

The defendant argued, that the sole ground for opposing the plaintiff’s injunction plea is that their concerned mark is invalid on the ground that it is merely a variant of the generic expression ‘Analgesic’ as the constituents of the product are both analgesics. He further submitted that the plaintiff’s registration stands opposed, among other things, by a German company. It was stated that registration is prima facie evidence of validity, but not conclusive even at this stage.

ORDER:

The mark “ALGESIC-P” figures on the defendant’s packaging are visually similar to the plaintiffs. A clear-cut case of confusing and deceptive similarity, therefore, exists. There is also, prima facie, every likelihood of an unwary customer of imperfect recollection and average intelligence, who comes across the defendant’s products after having purchased the plaintiff’s product at an earlier point of time, assuming that the product is the same. The similarity in marks and trade dress would also, prima facie, lead such an unwary customer to presume an association between the defendant’s product and the plaintiff.

As the plaintiff’s mark is already registered, there is no ground for the defendant to plead invalidity of the plaintiff’s trademark under Section 31 of the Act. In case the plaintiff’s mark is to be treated as invalid, as being descriptive, that argument would apply even with greater force, in the case of the defendant, whose mark “ALGESIC-P” bears more remarkable similarity to the word “analgesic” than the mark of the plaintiff.

Justice C. Hari Shankar of the Hon’ble Delhi High Court granted the ad-interim injunction as prayed by the plaintiff. However, the Court granted the defendants a week to remove its products from online platforms and sale thereof. It is made clear that no further packs of the product ‘ALGESIC – P’ and packages deceptively similar to the trademark/ trade dress of the plaintiff’s product/mark ‘ALDIGESIC’ or ‘ALDIGESIC P’ shall be released by the defendants in the market till the next date of hearing.

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