Madras High Court grants protection to Apex Laboratories for IP infringement of ZINCOVIT
Trademark protection is the most common method adopted by business entities, companies, and other corporations for their respective identification and recognition in the markets. The trademark laws were introduced and accepted by the nation-states to prevent any unfair competition and rivalry in the competitive field so that the companies’ official marks are protected. The first multilateral convention named Paris Convention gave recognition to the protection of trademark laws, which was then further adapted by the nation-states for protecting the goodwill and the protection of the trademarks. The trademark laws serve the essentials of preventing public confusion and deceit by distinguishing the marks and providing protection to the brand and business owner. However, disputes arise when the companies and other entities fraudulently use similar marks in the market, creating public confusion. The trademark laws come into play, as the statutes provide stringent remedies to the companies affected. Henceforth, let’s talk about registered trademarks in the industry of pharmaceuticals. They must be protected as it involves the main substantial question of the life of human beings and then the impact on such similar trademarks in the markets.
The present case of M/s Apex Laboratories Pvt. Ltd. v/s Axis Life Sciences will deal with the confusion created on the registered trademark ‘ZINCOVIT’ among the parties and the appropriate stance of the Madras High Court on the issue.
The plaintiffs, namely Apex Laboratories, are the company that has been registered in 1978 under the Companies Act for business related to pharmaceuticals and have since then adopted various trademarks. One such brand used by the plaintiffs is that of ‘ZINCOVIT.’ It is a multi-vitamin drug that helps develop immunity for children and adults. The plaintiff adopted the ‘ZINCOVIT’ mark in 1988 and has used it since 1990. They also hold valid registration in the mark with effect from 1988, subsisting until 2029. However, the trademark faced a dispute when the plaintiffs observed in July 2020 that the defendants, a pharmaceutical company named Axis Life, was also using the similar brand ‘ZENKO-VIT.’
SUBMISSIONS MADE BY THE PLAINTIFF:
The plaintiffs have filed a suit concerning the infringement and passing off their already registered trademark ‘ZINCOVIT’ and violation of the copyright for the artistic work on the following claims:
- Their registered trademark has unique packaging with distinctive characteristics having valid copyright registrations.
- They stated that the mark has copyright registrations for the seven color strip labels concerning ZINCOVIT SYRUP, ZINCOVIT DROPS, and ZINCOVIT TABLETS.
- The multi-vitamin has been used for 30 years and has acquired tremendous reputation and goodwill in the market, and the public at large is well aware of the vitamin.
- They have further claimed the mark to be identified as a well-known trademark and is widely used and recognized by the public of India.
- The mark has been advertised in various pharma guides and other modes, having the distinctive copyright for ‘ZINCOVIT’. Doctors and medical practitioners also recommend it.
They have further filed a civil suit under Order VII Rule 1 of CPC and Order IV Rule 1 O.S. Rules and under Sections 27, 28, 29, 134, and 135 of the Trademarks Act, 1999 and Sections 51, 55, and 62 of the Copyrights Act, 1957, with the purpose to restrain the defendants from using such a similar trademark.
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CONTENTIONS RAISED AGAINST THE PLAINTIFF
The learned counsel for the plaintiffs, Mr. R. Satish Kumar, has appropriately raised contention against the defendants on the use of their trademark, being similar to the already registered trademark of the plaintiffs on the following basis:
After the proper conduct of inquiries, the following have been revealed about the defendants:
- They are manufacturing and marketing the medicines with the trademark ‘ZENKO-VIT.’
- They have been using a similar seven-color label as that of the already registered trademark of the plaintiffs named ‘ZINCOVIT’ and copyrights.
- The products manufactured by the defendants are similar and identical to the products used by the plaintiffs, preferably being health products.
- The trademarks are phonetically identical, with only the change in the spellings of the marks.
- The carton of the defendants’ products is also identical to the seven-colour label and only has a different shape.
Henceforth, the plaintiffs have filed a civil suit for seeking a permanent injunction to restrain the defendants from using the products under the mark ‘ZENKO-VIT,’ which has resulted in the infringement and passing off under the Trademark Act,1999 and the Copyrights Act, 1957.
The issue between the parties concerns the trademark ‘ZINCOVIT’. The question of law before the Court is whether the defendants are at fault for infringing the plaintiff’s registered trademark ‘ZINCOVIT’, the copyrighted substances and packaging of ‘ZINCOVIT’ under Section 29 of the Trademarks Act, 1999 and Section 51 of the Copyright Act, 1957?
The Madras High Court stated that there had been an infringement of the copyright and trademark under the subsequent sections provided and passed the judgment against the defendants on the following basis:
- There is a similar phonetical characteristic between the marks,
- The product cartons that the defendants used were identical to that of the plaintiffs.
- The name of the defendants’ trademark was similar to the already registered trademarks of the plaintiffs.
Therefore, the Court held that they could substantially state that the defendants were already aware of the products used by the defendants and deliberately chose to copy the plaintiff’s copyright in the artistic work and trademark to damage the goodwill and reputation of the plaintiffs. Henceforth, if the defendants’ products are allowed to be used in the market, it can cause public confusion and deceit among the consumers.
In view of the same, the Court granted permanent injunction in the plaintiff’s favour and restrained the defendants from using the products under the name ‘ZENKO-VIT.’ In addition, the Court directed the defendants to surrender the documents bearing the impugned mark ‘ZENKO-VIT’ and pay a compensatory amount of Rs.50,000 to the plaintiffs because of the damage caused.
The Madras High Court has correctly pointed out in the present judgment that the defendants are liable for the infringement caused to the plaintiffs. Furthermore, the violation of trademarks concerning pharmaceutical products can have severe implications on the lives of human beings. Therefore, it is advised to the pharma companies, entities, and corporations not to adopt unfair means that would lead to public deceit and confusion, posing a threat to the lives of human beings.
Read the judgement here
 CS No. 254 of 2020
 No action for infringement of unregistered trademark
 Rights conferred by registration
 Infringement of registered trademarks
 Suit for infringement, etc., to be instituted before District Court
 Relief in suits for infringement or for passing off
 When Copyright infringed
 Civil remedies for infringement of copyright
 Jurisdiction of court over matters arising under this chapter
— Harmanpreet Kaur (Intern), Amity University, Kolkata
Disclaimer: This brief is intended to provide general guidance to the subject matter. It does not contain legal advice. For any specific advice/corrections, write to [email protected]
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