In the instant trademark infringement suit before the High Court of Delhi (”Court”), Modi MundiPharma Pvt. Ltd. & anr. (“Plaintiffs” collectively / “P1” and “P2” individually) filed an application seeking permission to challenge the validity of word and device trademarks for “WIN HEALTH PHARMA” registered by Win Health Pharma & anr. (“Defendants” collectively / “D1” and “D2” individually), under Section 124 of the Trade Marks Act, 1999.
Plaintiff’s contentions
P1 being the registered proprietor of “CONTIN” family of trademarks, sells Nitroglycerine Tablets under the mark “NITROCONTIN”. P1 submitted that D1 was manufacturing and selling identical tablets under the trademark “CARDIOCONTIN” in a similar white and pink trade dress, as used by P1.
P1’s NITROCONTIN tablets
Further, P1 alleged that D1’s mark “WIN HEALTH PHARMA” and domain name winhealthpharma.com were deceptively similar to P2’s registered trademarks “WIN-HEALTH CARE”, “WIN-MEDICARE”, “WIN-NATURALS”, etc.
The plaintiffs submitted that they are the prior adopters, users and registered proprietors of their trademarks. D1 subsequently adopted deceptively similar marks with the intention to ride on the reputation and goodwill of plaintiffs’ established brands.
Defendant’s contentions
The Defendants contended that they were the registered proprietors of “WIN HEALTH PHARMA” and were entitled to statutory protection under the Trade Marks Act. They argued that the plaintiffs’ trademark registrations did not give them the right to exclusive use of the words WIN or HEALTHCARE and that the domain name winhealthpharma.com was not deceptively similar the plaintiffs’ marks.
Given its market presence, D1 urged the Court to note that consumers associated them with the trade name and the domain name in question. The Defendants also contested the Plaintiff’s suit by asserting that the suit in question was belated since they were using the contentious trademarks since 2012.
Court’s analysis
The Court noted that it was only required to form a prima facie view regarding the tenability of the plea of invalidity of defendants’ registered mark. In view of the ex-parte injunction operating against the defendants, the Court held that the defendants’ marks were deceptively similar to the plaintiffs’ marks.
Observing that although D1’s trademarks were registered in class 35, its use was with respect to pharmaceutical products falling within class 5; the Court astutely held that consumer confusion between pharma products would be life threatening.
Conclusion
The Court framed issues pertaining to invalidity of defendants’ registered marks and disposed of the application accordingly.
Citation: Modi-Munipharma Pvt. Ltd. & anr. v. Win Health Pharma & anr. CS(COMM) 197/2022 & I.A. Nos. 4959/2022, 4960/2022, 21819/2022 & 4172/2023 (Delhi High Court, 13-11-2024). Available athttps://indiankanoon.org/doc/146648801/
Authored by Ms. Charishma, Associate, Innovation, Consulting & Strategy, BananaIP Counsels
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