On good days, even the wrong paths may lead one to the right destination, the recent case of Mankind Pharma Limited V. Tata Medical and Diagnostics Limited CS (COMM) 192/2022 is a classic example of the same.
Mankind Pharma Limited (Mankind) is one of the largest pharmaceutical companies in India with an extensive range of medicinal and pharmaceutical preparations. Mankind is the registered proprietor of the mark “OMIPURE” which was adopted in the year 2007. The said registration is under class 5 in respect of pharmaceutical and medicinal preparations. Mankind sold medicinal preparations under the mark OMIPURE and the formulations contain a chemical compound “Omeprazole” which is used as antacids, anti-reflux agents, and anti-ulcerants from 2007 till 2012. However, Mankind halted the sales for 9 years between 2012 to 2021, as there were no sales under the mark. The sales were resumed only in 2021-2022.
In January 2022, Mankind came across certain material on the internet, including advertisements and newspaper articles, that Tata intended to launch RT-PCR test kits under the mark ‘OMISURE’ for detection of the Omicron variant of Covid-19.
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Mankind sent a cease-and-desist notice to Tata However, Tata did not reply. Furthermore, Tata launched the RT-PCR testing kit under the trademark ‘OMISURE’.
Consequently, Mankind approached the Delhi High Court seeking a permanent injunction restraining Tata from using the mark OMISURE, and any other mark similar to Mankind’s registered mark in relation to any medical testing kits, and medicinal and pharmaceutical perpetrations.
The primary issues for consideration were,
1) Whether Tata had infringed Mankind’s mark Omipure?
2) Should the Court ask Tata’s mark Omisure to be taken down, keeping in mind the public demand?
Mankind claimed that apart from mere confusion on the part of the public, there was also a likelihood of `Blurring’ by association between the two products, in as much as the consumers could get an impression that the products were associated or related to each other.
As against this, Tata submitted that its trademark OMISURE was derived as a result of the Omicron variant of Covid-19 which the diagnostic kit detected and that diagnostic kits generally used the word ‘SURE’ as a suffix. Tata inter alia argued that Mankind’s registration of its mark OMIPURE in class 5 was in respect of `pharmaceutical and medicinal preparations’ and that testing kits were not specifically included. Tata further submitted that as per the NICE classification, such kits were covered in Class 10.
After hearing the arguments advanced by both parties, the Court differentiated between the two products and the marks as follows:
a) Mankind’s product is a capsule/tablet for gastro-resistant intestinal ailments which is sold across the counter and consumed directly by patients. Tata’s product is an RT-PCR test kit used for the detection of the omicron variant of the Covid-19 in human swab samples, only by laboratories. b) Mankind’s product is sold across the counter to the customers whereas Tata’s product is of a specialized nature used only in laboratories and is not sold over the counter to the general public. c) The fact that there have been no sales of Mankind’s product for a period of 9 years is quite telling inasmuch as dilution can only be of a mark which is in extensive use and can be protected for dissimilar goods. However, that was not the case with ‘OMIPURE’. On the other hand, the sales figures of OMISURE showed considerable volumes of high monetary value. Hence, the chances of blurring were negligible.
The Court considered the COVID -19 situation and stated Tata’s product being an RT-PCR test kit to test the Omicron variant of the Covid-19 is claimed to be a breakthrough innovation that has been developed in India. The sale of the test kit would be required to test samples for the omicron variant of Covid-19 on a day-to-day basis. Any interdicting by the Court, at this juncture, would be contrary to the interest of the patients and the public who are suffering from Covid-19. However, the Court observed that Tata ought to have “conducted a search of the Trademark Register prior to adopting the mark ‘OMISURE’”.
The Court agreed that phonetic similarity between these two marks was clearly perceptible, however, it refrained from granting an interim injunction due to the fact that the RT-PCR test kits known in the markets as ‘TATA MD CHECK RT-PCR OMISURE’ would not be confused in any manner with the ‘Omeprazole’ tablets or capsules sold under the mark ‘OMIPURE’.
