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Court Case Bulletin (CCB): Minimal Addition Of Words In Usage Doesn’t Affect The Phonetic Similarity Of Two Marks
Author: Former Intern - Gayathri Devi P
In the matter of M/s.Apex Laboratories Pvt.Ltd. v Axis Life sciences, [Civil Suit No. 254 of 2020], a single judge bench of the Madras High Court [N. Anand Vekatesh, J.], on January 3, 2021, held that when there is phonetic similarity between two marks, addition of one or two words to the infringing mark will not render sufficient dissimilarity from the registered trademark and will amount to infringement of that trade mark.
Section 29(9) of the Trade Marks Act, 1999 states that “where the distinctive elements of a registered trade mark consist of or include words, the trade mark may be infringed by the spoken use of those words…and reference in this section to the use of a mark shall be construed accordingly.” The question that arises here is whether the ‘spoken use of those words’ apply only to marks that contain the same words as the registered trademark or also to such marks that appear to be dissimilar on account of phonetics by way of addition of syllables/words to manipulate the registered mark ?
In the present case, the plaintiff submitted that its registered trademark “ZINCOVIT”, adopted in 1988, has become a well-known mark for health supplements The plaintiff submitted that the defendant has adopted a similar trademark “ZENKO-VIT” and has been using this mark for identical products i.e., health supplements. Further, it submitted that both marks are phonetically identical with only a change in the syllables and the defendant’s usage of a phonetically similar mark amounts to passing off. The defendant did not defend the plaintiff’s claims.
The court while contemplating the phonetic similarity between the marks observed that “adding of one or two words in a mark does not make any difference as far as phonetic similarity is concerned” and held that “A careful scrutiny of the impugned mark of the defendant “ZENKO-VIT” shows that the mark is deceptively and phonetically similar to the plaintiff’s registered trade mark “ZINCOVIT”…… any confusion in the marks relating to pharmaceutical preparations can have serious consequences and it will go against public interest. The defendant’s mark is phonetically, visually and structurally identical to the plaintiff’s trade mark and it is bound to cause confusion as both the products will be made available through the same trade channels and to the same class of consumers.” Accordingly, the court issued a permanent injunction against the defendant and restrained it from infringing or passing off the plaintiff’s registered trademark “ZINCOVIT” in any manner.