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For essential conditions of infringement to be fulfilled

The Plaintiff ("Ajanta") brought suit claiming protection over its mark FERANTA, used for L-Methyfolate Calcium, Pyridoxal 5'- Phosphate, Methylcobalamin, Ferrous Ascorbate and Zinc Sulphate pharmaceutical tablets. The Plaintiff said the mark then used by the 2nd Defendant ("Intas"), FERINTA, constituted infringement and passing off. The Hon’ble Court first granted an ex parte injunction on 11th August 2016 however on 1st September 2016, Intas agreed to discontinue using FERINTA. It said it would, instead, use the mark INTAS' FERINTAS. The Hon’ble Court allowed these two words to be used in any combination, or with some suitable additional word sufficient to sufficient that FERINTAS was by or came from Intas. Since then, Intas has been using its mark in that manner: INTAS' set above the word FERINTAS, with FER in black, and the rest in a rust red colour. FERINTAS is set in an oval or lozenge shaped device. Later, the counsel for the Plaintiff submitted that his instructions were to contest even this use as being impermissible.

The Hon’ble Court held that the marks, in his eyes, weren’t “deceptively similar” and hence, no other question was required to be considered. Now, one of the arguments put forth by the defendants (Intas), to show absence of infringement, attempted to show that the mark was named in accordance with standard industry practice. The standard industry practice of naming products, in the current case, involved combining a key ingredient’s name with that of the corporation. For example, FER (Iron) + INTAS.

Irrespective of whether a particular product is named according to industry practice or otherwise, a “deceptively similar” mark should be disallowed on account of its likelihood of causing confusion among consumers. Why should leeching off of goodwill be justified on the basis of “industry practice”?

It is to be noted that intention behind infringement in TM law is irrelevant and the irrelevance of the honesty in adoption. The “industry practice” argument seems to be attempting to make intentions relevant and therefore, when the overall defence of honest adoption has been rendered irrelevant, I don’t see why a subset of the argument should be accepted.

Despite the above mentioned holding, the judgment discussed the following also

Distinction between 29(1) and S.29(2) of the TM Act.

For essential conditions of infringement to be fulfilled, does the infringing good have to fall within the broad class under which the (allegedly) infringed good has been registered, or does it also have to fall within the specific sub-classification as well?

Appropriateness of Judges as determinants of “likelihood of confusion”.

Distinction between S.29 (1) and S. 29 (2)

The defendant used an elaborate argument to suggest that for infringement to be proven, not only “similarity” in the marks had to be shown, but also “likelihood of confusion”. Note at the outset itself, that this an inconsequential argument as “similarity” alone was not established.

Unfortunately, the Hon’ble Court doesn’t deal with this entire analysis, despite calling it the “central defence”, on account of there being no “similarity” in the first place. So, the question of whether the additional standard of “likelihood of confusion” arises or not was not gone into. Nevertheless, he says that, “probably”, the standard in both the provisions is that of “deceptive similarity”.

For essential conditions of infringement to be fulfilled, is it enough if the (allegedly) infringing good falls within the broad NICE Agreement class under which the (allegedly) infringed good has been registered, or does it also have to fall within the specific sub-classification as well?

“One must guard as much against an approach that is overbroad, and sweeps in all manner of goods easily distinguished, and one that is much too narrow” The take away from this analysis would be that a straight jacket formula has not been preferred. A straightforward formula that could have been adopted was deeming the sub-condition for infringement to have been fulfilled if the allegedly infringing goods fell within the overall NICE Agreement class, but it wasn’t adopted and a more flexible approach seems to have been preferred.