Sanofi & Anr. v. Zanofi Pharmaceutical Pvt. Ltd.

A significant pharmaceutical trademark case protecting the well-known “SANOFI” mark against the deceptively similar “ZANOFI” mark.

Short Description About the Case

Sanofi, proprietor of the registered “SANOFI” trademark, challenged the defendant's use of “ZANOFI” as both a corporate name and pharmaceutical trademark. The Delhi High Court found the marks structurally and phonetically similar and granted permanent protection to Sanofi against the defendant's use.

Facts

The plaintiffs were the proprietors of several registered SANOFI trademarks covering pharmaceutical, medical and related goods and services.

The plaintiffs had also established substantial reputation and goodwill in the SANOFI mark and operated websites and domain names incorporating the mark.

The defendant adopted “ZANOFI” as part of its corporate name, Zanofi Pharmaceutical Pvt. Ltd., and also used the mark for pharmaceutical products.

Sanofi contended that SANOFI and ZANOFI were deceptively similar and that the defendant's use was likely to cause confusion, particularly in the pharmaceutical market where confusion could have serious consequences.

Findings

The Court found clear phonetic and structural similarity between SANOFI and ZANOFI.

The Court specifically noted that because the dispute concerned pharmaceutical products, a stricter approach was appropriate when assessing the possibility of confusion.

The Court held that a prima facie case of trademark infringement and passing off had been established.

The defendant was also required to take steps for changing its corporate name so that the infringing “ZANOFI” element was removed.

Suggestion

This case is highly useful in matters involving:

• Pharmaceutical trademarks

• Phonetic similarity

• Deceptive similarity

• Trademark infringement

• Passing off

• Corporate-name infringement

• Domain-name protection

It is particularly useful when arguing that even a small alteration in a pharmaceutical trademark can create a serious likelihood of confusion.

Judgment

The Court ultimately passed a permanent injunction restraining the defendant from using “ZANOFI” or any mark deceptively similar to “SANOFI”, including as a trademark, corporate name, domain name or online identifier.