Wings Pharmaceuticals P. Ltd. v. Khatri Healthcare P. Ltd. & Anr.
“Similarity in the mark, packaging and overall trade presentation can collectively establish a strong case of trademark infringement and passing off.”
Court: Delhi High Court
Case No.: CS(COMM) 17/2024
Date: 4 March 2024
Judge: Hon’ble Mr. Justice Sanjeev Narula
Short Description About the Case
The plaintiff, Wings Pharmaceuticals P. Ltd., was engaged in the manufacture and sale of pharmaceutical products and was using the mark “जूँ नाशक / JU NASHAK” in respect of an anti-lice cream shampoo. The defendants adopted the mark “JUNASHAK” for a similar pharmaceutical product and used packaging having a similar overall appearance.
The plaintiff approached the Delhi High Court alleging trademark infringement, copyright infringement in the packaging/trade dress and passing off. The Court examined not merely the individual word marks but also the manner in which the competing products were presented to consumers.
Facts of the Case
The plaintiff was using the mark “जूँ नाशक / JU NASHAK” for its anti-lice cream shampoo. The product was marketed in a distinctive orange and white carton with particular artistic elements and trade presentation.
The defendants subsequently marketed a similar anti-lice product under the mark “JUNASHAK”.
According to the plaintiff, the defendant's mark was deceptively similar to the plaintiff's JU NASHAK mark. The plaintiff further alleged that the defendant had copied the essential features of its packaging, including the colour combination, arrangement and overall get-up of the carton.
The plaintiff therefore claimed infringement of its trademark and copyright, apart from passing off, and sought an injunction against the defendants.
Findings of the Court
The Court considered the competing marks as well as the overall appearance of the products.
The Court recognised that the comparison between competing marks cannot always be restricted to a mere word-by-word examination. The manner in which a mark is presented on the product and the surrounding trade dress may also become relevant in determining whether consumers are likely to be deceived or confused.
The similarity between “JU NASHAK” and “JUNASHAK”, particularly when used for similar anti-lice products, was an important factor.
The Court also considered the similarity in packaging and trade dress. The combination of the impugned mark with the overall presentation of the defendant's product strengthened the plaintiff's case of infringement and passing off.
The Court therefore granted protection to the plaintiff at the interim stage against the defendants' use of the impugned mark and packaging.
Suggestion / Practical Importance
This case is particularly useful when dealing with pharmaceutical or FMCG products where the competing products may have similarity not only in the word mark, but also in their packaging, colour combination, artistic work, layout and overall trade dress.
For trademark practice, the case can be relied upon to demonstrate that the Court may examine the overall commercial impression created by a product rather than mechanically comparing only the spelling of two marks.
It is also useful in matters where a defendant attempts to argue that the spelling of its mark is technically different, while the phonetic impression and overall presentation remain substantially similar.
Judgment
The Delhi High Court granted interim protection in favour of the plaintiff and restrained the defendants from using the impugned mark “JUNASHAK” and the deceptively similar packaging/trade dress complained of by the plaintiff.
The decision demonstrates the importance of considering phonetic similarity, nature of goods, packaging and overall trade presentation together while assessing trademark infringement and passing off.
