Introduction:

The Bombay High Court recently delivered a landmark judgment in a commercial intellectual property dispute between IPCA Laboratories Limited and Anrose Pharma, highlighting the critical importance of trademark protection in the pharmaceutical sector. IPCA Laboratories Limited, a well-established pharmaceutical company, filed a commercial suit seeking permanent injunction against Anrose Pharma for adopting and using the mark ‘ZEROVOL-P,’ which the plaintiff alleged infringed its registered trademark ‘ZERODOL’ and amounted to passing off. The plaintiff had created and adopted the mark ‘ZERODOL’ in 1992 and had been continuously using it since 2003 for pain relief and related pharmaceutical products. In October 2013, the plaintiff discovered that the defendant was manufacturing and marketing a product under the mark ‘ZEROVOL-P,’ and procured invoices and evidence substantiating the sale, which were placed on record before the High Court. Despite service of summons and adequate notice, Anrose Pharma failed to appear or file a written statement, resulting in the proceedings continuing as an undefended matter. Justice Arif S. Doctor presided over the matter, focusing on whether the defendant’s adoption of the impugned mark amounted to statutory infringement under the Trade Marks Act and constituted passing off, while also assessing the public interest implications, given that both marks related to medicinal products, which necessitate a higher threshold for preventing likelihood of confusion to protect consumers’ health and safety.

Arguments:

The plaintiff argued that the marks ‘ZERODOL’ and ‘ZEROVOL-P’ were deceptively similar both phonetically and visually, and that the dominant and essential features of the marks were sufficiently close to create confusion among consumers of average intelligence and imperfect recollection. Emphasizing the context of medicinal products, the plaintiff contended that even a minimal likelihood of confusion could pose a serious risk to public health, making strict protection imperative. It was submitted that the defendant had no justifiable or bona fide reason for adopting the impugned mark and that there was no evidence of honest concurrent use, thereby establishing deliberate infringement and passing off. The plaintiff also pointed out that the defendant’s absence from the proceedings, despite being duly served, indicated willful non-compliance and bad faith. The legal principles governing deceptive similarity were applied, highlighting that trademarks must be compared as a whole, considering visual, phonetic, and structural elements, and that the potential for public confusion, especially in pharmaceuticals, weighs heavily in favor of the prior mark-holder. Conversely, although the defendant did not appear or contest the matter, the law recognizes that defendants may potentially argue fair use, independent creation, or absence of likelihood of confusion; however, in this case, none of these defenses were available or pleaded. The absence of a contesting party effectively shifted the burden to the defendant to justify its conduct, and failure to appear reinforced the plaintiff’s claims of infringement and dishonest adoption. Additionally, while the plaintiff sought damages, it acknowledged the difficulty in quantifying actual financial loss without specific evidence, but relied on Section 35 of the Code of Civil Procedure, as amended by the Commercial Courts Act, which mandates award of realistic and deterrent costs in commercial IP disputes, particularly when public safety is implicated.

Court’s Judgment:

After examining the evidence and rival marks, the Court concluded that Anrose Pharma’s use of ‘ZEROVOL-P’ constituted clear infringement and passing off of IPCA Laboratories’ registered mark ‘ZERODOL.’ The Court emphasized that in cases involving medicinal products, even a mere likelihood of confusion is sufficient to warrant intervention due to potential risks to public health. Justice Arif S. Doctor noted that the marks were visually and phonetically almost identical, with dominant features being deceptively similar, and that no bona fide justification had been offered for adopting the impugned mark. The Court held that the marks must be compared as a whole from the perspective of an average consumer with imperfect recollection, concluding that confusion was imminent and unacceptable. The absence of the defendant from the proceedings and its failure to contest the evidence reinforced the Court’s finding of dishonest adoption and bad faith. Accordingly, the High Court granted a permanent injunction restraining Anrose Pharma from using ‘ZEROVOL-P’ in relation to pharmaceutical products and directed the delivery up of all infringing material for destruction. Although the Court declined to award damages due to lack of specific proof of loss, it imposed costs of ₹15,00,000 on the defendant, noting that such an order was warranted under Section 35 of the CPC as amended by the Commercial Courts Act in commercial IP matters, particularly when the products in question posed a risk to the public. The judgment underscores the principle that trademarks in the pharmaceutical sector require heightened protection to prevent even potential consumer confusion, reinforces the importance of good faith in adoption of marks, and illustrates that non-participation in proceedings cannot shield infringing parties from liability. The Court’s order serves as a deterrent to unauthorized adoption of similar marks and establishes that statutory and common law protections operate in tandem to safeguard brand identity and public health.