In a recent decision, the Delhi High Court dismissed an appeal challenging the refusal of the opposition to the registration of the mark "MEBUFEN" under the Trade Marks Act, 1999. The appeal, filed by M/s Abbott GmbH (the Appellant), sought to prevent the registration of "MEBUFEN" as a pharmaceutical mark, arguing that it was deceptively similar to its own registered trademark "BRUFEN". This case presents an important analysis of trademark law, particularly regarding the principles of deceptive similarity between marks used in the pharmaceutical industry.

M/s Abbott GmbH, the Appellant, is the proprietor of the mark "BRUFEN", a well-known trademark for pharmaceutical products, including analgesics and anti-inflammatory medications. Abbott has been using the "BRUFEN" mark in India since 1973, and it holds a registered trademark for the mark under Registration No. 250671 in Class-5. The Appellant's rights over "BRUFEN" are global, with extensive use in various countries.

On the other hand, M/s Meridian Medicare Limited (the Respondent) applied for the registration of the mark "MEBUFEN" under Application No. 1383109 on 7th September 2005. The mark was advertised by the Registrar of Trademarks on 1st July 2006, and the Appellant filed an opposition in December 2006. The Appellant claimed that the mark "MEBUFEN" was confusingly similar to its own mark "BRUFEN" and would lead to public confusion due to the resemblance in phonetics, structure, and the nature of the products involved, which both contained the active ingredient "Ibuprofen" used for pain relief.

However, the Registrar of Trademarks rejected the Appellant's opposition, leading to the registration of the "MEBUFEN" mark. This decision was subsequently challenged by Abbott in the Delhi High Court under Section 91 of the Trade Marks Act, 1999.

Appellant's Submissions:

Deceptive Similarity: The Appellant argued that the Registrar had incorrectly applied the principles laid down in the landmark case of Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. The Appellant contended that the competing marks should have been assessed holistically, as a whole, rather than through a "letter-by-letter" and "syllable-by-syllable" analysis, which is not permissible under Indian trademark law.

Phonetic and Structural Similarity: Abbott further claimed that the mere addition of the prefix "ME" to "BRUFEN" was cosmetic and did not sufficiently distinguish the two marks. The similarity between the marks, especially given that both marks related to products containing "Ibuprofen", would likely confuse the public.

Judicial Precedent: The Appellant relied on the Bombay High Court's judgment in Boots Company PLC v. Registrar of Trade Marks, which held that the marks "BRUFEN" and "CROFEN" were structurally and phonetically similar. The Appellant also cited the Glenmark Pharmaceuticals Ltd. v. Sun Pharma Laboratories Ltd. case, where the court ruled that the marks "INDAMET" and "ISTAMET" were deceptively similar, upholding an injunction.

Structural and Phonetic Differences: The Respondent countered that "BRUFEN" and "MEBUFEN" were visually, structurally, and phonetically different. The only similarity between the marks was the suffix "FEN", a common element derived from the chemical name "Ibuprofen", which is widely used in pharmaceutical trademarks. The Respondent argued that the term "FEN" cannot be claimed as exclusive by the Appellant, as it is found in over 5,000 other trademarks.

Lack of Confusion: The Respondent also argued that there was no likelihood of confusion between the marks, especially considering the distinct packaging and branding used by the two companies. They further stated that "FEN" is a widely used suffix for medicinal products, and thus, the Appellant could not prevent others from using it in their marks.

The Delhi High Court carefully considered the submissions of both parties, with particular attention to the legal principles surrounding deceptive similarity in the context of pharmaceutical trademarks.

The Court noted that in previous judgments, such as F. Hoffmann-LA Roche & Co. Ltd. v. Geoffrey Manners & Co. Pvt. Ltd., and Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., the Supreme Court emphasized that marks should be assessed as a whole, and the focus should be on the overall impression conveyed to the public. A meticulous, letter-by-letter or syllable-by-syllable comparison is not appropriate.

The Court agreed with the Respondent that the marks "BRUFEN" and "MEBUFEN" were not structurally or phonetically similar in a way that would likely confuse an average consumer. The prefixes "BRU" and "MEBU" were sufficiently distinct, and the common suffix "FEN" was not exclusive to the Appellant. Moreover, the Court emphasized that "FEN" is derived from the generic chemical term "Ibuprofen", which is used in many other trademarks.

Furthermore, the Court observed that the Appellant’s reliance on previous case law, such as Boots Company and Glenmark Pharmaceuticals, was misplaced. In those cases, there were clear structural and phonetic similarities that justified the courts’ decisions. In contrast, the marks in the present case were dissimilar enough that there was no reasonable likelihood of confusion.

In conclusion, the Delhi High Court dismissed the appeal, upholding the decision of the Registrar of Trademarks. The Court found no deceptive similarity between the marks "BRUFEN" and "MEBUFEN", and therefore, the registration of "MEBUFEN" was allowed to stand. The ruling reinforced the principle that when determining deceptive similarity, marks must be viewed in their entirety and from the perspective of an average consumer with imperfect recollection.

  

TRADE MARKS ACT, 1999