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Our Associate, Anand Kumar discusses “AMADAY v. ANADAY”

The Hon’ble Delhi High Court, in an order dated May 6, 2020, refused to pass an order of interim injunction in favour of Ajanta Pharma Ltd. (“Plaintiff”) against use of the mark ANADAY by Zuventus Healthcare Ltd (“Defendant”) on and in relation to breast cancer medication. [Ajanta Pharma Ltd. vs Zuventus Healthcare Ltd. – CS (COMM) 336/2019].

The Plaintiff alleged that the Defendant’s use of ANADAY on and in relation to breast cancer medication infringed its rights in the registered mark AMADAY in respect of medicines for the treatment of high blood pressure and heart disease.

The Defendant contended that the Plaintiff does not have a license to sell its medicine under the AMADAY mark in India. Rather the Plaintiff is allowed only to export such goods outside India. However, the Court noted that the argument put forth by the Defendant is fallacious because there is no territorial restriction on the use of the mark by the Plaintiff by virtue of registration of the trade mark. The Court also noted that the Plaintiff may, after obtaining the necessary licenses required under the relevant applicable law, sell its goods under the AMADAY mark in India. Further, the Court made an important observation that the language of the Trade Marks Act, 1999 (“Act”) is clear that the application in India of a trade mark, although to goods to be exported from India, shall be deemed to constitute use of the trade mark “for any purpose for which such use is material under the Act or any other law”. Hence, use of the Plaintiff’s mark on the goods meant for the purpose of export outside India, is relevant, though not necessary, to establish the act of infringement of the mark or for showing the goodwill in the mark.

The Defendant also contended delay in filing the suit and acquiescence. On the question of the delay, the Plaintiff contended that even if there is delay in seeking the injunction, an injunction should not be denied because of public interest. However, the Court held that delay must be weighed against honesty in adoption of the mark by the Defendant. In the instant case, the Court noted that Defendant had honestly adopted the mark ANADAY by combining the first three letters of the molecule, ANASTROZOLE, and the word DAY (since medicine bearing the Defendant’s mark is required once a day). On the question of acquiescence, the Court observed that the Plaintiff had continued to participate in an opposition proceeding against the Defendant at the Trade Marks Registry. The Court also observed that Plaintiff, despite having knowledge of the sales figures alleged by the Defendant since the year 2008, did not show due diligence to enquire about the sales of goods under the Defendant’s mark ANADAY in the market. The Court stated, unequivocally, that the Defendant’s abandonment of the application for the mark ANADAY does not mean abandonment of the sale of the goods under the mark.

While comparing the marks, the Court held that, even though the rival marks (AMADAY and ANADAY) are similar, the Defendant’s honesty in adoption cannot be ignored. Further, the Court held that while the Plaintiff’s mark AMADAY is used on and in relation to treatment of high blood pressure, heart disease etc., the Defendant’s mark ANADAY is used for treatment of breast cancer. Therefore, the therapeutic indications of the marks are different. Lastly, the Court held that, though it is correct that use of deceptively similar marks in relation to the pharmaceuticals goods are likely to cause confusion to the chemist owing to the bad handwriting on the prescription slip, such likelihood of confusion may be obviated owing to the fact that rivals goods are being sold in completely separate markets, one in India and other outside India.

Citation: Ajanta Pharma Ltd. vs Zuventus Healthcare Ltd. – CS (COMM) 336/2019, order dt. May 6, 2020 by Delhi High Court.

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