GSK CONSUMER HEALTHCARE S.A. vs CELEBRITY BIOPHARMA LTD. AND ANR.
$~10
* IN THE HIGH COURT OF DELHI AT NEW DELHI
Date of Decision: 22nd March, 2024
+ C.O. (COMM.IPD-TM) 154/2021
GSK CONSUMER HEALTHCARE S.A. ….. Petitioner
Through: Mr. Ranjan Narula, Advocate.
versus
CELEBRITY BIOPHARMA LTD. AND ANR. ….. Respondents
Through: Mr. Abhijeet Yadav, Advocate for R-1.
Mr. Harish Vaidyanathan Shankar, CGSC with Mr. Srish Kumar Mishra, Mr. Alexander Mathai Paikaday, Mr. Lakshay Gunawat and Mr. Krishnan V., Advocates for R-2.
CORAM:
HON’BLE MR. JUSTICE SANJEEV NARULA
JUDGMENT
SANJEEV NARULA, J. (Oral):
1. In the matter before us, the Petitioner – GSK Consumer Healthcare S.A., who holds the registered trademarks OTRIVIN and OTRINOZ along with their derivative forms in Class 5, has filed a petition under Section 57 of the Trade Marks Act, 1999 [Act]. The petition seeks the rectification and cancellation of the trademark OTRINIR, registered under No. 2892712 in the name of Respondent No. 1 [Impugned Mark]. Both the Petitioners and the said Respondents marks are registered in the same class and used for nasal decongestant sprays. Thus, the crucial issue before the Court is whether the Impugned Mark is so similar to the Petitioners trademarks as to cause confusion and thereby warrant its removal from the Register of Trade Marks.
THE FACTUAL BACKDROP:
2. The Petitioner is a member of the GSK group of companies under a joint venture between GlaxoSmithKline (GSK) and Novartis AG [GSK Group]. As a leading science-driven healthcare entity, GSK Group boasts a significant global footprint, with commercial activities spanning over 150 countries. The group is engaged in the research, development, and production of a broad spectrum of pharmaceuticals, vaccines, and consumer healthcare products. Among its extensive portfolio of over-the-counter medications and self-care products are well-known brands such as OTRIVIN, OTRINOZ, CONTAC, FLONASE, SENSODYNE, AQUAFRESH, PANADOL, and ENO1.
3. GSK Group has maintained a substantial presence in India for over 90 years, represented through GlaxoSmithKline Consumer Healthcare Limited, established in 1958, and GlaxoSmithKline Pharmaceuticals Limited (GSKPL), founded in 1924. GSKPL, headquartered in Mumbai, oversees seven regional and sales hubs throughout the country. In the Indian market, the GSK Group leads the vaccines self-pay segment and boasts five brands ranked among the top 50 in the pharmaceutical sector.
4. The Petitioner holds the registration for the trademark OTRIVIN, a uniquely coined and inherently distinctive mark used for medicinal products designed to treat nasal congestion. Originally, the trademark was filed and registered under the name of Novartis AG. Following a joint venture between GSK and Novartis AG, the trademark and associated goodwill were transferred to Novartis Consumer Health S.A. Subsequently, Novartis Consumer Health S.A. underwent a name change to GSK Consumer Healthcare S.A., the Petitioner.
5. Petitioner also has another product in the OTRI family of marks, i.e. OTRINOZ, which is also used for relieving blocked nose. Both OTRIVIN and OTRINOZ are nasal decongestants, albeit presented in distinct packaging. Furthermore, the Petitioner, along with its predecessors-in-title, has established bona fide ownership over a comprehensive series of related marks. This portfolio includes OTRIVIN-O, OTRIVIN ADULT, OTRIVIN PEDIATRIC, OTRIVIN SALINE, OTRIVIN C, OTRIVIN PLUS, OTRIVIN COLD TAB, and OTRIVIN PERFECT NIGHT, among others.
6. The Petitioner has registrations in over 100 countries in respect of their trademark OTRIVIN in Class 5. The global portfolio originates with its earliest registration dating back to 1939 in Switzerland, while the initial registration in India was secured in 19562. The OTRIVIN-branded products have been available in various markets since 1950, with their introduction to the Indian market occurring in 1979. Given this extensive history of adoption, registration, and consistent use, the Petitioner has established exclusive rights to the trademarks OTRIVIN and OTRINOZ. These rights extend to prohibiting the use of any identical or deceptively similar marks by unauthorized parties.
7. In April 2020, the Petitioner became aware that the Respondent No. l has obtained registration of the Impugned Mark OTRINIR under No. 2892712 in Class 5, which encompasses Medicinal, pharmaceuticals and ayurvedic preparation and substance, food for babies. As per the online record, Respondent No. l filed the application for registration of the Impugned Mark on 30th January, 2015, claiming use since 10th April, 2013. Although the Impugned Mark was advertised in the Trade Mark Journal No. 1888 dated 11th February, 2019, the Petitioner did not oppose the application due to inadvertence/ oversight.
8. Upon examining Respondent No. 1s website, the Petitioner realised that the Impugned Mark was being used specifically for nasal sprays, suggesting that its adoption was intended to create an association with the Petitioners products. In an attempt to amicably resolve the issue, the Petitioner issued a legal notice on 1st August, 2020, followed by a reminder letter dated 18th August, 2020. However, Respondent No. l declined to settle the matter, as intimated in their reply on 1st September, 2020. In view of the above background, the Petitioner has filed the present petition under Section 57 of the Act seeking cancellation of the Impugned Mark.
PETITIONERS SUBMISSIONS:
9. In light of the aforenoted factual backdrop, Mr. Ranjan Narula, counsel for the Petitioner, urges the following grounds for the removal of the Impugned Mark from the Register:
9.1. The Impugned Mark OTRINIR is phonetically, structurally and visually similar to the Petitioners mark OTRIVIN, which is likely to cause confusion and deception amongst the general public and trade. Thus, the registration of the Impugned Mark is contrary to Section 9(2)(a) of the Act.
9.2. The evident similarity between the competing marks OTRIVIN and OTRINIR would create the impression amongst consumers and traders that Respondent No. ls product is associated with Petitioner. Therefore, the registration of the Impugned Mark is liable to be cancelled under Section 11(l) of the Act.
9.3. The Petitioner is the prior adopter of the mark OTRIVIN, which has achieved the status of a well-known mark on account of the Petitioners extensive and continuous use. Respondent No. 1s adoption of the Impugned Mark is thus ex-facie dishonest, aiming to exploit the goodwill and reputation of the Petitioners registered mark, which is borne out by the significant revenue earned by them from the use of the trademark OTRIVIN, and also the expenses incurred towards promoting the brand, details whereof are set out as under:
Year
Worldwide Sales Figures (£ in million)
India Sales Figures (£ in million)
Promotional and marketing Figures (£ in million)
2015
228.2
3.1
48.5
2016
259.7
8.2
58.9
2017
297.0
7.7
60.3
2018
310.4
10.60
65.3
2019
301.5
12.8
62.5
RESPONDENT NO. 1S SUBMISSIONS:
10. Mr. Abhijeet Yadav, counsel for Respondent No. 1, contends as follows:
10.1. Respondent No. l- Celebrity Biopharma Ltd. operates as a part of the M/S Aishwarya Group, which has four manufacturing units based on state-of-the-art manufacturing technology approved by WHO-GMP, ISO, CE and various others. Respondent No. l and its conglomerate companies have obtained several Approvals & Certifications, details whereof are delineated at Paragraph No. 7 of the reply to the present petition.
10.2. Respondent No. 1 is the bona fide user of the Impugned Mark OTRINIR since 10th April, 2013, which has been registered vide trademark registration No. 2892712. Thus, the mark should be protected under the provisions of the Trade Marks Act and Rules.
10.3. OTRI is derived from the term OTORHINOLARYNGOLOGY, which means the study related to ear, nose and throat. Further, the term OTRI is formulated out of two syllables, i.e., OT which stands for over-the-counter medicines and RI which stands for rhinitis, created by rhinovirus. Thus, Petitioner cannot claim exclusive right over the usage of OTRI as it is a generic term or publici juris in law, and is employed by several users in the market. Moreover, the suffix ‘NIR’ originates from the name of Respondent No. 1s founding member/director, Niraj Kumar Nir, and the M/s Aishwarya Group holds several trademark applications incorporating NIR. This information is further elaborated in Paragraph No. 11 of their reply, supporting the argument that OTRINIR is a coined term, combining generic and proprietary elements.
10.4. The claimed similarity between the Impugned Mark and the Petitioners mark is superficial. Relying on the Supreme Court judgment in Cadila Health Care Ltd. v. Cadila Pharmaceutical Ltd.3, it is argued that the Court must apply the anti-dissection rule, which requires marks to be compared in their entirety rather than segmented into parts. It would be thus be contrary to the doctrine of anti-dissection to assess similarity of the two marks by only comparing the opening string of letters OTRI in the two marks.
ANALYSIS AND FINDINGS:
Whether the competing marks are deceptively similar?
11. In considering the grounds for rectification, the primary task is to ascertain whether the trademarks OTRIVIN and OTRINIR are deceptively similar. Here, as urged by Mr. Yadav, we must apply the anti-dissection rule, which mandates evaluating the marks in their entirety to capture the overall impression they convey to the average consumer, rather than dissecting marks into their individual components. This holistic view is essential to ensure that the analysis does not improperly isolate elements of the marks, which could skew the perception of their similarity.
12. In the present case, both marks comprise seven letters and share the prefix OTRI, while utilising distinct suffixes, i.e., -VIN for OTRIVIN and -NIR for OTRINIR. Visually, the dominant presence of the common prefix is likely to anchor consumers first impressions, thus possibly diminishing and overshadowing the distinctiveness of the two suffixes, particularly during quick observations or when recalled imperfectly. Phonetically, OTRI in both marks is expected to be pronounced similarly, enhancing the auditory likeness between the two. While the suffixes -VIN and -NIR sound quite different, this variance may not be enough to prevent phonetic confusion given the strong similarity of the prefixes. Conceptually, since neither trademark has an inherent meaning in English, their use in the context of nasal decongestant sprays further compounds the likelihood of confusion, suggesting a potential connection or relationship between the products that does not actually exist.
13. In sum, a holistic comparison of OTRIVIN and OTRINIR reveals significant phonetic, structural, and visual similarities that are likely to cause confusion among consumers, who may mistakenly believe the products are associated or originating from the same source. Furthermore, the fact that the Impugned Mark has been registered under the same class and is used for identical goodsnasal decongestant spraysreinforces the potential for consumer confusion. While Respondent No. 1s registration does encompass a broader range of goods, it remains uncontested that the Impugned Mark OTRINIR is currently marketed specifically for nasal sprays, which directly competes with the Petitioners product. This overlap in product type and target market underlines the necessity of addressing the deceptive similarity to prevent misleading the public and protect the integrity of established trademarks.
Whether Respondent No. 1s adoption of the Impugned Mark is bona fide?
14. In view of the stark similarities between the two marks, the next pertinent question that arises for consideration relates to the adoption of the Impugned Mark by Respondent No. 1.
15. At the outset, it is pertinent to note that while the Petitioner has been using their mark OTRIVIN since the year 1950, Respondent No. 1s user claim is only from the year 2013. Therefore, the Petitioner is unequivocally the prior user a significant factor in trademark jurisprudence, as prior use can establish precedence in rights over a mark.
16. Respondent No. 1 seeks to justify their use of the Impugned Mark by claiming that the prefix OTRI, derived from OTORHINOLARYNGOLOGYthe medical study of ear, nose, and throatis generic and extensively used by other market players. They argue that due to its widespread use, OTRI has become common to the trade. Therefore, they contend, any overlap in its use should not serve as grounds for the cancellation of the Impugned Marks registration. To substantiate that OTRI is generic to trade, and precludes exclusivity, Respondent No. 1 has placed on record a computer-generated trademark search report in Class 5 with the search strain OTRI, listing 69 trademarks bearing the prefix OTRI.
17. However, these attempts by Respondent No. 1 to portray OTRI as a generic term commonly used within the industry are not supported by the evidence they have provided. Mr. Narula aptly points out that the status of the trademarks listed15 owned by the Petitioner, 17 refused, abandoned, or withdrawn, 11 pending, and 5 opposed (including 2 by the Petitioner)demonstrates a significant proprietary interest in the term in favour of the Petitioner. The list of marks owned by the Petitioner and its related companies under the OTRI family of marks is set out as follows:
18. This aforenoted analysis contradicts the claim that OTRI is generic or devoid of distinctive character. On the contrary, it reveals the Petitioners extensive use and registration of the OTRI-related marks, which contributes to the association of the term OTRI with their products specifically, rather than the category of nasal decongestants as a whole. Furthermore, through the material placed on record, the Petitioner has sufficiently demonstrated that they have substantial goodwill and reputation in their marks, on account of long and continuous use. Specifically, as emphasised by Mr. Narula, the data supplied by IMS4 underscores the formidable reputation and market-share enjoyed by the Petitioner in respect of nasal decongestants in Class 5. The information to this effect is extracted as follows:
19. Furthermore, the manner in which Respondent No. 1 adopted the markclaiming OTRI to be generic, yet using it competitivelycasts doubt on the bona fides of their usage. Given that the Petitioners use of similar marks significantly predates other market entries, Respondent No.1s subsequent choice of OTRINIR, closely mirroring OTRIVIN and targeting the same product category, seems more opportunistic than coincidental. This approach indicates a strategic attempt by Respondent No.1 to leverage the strong brand identity and established consumer recognition associated with the Petitioners mark.
20. Additionally, there is apparent contradiction in Respondent No. 1s argument. By using OTRI in the Impugned Mark, they inadvertently affirm its distinctivenessa direct counter to their defence that it is a generic term widely used in the trade. This paradox not only reinforces the inherent weaknesses in Respondent No. 1s arguments but also exposes the Impugned Mark to potential cancellation for lacking distinctiveness, in addition to the grounds previously discussed.
21. Lastly, the Court agrees with Mr. Narulas contention that the search results provided by Respondent No. 1 do not conclusively prove that OTRI is common to trade. The relevance of such a list is limited, as the mere presence of trademarks in a search report does not verify whether these marks are actively employed by businesses to distinguish their goods or services. This understanding is supported by the decision in Novartis AG v. Crest Pharma Pvt. Ltd.5, wherein this Court has observed that a party must substantiate their claim that a mark is common to trade with cogent and clear evidence of actual user of such marks. There is no such material placed on record by Respondent No. 1 to indicate that the marks cited in the aforenoted search report are actually in use, and if they are, that such use is in respect of identical goods with which we are concerned, i.e., nasal decongestant sprays. This lack of evidence on the usage of the listed OTRI trademarks weakens the argument that the term OTRI is generic and commonly used within the industry. Furthermore, as noted by the Division Bench in Pankaj Goel v. Dabur India Ltd.6, there is no onus on a proprietor to sue every small infringer who may not pose any threat to the distinctiveness of a mark7. Accordingly, Respondent No. 1 has not discharged their burden of demonstrating actual use of the cited marks, and therefore, the search results in and of themselves would not render the mark OTRI to be common to trade.
CONCLUSIONS AND DIRECTIONS:
22. In view of the above analysis, the Court finds that the registration of the Impugned Mark violates Section 9(2)(a) and Section 11(1), 11(2) read with Section 18 of the Act, and is thus liable to be removed from the Register under Section 57 of the Act.
23. Accordingly, the present petition is allowed with the following directions:
23.1. Registration under Application No. 2892712 for the Impugned Mark OTRINIR in Class 5, is cancelled.
23.2. Respondent No. 2 is directed to issue an appropriate notification to this effect.
23.3. Registry is directed to supply a copy of the present order to the Trade Marks Registry at llc-ipo@gov.in for compliance.
24. With the aforesaid, the petition is disposed of.
POSTSCRIPT:
25. In the previous order dated 23rd November, 2023, a significant issue was highlighted concerning the updating of the records by the Controller General of Patents, Designs and Trademarks (CGPDTM), as noted in Paragraph No. 4 to the following effect:
4. The office of CGPDTM shall take steps to ensure that in future, whenever cancellation petitions are filed and notice is being issued by the High Court, the same is duly reflected in the website of the IPO. Registry is also directed that whenever notices are issued in petitions i.e., C.O., relating to any of the IPR property, a copy of the said order, ought to be automatically transmitted to the office of CGPTDM on the e-mail: llcipo@ gov.in & legal-tmrd@gov.in.
26. Mr. Harish Vaidyanathan Shankar, CGSC, has reported compliance difficulties with the Courts directions, particularly in updating the status on the IPO website. This complication primarily arises because the Courts orders often do not include the registration details of the specific Trademarks, Designs, Copyrights, or Patents against which a rectification action has been filed.
27. Accordingly, it is directed that the Registry must ensure that any order pertaining to cancellation/ revocation includes the necessary details that will enable the CGPDTM and/or the Registrar of Copyrights to effectively update their records. Ideally, these details should be explicitly stated within the order itself. However, should there be instances where these details are omitted, the Registry is instructed to provide this essential information to the concerned Office, along with the copy of the order. This measure is intended to facilitate the accurate and timely update of the official records, thereby maintaining the integrity of the registered Trademarks, Designs, Copyrights, or Patents. It would not only enhance administrative efficiency but also ensure transparency and accessibility, enabling the public and interested parties to obtain the most current and accurate information regarding the legal status of intellectual property rights.
SANJEEV NARULA, J
MARCH 22, 2024/as
Corrected and released on 12th April, 2024.
1 To support this submission, the Petitioner has placed on record their annual reports.
2 Registration certificates of the Petitioners trademark registrations globally and in India have been filed along with the present petition.
3 (2001) 5 SCC 73
4 By way of letter dated 13th September, 2011, IMS Health Information & Consulting Services India Pvt. Ltd. supplied data regarding the value of the Nasal Decongestant Market and the top 10 brands SKU wise, copy whereof has been placed on record by the Petitioner.
5 2009 SCC OnLine Del 4390
6 2008 SCC OnLine Del 1744
7 Similarly held in (1970) 3 SCC 665; (189) 7 PTC 14; (2004) 29 PTC 435.
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