New Delhi: In a respite to drug major Sun Pharmaceutical Industries Ltd, the Delhi High Court has granted an interim injunction restraining JB Chemicals from using the mark "RANRAFT" for its antacid medication, citing its similarity to Sun Pharma's registered trademark "RACIRAFT."
The court held that J.B. Chemicals' adoption of RANRAFT was likely to cause irreparable harm to the goodwill and reputation of Sun Pharmaceutical and that the balance of convenience was in favor of Sun Pharma.
The dispute arose over the similarity between Sun Pharmaceutical's RACIRAFT and J.B. Chemicals' RANRAFT, both contain similar combinations of alginic acid, calcium carbonate, and sodium bicarbonate. Sun Pharmaceutical argued that RANRAFT was deceptively similar to its mark and could confuse consumers.
Sun Pharma registered the trademark "RACIRAFT" in January 2022 and launched its product shortly thereafter. JB Chemicals subsequently filed for registration of the mark "RANRAFT" in June 2022, which was objected to by the Trademark Registry due to a conflict with a third-party registered mark, "RINIRAFT".
Sun Pharma contended that RANRAFT infringed upon its trademark, as it was likely to confuse consumers. They argued that the marks were deceptively similar and that they had acquired significant goodwill and reputation for RACIRAFT.
J.B. Chemicals countered that RANRAFT was not deceptively similar to RACIRAFT and that the term "RAFT" was common in the pharmaceutical industry. They argued that they had adopted RANRAFT independently and were not infringing on Sun Pharmaceutical's trademark.
They additionally submitted that the term 'RAFT' whether used as a prefix or suffix for pharmaceutical products that comprise a sodium bicarbonate/ sodium alginate/ potassium bicarbonate salt in gastroenterology (on account of the chemical's raft forming nature in the stomach) is common to the trade since DIGERAFT, GAVIRAFT, ARORAFT, ULGERAFT, besides RACIRAFT of the plaintiff and RANRAFT of the defendant are also existing.
Justice Saurabh Banerjee, presiding over the case, acknowledged the similarities between the two marks and emphasized the importance of avoiding confusion in the pharmaceutical industry, where public interest is paramount. The court highlighted the potential for consumer confusion and the risk of harm if patients mistakenly purchase the wrong medication.
The court also dismissed JB Chemicals' arguments that the term "RAFT" is common in the pharmaceutical industry, referring to the raft-forming nature of the medication in the stomach. The court said that the term "RAFT" is a common element in the pharmaceutical industry and is not exclusive to either Sun Pharmaceutical or J.B. Chemicals. The existence of other similar marks does not weaken Sun Pharmaceutical's claim, as it is the registered owner of RACIRAFT. The Court emphasizes that the plaintiff has the right to choose which parties to sue for infringement.
Justice Banerjee pointed out that while other medications use the suffix "RAFT," none bear an overall similarity to either "RACIRAFT" or "RANRAFT."
The court in its order said,
"An average common man who is of average intelligence with imperfect recollection can hardly be expected to decipher the miniscule difference between 'CI' of the plaintiff being replaced with 'N' of the defendants."
Subsequently, the Court was of the opinion that;
"...the plaintiff has indeed been able to make out a prima facie case, both factually and legally, in its favour since the impugned mark RANRAFT is deceptively similar to that of the registered trademark RACIRAFT of the plaintiff. Under the existing circumstances, if the impugned mark RANRAFT is allowed to continue it shall result in immense irreparable harm, loss and injury to the plaintiff since it is the prior adopter, and registered proprietor of the trademark RACIRAFT. Same is the reason for the balance of convenience also lies in favour of the plaintiff and against the defendants."
" Accordingly, for the afore-noted reasoning and analysis, the defendants (JB Chemical), their directors, their assignees in business, licensees, franchisee, distributors, dealers, stockists, retailers, chemists, servants and agents are restrained from manufacturing, selling, offering for sale, advertising, directly or indirectly dealing in medicinal & pharmaceutical preparations under the impugned mark RANRAFT or any other trade mark as may be deceptively similar to the plaintiff's registered trade mark RACIRAFT, amounting to infringement of the plaintiff's registration under no.5288739 dated 17.01.2022, in any manner whatso ever, till the pendency of the present suit."
To view the original order, click on the link below:
https://indiankanoon.org/doc/8896914/