The Madras High Court adjudicated a trademark dispute between Apex Laboratories Pvt. Ltd., the plaintiff, and Macleods Pharmaceuticals Limited, the defendant. The case revolved around the competing trademarks 'BILTEN' and 'BELATIN', both used for antihistamine medications containing Bilastine as the active ingredient. Apex Laboratories alleged trademark infringement, passing off, and sought other reliefs, while Macleods Pharmaceuticals contested the claims and filed a counterclaim.

Contentions of the Parties

Plaintiff’s (Apex Laboratories) Contentions:

  1. The plaintiff adopted the trademark 'BILTEN' in June 2019, securing registration under Class 5 in July 2019.
  2. In August 2020, the plaintiff became aware of the defendant's use of the mark 'BELATIN' for similar pharmaceutical products.
  3. Given the visual and phonetic similarity between 'BILTEN' and 'BELATIN', the plaintiff argued that the likelihood of consumer confusion was high and sought an injunction.

Defendant’s (Macleods Pharmaceuticals) Response:

  1. The defendant claimed it had conceived the mark 'BELATIN' in May 2019 and applied for its registration in June 2019. However, the mark was under opposition before the Trademark Registry.
  2. It argued that pharmaceutical trademarks are often derived from active ingredients, ailments, or targeted organs, justifying the use of 'BELATIN' for a Bilastine-based preparation.
  3. The defendant asserted that its adoption of 'BELATIN' was honest and concurrent, and that the plaintiff had acquiesced to its use.
  4. A counterclaim was filed, alleging losses due to legal action and an ex-parte order.

Plaintiff’s Response to the Counterclaim:

  1. The defendant failed to provide documentary evidence showing actual use of 'BELATIN' from October or November 2019.
  2. The plaintiff contended that the defendant was neither an honest nor a concurrent user and that no acquiescence had occurred.

Key Issues Considered by the Court

The Court framed the following issues:

  1. Whether the plaintiff was the registered proprietor and prior user of 'BILTEN'.
  2. Whether 'BILTEN' and 'BELATIN' were deceptively similar.
  3. Whether the defendant had prior rights to use 'BELATIN'.
  4. Whether the plaintiff was entitled to reliefs for trademark infringement and passing off.
  5. Whether the defendant was entitled to damages as sought in its counterclaim.

Court's Observations and Ruling

  • The plaintiff provided a certificate of registration for 'BILTEN' and sales invoices showing its use since November 2019. While the defendant filed documents indicating the adoption of 'BELATIN' in May 2019, there was no evidence of actual commercial use before February 2020.
  • The court emphasized that the evidence of use is crucial in trademark disputes. The defendant's evidence of adoption did not constitute evidence of commercial use, which is necessary to establish priority in trademark right. The Court noted that although the defendant had conceived 'BELATIN' earlier, the plaintiff was the prior user by at least three months.
  • Both trademarks were derived from the active ingredient Bilastine, which made them neither arbitrary nor invented marks.
  • Given the high risk of consumer confusion in pharmaceutical products, the Court ruled that 'BILTEN' and 'BELATIN' were deceptively similar.

Honest Concurrent Use Defence

The Court examined whether the defendant could claim protection as an honest and concurrent user in an infringement action. It observed that while honest concurrent use can sometimes be a defence, it applies only when a trademark has been registered on such grounds. Since the defendant’s mark was still under opposition, this defence did not apply.

Final Decree

  • The suit was decreed in favor of the plaintiff, granting relief in terms of trademark infringement.
  • The defendant was permitted to liquidate its existing stock of 'BELATIN'-branded medicines within four months from the date of the decree.
  • The defendant was allowed to apply for modification or discharge of the injunction if its trademark registration was approved.
  • The Court observed that the pending registration proceedings of 'BELATIN' should be adjudicated decided by the Trademark Registry unfettered by the Court’s decision.
  • The defendant’s counterclaim for damages was dismissed, as there was no evidence of loss caused by the plaintiff’s actions.

Comment

The Court’s decision highlights the significance of prior use in trademark disputes, particularly in the pharmaceutical industry, where consumer safety is a primary concern. The ruling underscores that an honest adoption alone does not suffice in an infringement action unless supported by actual, continuous commercial use and registration on the basis of honest concurrent use.