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21 April 2008
When deciding on the issue of deceptive similarity, the trademarks in question should be examined as a whole (ie, structurally, phonetically and visually). A person of ordinary intelligence and imperfect recollection should be able to distinguish between the marks and their respective products. When such a distinction cannot be made, proprietary rights of reputation and goodwill are infringed.
In Ranbaxy Laboratories Limited v Universal Twin Labs the plaintiff filed suit for infringement of its trademark VOLINI, contending that the defendant had applied for registration of the deceptively similar trademark VONIGEL.(1) As both products were used to treat the same medical condition, the plaintiff argued that the defendant had copied the entire get-up of its product, including the same carton and tube, with the intention of deceiving the unwary customer. The plaintiff argued further that the defendant had cleverly disguised its product behind the same colour scheme and layout in order to pass it off as the plaintiff’s product. Seeking an interim injunction, the plaintiff emphasized that it had used the mark continuously since 1994 and had advertised extensively in both electronic and print media. As a result, the mark and its associated get-up and colour scheme had acquired a significant reputation in the trade and among consumers.
The defendant contended that its trademark was different, both word for word and letter for letter. Further, in defence of its product’s get-up and colour scheme, the defendant argued that the diagrams on the carton had been used previously by the company Universal Impex since 1992 and therefore the plaintiff had no evidence to establish use of the carton prior to 1998.
The court ruled that the word VOLINI and the letters ‘VONI’ of the mark VONIGEL were deceptively similar, the only distinction being the deletion of the letters ‘LI’ in the defendant’s mark. The court said that:
“undoubtedly, both marks must be considered as a whole. In doing so, the average purchaser is liable to place a much greater degree of emphasis on the word ‘VONI’ as it appears in the defendant’s mark, leading to a deceptive degree of similarity with the plaintiff’s mark.”
The court stressed that in deciding on the issue of deceptive similarity, due regard must be given to rival marks as a whole and the impact they have on the ordinary consumer. According to the court:
“an average purchaser is liable to be confused into assuming that the product under the mark VONIGEL sold by the defendant is in fact the product of the plaintiff sold under the mark VOLINI.”
The court also pronounced that although there can be no monopoly on the description of a medical condition that a pharmaceutical purports to treat, it is necessary to look at the entirety of the depiction. In this case the defendant was intentionally replicating the plaintiff’s representation.
The balance of convenience was thus found to be in favour of the plaintiff and the court ruled that the refusal of interlocutory relief would cause irreparable injury. The court granted an injunction to restrain the defendant from marketing its product under a name deceptively similar to the plaintiff’s.
Trademark law protects the valid proprietary rights of manufacturers. Unless such protection is provided, the goodwill and reputation associated with an established mark cease to be distinctive. The instant case also reveals the importance of trade dress and its protection. The elements of trade dress inherent in the get-up and colour scheme of a product packaging or container in essence relate to company image and thus form a proprietary entity worthy of protection.
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