The Delhi High Court adjudicated upon a cancellation petition filed by GSK Consumer Healthcare (hereinafter referred to as the “Plaintiff”), predicated upon the phonetic, visual, and structural similarities between the plaintiff’s mark OTRIVIN / OTRINOZ and the mark OTRINIR, owned by Celebrity Biopharma (hereinafter referred to as the respondent). The Court addressed two principal issues: (1) whether the marks in question were deceptively similar and (2) whether the respondent’s adoption of the mark was bona fide, thereby determining the merits of the cancellation petition.
Facts of the Case
The plaintiff challenged the validity of the respondent’s registration, relying on their prior registered OTRIVIN / OTRINOZ marks, as well as prior adoption and extensive, continuous use. The petitioner asserted that, following the registration of the respondent’s mark (which was not opposed by the petitioner due to an oversight), they observed that the respondent’s website was selling products under a deceptively similar mark for identical goods. Subsequently, the petitioner issued a legal notice to the Respondent on August 1, 2020, seeking an amicable resolution, followed by a reminder on August 18, 2020. In their reply dated September 1, 2020, the respondent expressed a lack of interest in settling the matter, compelling the petitioner to file a cancellation petition under Section 57 of the Trade Marks Act, 1999 (hereinafter referred to as the “Act”).
Petitioner’s Arguments
The petitioner contended that the marks were phonetically, structurally, and visually similar, thereby likely to cause confusion and deception among the public regarding an imagined association between the plaintiff’s and the respondent’s products sold under these marks. The petitioner argued that this rendered the respondent’s mark susceptible to cancellation under Sections 9(2)(a) and 11(1) of the Act.
Furthermore, the petitioner asserted that they were the prior adopters of the mark, which had achieved well-known status due to their continuous and extensive usage. The respondent’s adoption of the mark was perceived as an attempt to exploit the goodwill and reputation of the plaintiff, which had been established through significant promotional marketing expenditures.
Respondent’s Arguments
The respondent opposed the petition, asserting that they were the bona fide adopters of the registered mark. They claimed that ‘OTRI’ was derived from OTORHINOLARYNGOLOGY relating to the study of the ear, nose, and throat in addition to OT and RI being an abbreviation for over-the-counter medicines and rhinitis created by rhinovirus. The respondent claimed that the term OTRI was publici juris, and thus, the petitioner could not claim monopoly. Additionally, the respondent contended that the suffix NIR was derived from the name of their founding member/director, Niraj Kumar Nir. They referenced the Cadila Health Care judgment, asserting that marks should be considered in their entirety and not dissected into constituent parts.
Analysis and Findings
The Bench observed that both marks consisted of seven letters and that the presence of the common prefix OTRI negated any claims of dissimilarity based on the VIN and NIR suffixes. The Court observed an auditory similarity between the marks, noting that the dominant prefix OTRI would likely capture consumer attention, overshadowing the distinct suffixes. The Court further noted that the prefix lacked a common meaning, and its use for identical goods (nasal decongestant sprays) compounded the possibility of confusion and deception.
The Bench recognized that the petitioner had been using the mark OTRIVIN since 1950, thereby establishing prior use. The respondent’s claim that OTRI was common to the trade was refuted, as the list of 69 marks on the Register bearing OTRI—comprising 15 marks owned by the plaintiff, 17 refused/abandoned/withdrawn marks, 11 pending marks, and 5 opposed marks—demonstrated significant proprietary interest in the term by the plaintiff. The Court inferred that the respondent’s choice of a similar mark was an opportunistic, rather than coincidental, decision.
The Court also observed that the usage of OTRI in the impugned mark evidenced the distinctive nature of the term and, therefore, made the respondent’s mark susceptible to cancellation on the grounds of non-distinctiveness.
Judgment
In light of these findings, the Court ordered the cancellation of the respondent’s mark for contravening Sections 9(2)(a), 11(1), 11(2), and 18 of the Trade Marks Act, 1999, pursuant to Section 57 of the Act.
Authors: Manisha Singh and Tushitta Murali
First Published by: Mondaq here