Quoting with approval the book McCarthy on Trademarks and Unfair Competition, the Delhi High Court has observed that the doctrine of ‘family of marks’ is an argument available only to a Plaintiff asserting its rights and not to a Defendant to prove its defence against a Plaintiff’s intervening rights.
The Court in this regard observed that where the Plaintiff had, in spite of the defendant having a ‘family of marks’, established goodwill in a mark that may even be forming a part of the ‘family of the marks’ of the Defendant, the Defendant cannot later adopt a mark deceptively similar to the that of the Plaintiff, relying upon its ‘family of marks’.
The High Court was adjudicating on a dispute involving use of word ‘FOLZEST’ by the Defendant when the Plaintiff was using the word ‘FORZEST’ – both for medicines though for different ailments.
The Defendant had argued that they had family of ‘ZEST’ marks as were using the word in number of other marks.
However, its assertion that it was selling more than sixty-five different products and out of these, eighteen had ‘ZEST’ as a predominant feature of the mark/name of the medicinal goods, was dismissed by the Court while it stated that the defendant by an assertion alone cannot claim a right to adopt a deceptively similar mark to that of the plaintiff, especially where the mark of the plaintiff was in long use.
It was of the view that the Defendant would have to prove exclusivity over the mark ‘ZEST’ in all its variants to succeed in its defence.
Further, while affirming its ad interim relief, the Court in Sun Pharmaceutical Industries Ltd. v. DWD Pharmaceuticals Ltd. [Decision dated 22 November 2022] cited various precedents and reiterated that in medicinal goods, the right of not only the private litigants but also public interest has to be kept in mind, and, in fact, be given prominence. The marks were also found to be deceptively similar to each other.
