Introduction
The Bombay High Court decided on the importance of passing an ex parte order in a petition involving alleged phonetically similar trademarks. Ajanta Pharma, the petitioner, filed a suit against Prahem Laboratories, seeking an ex parte order without notifying the defendant due to the nature of the impugned mark, its trading channels, and the products sold under it.
Facts
Ajanta Pharma, a well-established manufacturer, marketer, seller, and exporter of medicinal products, has sold its goods in over 30 countries. He owned the registered trademark “ZAHA” under Class 5, which treats bacterial infections in adults and children. The mark was also registered in other jurisdictions, including Iraq, and has been in use since 2000 in various Asian, African and Middle Eastern countries. The plaintiff had invested significantly in promoting and marketing its products globally.
In April 2024, the plaintiff learned about the defendant’s mark “ZARA” for products under Class 5, specifically for treating bacterial infections in adults and children. The plaintiff also noted that the defendant’s products under the mark “ZARA” were also available in Iraq, overlapping with the plaintiff’s market.
Arguments
The plaintiffs argued that the defendant’s mark ZARA were phonetically, structurally, visually, and aurally close and, by extension, deceptively similar to the Plaintiff’s ZAHA mark. The plaintiffs claimed that merely replacing “H” with an “R” was inconsequential and did not distinguish the marks due to the obvious phonetic similarities and the identical goods sold under the rival marks. The plaintiff stated that the defendant’s packaging also featured the number “500”, which was used to denote the dosage near the impugned mark ZARA, among other phonetic, visual, and structural similarities.
The plaintiffs asserted that the possibility of confusion was inevitable, misleading the general public into believing that the goods bearing the ZARA mark originated from the plaintiff. The plaintiff stated that the general public, members of the medical profession, and others acquainted with the plaintiff’s products were likely to be confused upon seeing the defendant’s products bearing the impugned mark and also wrongly believe them to be originating from the plaintiff not only due to the phonetic, visual, and structural differences but also because the spheres of operation were overlapping in terms of both goods (treatment of bacterial infection in adults and children) and exporting countries (Iraq).
The plaintiff relied on the judgement in Cadila Pharmaceuticals and stated that in an action for infringement, there was no discrimination between goods manufactured for sale in the Indian subcontinent and goods manufactured for export, reflected in paragraphs 49 to 57 of the judgment.
Plaintiff’s Plea
The plaintiff pled that the order must be passed ex parte because if the defendant received notice of the plaintiff’s application for interim relief, they were likely to remove existing stock of the goods bearing the impugned mark from their factories or storage houses and dump them in the market thereby flooding the market with the goods bearing the impugned mark. Further, it was also stated that the defendant may destroy their accounting books; therefore, a grant of interim relief in the absence of notice to the defendant was paramount.
Analysis and Judgement
The Court was of the opinion that upon consideration of the rival marks, the goods, and the trading channels, a prima facie case was made out for granting ex parte relief against the defendant due to the mark’s ability to cause confusion and a likelihood of deception. The Bench agreed that serving notice would be counterproductive and granted interim relief, restraining the defendant from selling, manufacturing, and marketing products under the “ZARA” mark.
