The Delhi High Court has vacated an ex parte interim injunction granted in favour of Alkem Laboratories Limited, holding that the mark “A TO Z” is descriptive and generic in nature, and it cannot claim exclusivity over the use of the letters “A” and “Z” in relation to nutraceutical and pharmaceutical products.
Justice Tejas Karia held that Plaintiff’s Marks and the Impugned Mark are neither identical nor deceptively similar, and therefore, there is no case for infringement or passing off of the “A TO Z” and “A TO Z NS” by the defendant’s mark “MULTIVEIN AZ”.
The case stemmed from a suit filed by Alkem alleging trademark infringement, copyright infringement, and passing off against Prevego Healthcare for its product marketed under the mark “MULTIVEIN AZ”. Alkem claimed rights over its “A TO Z” and “A TO Z-NS” marks, associated logos, and trade dress, contending that Prevego’s mark and packaging were deceptively similar and intended to ride on its goodwill.
An ex parte ad-interim injunction had been granted earlier, restraining Prevego from using the impugned mark. Prevego subsequently moved an application under Order XXXIX Rule 4 CPC seeking vacation of the injunction.
Deciding the interim applications, the Court held that “A TO Z” conveys completeness and comprehensiveness and is descriptive of multivitamin and nutraceutical products. Observing that vitamins are commonly denoted by alphabets and the expression describes the nature of the goods, the Court held that descriptive and generic expressions are publici juris and incapable of attaining distinctiveness or monopolisation. The court further held that “the Plaintiff cannot be allowed to monopolize the use of the letters ‘A’ and ‘Z’ by seeking exclusivity over the right to use the letters ‘A’ and ‘Z’. The use of letters of the English Language cannot be monopolized by the Plaintiff.”
Applying the anti-dissection rule, the Court held that the competing marks must be assessed as a whole and that Alkem, having registrations primarily for device marks, could not claim exclusivity over the word “A TO Z” simpliciter. The Court found that “MULTIVEIN AZ”, when considered as a composite mark, was visually, phonetically, and conceptually distinct, and that the addition of “MULTIVEIN” significantly altered the overall commercial impression.
The Court further rejected Alkem’s claims of copyright infringement and trade dress infringement, holding that copyright protection over a stylised label does not confer monopoly over individual letters of the alphabet, and that the overall get-up, colour scheme, layout, respective trade dresses and fonts of the rival products were distinguishable. In view of these visual differences, the Court held that the impugned trade dress was not deceptively similar to the plaintiff’s trade dresses.
The Court also noted concealment of material facts by Alkem, including non-disclosure of earlier trademark applications for “A TO Z” in Class 5, which had been opposed, withdrawn, or abandoned, and held that Alkem was not entitled to equitable relief on this ground.
In conclusion, the Court dismissed Alkem’s application for the interim injunction and allowed Prevego’s application for vacation of the ex parte order, holding that no case of infringement, passing off, or copyright violation was made out.
Appearances:
Mr. Darpan Wadhwa, Senior Advocate with Ms. Tusha Malhotra, Ms. Bhavya Chhabra and Ms. Rhea Bhalla for Alkem Laboratories Limited
Ms. Arundhati Katju, Senior Advocate with Mr. Siddharth Acharya, Mr. Udit Malik, Ms. Ritika Meena and Mr. Lakshay Sharma for Prevego Healthcare and Research Pvt. Ltd.
