Acronym of a descriptive term not protectable
This case has some interesting aspects. First, the simple one, does a registration grant exclusive right to use and restrain the third party from its use. Can the other side in defense argue that the mark in question is descriptive to defeat the claim? The Plaintiff, Bharat Biotech International Limited (Bharat) filed the suit before the Delhi High Court against, Optival Health Solutions Private Limited and another (Optival), alleging trademark infringement, passing off, damages, etc. The post discusses the court’s decision on interim injunction sought by Bharat.
Plaintiff (Bharat) in the suit contends:
- It is a leading manufacturer of specialized vaccines and bio-therapeutics in India. Bharat honestly coined the trademark ‘TCV’ and ‘TYPBAR-TCV’ in 2012 in relation to the vaccine for Typhoid treatment and both the trademarks are registered and valid and subsisting.
- In October 2018, Bharat learned that Optival had commenced promoting a competing vaccine ‘ZYVAC-TCV’ having similar composition for Typhoid infection.
- Use of the mark ‘ZYVAC-TCV’ is bound to cause confusion and passed off as ‘TCV’ of Bharat. Use of a deceptively similar mark in respect of Typhoid vaccine takes unfair advantage and is likely to dilute the distinctive character and repute of Bharat’s trademarks.
- Optival’s use of the reference ‘ZYVAC-TCV’ on its website and the Typhoid vaccine’s launch amounts to infringement of the Bharat’s registered trademark TCV.
Defendant (Optival) contended:
- ‘ZYVAC’ is a combination of the words ‘Zydus’ and ‘Vaccine and ‘ZYVAC-TCV’ is entirely different from ‘TYPBAR-TCV’.
- Bharat’s trademark ‘TCV’ is descriptive of a category of vaccine called ‘Typhoid Conjugate Vaccine’ and cannot acquire any distinctiveness through use and not entitled to protection in law.
- Bharat does not use the mark ‘TCV’ per se and is not the adopter of the mark TCV. A different entity in 2009 had filed an application for registration of the mark TCV in the year 2009.
- ‘ZYVAC-TCV’ is a coined trademark, third parties are using TCV’ in a descriptive sense and thus, permissible in law. Packaging of the rival products are different and no passing off is made out.
Whether TCV is a generic term and incapable of protection
Bharat contended 1) they are the prior adopter, user and registered proprietor of the TCV mark. The mark has acquired distinctiveness through continuous use and is exclusively associated with them 2) Optival has not filed any evidence to show that ‘TCV’ is a generic term 3) Optival has failed to satisfy that registration of Bharat’s trade mark is ex-facie illegal 4) Optival have not initiated action before the appropriate authorities challenging its validity.
Optival argued (1) ‘Typhoid Conjugate Vaccine’, is commonly known in the medical community as ‘TCV’. ‘TCV’ being a generic abbreviation of the product and descriptive of the goods it relates to, is incapable of trade mark protection.
(2) The grant of a trade mark registration is only prima facie evidence of its validity and this presumption is a rebuttable one.
(3) Documents show only the use of ‘TYPBAR-TCV’ and not TCV alone. Allowing Bharat to enjoy exclusivity over a descriptive and generic mark ‘TCV’ would be contrary to public policy.
(4) The rival marks ZYVAC-TCV and TYPBAR-TCV when compared as a whole are entirely different and eliminates any confusion.
(5) Bharat’s arguments are devoid of merit and have sought to argue beyond the pleadings, which is not permissible.
- Admittedly Bharat is the registered proprietor of the marks TYPBAR-TCV and TCV. As per the literature of WHO, which is on record ‘Typhoid Conjugate Vaccine’ is described as one of the three types of vaccines available for treating Typhoid. Considering that TCV is a generic term with regard to one vaccine for treating Typhoid, prima facie the mark ‘TCV’ could not have been registered. A generic/descriptive term can be registered provided it has acquired secondary meaning/ distinctiveness; however, this is a matter for evidence during the trial.
- The contention that TYPBAR–TCV and ZYVAC-TCV is deceptively similar will not hold good. ‘TCV’, which is a generic abbreviation of ‘Typhoid Conjugate Vaccine’ and common to trade needs to be excluded. ‘TYPBAR’ and ‘ZYVAC’ when compared are not similar and there is no probability of confusion either visually or phonetically.
- Bharat has not filed any evidence to show the use of the mark ‘TCV’ per se, and there are marked differences in the packaging/s of the rival products, which further negates chances of confusion.
- The argument that Bharat is the prior user of the mark TYPBAR-TCV has no relevance considering that TCV is generic and common to the trade, and the marks TYPBAR and ZYVAC are not similar. Further, Bharat has not shown use of the mark TCV stand alone.
In light of the above, the court dismissed the injunction application filed by the Plaintiff.