The note discusses the cancellation petition filed by GSK Consumer Healthcare SA (GSK) against the Respondent Celebrity Biopharma’s (Celebrity) registration for the mark OTRINIR. GSK sought cancellation based on their prior adoption and use of the mark OTRIVIN.

While deciding the case, the Delhi High Court has discussed in detail the Anti-dissection and common-to-trade rule and held that the marks “OTRIVIN” and “OTRINIR” have phonetic, structural, and visual similarities that are likely to confuse consumers. The court also noted that the term OTRI is not common to trade.

GSK’s contention:

1. In April 2020, GSK became aware that Celebrity has obtained registration of the mark “OTRINIR” in Class 5 for “Medicinal, pharmaceuticals and ayurvedic preparation and substance, food for babies”. This application was filed on 30th January 2015, claiming use since 10th April 2013.
2. GSK attempted to amicably resolve the issue and sent a legal notice on 1st August 2020. However, Celebrity declined to settle the matter. Thus, to safeguard its rights, GSK filed the present cancellation action under Section 57 of the Trademarks Act.
3. GSK alleged that the mark “OTRINIR” is phonetically, structurally, and visually similar to its mark “OTRIVIN”. The use of the OTRINIR mark is likely to cause confusion and deception amongst the general public and trade. Consumers and traders are likely to associate the mark with GSK’s mark. Thus, the registration of the mark is contrary to Section 9(2)(a) and 11(1) of the Act.
4. The mark OTRIVIN has achieved the status of a well-known mark on account of extensive use, significant revenue, and expenses incurred towards promoting the mark OTRIVIN.

Celebrity’s contention:

1. Celebrity is the bonafide adopter and user of the mark “OTRINIR” since 10th April 2013, registered under no. 2892712.
2. ‘OTRI’ is derived from the term ‘OTORHINOLARYNGOLOGY’, which means the study related to the ear, nose, and throat. The term ‘OTRI’ is formulated out of two syllables, i.e., ‘OT’ – which stands for ‘over-the-counter medicines’ – and ‘RI’ – which stands for ‘rhinitis’, created by rhinovirus. Thus, GSK cannot claim exclusive rights over the usage of ‘OTRI’ as it is generic/common to trade terms or publici juris in law and is used by several users in the market.
3. ‘OTRI’ is generic to trade and in support, a computer-generated trademark search report in Class 5 was filed by Celebrity with the search string ‘OTRI’. The report listed 69 trademarks bearing the prefix ‘OTRI’.
4. The suffix ‘NIR’ originates from the name of the Celebrity’s founding member/director, Niraj Kumar Nir, and M/s Aishwarya Group holds several trademark applications incorporating ‘NIR’. Thus, the mark OTRINIR is a coined term, combining generic and proprietary elements.
5. The court must apply the “anti-dissection rule”, which requires marks to be compared in their entirety rather than segmented into parts.

Court Analysis and Findings:

Whether the competing marks are deceptively similar?

1. Phonetically, ‘OTRI’ in both marks is expected to be pronounced similarly. While the suffixes ‘-VIN’ and ‘-NIR’ sound quite different, this variance may not be enough to prevent phonetic confusion given the strong similarity of the prefixes. Thus, the marks “OTRIVIN” and “OTRINIR” reveal significant phonetic, structural, and visual similarities that are likely to cause confusion among consumers.
2. Further, the mark OTRINIR is registered under the same class and is used for identical goods i.e. nasal decongestant sprays which reinforces the potential for consumer confusion.

Whether Celebrity’s adoption of the mark OTRINIR is bona fide?

1. The court noted that GSK has been using the mark OTRIVIN since the year 1956, while Celebrity has only used the mark OTRINIR since the year 2013. Thus, GSK is the prior user.
2. The court noted that the argument submitted by Celebrity that ‘OTRI’ as a generic term commonly used is not supported by the evidence. The court relied on the grounds submitted by GSK on the status of the computer-generated trademark search report that out of 69 marks; 15 are owned by GSK, 17 are refused, abandoned, or withdrawn, 11 are pending, and 5 are opposed (including 2 by GSK).
3. The court also relied on the list of GSK’s family of OTRI prefix registered marks and a report on the data supplied by the IMS which showed the reputation and market share enjoyed by GSK in respect of nasal decongestants in Class 5. Thus, the court noted that ‘OTRI’ is not a generic term or devoid of distinctive character.
4. With the materials placed on record, the court noted that GSK has sufficiently demonstrated that they have substantial goodwill and reputation in their marks, on account of long and continuous use.
5. The court also noted that GSK’s prior use of the OTRI family of marks and Celebrity’s subsequent choice of “OTRINIR”, closely mirroring “OTRIVIN” and targeting the same product category, seems more opportunistic than coincidental and indicates a strategic attempt to leverage the strong brand identity and established consumer recognition associated with OTRIVIN.
6. The court also noted an apparent contradiction in Celebrity’s arguments that by using ‘OTRI’ in OTRINIR, they inadvertently affirm its distinctiveness which is a direct counter to their defence, that it is a generic term widely used in the trade.
7. Lastly the court agreed with GSK’s contention that the search results provided by Celebrity do not conclusively prove that ‘OTRI’ is common to trade. Neither do the marks cited in the search report indicate that they are actually in use, and if they are, such use is in respect of identical goods, i.e., nasal decongestant sprays. Therefore, lack of evidence would not render the mark ‘OTRI’ to be common to trade.

Court Ruling:

In view of the above analysis, the Court found that the registration of the OTRINIR mark violates Section 9(2)(a) and Section 11(1), 11(2) read with Section 18 of the Act, and is thus liable to be removed from the Register under Section 57 of the Trademarks Act. Thus, the court directed the registration of the mark “OTRINIR” under application no. 2892712 in class 05 to be cancelled.

RNA (www.rnaip.com) represented GSK in this cancellation action.