The Delhi High Court has ruled in favor of Opella Healthcare Group (“Petitioner”) in its bid to protect its mark “PHENSEDYL.” The dispute revolved around the Respondent’s (Vaibhav) mark “PHENSERYL” and its associated artistic work, which the Petitioner argued were deceptively similar to their well-known trademark. The Petitioner has also obtained an injunction from the Delhi High Court restraining the Respondent from using the “PHENSERYL” mark in any capacity, including as a trade name, corporate name, or domain name.

The Petitioner, Opella Healthcare Group, filed two petitions at the Delhi High Court seeking rectification of the Trademarks Register and the Register of Copyrights.

• The first petition, C.O. (COMM.IPD-TM) 92/2024, was filed under Sections 47 (1)(a) and 57 of the Trademarks Act, 1999, for the removal of the impugned mark “PHENSERYL” registered in favor of respondent no. 1, Vaibhav Vohra.
• The second petition, C.O.(COMM.IPD-CR) 9/2024, was filed under Section 50 of the Copyrights Act, 1957, for the removal of the impugned copyright related to the artistic work registered.

The Petitioner’s Claims

1. It is the creator of the well-established “PHENSEDYL” cough syrup. Its brand has been synonymous with therapeutic solutions for allergic symptoms since its inception in 1954.
2. Longstanding Use: “PHENSEDYL” has been distributed internationally since the 1950s and in India since 1995.
3. Trademark Protection: It has been granted several trademark registrations under Class 05, with the earliest dating back to 1954.
4. Distinctive Branding: To market the “PHENSEDYL” cough syrup, it uses the unique trade dress and packaging, featuring a dark blue background, white font, and blue-pink/red highlights.
5. Confusion and Public Risk: The Respondent’s mark “PHENSERYL” and its packaging were deliberately designed to copy their product, causing confusion in the marketplace. They also underscored the public health risks arising from such confusion, as both products are over-the-counter (OTC) cough syrups.

Respondent’s Defence

The Respondent countered the claims by arguing that:

1. The trademark “PHENSERYL,” along with its packaging, logo, and artistic work, is distinct from the Petitioner’s.
2. Their trademark and copyright registrations were obtained legally and used in good faith.
3. The Respondent’s name and address are prominently displayed on the packaging, which is sufficient to distinguish their products.
4. The Respondent’s products are prescription-based, reducing the likelihood of consumer confusion.

Court’s Findings

After considering the pleadings, evidence and arguments, the Court made the following observations:

• Prior Usage: The Petitioner’s trademark “PHENSEDYL” has been in use since 1954, with consistent marketing and sales in India since 1995. In contrast, the Respondent’s claimed usage of “PHENSERYL” dates only to December 1, 2016, with no substantial evidence of sales or use provided.

• Visual and Phonetic Similarity: A comparison of the marks revealed that “PHENSERYL” is visually and phonetically similar to “PHENSEDYL.” Both marks use a dark blue background, white font, and a blue-pink/red color scheme in their packaging.
• Consumer Confusion: The close resemblance of the marks and packaging makes it likely to cause confusion among the consumers and trade members. As both products are OTC cough syrups, the Respondent’s argument that their products are prescription-based was rejected.

Court’s Decision

The Court concluded that the Respondent’s use of “PHENSERYL” was an attempt to capitalize on the goodwill of “PHENSEDYL” and amounted to trademark and copyright infringement and accordingly allowed the rectification petition.

Directions Issued:

• Trademark Cancellation: The registration for “PHENSERYL” in Class 05 was annulled.
• Copyright Cancellation: The copyright for the artistic work was revoked.
• Directive to Authorities: The Registrar of Trademarks and the Registrar of Copyrights were instructed to expunge the Respondent’s entries from their respective Registers.

Comment

This ruling reinforces that where adoption is tainted, the use claim may not be sufficient to overcome the objection on the ground of similarity of marks.