Delhi High Court permits use of OMIPURE mark for RT-PCR test kit to detect Omicron variant of the Covid-19
Conflict has arisen between Mankind Pharma Limited (Mankind) and Tata Medical and Diagnostics Limited (TMDL) over the similarity of marks OMIPURE and OMISURE. The OMI element in OMIPURE is derived from Omeprazole and from Omicron variant of Covid-19 for OMISURE. Mankind has filed the suit against TMDL based on its registration of the mark OMIPURE. Mankind alleged trademark infringement, rendition of accounts, delivery up, damages, etc. and sought to restrain TMDL from using the mark OMISURE in relation to their business. This note discusses the contentions by the parties and the order passed by the High Court.
Mankind in the suit stated:
- They are a pharmaceutical company with a large range of medicinal and pharmaceutical preparations.
- The mark OMIPURE was adopted in the year 2007 and contains Omeprazole which is used as antacids, anti-reflux agents and anti-ulcerant preparations.
- The mark is registered in class 5 and has been used from 2007 to 2012. There was a break in sales and has recommenced use of OMIPURE in 2021.
- In January 2021, they came across advertisements and newspaper articles that TMDL intends to launch RT-PCR test kits under the trademark ‘OMISURE’ for detection of the Omicron variant of Covid-19. The cease and desist letter sent by them was not acted upon by TMDL and they launched RT-PCR testing kit under the trademark ‘OMISURE’.
- Use of the mark ‘OMISURE’ for diagnostic kits amounts to infringement of the registered trademark OMIPURE. It will lead to confusion and ‘blurring’ by association of the two products.
TMDL counters the contentions on the following grounds:
- ‘OMISURE’ is derived from the Omicron variant of Covid-19 that the diagnostic kit detects. Diagnostic kits generally use the word ‘SURE’ as a suffix and the RT-PCR test kit has been launched by TMDL with the name, ‘TATA MD CHECK RT-PCR OMISURE’.
- There is no chance of confusion as the test kit is being used only at the point of first line testing i.e., laboratories and is not sold over the counter openly to customers.
- The sales figures of ‘OMISURE’ are Rs. 21.38 crores (approx. Us $ 2750916) in the last two months, whereas, Mankind’s sales figure for the product under the mark ‘OMIPURE’ is only Rs. 1.8 crores (approx. Us $ 231601) for the year 2021-2022.
- Mankind does not enjoy any goodwill considering for 9 years period between 2012 to 2021 no product was sold by Mankind under the mark ‘OMIPURE’.
- ‘TATA MD CHECK RT-PCR OMISURE’ must be read together and the word ‘OMISURE’ cannot be read in isolation. The term ‘OMI’ has been derived from ‘Omicron’ and there cannot be any monopoly over the word ‘OMI’.
- Admittedly, Mankind is the registered proprietor of the mark ‘OMIPURE’ in relation to ‘pharmaceutical and medicinal preparations’ in class 5. As per the NICE classification, diagnostic kits would be covered in class 10 which is a different class altogether. The test kit sold under the mark ‘OMISURE’ is of a specialised nature used in laboratories for diagnosing the Omicron variant of Covid-19 and not sold openly by chemists to the consuming public. On the other hand, Mankind’s product ‘OMISURE’ is used for the purpose of gastro-intestinal ailments. Thus, it is not a case of identical mark for identical goods considering that pharmaceutical and medical preparations for which Mankind’s OMIPURE mark is registered is not the product for which TMDL is using the mark, i.e., diagnostic kits.
- With regard to goodwill and association, the fact that there have been no sales of the OMIPURE product for a period of 9 years has a significant impact as dilution can only be of a mark which is in extensive use and can be protected for dissimilar goods. Moreover, the sale figures of TMDL show considerable volumes of high monetary value, thus, chances of blurring are negligible.
- The OMISURE product being a RT-PCR test kit to test Omicron variant of the Covid-19 is claimed to be a breakthrough innovation which has been developed in India. The sale of the test kit would be required to test samples for Omicron variant of Covid-19 on a day-to-day basis. Thus, any interdicting by the Court at this stage would be contrary to the interest of the patients and the public who are suffering from Covid-19.
- As the trademark ‘OMISURE’ is now in use in full form as ‘TATA MD CHECK RT-PCR OMISURE’ and considering the surrounding factors, the sale of the test kit for the purpose of diagnosis of the Omicron variant of Covid-19 would not cause any confusion in the market or even association with Mankind’s mark OMIPURE.
Considering the above findings, the court refused to grant an injunction in favour of Mankind, however, directed TMDL to:
- maintain proper accounts of the sale of ‘TATA MD CHECK RT-PCR OMISURE’ test kits and the same to be filed bi-annually in the form of an affidavit.
- Not use the mark OMIPURE or any other deceptively similar mark to launch any RTPCR test kits or any other diagnostic kits.