If a physician desires his patient to be treated with AZIWOK, the patient must not end up taking AZIWAKE.

Facts and Background

The Plaintiff, Dr Reddy’s Laboratories (DRL), filed the suit against Defendant (Smart Laboratories) to protect its registered mark ‘AZIWOK’ and sought an injunction against Smart Laboratories of a deceptively similar mark (phonetically, visually, and structurally) ‘AZIWAKE’ containing same formulation i.e., ‘Azithromycin’ used for anti-bacterial treatment.

DRL’s case

The mark ‘AZIWOK’ was coined and registered in India in 1994 and has been continuously and extensively used by its predecessor since 1994. DRL claimed that since they acquired the mark with goodwill, the use made by the assignor company (in this case, Wockhardt) would accrue to their benefit. The mark ‘AZIWOK’ enjoys immense goodwill and reputation in India. Therefore, the use of a deceptively similar mark, ‘AZIWAKE’ by ‘Smart Laboratories’, will dilute the distinctiveness of DRL’s mark.

‘Smart Laboratories’-contentions:

‘Smart Laboratories’ objected to the grant of interim injunction and raised the following objections:

1. The suit is not maintainable as DRL did not exhaust the compulsory pre-institution mediation [under section 12 A (1) of the Commercial Court Act 2015].
2. The prefix ‘AZI’ is common to trade, and the same has been taken from the active ingredient ‘Azithromycin’’, and several marks co-exist with the prefix AZI.
3. It is a common practice in the pharmaceutical business to coin a brand by taking elements of the active ingredient/salt.
4. The competing marks are different, and their packaging is also different therefore, the passing off does not arise in the present case.

Court’s conclusion and decision:

• On Section 12A of the Commercial Courts Act- regarding pre-institution mediation:

The Court discussed the principle laid down in various cases on pre-institution mediation and held that the assertions regarding urgency and the necessity of immediate interim relief, as contained in the present application, are far more detailed and comprehensive to justify dispensation with the requirement of pre-institution mediation.

• Similarity of marks – Infringement and Passing off
  • The Court held that there is no real distinction between AZIWOK” and “AZIWAKE” in their “look” and “sound,” especially as the Plaintiff has a word mark registration for the word “AZIWOK.” The Court concluded that “AZIWAKE” is phonetically similar to “AZIWOK”, as they sound deceptively alike to the ear.
  • To the ear of the consumer of average intelligence and imperfect recollection, it is, therefore, clear that the words “AZIWOK” and “AZIWAKE” are phonetically deceptively similar.
  • Applying the initial interest test, a consumer of average intelligence and imperfect recollection who has once come across the Plaintiff “AZIWOK” product and later comes across the Defendant’s “AZIWAKE” product has every chance of being placed in a state of wonderment or confusion as to whether he has seen the mark earlier. That, by itself, is sufficient to result in a “likelihood of confusion” within the meaning of Section 29(2)(b).
  • The Court ruled that “AZIWOK” and “AZIWAKE” are both used for azithromycin; therefore, it cannot be said that the administration of AZIWAKE to a patient instead of AZIWOK could be injurious to his health. The submission ignores the ground reality that every formulation of an API may not be equally efficacious.
• Common to the Trade

Dealing with the contention that the prefix “AZI” was common to the trade when used for pharmaceutical preparations containing ‘Azithromycin’, the Court noted DRL is not claiming exclusivity for the prefix “AZI.” The Court elaborated that AZIWAKE is not phonetically deceptively similar to AZIWOK merely because of the common “AZI” prefix but because the two marks, seen as a whole, are phonetically similar.

Court’s Ruling

The Court thus injuncted ‘Smart Laboratories’ from using the mark ‘AZIWAKE’, with or without any prefixes or suffixes, in respect of pharmaceutical preparations or for any other allied of cognate goods or services, holding the mark to be phonetically similar to the DRL’s ‘AZIWOK’.

RNA represented Dr Reddy’s in this case.