Phonetic and Ocular Similarity is a conclusive test for infringement

HYVISC and ZYVISC mark used for ophthalmic preparations is the subject of the instant dispute between two entities in the pharmaceutical industry before the Chennai High Court. Unimed Technologies Limited and Ors (Unimed) filed the suit against Cadila Healthcare Limited and Ors (Cadila) alleging trademark infringement, passing off, rendition of accounts, etc., claiming rights over the mark HYVISC and alleging similarity with ZYVISC. This note discusses the contentions raised by the parties and the judgment passed by the Chennai High Court.

Unimed in the suit contend:

  1. They are the registered proprietor of the trademark HYVISC in class 5. The mark was registered in the name of its predecessors and has devolved upon them by assignment.
  2. The mark HYVISC was adopted in 1997 in relation to ophthalmic preparations for treating dry eyes and accelerates the healing process after cataract operations.
  3. Because of extensive publicity, and long and continuous use, the trademark HYVISC has come to be identified exclusively with them.
  4. Cadila is using the mark ZYVISC in relation to ophthalmic preparations to treat similar conditions.
  5. The marks are deceptively similar and used in respect of similar or identical products, and confusion is imminent.

Cadila defends the suit on the following:

  1. They manufacture and market several medicinal preparations and hold more than 400 patents. 
  2. The mark ‘ZYVISC’ was adopted by taking the prefix ‘ZY’ from the house mark, namely, ‘ZYDUS’. The suffix ‘VISC’ refers to viscoelasticity, a characteristic of the products. The suffix ‘VISC’ is common in the trade concerning ophthalmic products.
  3. ZYVISC is a schedule ‘H’ drug, and there will be no confusion concerning the origin of goods. 
  4. Unimed has failed to prove confusion, loss of business, or reputation.
  5. The Court has no territorial jurisdiction to entertain the suit.

The parties did not adduce oral evidence and relied on documents to substantiate their case. The Court, after considering the pleadings, arguments, and case laws, held:

  1. Cadila’s contention that the Court does not have territorial jurisdiction ought to fail. Documents evidence that Unimed and co-plaintiffs have their offices and the products are also sold commercially within the jurisdiction of the Court, which creates a cause of action.   
  2. Admittedly, the trademark HYVISC is registered since 1997. In action for infringement of trademark, dishonest adoption is not an essential pre-requisite, although it is a material consideration for the grant of relief. The real test is whether the impugned mark is identical or deceptively similar. The similarity of the rival marks should be judged by putting oneself in the shoes of a consumer of average intelligence and imperfect recollection. 
  3. In the instant case, both parties manufacture and market ophthalmic products under the respective marks. Unimed manufacture two products, ‘HYVISC Eye Drops and ‘HYVISC Plus,’ whereas Cadila manufactures and markets ‘ZYVISC Ophthalmic Solution and ‘ZYVISC PFS’. ‘HYVISC Eye Drop’ is a lubricant used to treat dry eyes. ‘HYVISC Plus’ is used in eye surgeries to prevent damage to the cornea and to be administered intra-ocularly. Cadila’s ‘ZYVISC’ Ophthalmic Solution is a lubricant used for dry eyes, and ‘ZYVISC PFS’, appears to be a product used during eye surgeries. Thus, as regards the intraocular products, the risk of deception and confusion is mitigated but not eliminated, whereas as regards the patient-administered eye drops, the risk is higher.
  4. There is considerable similarity between the rival marks HYVISC and ZYVISC, both products are used in treating ophthalmic conditions. Though the likelihood of confusion is reduced when a product is administered in a hospital setting, given the phonetic and ocular similarity of the two marks, the likelihood of confusion cannot be discounted. Therefore, it ought to be held that Cadila’s mark ZYVISC is deceptively similar to Unimed’s registered trademark HYVISC.
  5. With regard to passing off, in the instant case, the goods and the marks are similar. The evidence on record indicates that Unimed’s predecessor adopted the mark in 1997, whereas Cadila adopted the mark much later.
  6. Unimed’s justification about the reasons for the adoption of the mark ZYVISC supports the inference that the initial adoption was not mala fide but did not constitute a valid defence to the claim of infringement and passing off. Moreover, continued use of the mark ZYVISC in relation to ophthalmic products is likely to confuse potential consumers of the products. 

In light of the above findings, the Court decreed the suit in favour of Unimed and granted injunctive reliefs in respect of infringement and passing off.

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