In a decisive ruling, the Madras High Court has upheld the trademark rights of Apex Laboratories Pvt. Ltd., restraining Knoll Healthcare Pvt. Ltd. from using the mark ZINOLVITA for its pharmaceutical products. The judgment, delivered after a combined hearing of the suit and cross-rectification petitions filed by the parties against each other, highlights that even marks lacking inherent distinctiveness can gain legal protection through long and continuous use.

Background of the Dispute

Apex Laboratories, proprietor of the registered mark ZINCOVIT since 1988, alleged that Knoll’s ZINOLVITA mark was deceptively similar to its own brand name and was being sold with packaging similar to its distinctive seven-colour label. Apex sought a permanent injunction, claiming infringement, passing off, and copyright violation.

While the case was pending, Apex filed a petition to rectify Knoll’s registration for the mark ZINOLVITA, contending that it was registered ‘without sufficient cause’ and posed a risk of consumer confusion. Knoll, in turn, filed rectification petition to modify the register to prevent Apex from claiming exclusive rights over the term ‘zinc’ and ‘vit’ in ZINCOVIT.

Key Arguments

1. Apex Laboratories stressed that ZINCOVIT had been in continuous use since 1990 and had acquired distinctiveness through decades of sales. They argued that Knoll’s adoption of ZINOLVITA, coupled with its imitation of Apex’s label design, was dishonest and likely to mislead consumers.
2. Knoll Healthcare countered that both marks were distinguishable, that ZINCOVIT was a weak and descriptive mark (derived from ‘zinc’ and ‘vitamin’), and that it could not claim exclusivity over generic terms. They claimed ZINOLVITA was a bona fide creation, allegedly combining ‘zinc,’ ‘vitamin,’ and elements from Knoll’s own trade name.

Court’s Findings

The Court held that while ZINCOVIT was not inherently distinctive, its long and extensive use had given it “acquired distinctiveness,” rejecting Knoll’s claim that it was generic or common to trade. Moreover, no substantial evidence of widespread third-party use of similar marks was presented by Knoll.

On the question of exclusivity, the Court ruled that Apex could protect ZINCOVIT as a whole but could not monopolise the separate use of ‘zinc’ or ‘vit.’ However, Knoll’s rectification petition seeking to limit Apex’s rights over these components was dismissed as Apex was not claiming any exclusivity over ‘zinc’ and ‘vit’ separately.

Regarding similarity, the Court noted that Knoll initially used an identical image of fruits and vegetables alongside the mark ZINOLVITA, indicating bad faith. Given the similarity of the marks, their use for identical products, and Apex’s prior adoption, the Court found a likelihood of consumer confusion.

In light of the above findings the Court decreed the suit in favour of Apex:

1. Permanently restraining Knoll from using the mark ZINOLVITA
2. Allowed the rectification petition filed by Apex against the mark ZINOLVITA
3. Dismissed the rectification petition filed by Knoll against the mark ZINCOVIT.

The Court further observed that even after Knoll changed its packaging, the mark ZINOLVITA remained deceptively similar to ZINCOVIT, amounting to passing off.

Comment

The judgment reinforces the principle that even inherently non-distinctive trademarks can acquire distinctiveness through long and extensive use, entitling the proprietor to protection against deceptively similar marks.