The High Court of Judicature at Bombay recently addressed this issue in the case of Les Laboratories Servier and Anr. vs. Sefier Life Science Private Ltd., where the plaintiffs sought to prevent the defendant from using a mark deceptively similar to their well-known trademark, SERVIER. This judgment underscores the legal principles surrounding trademark infringement and passing off, especially in the pharmaceutical industry, where the use of similar trade names can lead to life-threatening confusion.

Factual Background:
The plaintiffs, Les Laboratories Servier and Anr., are part of the SERVIER group, a leading French pharmaceutical conglomerate known globally for its commitment to therapeutic progress. Established in 1954, the SERVIER group operates in over 150 countries and is recognized for its extensive research and development in pharmaceuticals. The group’s trademark, SERVIER, has garnered substantial goodwill and reputation over the decades, making it a distinctive and well-known mark in the pharmaceutical industry.

The defendant, Sefier Life Science Private Ltd., began using the mark SEFIER in relation to pharmaceutical products, both as part of its corporate name and domain name. The plaintiffs argued that SEFIER was deceptively similar to their registered trademark SERVIER, leading to a likelihood of confusion among consumers. The plaintiffs sought an injunction to restrain the defendant from using the SEFIER mark, claiming that the defendant’s adoption of the mark was dishonest and amounted to trademark infringement and passing off.

Legal Issues:
The primary legal issues in this case were:
Whether the defendant’s use of the SEFIER mark constituted trademark infringement under the Trade Marks Act, 1999.

Whether the defendant’s adoption of the SEFIER mark was likely to cause confusion and deception among consumers, particularly in the context of pharmaceutical products.
Whether the use of the SEFIER mark in the defendant’s corporate name and domain name amounted to passing off.

Trademark Infringement: Phonetic and Visual Similarity
One of the core arguments made by the plaintiffs was the phonetic and visual similarity between the marks SEFIER and SERVIER. Trademark law recognizes that even minor similarities in the appearance, sound, or meaning of marks can lead to consumer confusion, particularly when the goods in question are identical or similar.

In this case, the court rejected the defendant’s contention that the marks were phonetically and visually distinct. The defendant argued that the pronunciation of the letters ‘F’ and ‘V’ in SEFIER and SERVIER, respectively, created a different overall impression. However, the court found that this distinction was insufficient to negate the likelihood of confusion, especially given the high degree of similarity in the remaining letters and the overall structure of the marks.

The court further noted that the defendant’s use of the mark as part of its corporate name (Sefier Life Science Private Ltd.) did not diminish the likelihood of confusion. The essential and prominent feature of the defendant’s name was SEFIER, which closely resembled the plaintiffs’ SERVIER mark. In trademark law, it is well established that the addition of descriptive or non-distinctive elements, such as “Life Science Private Ltd.,” does not alter the likelihood of confusion if the dominant part of the name is similar to the registered trademark.

Use of Similar Trade Names and the Application of Section 29(5)
A critical aspect of this case was the application of Section 29(5) of the Trade Marks Act, which deals with the use of a registered trademark as part of a trade name or corporate name. The defendant argued that this provision did not apply because they were not using the plaintiffs’ exact mark but a similar one, and they were not dealing in the same goods or services.

The court dismissed this argument, holding that the defendant’s use of the SEFIER mark as part of its trading name did indeed constitute trademark infringement under Section 29(5). The court emphasized that the mark SEFIER was nearly identical to the plaintiffs’ SERVIER mark and that the defendant was dealing in pharmaceutical products, the same goods for which the plaintiffs had secured trademark registration.

Passing Off and the Likelihood of Confusion:
In addition to trademark infringement, the plaintiffs also claimed that the defendant’s use of the SEFIER mark amounted to passing off. Passing off occurs when one party misrepresents their goods or services as being associated with another party, thereby causing damage to the latter’s goodwill.

The court found that the defendant’s use of the SEFIER mark was likely to cause confusion and deceive consumers into believing that the defendant’s products were associated with or endorsed by the plaintiffs. This was particularly concerning in the pharmaceutical industry, where such confusion could have serious public health implications.

The court also addressed the defendant’s argument that they were not selling goods in India and were only using the mark for export purposes. The court clarified that the application of the impugned mark to goods in India, even for export, constituted use in India and could lead to consumer confusion. This interpretation aligns with the broader objective of trademark law, which is to protect consumers from deception and ensure that trademarks fulfill their role as reliable indicators of the origin of goods and services.

Distinctiveness of the SERVIER Mark:
A noteworthy aspect of the court’s analysis was its consideration of the distinctiveness of the SERVIER mark. The defendant contended that the plaintiffs could not claim exclusivity over a word of common language. However, the court rejected this argument, noting that SERVIER was not a generic term but a distinctive and well-established trademark associated with the plaintiffs’ pharmaceutical products.

The court’s ruling highlights the importance of maintaining the distinctiveness of a trademark. In cases where a mark has acquired substantial goodwill and recognition, even slight variations in a similar mark can lead to a finding of infringement. This is especially true in industries like pharmaceuticals, where consumer trust and safety are paramount.

Conclusion and Implications:
The High Court’s decision in Les Laboratories Servier and Anr. vs. Sefier Life Science Private Ltd. reaffirms the legal principles governing trademark infringement and passing off in India. The court’s order to restrain the defendant from using the SEFIER mark or any deceptively similar mark underscores the importance of protecting trademark rights, particularly in industries where consumer confusion can have dire consequences.

This judgment serves as a reminder to businesses about the significance of conducting thorough trademark searches and ensuring that their chosen marks do not infringe on the rights of established brands. It also highlights the need for courts to adopt a stricter approach in cases involving pharmaceutical products, where the potential for confusion can affect public health.

Case Citation: Les Laboratories Servier Vs Sefier Life Science: 19.07.2024 : COM IPR SUIT (L) No.18086 of 2024: Bombay High Court: R.I.Chagla: H.J

Disclaimer:
The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Written By: Advocate Ajay Amitabh Suman, IP Adjutor - Patent and Trademark Attorney
Email: [email protected], Ph no: 9990389539