Bombay High Court Bars Use Of 'ZENOX' Mark, Holds It Infringes Glenmark's Registered 'ZINOX' Trademark

The Bombay High Court has permanently restrained Zenlabs India from using the trademark "ZENOX" for medicinal and pharmaceutical products after finding that it was deceptively similar to Glenmark Pharmaceuticals' registered mark "ZINOX".

The court held that use of the rival mark was likely to cause confusion among consumers and members of the trade.

Justice Arif S. Doctor, while decreeing Glenmark's trademark infringement and passing off suit on June 15, held that the competing marks were almost identical. The Court also found that Zenlabs had failed to justify its adoption of the impugned mark.

"A perusal of the rival trade marks makes plain that they are almost identical, and the only difference between the impugned mark 'ZENOX' and the Plaintiff's mark 'ZINOX' is the replacement of the letter 'I' by 'E', and hence both the marks look and sound similar," Justice Doctor observed.

Glenmark instituted the suit in 2016. It contended that it had adopted the mark "ZINOX" in 2007 in relation to medicinal and pharmaceutical preparations and had commercially used the mark since 2013 for a product containing Garenoxacin, which is used to treat bacterial infections.

The company relied on its Class 5 registration, sales figures and promotional expenditure records to establish goodwill and reputation associated with the mark.

According to the record, Glenmark discovered in February 2016 that Zenlabs was marketing a pharmaceutical product containing Ofloxacin under the mark "ZENOX". The product was also used in the treatment of bacterial infections.

The Court noted that an ad-interim injunction granted in April 2016 was confirmed in July 2016. Although Zenlabs appeared at the interim stage, it neither filed a written statement nor led evidence. The suit was subsequently transferred to the list of undefended matters.

"The Defendants have, in spite of appearing, chosen not to file a Written Statement nor, in any manner, denied the Plaintiffs' case. The Defendants have also not led any evidence or cross-examined the Plaintiff's witness, which has resulted in the Plaintiff's evidence remaining uncontroverted," Justice Doctor observed.

While comparing the marks, the Court found that they were visually similar. It further noted that they were homophones.

"In the facts of present case, the impugned mark and Plaintiff's mark are not only visually similar but the same are homophones, and therefore there exists every possibility of confusion arising in the minds of the consumers and members of the trade alike in respect of the said marks," the judge observed.

The Court also noted that Zenlabs had not attempted to justify its adoption and use of the mark "ZENOX". Nor had it raised any defence available in law.

"From the material upon which the Plaintiff has placed reliance, the adoption of the mark 'ZENOX' by the Defendants is subsequent to the Plaintiff's registration and use of the mark 'ZINOX'," Justice Doctor observed.

"The material placed before me as well as the Defendants' negligent conduct pursuant to the present proceedings, demonstrate that the Defendants' adoption and use of the impugned mark is plainly dishonest and without any due cause and is, in fact to ride over the Plaintiff's goodwill and reputation," the court added.

Referring to the Supreme Court's decision in Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., the Court noted that confusion between medicinal products could have serious consequences. It therefore applied a stricter standard while assessing deceptive similarity.

The Court ultimately held that Glenmark had established infringement and passing off. It therefore granted a permanent injunction against Zenlabs.

Glenmark had also sought damages of Rs 5 lakh. The Court declined that relief after finding that no evidence had been led in support of the claim.

However, the Court awarded costs of Rs 5 lakh against each of the two defendants. The amount must be paid within eight weeks. Failing that, interest at 8% would apply.