Genuine Helthcare Pvt. Ltd., which had a predecessor-in-interest of the registered trade mark ANAFORTAN, used it extensively and videos for the Medicines manufactured and sold in the market. Since September, 2016 it had

The problem is based on the case Raj Kumar Prasad & anr v. Abbott Healthcare Pvt Ltd [DEL] FAO(OS) 281/2014 . In this case, the Division Bench of the Delhi High Court (on appeal) had an opportunity to consider whether the owner of a registered trademark can sue the registered owner of a different but deceptively similar trademark. Abbott alleged that Raj Kumar Prasad was using a deceptively similar mark - AMAFORTEN - and had secured a registration for this on June 17 2009. The products bearing the marks ANAFORTAN and AMAFORTEN had the same formula, used the same compound and were intended for the same therapeutic use (relief in abdominal pain and intestinal colic). Further, the trade dress of the two products was also similar. Abbott instituted a suit for infringement and passing off before a single judge at the Delhi High Court seeking, among other things, a permanent injunction. Abbott sought an extension from the court and filed an application to challenge Prasad's registration before the IP Appellate Board (IPAB). Prasad argued that the suit was expressly barred by Section 28(3), since he was the registered owner of the mark AMAFORTEN. It was held that a registered proprietor of trade mark is entitled to sue as a registered proprietor of a trade mark if the latter is identical with or nearly resembles the other. The trade mark used by Raj Kumar Prasad AMAFORTEN is ex-facie phonetically and visually similar to that of Abbott's ANAFORTAN. Through its predecessor, Abbott has been using the trademark ANAFORTAN extensively since the year 1988. Ex-facie, there is a visual and phonetic similarity in the trademark AMAFORTEN in comparison with the trademark ANAFORTAN. The competing goods are pharmaceutical preparations, the class of the goods is the same, the consumer is the same and the trade channel is the same. Abbott has inherited the goodwill and reputation in its trademark ANAFORTAN through its predecessors in interest and would be entitled to protect the same. Abbott is in the market since 1988 whereas the defendant entered the market somewhere in 2012. The defendant applied to the Registrar of Trademarks for registration of the trademark AMAFORTEN on June 17, 2009 and was granted registration on 12 July, 2011. Tested on the legal principles laid down by the Supreme Court in the case of Wander Ltd. & Anr. vs. Antox India P. Ltd. reported as 1990 (Supp.) SCC 727, the High Court injuncted Raj Kumar Prasad from selling the product under trademark AMAFORTEN or any other mark deceptively similar to that of Abbott. Applying the above principle of law, Genuine Healthcare Pvt. Ltd in the present case will succeed in the proceedings initiated by it.