Examining phonetical Similarity: Elyon Pharmaceuticals Pvt. Ltd. vs. The Registrar of Trademarks

In the matter of Elyon Pharmaceuticals Pvt. Ltd. vs. The Registrar of Trademarks, the Appellant, Elyon Pharmaceuticals Pvt. Ltd., sought registration of the word mark “ELMENTIN” bearing Indian application number 2668081 in Class 05 i.e., “Medicines for human purpose”. The Appellant is in the business of making pharmaceutical compositions such as Amoxycillin and Clavulanic Acid. However, the Registrar of Trade Marks rejected this application under Section 11(1)(b) of the Trade Marks Act 1999, citing its deceptive similarity to an existing earlier trade mark “ELEMENTAL” registered for medicinal and pharmaceutical preparations in Class 05 by Juggat Pharma Pvt. Ltd. The relevant extract of the order is produced herein below:

Procedural History

The Appellant filed an appeal against the order of the Respondent at the Delhi High Court set aside the impugned order passed by the Examiner of Trade Marks at the Registrar of Trade Marks on August 27, 2018. The basis for this rejection was the perceived similarity between “ELMENTIN” and “ELEMENTAL” for pharmaceutical preparations.

Issue(s) Presented

The primary issue at hand was whether the rejection of Elyon Pharmaceuticals Pvt. Ltd.’s trade mark application for “ELMENTIN” was justified under Section 11(1)(b) of the Trade Marks Act 1999 due to the alleged deceptive similarity with the registered mark “ELEMENTAL.”

Rule(s) of Law

Section 11(1)(b) of the Trade Marks Act 1999 addresses relative grounds for refusal of trade mark registration and states that a trade mark shall not be registered if its similarity to an earlier trade mark, combined with the identity or similarity of the goods or services covered by the trade mark, creates a likelihood of confusion among the public.

Contentions of the Plaintiff

Ms. Niranjana Kaur, representing Elyon Pharmaceuticals Pvt. Ltd., argued that “ELMENTIN” and “ELEMENTAL” are not phonetically similar. She contended that the rejection of the application lacked a valid basis as the term ELEMENTAL was a commonly used adjective, while ELMENTIN was a newly coined word.

Contentions of the Defendants

Mr. Harish Vaidyanathan Shankar, the CGSC representing the Registrar of Trademarks, upheld the grounds outlined in the impugned order. He argued that the phonetic difference between “ELEMENTIN” and “ELEMENTAL” was minimal and that since “ELEMENTAL” was already registered for medicinal and pharmaceutical preparations, there was no reason to overturn the Examiner’s decision.

Analysis and Reasoning

Justice C. Hari Shankar examined the matter and considered the arguments put forth by both parties. He concluded that:

1. The rejection of the “ELMENTIN” trade mark application might not be justified as the two words, when properly articulated, had distinctly different sounds. Phonetic similarity, as established by the Pianotist Co.’s Application [1906] 23 RPC 774 standard, must consider not only how the words look but also how they sound, the goods they are applied to, the nature of the customers likely to buy those goods, and other relevant surrounding circumstances.
2. He also found it difficult to accept the Examiner’s conclusion that “ELMENTIN” and “ELEMENTAL,” when used for pharmaceutical preparations, were so similar as to cause confusion among the public. The words appeared and sounded different. “ELEMENTAL” was a common English adjective synonymous with “fundamental,” while “ELMENTIN” was a coined word without etymological meaning. They also had different numbers of syllables, with distinct concluding syllables.
3. He highlighted that it was unclear whether the pharmaceutical compositions of the products registered under “ELEMENTAL” and sought for registration under “ELMENTIN” were the same. If they differed, it would mitigate the likelihood of confusion.

Holding and Decision

In light of the analysis, Justice C. Hari Shankar set aside the decision of the Examiner to reject the “ELMENTIN” trade mark application under Section 11(1)(b) of the Trade Marks Act. He remitted Application No. 2668081 for “ELMENTIN” back to the concerned officer at the Registry of Trade Marks for revaluation.

The officer was instructed to assess the application on its merits but not to reject it based on the grounds of Section 11(1)(a) or Section 11(1)(b) of the Trade Marks Act.

Implications and Significance

This case emphasizes the importance of a detailed analysis when considering trade mark applications, especially regarding relative grounds for refusal. It highlights the need for a comprehensive assessment that considers not only visual but also phonetic and conceptual differences between trade marks. Additionally, it underscores the significance of examining the goods or services in question and their potential impact on consumer confusion.

 The judgment provides valuable guidance on the assessment of phonetic similarity in trademark disputes.

The decision in Elyon Pharmaceuticals Pvt. Ltd. vs. The Registrar of Trademarks sets a precedent for trade mark disputes involving perceived similarities between trade marks. It clarifies that a thorough assessment, considering various factors, including phonetic differences and the nature of goods or services, is crucial in determining the likelihood of confusion.