The Delhi High Court has dismissed a petition filed by Alkem Laboratories Limited seeking interim relief against Prevego Healthcare and Research Private Limited for the alleged infringement of its ‘A TO Z’ mark in the context of pharmaceutical and health supplement products.
The single-judge Bench of Justice Tejas Karia recently observed that commonplace linguistic elements, including English alphabets, could not be monopolised through trademark protection.
The dispute arose from Alkem Laboratories’ contention that Prevego’s branding of its multivitamin product as ‘Multivein AZ’ constituted infringement of its purportedly well-known ‘A TO Z’ and ‘A TO Z-NS’ marks. The plaintiff asserted that it had continuously used the ‘A TO Z’ mark since 1998 in relation to health supplements and that Prevego’s adoption of a similar designation amounted to trademark infringement under the Trade Marks Act, 1999, actionable passing off, and copyright violation relating to the logo and trade dress.
Prevego contested these claims, arguing that ‘A TO Z’ was a generic, descriptive expression commonly understood to signify comprehensiveness and therefore lacks inherent distinctiveness capable of functioning as a trademark under Section 9(1)(b) and (c) of the Trade Marks Act, 1999.
The defendant further contended that its mark ‘Multivein AZ’ was visually, phonetically, and conceptually distinct, with ‘Multivein’ serving as the dominant element, and that the plaintiff had no registered word mark for ‘A TO Z’ in Class 5, which specifically covered pharmaceutical and nutraceutical products.
The High Court emphasised that trademark evaluation must consider the mark in its entirety, rather than in isolated components, in line with established jurisprudence such as Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. [(2001) 5 SCC 73] and DHL Express (India) Pvt. Ltd. v. DHL Express Worldwide (India) Pvt. Ltd. [(2018) 234 DLT 353].
It observed that the addition of Multivein sufficiently altered the overall commercial impression of the defendant’s mark, mitigating any likelihood of confusion among consumers.
The single-judge Bench noted that the plaintiff failed to disclose previous applications for the ‘A TO Z’ mark in Class 5 that were withdrawn, abandoned, or opposed, holding that such nondisclosure disentitled it from equitable relief under doctrines recognised in ICICI Bank Ltd. v. Reliance Industries Ltd. [(2008) 38 PTC 129 (Del)]. Consequently, the ex parte injunction previously granted in favour of Alkem was vacated.
Justice Karia further rejected the claims of infringement, noting the absence of substantial similarity in the expression of the marks that could constitute protectable artistic or literary work under the Copyright Act, 1957.
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