By Vikrant Rana and Pranit Biswas
It was reported that on September 13, 2021, the Commercial Court of Alipore issued directions in favor of the FMCG company – Emami Group, inter alia recognizing that their registered mark ‘Pancharishta’ was an originally coined term, which had been infringed by similar products introduced by Dr. Morepen under the deceptively similar names/marks ‘PaachanRishta’ and ‘Paachanarishta’. The suit was apparently filed by Emami Group against Dr. Morepen, seeking permanent injunction on account of passing off, trade mark and copyright infringement.
The Plaintiff, Emami Group is a Kolkata based multinational company, engaged in the business of manufacturing and selling personal and health care products, including natural products derived from Ayurveda concepts. The Defendant on the other hand is a fully owned subsidiary of the Indian pharmaceutical company Morepen Laboratories Limited, which is engaged in the business of manufacturing and offering a wide range of health care products, including medicinal Ayurveda products. The suit was filed by the Plaintiff seeking permanent injunction for passing off and infringement of copyrights owing to the introduction of an identical product under a deceptively similar name by the Defendant.
As reported in the media, some notable features of the product introduced by the Defendant are as follows:
- The name Paachanrishta/Paachanarishta, under which the new product has been introduced by the Defendant is deceptively, confusingly and structurally similar to the Plaintiff’s registered name/mark Pancharishta and Pancharishta Plus.
- The structure, shape, and colour scheme of both the products are highly similar.
- The functions of both the concoctions constitute similar medicinal properties and have been introduced to address the same health issues, viz. to aid digestion.
Arguments tendered by the Defendant
According to reports, the main contention by the counsel for the Defendant was that monopoly cannot be claimed over the term ‘Pancharishta’ owing to its derivation from Ayurvedic texts and concepts. It was asserted by the Defendant that Ayurveda is a science, and its concepts are generic in nature. Therefore, no entity may claim absolute/exclusive rights over terms derived from therein.
Arguments tendered by the Plaintiff
However, the abovementioned contention was rebutted by the counsel for Emami Group asserting that:
- Firstly, the term/mark ‘Pancharishta’ had originally been coined by them as a result of combining two words derived from Ayurvedic texts – ‘Pancha’, which essentially translates to the number ‘5’ in Devanagari/Hindi language; and ‘Arishta’, which refers to an Ayurvedic medicinal preparation.
- Therefore, the terms Pancha and Arishta are generic terms that cannot be monopolized, however, the term Pancharishta, which is an originally coined term and has been duly registered as a trade mark, has to be granted protection.
- Additionally, the Plaintiff also asserted their rights over the marks ‘Zandu Pancharishta’ and ‘Zandu Pancharishta Plus’, gaining advantage of prior use by stating that the same were duly registered as trademarks by them, with the Indian Trademarks Registry in the year 1968.
- The Plaintiff also asserted that infringing references were also found on the container of the impugned product offered by the Defendant, which was deceptively identical to the product sold by the Plaintiff. Further, the Plaintiff also pointed out the highly similar colour scheme adopted by the Defendant in the labelling and packaging of the impugned product further adding to the allegation of passing off and infringement.
By virtue of the aforementioned, the Plaintiff was able to demonstrate a direct consequence of the actions of the Defendant, which inherently is the infringement of the Plaintiff’s rights, owing to the evident confusing and deceptive similarities adopted by the Defendant.
After careful consideration of the contentions made by the counsels of both the parties, the Commercial Court at Alipore was convinced that the term ‘Pancharishta’ is a unique term that is eligible to be protected. Thus, an Order in favour of the Plaintiff was passed, allowing the application and granting temporary injunction to the Defendants, consequently restraining the use of the impugned mark “Dr. Morepen Paachanrishta” and “Dr. Morepen PaachanRishta” ‘Paachanrishta’ as commercially adopted by Dr. Morepen.
The befitting Order was foreseeable owing to the highly identical characteristics displayed by both the products. Moreover, the contention of the Defendant asserting the ineligibility to enjoy exclusive rights over the term ‘Pancharishta’ lacked merit owing to the earlier judgement delivered by the Delhi High Court declaring that the name/mark ‘Pancharishta’ belonging to Emami Group is not generic in nature. The rationale was that the term does not give any direct connection to a medicinal formulation meant for curing digestive aliments, thus, granting injunction to the other party and restraining them from using the said word. However, the Delhi High Court in that particular case was of the opinion that the Defendant would be at liberty to use the word ‘Arishta’ in a manner so as to not result in violation of the Plaintiff’s statutory and common law rights.
 Emami Limited vs Shree Baidyaraj Ayurved Bhawan, 26 August, 2019 [CS(COMM) 275/2019] – Delhi High Court
Girishma Sai Chintalacheruvu, Associate at S.S. Rana & Co. has assisted in the research of this article.