Bombay HC cancels 'Duphachrit' trademark, rules it deceptively similar to Abbott's 'Dupha' family

Mumbai: The Bombay High Court has ordered the cancellation of Thane-based firm Menschlich Healthcare's (OPC) trademark 'Duphachrit' in favour of Abbott Product Operations AG. The Swiss subsidiary of the US-headquartered pharmaceutical company had approached the court alleging that its trademarks were built around the prefix 'Dupha,' including well-known brands such as Duphaston and Duphalac, with registrations in India dating to 1951.

Justice Arif Doctor, while allowing Abbott Product Operations' petition seeking rectification of the trademark register, directed that the mark 'Duphachrit', registered in Class 5 for pharmaceutical products, be cancelled and removed.

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"I don't have the slightest hesitation in holding that the rival marks are deceptively similar and that a consumer of average intelligence and imperfect recollection would, in all likelihood, associate 'Duphachrit' with the petitioner (Abbott) and perceive it to be a part of the petitioner's 'Dupha' family of marks," the court said in its June 15 order.

The judge further said, "I also have no hesitation in holding that the adoption of the impugned mark by respondent No. 1 is not only dishonest and entirely lacking in bona fides but is clearly calculated to deceive and to encash upon the reputation and goodwill enjoyed by the petitioner in the 'Dupha' family of marks."

The company said the prefix originated with 'Dutch Pharmaceuticals' and that it had acquired substantial goodwill through decades of commercial use and large-scale sales. Advocate Hiren Kamod, appearing for Abbott, argued that since the 1960s, the company had been openly, continuously and extensively using the 'Dupha' marks in respect of medicinal and pharmaceutical preparations and had achieved sales of hundreds of crores of rupees.

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Countering this, Menschlich Healthcare argued that Abbott Product did not have registration of the standalone mark 'Dupha', nor had it ever been assigned or transferred to the petitioner company.

The respondent company also argued that the petition was nothing but an attempt by the petitioner to secure a monopoly over 'Dupha', irrespective of the well-settled principles governing trade mark law.