Pancharishta is not a generic word: Delhi High Court grants protection to Emami Limited
“The word PANCHARISHTA is not a generic word. Arishta is a method of preparation of drugs in Ayurveda, however, PANCHARISHTA is a unique formulation of five different ingredients which have been prepared by the Plaintiff. The long and continuous use of the mark since 50 years clearly tilts the balance in favour of the Plaintiff.”
BACKGROUND AND FACTS
Emami Ltd. filed the petition of this case to protect its mark Zandu Pancharishta and Pancharishta. The former was launched in 1968 by Zandu Pharmaceutical Works Ltd; however, this company was acquired by Emami Ltd.[1] in 2008, representing as the predecessor-in-interest. ‘Pancharishta’ was coined by Emami Ltd., claiming it to be an ‘inherently distinctive mark’ with an add-on of the house-mark ‘Zandu’, selling the product together under this name as an ayurvedic digestive tonic. The product is based on traditional asava-arishtas namely Drakshasava, Kumariasava, Lohasava, Dashmoolarishta and Ashwagandharish, and 36 other ingredients. It is used to treat the user’s digestive issues, stomach being upset, flatulence, belching, loss of appetite, and constipation.
A house mark identifies the manufacturing company and the house-mark is placed against the specific product to show their identification with the company e.g.: adding Toyota corolla to Toyota corp. in order to make it more identifiable with Toyota.[2]
The words of Zandu pancharishta and Zandu pancharishta plus got registered in 2010 and 2014, respectively, for ayurvedic, herbal, and medicinal preparations and similar goods. The plaintiff, i.e., Emami Ltd., also claimed that since they have been in continuous use of the trademark of Pancharishta, they now have the exclusive association with it and thus, enjoy the statutory and common law rights relating to the same.
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ISSUE
The dispute arose when the plaintiff saw the defendant’s name Pancharishta and baidyaraj being used in 2019. The plaintiff demanded an immediate and permanent injunction to restrain the infringement of its owned and registered trademark along with adequate relief. The court had granted an ex-parte injunction order because the consumer might get confused since both the products cure similar ailments.
SUBMISSION OF THE PARTIES WRT ORDER 39 RULE 4 CPC
The defendant submitted that he had taken the word from traditional ayurvedic texts such as arishta, an ayurvedic term for a drug prepared by boiling water, over which one cannot exercise a monopoly. The defendant had also pointed out that the plaintiff had agreed that the word pancharishta is a descriptive one, and since it is widely used by third parties too, there can be no monopoly over it. Further, the fact that Zandu is the distinctive part and the pancharishta is a descriptive one was also agreed by them.
The plaintiff stated that they had registered the product in 1986, which the defendant admitted; thus, it has existed for more than 30 years. The plaintiff also pleads that the word arishta is not generic or standard, and it has a secondary meaning too, which did not exist when the plaintiff had used it. The plaintiff is demanding this injunction since the defendant’s product might confuse the consumers concerning the plaintiff’s product’s use.
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ANALYSIS AND FINDINGS OF THE COURT
The first issue that the court had picked up for addressing was whether the word pancharishta is descriptive or generic. The court pointed to the fact that arishta, in Ayurveda, is a form of drug prepared with water. Thus, the word arista found in traditional ayurvedic texts is generic and cannot be monopolized. The next question to be considered by the court was whether or not this fact makes the word pancharishta generic. For this, the statement of Dr. Neena Sharma was taken, who stated that the term pancharishta was coined by the plaintiff by combining five ayurvedic terms. However, this term has not been mentioned anywhere in the same. Not even under the Drugs and Cosmetics Act, 1940, to prove that only the registered owner of the brand can only use the term.
The court further pointed out that no other application was made to the registrar for the word pancharishta by any other manufacturer or trader, again showing that the plaintiff has coined the term. This word has medicinal and scientific meaning for the plaintiff. In contrast, the plaintiff generally uses it to combine the number 5 with the phrase arista, which would have different implications on the consumer’s choice to use either of the products.
The Court, while making its findings, had relied on the judgment of Cadila Health Care Ltd. v. Cadila Pharmaceuticals Limited, in which the Court held that high standards need to be imposed while dealing with medicinal preparations to avoid deception as well as confusion.[3]
Thus, based on the above rationale, the Court had held that the word pancharista is generic. The Court affirmed this point by relying on the judgement of Bata India limited v. Chawla Boot House. It was held that “The spectrum of the distinctiveness of marks clearly explains how distinctiveness of marks is to be judged. The spectrum, as explained in McCarthy on ‘trade Marks and Unfair Competition, can be illustratively depicted as: As the well-known author Mr. J. Thomas McCarthy, in the treatise on ‘Trademark and Unfair Competition, opines, the question as to whether the mark is descriptive or suggestive can be based on the following tests: a) Degree of imagination required to connect the mark with the product, and b) The Competitor’s need to use the mark”.[4]
JUDGEMENT
The plaintiff was entitled to the injunction that restrained the defendant from using Pancharishta as a trademark for medicinal preparations. However, the Court permitted the defendant to use the word arista in a manner that would not result in the statutory and common law violation of the plaintiff’s rights.
Read the judgement here
[1] (2019) SCC 9858.
[2] Types of Trademarks: All You Need to Know, abou naja(Aug. 25, 2021) https://abounaja.com/blogs/types-of-trademarks.
[3] Cadila Health Care Ltd. v. Cadila Pharmaceuticals limited (2001) 5 SCC 73.
[4] Bata India limited v. Chawla Boot House CS (COMM) 110/2019.
Authored by: Jhanvi Sahni; student at NALSAR University of Law
Disclaimer: This article is intended to provide general guidance to the subject matter. It does not contain legal advice. For any specific advice/corrections, write to [email protected]
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