Delhi High Court Holds ‘A TO Z’ Descriptive, Vacates Injunction in Pharma Trademark Dispute

Delhi High Court Holds ‘A TO Z’ Descriptive, Vacates Injunction in Pharma Trademark Dispute

Introduction

The Delhi High Court has refused to grant interim protection to pharmaceutical major Alkem Laboratories Limited in respect of its “A TO Z” mark, holding that English alphabets and commonly used expressions denoting comprehensiveness cannot be monopolised under trademark law. The Court ruled that the mark is descriptive in nature and does not merit exclusivity.

Factual Background

Alkem Laboratories Limited is engaged in the manufacture and sale of pharmaceutical and nutraceutical products. It claimed rights over the marks “A TO Z” and “A TO Z-NS”, which it has used since 1998 for multivitamin and health supplement products.

The dispute arose when Prevego Healthcare and Research Pvt. Ltd. launched a multivitamin product under the mark “Multivein AZ”. Alkem alleged that the use of “AZ” infringed its “A TO Z” family of marks and amounted to trademark infringement, passing off, and copyright infringement in respect of its logo and trade dress.

Procedural Background

Alkem instituted a civil suit before the Delhi High Court seeking injunction against Prevego’s use of the mark “Multivein AZ”. An ex parte injunction was initially granted in Alkem’s favour.

The matter subsequently came up before Justice Tejas Karia for consideration of whether the interim protection should continue.

Issues

1. Whether the mark “A TO Z” is distinctive or merely descriptive in nature.

2. Whether Alkem could claim exclusivity over the use of English alphabets “A” and “Z”.

3. Whether the defendant’s mark “Multivein AZ” was deceptively similar to the plaintiff’s marks.

4. Whether Alkem was entitled to equitable interim relief.

Contentions of the Parties

Alkem contended that it had been using the “A TO Z” mark for over two decades and that the defendant’s use of “AZ” for identical goods was likely to cause confusion among consumers. It argued that “Multivein AZ” was an attempt to ride upon the goodwill and reputation associated with its well-known brand.

Prevego opposed the plea, arguing that “A TO Z” is a commonly used expression signifying completeness and lacks inherent distinctiveness. It submitted that “Multivein” was the dominant element of its mark and that the overall visual, phonetic, and conceptual impression of the marks was different. It also pointed out that Alkem did not hold a word-mark registration for “A TO Z” in Class 5.

Reasoning and Analysis

The High Court held that trademarks must be assessed as a whole and not dissected into individual components. It found that the addition of the word “Multivein” significantly altered the overall impression of the defendant’s mark, reducing the likelihood of confusion.

Justice Tejas Karia observed that the expression “A TO Z” is descriptive and commonly used to indicate comprehensiveness. As such, Alkem could not be permitted to monopolise the English alphabets “A” and “Z” through trademark law.

The Court further noted that Alkem had failed to disclose earlier trademark applications for “A TO Z” in Class 5 that had been withdrawn, abandoned, or opposed. This lack of candour disentitled the plaintiff from discretionary and equitable relief.

The Court also rejected Alkem’s claim of copyright infringement, finding no substantial similarity in the logos or trade dress that would warrant protection.

Decision

The Delhi High Court vacated the ex parte injunction granted earlier and dismissed Alkem’s plea for interim relief. It held that the defendant was entitled to continue using the mark “Multivein AZ”. The Court clarified that English alphabets and descriptive expressions cannot be monopolised under trademark law.

In this case the plaintiff was represented by Mr. Darpan Wadhwa, Senior Advocate with Ms. Tusha Malhotra, Ms. Bhavya Chhabra and Ms. Rhea Bhalla, Advocates. Meanwhile the defendant was represented by Ms. Arundhati Katju, Senior Advocate with Mr. Siddharth Acharya, Mr. Udit Malik, Ms. Ritika Meena and Mr. Lakshay Sharma, Advocates.