Trademark | No Confusion Between "BRUFEN" and "MEBUFEN: Delhi High Court

"Common Suffix 'FEN' Does Not Lead to Confusion in Competing Pharmaceutical Marks," Holds Delhi High Court. In a notable judgment delivered on October 22, 2024, the Delhi High Court dismissed an appeal filed by pharmaceutical giant Abbott GmbH, challenging the registration of the trademark "MEBUFEN" by Meridian Medicare Ltd. The court held that the two competing marks, "BRUFEN" and "MEBUFEN," were neither structurally nor phonetically similar, rejecting the claim that the similarity in the use of the suffix “FEN” could lead to confusion among consumers.

The dispute arose when Meridian Medicare Ltd. applied for registration of the trademark "MEBUFEN" in Class 5 for pharmaceutical products, including pain relievers. Abbott GmbH, the proprietor of the well-known analgesic trademark "BRUFEN," opposed the registration, arguing that the similarity between the marks could mislead consumers, as both brands contain ibuprofen, a common pain-relief ingredient.

Abbott, which acquired the "BRUFEN" mark through a Deed of Assignment from The Boots Company PLC in 1995, claimed that the addition of "ME" to "BRUFEN" did not sufficiently distinguish the two marks. However, the Registrar of Trademarks rejected Abbott’s opposition, allowing the registration of "MEBUFEN." This prompted Abbott to file the present appeal under Section 91 of the Trade Marks Act, 1999.

Representing Abbott GmbH, counsel Ms. Tusha Malhotra argued that:

Deceptive Similarity: The rival marks should be considered as a whole, rather than dissecting them letter by letter. The mere addition of "ME" in "MEBUFEN" was insufficient to differentiate it from "BRUFEN." Given that both products contained ibuprofen, there was a high likelihood of confusion.

Phonetic Resemblance: Abbott argued that the marks were phonetically similar, especially when viewed from the perspective of an average consumer with an "imperfect recollection." Ms. Malhotra relied on the ruling in Glenmark Pharmaceuticals Ltd. v. Sun Pharma Laboratories Ltd., where the court held that even slight phonetic similarities could cause confusion.

Public Health Risk: Given that both products were medicinal in nature, Abbott contended that any potential confusion could have serious consequences for consumers.

Defending Meridian Medicare Ltd., counsel Mr. Amit Singha made the following submissions:

Distinctiveness of Marks: The prefixes "BRU" and "MEBU" in the respective trademarks were sufficiently distinct. The only similarity was the suffix "FEN," which is derived from the non-proprietary name "ibuprofen." He argued that Abbott could not claim exclusive rights over this common pharmaceutical term.

Widespread Use of 'FEN': Mr. Singha noted that "FEN" is commonly used in over 5,000 trademarks in the pharmaceutical industry, further weakening Abbott’s claim of exclusivity.

Differences in Packaging: The counsel highlighted that the packaging of the two products was visually distinct, making it even less likely that consumers would confuse the two.

Justice Amit Bansal, after hearing both sides, held that there was no deceptive similarity between "BRUFEN" and "MEBUFEN." The court emphasized that in trademark law, marks must be viewed as a whole, not dissected into individual components. Citing the Supreme Court’s decision in Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., the court reiterated that the comparison should focus on the overall impression of the marks, particularly from the perspective of an average consumer with imperfect recollection.

Justice Bansal ruled that the prefixes "BRU" and "MEBU" were distinctly different, and the shared suffix "FEN"—derived from the active ingredient ibuprofen—could not be monopolized by Abbott. The court further noted that the suffix "FEN" was commonly used in numerous pharmaceutical trademarks, diluting any claim of exclusive rights over it.

The court dismissed the argument that the mere use of "FEN" in both trademarks would confuse consumers. Referring to the Hoffmann-LA Roche v. Geoffrey Manners case, the court stressed that phonetic and visual differences in the two marks were significant enough to avoid confusion, even among consumers with average intelligence.

Additionally, the court noted that the packaging of both products was distinctly different in terms of color schemes and presentation, which would further prevent any confusion in the market.

In its final ruling, the Delhi High Court upheld the Registrar of Trademarks’ decision to register "MEBUFEN," finding that there were no grounds for deceptive similarity between the two marks. The court dismissed the appeal, reaffirming that trademark disputes in the pharmaceutical industry must be evaluated with a balanced approach, considering the distinctiveness of marks and the broader use of common industry terms.

Date of Decision: October 22, 2024

M/s Abbott GmbH v. Registrar of Trademarks & Anr.