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Phonetic Similarity in Trademark Disputes

LexOrbis India


The Delhi High Court recently issued a decision on the phonetic similarity of trademarks in the case of Elyon Pharmaceuticals Pvt. Ltd. v. The Registrar of Trademarks. In this case, the appellant, Elyon Pharmaceuticals, had applied to register the trademark ELMENTIN for a pharmaceutical composition of amoxicillin and clavulanic acid. The Trade Marks Registry rejected the appellant's trade mark application on the grounds that the mark ELMENTIN is similar to the earlier trademark ELEMENTAL.

The appellant challenged the rejection before the Delhi High Court and argued that the two trademarks were not phonetically similar. The court agreed with the appellant, finding that the syllables of the two trademarks were different and that the overall phonetic impression of the two marks was also different. The court noted that the term ELEMENTAL was a commonly used adjective, while ELMENTIN was a newly coined word. The court held that the mark ELMENTIN is meaningless and, therefore, an arbitrary and coined word and is entitled to additional trade mark protection.

The court held that the mark ELMENTIN contains three syllables phonetically, while ELEMENTAL has four. The Court highlighted the importance of these distinctions in the context of trademark law.

Additionally, the court noted the lack of information regarding whether the pharmaceutical formulation associated with the product registered under the name ELEMENTAL corresponds to that for which the plaintiff is pursuing registration under the mark "ELMENTIN". Since the present case is an appeal against the rejection decision based on an earlier mark cited by the Registry, which lacked specific particulars regarding the actual pharmaceutical composition, the court took note of this informational gap. If the two parties are dealing with distinct compositions, the court noted that this information could serve as an added mitigating element, dispelling any potential likelihood of confusion among the public. 

The judgment provides valuable guidance on the assessment of phonetic similarity in trademark disputes.

 

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