New Delhi: The Delhi High Court recently held that English alphabets cannot be monopolised through trademark law and refused interim protection to the mark ‘A TO Z’ used by a pharmaceutical company [Alkem Laboratories Limited vs Prevego Healthcare and Research Pvt Ltd].
Justice Tejas Karia said that the mark in question is descriptive in nature and the plaintiff Alkem Laboratories cannot seek exclusivity over them.
“Hence, the Mark ‘A TO Z’ is descriptive in nature. Therefore, the Plaintiff cannot be allowed to monopolize the use of the letters ‘A’ and ‘Z’ by seeking exclusivity over the right to use the letters ‘A’ and ‘Z’,” the Court said.
Alkem Laboratories had sued Prevego Healthcare over the use of ‘AZ’ in the branding of multivitamin products. It argued that Prevego’s product ‘Multivein AZ’ infringed its well-known ‘A to Z’ and “’A to Z-NS’ brands.
It was stated that Alkem had been using the ‘A to Z’ mark since 1998 and that Prevego’s use of ‘AZ’ for similar health supplements amounted to trademark infringement, passing off and copyright violation in its logo and trade dress.
However, Prevego contended that ‘A to Z’ was a commonly used phrase denoting comprehensiveness and lacked distinctiveness.
It argued that its mark ‘Multivein AZ’ was visually, phonetically and conceptually different, with ‘Multivein’ being the dominant element. The company also pointed out that Alkem did not hold a word-mark registration for ‘A to Z’ in Class 5, which covers pharmaceutical products.
The Court agreed with Prevego and held that trademarks must be assessed as a whole rather than broken into individual components. It found that the addition of ‘Multivein’ significantly altered the overall impression of the defendant’s mark and reduced any likelihood of consumer confusion.
The Court also criticised Alkem for failing to disclose earlier trademark applications for ‘A to Z’ in Class 5 that had been withdrawn, abandoned or opposed. Such non-disclosure disentitled it from equitable relief, the Court ruled.
Justice Karia also rejected Alkem’s claims of copyright infringement.
He vacated the ex parte injunction granted earlier in favour of Alkem, allowing Prevego to continue selling its product under the ‘Multivein AZ’ mark.
