Delhi High Court rules English alphabets cannot be monopolised under trademark law

The Delhi High Court has ruled that English alphabets cannot be monopolised through trademark law and declined to grant interim protection to the mark ‘A TO Z’ used by pharmaceutical major Alkem Laboratories, holding that the mark is descriptive and lacks distinctiveness.

Justice Tejas Karia, while hearing Alkem Laboratories Limited v Prevego Healthcare and Research Pvt Ltd, held that the expression ‘A TO Z’ merely denotes comprehensiveness and cannot be granted exclusivity, stating that the plaintiff could not seek monopoly rights over the use of the letters ‘A’ and ‘Z’.

The court was hearing a suit filed by Alkem Laboratories against Prevego Healthcare over the use of ‘AZ’ in the branding of multivitamin products. Alkem had contended that Prevego’s product ‘Multivein AZ’ infringed its established ‘A to Z’ and ‘A to Z-NS’ brands, claiming trademark infringement, passing off and copyright violation in relation to its logo and trade dress.

Alkem stated that it had been using the ‘A to Z’ mark since 1998 and argued that Prevego’s adoption of ‘AZ’ for similar health supplements was likely to cause confusion among consumers.

Prevego, however, argued that ‘A to Z’ is a commonly used phrase signifying completeness and does not possess inherent distinctiveness. It further stated that its mark ‘Multivein AZ’ was visually, phonetically and conceptually distinct, with ‘Multivein’ being the dominant and distinguishing 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 and medicinal products.

Agreeing with Prevego’s submissions, the 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’ materially altered the overall commercial impression of the defendant’s mark, reducing the likelihood of consumer confusion.

The court also took note of Alkem’s failure to disclose earlier trademark applications for ‘A to Z’ in Class 5 that had either been withdrawn, abandoned or opposed, holding that such non-disclosure disentitled the company from equitable relief.

Justice Karia further rejected Alkem’s claim of copyright infringement and vacated the ex parte interim injunction that had earlier been granted in its favour, thereby permitting Prevego to continue selling its product under the ‘Multivein AZ’ mark.

Senior Advocate Darpan Wadhwa, along with advocates Tusha Malhotra, Bhavya Chhabra and Rhea Bhalla, appeared for Alkem Laboratories. Prevego Healthcare was represented by Senior Advocate Arundhati Katju, assisted by advocates Siddharth Acharya, Udit Malik, Ritika Meena and Lakshay Sharma.