In the present
case, the mark used by the defendants “IBUNMOL” is phonetically similar
to the registered trademark of the plaintiffs “IBULMOL”. The comparison
of the cartons would reveal that the cartons are identical. The carton of
the defendants is an imitation of the carton of the plaintiffs which is
registered under the Copyrights Act. Perusal of two cartons would reveal
that there is a great possibility of consumer being confused mistaking the
carton of the defendants to be that of the plaintiffs. In that view of the
matter, I find that this is a fit case wherein the statutory rights of the
plaintiffs are being infringed and, as such, injunction needs to be granted
during the pendency of the suit.
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
ORDINARY ORIGINAL CIVIL JURISDICTION
NOTICE OF MOTION NO. 1918 OF 2006
IN
SUIT NO. 1721 OF 2006
1. SMS Formulations Private Limited.
V/s.
1. Sahib Singh Agencies (Bom.) Limited.
PRONOUNCED ON: 10
th
August 2012.
Citation;2012(6)MH L J 313
The plaintiff No.2 is a partnership firm and a sister concern of
plaintiff No.1 which is a private limited company. The plaintiff No.1 is
manufacturing medicinal products under the licence of plaintiff No.2.
The plaintiffs have filed the present suit claiming that their registered
trademark “IBULMOL” bearing No.999809 in class5 has been infringed by
the defendants by manufacturing the product under the trademark
“IBUNMOL”. The plaintiffs have also prayed for an order restraining the
defendants from manufacturing or selling their product by passing it of as
that of the plaintiffs' product. The plaintiffs have also taken out notice of
motion for an injunction during the pendency of the suit restraining the
defendants from infringing the plaintiffs' product and passing of their
product as that of the plaintiffs' product. The plaintiffs had also moved
this Court for adinterim order. This Court vide order dated 22
nd
June
2006 granted adinterim relief in terms of prayer clauses (a) and (b)
except the bracketed portion, prayer clause (c) against defendant Nos.1
and 2 and prayer clauses (d) and (e).
2. The motion was heard finally. Heard Dr.Saraf, learned
counsel for the plaintiffs in support of motion and Shri Parikh, learned
counsel for the defendants. 3/24 1918.06nms
3. Dr.Saraf, learned counsel appearing for the plaintiffs submits
that the plaintiffs by their innovation have coined the trademark
“IBULMOL” in December 1999. It is submitted that an innovative carton,
in which the tablets are packed, was created by the plaintiffs' artist,
namely, Shri Sachin Chheda. It is further submitted that the plaintiffs'
trademark was registered on 30
th
August 2005 with effect from 28
th
March 2001. It is submitted that on 8
th
April 2005, the plaintiffs'
copyright of the design on the carton was registered by the Deputy
Registrar of the Copyrights. It is the case of the plaintiffs that initially the
product was manufactured by plaintiff No.2 till 2003 and that from 2003
the plaintiff No.1, which is a sister concern of plaintiff No.2, is
manufacturing the said product under the licence of plaintiff No.2. It is
submitted that the plaintiffs have received substantial goodwill in the
market and have sold the said product as per the sales certificate issued by
the Chartered Accountant. Dr.Saraf also submitted that the plaintiffs have
invested substantial amount in advertising their product. It is submitted
that the plaintiffs received a letter from one of their buyers in Nigeria on
25
th
April 2006 stating that a product having similar trademark to that of
the plaintiffs' product, namely, IBUNMOL with similar packing was sold
in the market and, as such, the plaintiffs had issued cease and desist
notice to the defendants. Since the defendants failed to desist from
imitating the plaintiffs' product, the suit as aforesaid was required to be
filed. The learned counsel submits that since the plaintiffs are the owner
of the registered trademark, they have exclusive rights to use the same. It
is submitted that the defendants, who are pirators, cannot be allowed to
imitate the plaintiffs' product and sell it by passing of in the market as that 4/24 1918.06nms
of the product of the plaintiffs. In reply to the contention of the
defendants that trademark is common to trade and that the mark is
extensively used in the market, it is submitted by learned counsel for the
plaintiffs that it is not sufficient to prove that the mark is registered but it
is necessary to prove that it is actually and extensively used. The learned
counsel further submitted that the defendants have produced various
fabricated documents to show that the similar cartons were being used in
the market prior to that of the plaintiffs. He submits that in so far as
reliance on document of Shreechem Pharmaceuticals Pvt.Ltd. is
concerned, they have addressed a letter to plaintiff No.2 stating therein
that they tried to export the goods in the name of the plaintiffs and they
also tendered apology. He further submits that in the said letter, an
undertaking has been given by the said firm, to the effect that it will not
export any of the pharmaceutical products in the name of the plaintiffs.
It is further submitted that in so far as the other letters, which are relied
on by the defendants, are also of such parties which do not have any
credentials. He, therefore, submits that the reliance placed by the
defendants on such documents is of no use. He further submits that the
contention of the defendants that they met Shri Sachin Chheda who told
them that the work done by him on the carton is not original is also
without any substance. The learned counsel relying on subsection (3) of
section 28 of the Trade Marks Act, 1999 submits that as long as the
trademark is registered, the person in whose favour it is registered has a
right to seek an action against the person whose trademark is not
registered. The learned counsel relies on the following judgments. 5/24 1918.06nms
Corn Products Refining Co. v. Shangrila Food Products Ltd., AIR 1960
SC 142; Ultra Tech Cement Limited v. Alaknanda Cement Pvt.Ltd. &
Anr., 2011 (5) Bom.C.R. 588; Cadila Health Care Ltd. v. Cadila
Pharmaceuticals Ltd., AIR 2001 SC 1952; Medley Laboratories (P) Ltd.
v. Alkem Laboratories Ltd., 2002 (25) PTC (Bom); Wyeth Holdings
Corporation & Anr. v. Burnet Pharmaceutial (Pvt.) Ltd., 2008 (36)
PTC 478 (Bom.); Cadila Pharmaceuticals Ltd. v. Sami Khatib of
Mumbai & Anr., 2011 (3) Bom.C.R. 587; Midas Hygiene Industries P.Ltd.
v. Sudhir Bhatia & Ors., 2004 (28) PTC 121 (SC): 2004 (2) SCALE 231;
Glenmark Pharmaceutical Ltd. v. Wockhardt Limited (Notice of
Motion No.1357/2011 in Suit No.976/2011); National Bell Co. v. Metal
Good Manufacturing Co.Ltd., AIR 197 SC 898: (1970) 3 SCC 665;
Serum Institute of India Ltd. v. Green Signal Bio Pharma Pvt.Ltd.,
2011 (6) Bom.C.R. 82; Green Signal Bio Pharma Pvt.Ltd. v. Serum
Institute of India Ltd. [Appeal (Ldg.) No.431/2011]; and M/s.Maxheal
Pharmaceuticals (India) and ors. v. Shalina Laboratories Pvt.Ltd. and
Ors. (Appeal No.88/2005)
4. As against this, Shri Parikh, learned counsel for the
defendants submits that the trademark of the plaintiffs itself is a pirated
mark. He submits that in 2001, various identical marks were registered in
the industry. It is, therefore, submitted that the plaintiffs' adoption itself
is fraudulent and deceptive. In so far as the design of the carton is
concerned, learned counsel submits that said Shri Chheda himself has
admitted that the work on the carton of the plaintiffs was not original
artistic work and was copied from others. He further submits that as 6/24 1918.06nms
could be seen from the letters addressed by M/s.Saphire Lifesciences
Pvt.Ltd.; M/s.Shreechem Pharmaceuticals Pvt.Ltd.; and M/s.Maxheal
Pharmaceuticals India, similar cartons were already used much prior to
the one used by the plaintiffs. Learned counsel further submits that the
trademark used by the plaintiffs and that by the defendants is common in
trade and, therefore, the plaintiffs cannot claim any monopoly on the
same. Learned counsel, therefore, submits that no case for infringement
is made out by the plaintiffs.
5. The learned counsel, in so far as action on passing of is
concerned, submits that the plaintiffs have failed to establish that they
have any goodwill in the market. It is submits that only photocopy of the
invoices have been relied on and no originals are produced on record. It
is submitted that on an enquiry made by the defendants it has been found
that the details given by the plaintiffs regarding promotional expenses are
totally false. The learned counsel submits that leave aside plaintiffs
having any goodwill, on the contrary, it does not carry any good
reputation inasmuch as its product is banned in Nigeria being
substandard. Learned counsel further submits that the licence executed
by plaintiff No.2 in favour of plaintiff No.1 is a sham and bogus document.
He, therefore, prays for dismissal of the motion. Learned counsel for the
defendants relied on the following judgments:
Ayushakti Ayurved Pvt.Ltd. & ors. v. Hindustan Lever Limited, 2004
(28) PTC 59 (Bom.); J.K.Sons v. Parksons Games & Sports & Anr.
(Appeal No.1176/2010); Abdul Cadur Allibhoy v. Mahomedally 7/24 1918.06nms
Hyderally, 3 BLR 220; Shalina Laboratories Pvt.Ltd. v. Maxheal
Pharmaceuticals (I) Ltd. & ors. (Notice of Motion No.2638/2004 in Suit
No.2663/2004); Prem Singh v. Ceeam Auto Industries, AIR 1990 Delhi
233; Schering Corporation & Anr. v. United Biotech (P) Ltd. & Anr.,
2011 (1) Bom.C.R. 89; Ranbaxy Laboratories Ltd. v. Indohemie Health
Specialties Pvt.Ltd., 2002 (24) PTC 510 (Bom.); S.B.L. Limited v.
Himalaya Drug Co., AIR 1998 Delhi 126; and Shalina Lab.Pvt.Ltd. v.
Maxheal Pharmaceuticals (I) & ors., (Notice of Motion No.2638/2004 in
Suit No.2663/2004).
6. From the record it appears to be an undisputed position that
the plaintiffs' product, viz., IBULMOL has been registered by certificate
dated 30
th
August 2005 with effect from 28
th
March 2001 in Class5
bearing registration No.999809. It also appears to be an undisputed
position that the carton of the plaintiffs' having an artistic design under
the title work IBULMOL has also been registered on 8
th
April 2005 bearing
registration No.A69423/2005. It is also not in dispute that neither the
trademark of the defendants IBUNMOL nor their design of the carton has
been registered. In that view of the matter, we have to decide the present
motion in the light of this factual position.
7. The Apex Court in the case of Cadila Pharmaceuticals Ltd.
v. Sami Khatib of Mumbai & Anr (supra) has observed as under:
“32 Public interest would support lesser degree of
proof showing confusing similarity in the case of trade
mark in respect of medicinal product as against other
nonmedicinal products. Drugs are poisons, not sweets.
Confusion between medicinal products may, therefore,
be life threatening, not merely inconvenient. Noting the
frailty of human nature and the pressures placed by
society on doctors, there should be as many clear
indicators as possible to distinguish two medicinal
products from each other. It is not uncommon that in
hospitals, drugs can be requested verbally and/or under
critical/pressure situations. Many patients may be
elderly, infirm or illiterate. They may not be in a position
to differentiate between the medicine prescribed and
bought which is ultimately handed over to them........”
After analyzing the provisions of law, the conclusions are given by the
Apex Court in paragraph35 of the said judgment, which read thus:
“35. Broadly stated in an action for passing off on the
basis of unregistered trade mark generally for deciding
the question of deceptive similarity the following factors
to be considered:
a) The nature of the marks i.e. whether the marks
are word marks or label marks or composite marks, i.e.
both words and label works.
b) The degree of resembleness between the marks,
phonetically similar and hence similar in idea.
c) The nature of the goods in respect of which
they are used as trade marks.
d) The similarity in the nature, character and
performance of the goods of the rival traders.
e) The class of purchasers who are likely to buy
the goods bearing the marks they require, on their
education and intelligence and a degree of care they are
likely to exercise in purchasing and/or using the goods.
f) The mode of purchasing the goods or placing
orders for the goods and
g) Any other surrounding circumstances which
may be relevant in the extent of dissimilarity between
the competing marks.
Weightage to be given to each of the aforesaid
factors depends upon facts of each case and the same
weightage cannot be given to each factor in every case.”
8. The Division Bench of this court in the case of Medley
Laboratories (P) Ltd. v. Alkem Laboratories Limited (supra) was
considering a case of the plaintiff wherein the plaintiff alleged
infringement of its registered trademark SPOXIN. It was the case of the
plaintiff therein that defendant had started selling pharmaceutical
preparation under the mark SUPAXIN which was deceptively similar to the
plaintiff's registered trademark SPOXIN. The Division Bench observed
thus:
“15. In our opinion, the learned counsel for the
appellants is right in contending that once the plaintiffs'
mark is registered, what was necessary for the plaintiffs
to show was that the defendant has used a mark
'deceptively similar' to that of the plaintiffs. In view of
registration of marks, the plaintiffs had an exclusive
right to use the said mark "SPOXIN", and they were also
entitled to prevent any other person from using an
identical mark or a mark 'deceptively similar' to such
mark.
16. Inviting our attention to the term "deceptively
similar" in Clause (d) of Subsection (1) of Section 2 of
the Act, the counsel contended that a mark can be said 10/24 1918.06nms
to be 'deceptively similar' to another mark, if such mark
is likely to deceive or cause confusion. SUPAXIN,
according to the learned counsel, is deceptively similar
to SPOXIN, the registered mark of the plaintiffs. It is
visually, phonetically and structurally very close to the
appellants mark SPOXIN. Once the mark is identical or
deceptively similar, the other factors, viz., the packing
being different, number of tablets contained in the
competing package is not the same, prices are not
identical and/or the goods being sold on doctor's
prescription are altogether irrelevant and immaterial.”
Thus, the Division Bench in an unequivocal terms has held that once the
plaintiff's mark is registered, what is necessary for the plaintiff to show is,
that the defendant had used the mark 'deceptively' similar to that of the
plaintiff's. The Division Bench in unequivocal terms held that in view of
the registration of mark, the plaintiff has exclusive right to use the mark
registered and they are also entitled to prevent any other from using the
identical mark or a mark 'deceptively similar' to such mark. The Division
Bench further observed thus:
“28. The case of the appellants is that suffix 'XIN'
being common to both the drugs, there is likelihood of
confusion. The mark of the plaintiffs is registered, and,
hence, it has statutory protection. It relates to a
medicinal preparation. In the circumstances, in our
opinion, the test of 'possibility' laid down in Cadila
Health Care Ltd. would apply. Applying the said test,
there is likelihood, or in any case, possibility of
consumer being confused, and the plaintiffs were
entitled to interim injunction. Moreover, SPOXIN and
SUPAXIN are visually, phonetically and structurally
similar. No doubt, both the drugs are sold under 11/24 1918.06nms
prescription, but that fact alone is not sufficient to
prevent confusion which is likely to arise.”
It can, thus, be seen that the test that is to be applied, as held by the
Division Bench, is likelihood or possibility on account of visual,
phonetically and structural similarity.
9. In a case of Wyeth Holdings Corporation & Anr. v. Burnet
Pharmaceutial (Pvt.) Ltd. (supra), the learned single Judge of this Court
was considering the case of the plaintiff wherein plaintiff alleged
infringement of its trademark “FOLVITE” in class5. The defendant was
earlier using the mark FOLCACID which was subsequently changed to
FOLV. The learned Judge observed thus:
“18. The contention of the Defendant is that the mark
FOLVITE is a combination of FOL which stands for folic
acid and VIT which is an abbreviation for Vitamin. The
theory propounded by the Defendant is that the
Plaintiffs cannot assert a monopoly over folic acid on the
one hand and Vitamin on the other by adding an "e" to
an abbreviation of the two words. This argument of the
Defendant clearly misses the point and there are several
reasons why it cannot be accepted. First and foremost,
the word FOLVITE has absolutely no meaning in the
English language. It is an invented word. As the
Supreme Court observed in Cadila, it is not right to take
a part of a word and compare it with a part of another.
Each word must be taken as a whole and compared as a
whole with the other: “It is not right to take a portion of
the word and say that because that portion of the word
differs from the corresponding portion of the word in
the other case, there is no sufficient similarity to cause
confusion.” 12/24 1918.06nms
19. Secondly, it is a settled principle of law that so
long as a mark continues on the Register, it is not open
to the Defendant in an action for infringement to
question the validity of the registration. Subsection (1)
of Section 31 postulates that in all legal proceedings
relating to a trade mark registered under the Act, the
original registration of the trade mark and of all
subsequent assignments and transmissions of the mark
shall be prima facie evidence of the validity thereof. The
sequitur of the submission of the Defendant is that the
mark of the Plaintiffs comprises of a generic description
of two elements, namely, folic acid and Vitamin,
resulting thereby in the mark losing its distinctive
character. During the course of the submissions,
however, Mr. Dhond, the Learned Counsel appearing on
behalf of the Defendant who argued the case with
felicity, submits that the Defendant does not question the
distinctive character of the mark of the Plaintiffs or the
validity of the mark. The mark of the Plaintiffs
constitutes a composite invented word and it would not
be open to the Defendant by a process of breaking down
the mark to claim that it is only a combination of
common elements. Such an exercise would be
impermissible and so long as the mark continues to
borne on the Register of Trade Marks, the validity of the
mark cannot be questioned.”
It can, thus, be seen that learned Judge held that the mark of the plaintiff
constitutes a composite invented word and it is not open to the defendant,
by a process of breaking down the mark, to claim that it is only a
combination of common elements. Learned Judge also held that as long
as the mark continues to be a registered trademark, the validity of the
same cannot be questioned. 13/24 1918.06nms
10. The Division Bench of this Court in Cadila Pharmaceuticals
Ltd. v. Sami Khatib of Mumbai & Anr. (supra) was considering the
question as to whether the plaintiff’s mark “RB TONE” is being copied by
the defendants as “HB RONE” or “HB TONE”. The Division Bench
observed thus:
15. We will assume that the Appellant adopted the
mark "Hb TONE" as alleged in the affidavit in support.
Firstly, even if it did so honestly and independently, it
would make no difference to the grant of an injunction
for infringement or passing off once it is held that the
mark is deceptively similar to the Respondent's mark.
(See Sun Pharmaceutical Industries Ltd. v. Wyeth
Holding Corporation, 2005 (30) PTC 14 (Bom) (DB)
paragraph 21.
16. Secondly, it is difficult to accept that the average
consumer would, when purchasing the product, be
aware of the fact that the letters "Hb" are symbolic of
and an abbreviation and the chemical symbol of
haemoglobin and thereby distinguish the Appellant's
products from those of the Respondents. Indeed, only a
microscopic minority of consumers could be expected to
even know the chemical symbol "Hb" much less
distinguish the products of the parties based on the
chemical symbol "Hb".
17. It is settled law that the test while determining
similarity is one of possibility and not probability of
confusion. Moreover, while comparing marks, the Court
does not go into the etymological meaning of the rival
words/marks.........”
11. Another learned single Judge of this Court in Serum Institute
of India Ltd. v. Green Signal Bio Pharma Pvt.Ltd. (supra) was 14/24 1918.06nms
considering the case of the plaintiff wherein the plaintiff alleged that the
defendant therein by using the mark “BCGONCO” was infringing the
plaintiff’s registered trademark “ONCOBCG”. It was sought to be
contended by the defendant therein that the word ONCO stands for
Oncology and BCG for Bacillus, Calmette, Guerin i.e. the names of the
chemicals used in vaccine and, therefore, the ONCO BCG being descriptive
terms, cannot be said to be distinctive on the date of plaintiff’s filing
application for registration of trademark. The learned Judge found that
the trademark “ONCO BCG” has become distinctive of the plaintiff’s goods
and that the plaintiff has acquired statutory as well as common law rights
in the trademark and, as such, the plaintiff was entitled to use the same in
respect of medicinal and pharmaceutical preparations to the exclusion of
other manufacturers and/or traders. The learned Judge, accordingly,
granted interim relief in favour of the plaintiff therein. The said order was
carried in appeal. However, the Division Bench vide its reasoned order
dated 8
th
August 2011 passed in Appeal (Ldg.) No.431/2011 (Green Signal
Bio Pharma Pvt.Ltd. v. Serum Institute of India Ltd.) was pleased to
uphold the view taken by the learned single Judge.
12. By now, in so far as this Court is concerned, It is a settled
position of law that as long as the mark remains in the registry, the Court
cannot go beyond it and enquire the validity thereof and as long as the
trademark is registered, the owner of it is entitled to an order of
injunction. The view taken by the learned single Judge in the case of
Hindustan Embroidery Mills Pvt.Ltd. v. K.Ravindra and Co., (1974) 74
Bom.L.R. 146 was reiterated by the Division Bench of this Court in 15/24 1918.06nms
M/s.Maxheal Pharmaceuticals (India) and ors. v. Shalina
Laboratories Pvt.Ltd. and Ors. (Appeal No.88/2005 decided on 16
th
February 2005). The observations made by the Division Bench in
paragraph6 would be relevant, which reads as under:
6. Mr.Tulzapurkar also submitted that the mark was
earlier registered in the name of American Remedies and
having regard to the fact that in the examination report
the said mark (American Remedies) was cited as
conflicting mark there is reason to believe that the
respondents managed to get registration by fraud and
misrepresentation. The answer to this contention is
contained in the judgment of Justice Vimadalal of this
Court in Hindustan Embroidery Mills Pvt Ltd vs K
Ravindra and Co (l974) 74 Bom L R, l46,wherein the
learned Judge pointed out that it is not the practice of
this court to consider the validity of registration of a
trade mark on a motion for interlocutory reliefs taken
out by the person who has got the mark registered in his
name. While a mark remains on the register (even
wrongly), it is not desirable that others should imitate it.
Moreover the respondents have already applied for
rectification of the registration in favour of the American
Remedies.
13. As already discussed hereinabove, since the plaintiffs' mark is
a registered mark and the defendants' mark is not a registered mark, the
plaintiffs would be entitled to use their mark to the exclusion of others,
whose marks are not registered.
14. It is the contention of the defendants that there are several
other marks with the names which are identical to the trademark of the 16/24 1918.06nms
plaintiffs and also that of the defendants and, as such, the plaintiffs are
not entitled to an order of injunction. The answer to this contention
would lie in subsection (3) of section 28 of the Trademarks Act which
reads thus:
“28. Rights conferred by registration.
(1) ….. ….. ….. ….. ….. …..
(2) ….. ….. ….. ….. ….. …..
(3) Where two or more persons are registered
proprietors of trade marks, which are identical with or
nearly resemble each other, the exclusive right to the use
of any of those trade marks shall not (except so far as
their respective rights are subject to any conditions or
limitations entered on the register) be deemed to have
been acquired by any one of those persons as against any
other of those persons merely by registration of the trade
marks but each of those persons has otherwise the same
rights as against other persons (not being registered
users using by way of permitted use) as he would have if
he were the sole registered proprietor.”
It can, thus, clearly be seen that if two or more persons are registered
proprietors of the trademarks which are identical with or nearly resemble
each other, they shall not have exclusive rights of any of those trademarks
to the exclusion of the persons whose identical marks are registered.
However, the person who is having registered trademark will have the
same right as against the other persons whose marks are not registered,
as he would have if he were the sole registered proprietor. It is, thus,
clear that the plaintiffs herein may not be entitled to an order of
injunction against the persons who are having similar or identical
trademarks with that of the plaintiffs and whose trademarks are
registered. However, the plaintiffs would be entitled to enforce their 17/24 1918.06nms
rights against the persons whose marks are not registered as if the
plaintiffs are the sole proprietor of their registered trademark. It can,
thus, clearly be seen that since plaintiffs’ mark is registered trademark and
the defendants’ mark is not a registered one, the contention of the
defendants in that regard is without any substance.
15. The next contention of the defendants in so far as passing of
is that there are various manufacturers in the market who are using the
similar design on their cartons as that of the plaintiffs much prior to the
use by the plaintiffs and, as such, the plaintiffs are not entitled to the
exclusive use thereof. In this regard, learned counsel for the defendants
has relied on the letters by M/s.Saphire Lifesciences Pvt.Ltd.;
M/s.Shreechem Pharmaceuticals Pvt.Ltd.; and M/s.MaxHeal
Pharmaceuticals India. The learned counsel for the plaintiffs heavily
attacked on these communications stating that these manufacturers are
not reliable manufacturers and they are at business loggerhead with the
plaintiffs. It is also submitted that some of these have also admitted that
they had exported the goods under the plaintiffs’ name and have further
undertaken not to do so in future. However, I do not find it necessary to
go into that aspect of the matter, inasmuch as I find that the design of the
plaintiffs on the carton is registered under the Copyright Act whereas the
defendants have not produced any material to show that any of the
persons who are using the identical design is also having registration
under the Copyright Act. In that view of the matter, the contention in
that regard would be of no assistance to the case of the defendants. 18/24 1918.06nms
16. It is the contention of the defendants that the trademark is
registered under the name of plaintiff No.2 and not plaintiff No.1 and that
licence issued by plaintiff No.2 in favour of plaintiff No.1 is sham and
bogus document. From the material on record, it would be seen that
plaintiff Nos.1 and 2 are the sister concerns. The question as to whether
the licence between plaintiff No.2 and plaintiff No.1 is valid or not is a
matter inter se between them. Both the plaintiffs have jointly filed this
suit. In that view of the matter, it would not lie in the mouth of the
infringer to contend that the licence issued by plaintiff No.2 in favour of
plaintiff No.1 is not a valid licence.
17. The next contention of the defendants is that the trademark
adopted by the plaintiffs is derived from the generic term of medicines
which are used in the product and that names are common to the trade.
It is also contended that in the trademark register itself there are various
similar names registered similar to that of the plaintiffs’ trademark.
18. The Apex Court in the case of Corn Products Refining Co. v.
Shangrila Food Products Ltd. (supra), was considering an identical
question. It has been observed thus:
13. The second point on which the learned appellate
Judges based themselves in arriving at the conclusion
that there was no reasonable apprehension of confusion
or deception was, as we have earlier stated, that there
were various trade marks with a prefix or suffix 'Gluco'
or 'Vita' and that made it impossible to say that the 19/24 1918.06nms
common features 'Glu' and 'Vita' were only associated
with the appellant's products. This view was founded on
a passage which the learned appellate Judges quoted
from Kerly on Trademarks, 7th Edn. p. 624. That passage
may be summarised thus : Where there are a "series" of
marks, registered or unregistered, having a common
feature or a common syllable, if the marks in the series
are owned by different persons, this tends to assist the
applicant for mark containing the common feature. This
statement of the law in Kerly's book is based on In re :
an application by Beck, Kollar and company (England)
Limited . It is clear however from that case, as we shall
presently show, that before the applicant can seek to
derive assistance for the success of his application from
the presence of a number of marks having one or more
common features which occur in his mark also, he has to
prove that those marks had acquired a reputation by
user in the market.......”
In the present case also, apart from similar labels which are placed on
record, the defendants have not produced any material to show that the
products on which he is relying have acquired reputation by user in the
market. In that view of the matter, the contention in that regard is also
liable to be rejected.
19. In so far as the view taken by me in the case of Glenmark
Pharmaceutical Ltd. v. Wockhardt Limited (Notice of Motion
No.1357/2011 in Suit No.976/2011 decided on 27
th
June 2012) wherein I
have held that when a particular trademark is adopted from the generic
term, no single proprietor can claim absolute monopoly on the said
trademark is concerned, it is to be noted that the said case was of passing
of and not of infringement of the trademark. It is further to be noted that 20/24 1918.06nms
in the said case trademarks of both i.e. plaintiff's as well as that of
defendant’s were registered. In that view of the matter, since in the
present case, infringement of trademark is also alleged and is not a case
simplicitor of passing of, reliance on the said case would not be applicable
to the facts of the present case.
20 In so far as judgment of learned single Judge of this Court in
the case of Ayushakti Ayurved Pvt.Ltd. & ors. v. Hindustan Lever
Limited (supra) is concerned, it can be seen that the said case also was a
case of passing of and not of infringement of the registered trademark. In
that view of the matter, said judgment would not be applicable to the facts
of the present case.
21. In so far as judgment of Division Bench of this Court in
Appeal No.1176/2010 (M/s.J.K.Sons v. M/s.Parksons Games & Sports
& Anr.) decided on 18
th
March 2011 is concerned, as a matter of fact, the
Division Bench has come to the conclusion that the appellant defendant
has failed to establish, by producing any material, that the respondents
plaintiffs themselves have infringed the marks of another and, therefore,
the appeal which was filed challenging grant of interim relief was
dismissed. As such, the said judgment would also not be applicable in the
facts of the present case.
22. In so far as judgment of the Full Bench of this Court in Abdul
Cadur Allibhoy v. Mahomedally Hyderally (supra) is concerned, the
Full Bench has held that if the plaintiff himself has imitated his mark from 21/24 1918.06nms
the mark of the others, then he is not entitled to claim an injunction.
However, in the present case, it is to be noted that the plaintiffs' trademark
as well as design of the carton are registered. The defendants, though
have contended that the plaintiffs have imitated the label from others,
nothing is placed on record to show that the trademark of any such
manufacturers, which according to the defendants are using similar
cartons prior to that of the plaintiffs, is registered prior to that of the
plaintiffs. In that view of the matter, the said judgment would also not
be applicable to the facts of the present case.
23. In so far as order of the learned single Judge in Notice of
Motion No.2638/2004 in Suit No.2663/2004 [Shalina Laboratories
Pvt.Ltd. v. Maxheal Pharmaceutical (India) & others] is concerned, it
is pertinent to note that it is this Maxheal Pharmaceutical whose certificate
is being relied upon by the defendants to support their case. In the said
case, the learned Judge while finding that Maxheal Pharmaceutical is
infringing the trademark of the plaintiff therein had granted an order of
injunction in favour of the plaintiff. It is the very same Maxheal
Pharmaceutial whose letter is produced on record by the defendants to
support their case. It is, thus, clear that the defendants are resting their
case on the basis of the certificate issued in their favour by a party who
has been, prima facie, found to be an infringer.
24. In so far as judgment of the learned single Judge of the Delhi
High Court in the case of Prem Singh v. Ceeam Auto Industries (supra)
is concerned, the said judgment is distinguishable for the very same 22/24 1918.06nms
reasons as given by me while distinguishing the judgment of the Full
Bench of this court in the case of Abdul Cadur Allibhoy v. Mahomedally
Hyderally (supra).
25. In so far as judgment of the Division Bench of this Court in
the case of Schering Corporation & Anr. v. United Biotech (P) Ltd. &
Anr (supra) is concerned, in the said case the products of the plaintiffs so
also of defendants therein were registered products and, as such, the
Division Bench held that there was no error committed by the learned
single Judge refusing to grant injunction in favour of the plaintiffs,
inasmuch as the defendants therein also had statutory right to use the
trademark registered in their favour. As such, the said judgment would
also not be applicable to the facts of the present case.
26. In so far as judgment of the learned single Judge of this Court
in the case of Ranbaxy Laboratories Ltd. v. Indohemie Health
Specialties Pvt.Ltd. (supra) is concerned, learned single Judge on the
facts of the said case found that there was no phonetic similarity in
ZANOCIN and OFFOXACIN and, as such, refused to grant injunction.
27. In so far as the judgment of the Division Bench of the Delhi
High Court in the case of S.B.L. Limited v. Himalaya Drug Co. (supra),
in the said case, on the basis of comparison of carton of the plaintiff and
that of defendant, the Court found that there was no similarity between
two cartons and there was no possibility of one being accused of
deceptively similar with other and the likely customer mistaking one with 23/24 1918.06nms
the other even by recollecting faint impressions. In this view of the
matter, the Division Bench reversed the order of injunction granted by
learned single Judge.
28. Such is not the case in the present matter. In the present
case, the mark used by the defendants “IBUNMOL” is phonetically similar
to the registered trademark of the plaintiffs “IBULMOL”. The comparison
of the cartons would reveal that the cartons are identical. The carton of
the defendants is an imitation of the carton of the plaintiffs which is
registered under the Copyrights Act. Perusal of two cartons would reveal
that there is a great possibility of consumer being confused mistaking the
carton of the defendants to be that of the plaintiffs. In that view of the
matter, I find that this is a fit case wherein the statutory rights of the
plaintiffs are being infringed and, as such, injunction needs to be granted
during the pendency of the suit.
29. I also find that the test of balance of convenience and
irreparable injury also tilts in favour of the plaintiffs than that of
defendants. On one hand, the plaintiffs have statutory rights to the
exclusive use of their registered trademark and of the design on the carton
which is registered under the Copyrights Act. On the other hand, if the
injunction as prayed for is granted, no prejudice would be caused to the
defendants, inasmuch as an injunction is already operating in favour of
the plaintiffs and against the defendants for a period of more than six
years. On being asked, the learned counsel for the defendants fairly
stated that the defendants are manufacturing and exporting their products 24/24 1918.06nms
under some other trademark. As such, even if an injunction is continued,
no prejudice would be caused to the defendants inasmuch as they can
continue to manufacture and export their products under the trademark
which is being used by them for last six years. I find that the very fact
that adinterim injunction is already operating for last six years should be
a factor which should weigh in allowing the present motion.
30. In that view of the matter, notice of motion is made absolute
in terms of adinterim order dated 22
nd
June 2006.
(B.R.GAVAI, J.)
Sanjay Nanoskar, P.S.
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