A perusal of the above would reveal that there is a departure made from the usual procedure, particularly in that part of CPC, which remains untouched by said Act. That departure is, written arguments are to be filed before oral arguments are advanced. A perusal of amended CPC as amended by said Act would reveal that written arguments supra has to be filed in accordance with Order XVIII Rule 2 Sub Rules (3A) to (3F). This takes us to the question as to in a given case like this, where there is no contest, where ex parte evidence has been recorded, whether the Court i.e., Commercial Division can hear oral submissions and dispose of the suit before filing of written arguments. {Para 25}
27. A perusal of the same reveals that in case of transferred suits, this Commercial Division can prescribe new time lines and can also issue further directions as may be necessary for speedy and efficacious disposal of suit. In the instant case, in the light of the sole defendant remaining ex parte and in the light of ex parte evidence being recorded, I am of the view that no reasonable purpose will be served by directing the plaintiff to file written arguments, more so, in accordance with Order XVIII Rule 2 Sub Rules (3A) to (3F). It will serve the interest of efficacious disposal, if the written arguments step is skipped and oral arguments are heard. Therefore, I have skipped written arguments and I have heard oral arguments today, after recording of ex parte evidence in the instant suit.
IN THE HIGH COURT OF MADRAS
C.S. No. 28 of 2015, A. No. 208 of 2015, O.A. Nos. 41 and 42 of 2015
Decided On: 26.09.2018
Tablets (India) Ltd. Vs. D.R. Johns Lab Pharma Pvt. Ltd.
Hon'ble Judges/Coram:
M. Sundar, J.
Citation: 2018(8) MLJ 70, MANU/TN/5765/2018.
1. Main suit has been filed with prayers for infringement of one registered trade mark and passing off qua trade marks for which registration is pending. Three trade marks, in all, form the central theme of the main suit and they are as follows:
The aforesaid three trade marks shall be referred to as TM1, TM2 and TM3 respectively for the sake of convenience and clarity. In other words, serial numbers 1, 2 and 3 supra shall be referred to as TM1, TM2 and TM3 respectively.
2. To be noted, TM1 is a registered trade mark. The trade mark registration number is 1918837 and date of registration is 08.02.2010. It is a multi class registration, i.e., under Class 99 and the specific goods are contained in Classes 5, 30 and 31, the details of which are as follows:
For the sake of convenience and clarity, suffice to say that TM1, TM2 and TM3 pertain to medicinal and pharmaceutical preparations.
3. To be noted, TM2 and TM3 are yet to be registered. It is submitted by Ms. Rithika Reddy, learned counsel for plaintiff, that applications for registration of trade marks have been made and that the same are pending qua TM2 and TM3. It is also pointed out that this is the reason for a composite suit for infringement of trade mark and passing off being statutory and common law remedies respectively. To be noted, all the three marks, which form the central theme of this lis, which pertain to medicinal and pharmaceutical preparations, are bacteria strains.
4. It unfurls from the plaint averments as well as the averments made in the affidavit filed in support of these two applications that the plaintiff came to know about use of aforesaid three marks by the defendant on medicinal and pharmaceutical preparations manufactured and marketed by the defendant. It also unfurls from the pleadings that the defendant's website www.drjohnslab.net contains detailed explanation about each and every product and it is freely accessible all over India including Chennai. It is also averred that it is an interactive website. It further emerges from the pleadings that the alleged offending products of the defendant can also be viewed, ordered and availed through websites such as www.omsi.in, www.healthkartplus.com, www.dawabazar.in.
5. It is the case of the plaintiff that the aforesaid use of same trade marks i.e., TM1, TM2 and TM3 by the defendant is a clear infringement and passing off and it is a direct violation/infringement of their intellectual property rights. In support of their contention, the plaintiff has placed cartons in which their product is marketed, as well a carton, in which the defendant's product is marketed. The two are as follows:
Plaintiffs cartons
Defendant's carton
6. A perusal of the two cartons would reveal that TM1, TM2 and TM3 have been set out ad verbatim (under the caption 'composition') in the defendant's carton.
7. It is the specific and emphatic say of learned counsel for plaintiff that it is not just infringement but a virtual replication of the mark and therefore, it is a clear case of infringement and passing off. It is her submission that it tantamounts to almost counterfeiting if one may say so.
8. Predicated on the aforesaid pleadings, plaintiff has come to Court seeking injunctive reliefs as well as usual reliefs for damages, surrendering of offending materials and costs.
9. Plaint was presented on 09.01.2015. Sole defendant was duly served with suit summons on 16.02.2015. Sole defendant neither entered appearance through a counsel nor chose to come before this Court in-person. Sole defendant was set ex parte on 10.08.2018. Suit was set down for recording evidence. One Mr. A. Venkataraman, Vice President-Finance of plaintiff company deposed as PW1 and ex parte evidence was recorded on 12.09.2018 before learned Additional Master-III of this Court. 12 Exhibits i.e., Exs.P1 to Ex.P12 were marked.
10. Post deposition of PW1, recording of evidence and marking of aforesaid 12 Exhibits, suit is listed before me under the caption 'For Arguments' today. Ms. Ritika Reddy, learned counsel representing counsel on record for plaintiff is before me.
11. As alluded to supra, TM1 is registered as a trade mark and the details have been set out supra. With regard to TM2 and TM3, learned counsel submits that the bacterial strains have been deposited with International Depository Authority under the Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the purpose of patent procedure. It is submitted by learned counsel for plaintiff that India is a signatory to the aforesaid Treaty (hereinafter referred to as 'Budapest Treaty' for brevity). It is also submitted that India signed the Treaty in September 2001 and the same is operative from December 2001. It is submitted by learned counsel for plaintiff that the date of ratification is 17.12.2001. To be precise, it is submitted that the Treaty is enforceable in law, as India is not only a signatory, but had ratified the same on 17.12.2001. TM2 and TM3 have been so deposited with the aforesaid International Depository Authority under proper receipts for such deposits, which have been marked as Exs.P4 and P3 respectively. In other words, the deposit receipt for TM2 is Ex.P4 and the deposit receipt for TM3 is Ex.P3. It is brought to the notice of this Commercial Division that TM1, which has been registered as a trade mark in India has also been deposited with the aforesaid depository under due receipt under Budapest Treaty and the receipt of deposit for bacterial strain has been marked as Ex.P5.
12. It is the further submission of the learned counsel for plaintiff that TM1, TM2 and TM3 are exclusively owned by an entity in Tokyo, Japan, which goes by the name TOA Pharmaceutical Co. Ltd. and the said Japanese company has licensed the plaintiff to use the aforesaid TM1, TM2 and TM3 vide a communication dated 09.03.2007, which has been marked as Ex.P2. To be noted, the Trademark Registration Certificate with regard to TM1 has been marked as Ex.P6. Also to be noted, Ex.P6 is only a Certificate in Form O-2, which is referred to as O-2 certificate in industry parlance.
13. Learned counsel for plaintiff submits that they have applied for Legal Use Certificate and the trade mark Registry is yet to furnish the same to them. In the light of Ex.P5, Ex.P6 can be looked into only for collateral purposes, that too owing to there being no contest to same from defendant, though that may not be sole foundation of trade mark registration. Therefore, I deem it appropriate to read Ex.P6 in conjunction with Ex.P5.
14. On the basis of aforesaid Exhibits, i.e., Exs.P2 and P3 to P6, plaintiff has been using TM1, TM2 and TM3 on its products and the brochures in this regard have been marked as Ex.P8 Series. I deem it appropriate to extract two of the brochures, which are most relevant and they are as follows:
15. As mentioned supra, seven brochures have been marked as Ex.P8 Series and two brochures have been scanned and reproduced supra. Typical sachet and carton in which the plaintiff's product are marketed with TM1, TM2 and TM3 have been marked as Ex.P11 Series. To be noted, one sachet and two cartons have been marked as Ex.P11 Series. I deem it appropriate to extract one of the three cartons, which is as follows:
16. It is the specific case of the plaintiff that their products have been doing very well in the market with good turnover and in support of the submission that plaintiffs products with the aforesaid TM1, TM2 and TM3 are doing well in the market, turnover figures for five financial years have been marked as Ex.P7.
17. As mentioned supra, one Mr. A. Venkataraman, Vice President-Finance has deposed as PW1 and the extract of the resolution of the Board of Directors of the plaintiff company dated 01.12.2014 authorising aforesaid Mr. A. Venkataraman to depose in this suit as PW1, has been marked as Ex.P1.
18. This takes us to the alleged offending carton that is being used by the defendant. The alleged offending carton that is being used by the defendant has been marked as Ex.P10 and the same reads as follows:
Ex.P10 has been extracted supra also. A perusal of Ex.P10 would reveal that TM1, TM2 and TM3 have been repeated and set out ad-verbatim in the defendant's carton. This according to the learned counsel for plaintiff is a clear case of infringement and passing off.
19. As would be evident from the aforesaid TM1, TM2 and TM3, the same pertain to generic pharmaceutical names. To tide over any difficulty in this regard, learned counsel for plaintiff without prejudice to her submission that TM1 is registered and all three marks i.e., TM1, TM2 and TM3 have been deposited with the International Depository Authority, i.e., bacterial strains pursuant to the Budapest Treaty, submitted that what is of relevance with regard to plaintiff's marks are the suffix T-110 in TM1 and TO-A in TM2 and TM3. It is submitted that the slavish reproduction, nay replication and use of the aforesaid suffixes in TM1, TM2 and TM3 is what actually constitutes infringement and passing off, is her categoric and emphatic say.
20. It is submitted by learned counsel for plaintiff that reliefs qua infringement and passing off has been sought for is for names along with the aforesaid suffixes in its entirety and not pharmaceutical names in isolation. It is submitted that the aforesaid suffixes do not form part of generic pharmaceutical names. To be noted, there is no contest. In the light of the amended provisions of 'The Code of Civil Procedure, 1908' ('CPC' for brevity) as amended by 'The Commercial Courts Act, 2015' ('said Act' for brevity), these averments, as they remain unrefuted, stand proved, in the instant case and therefore, the same shall not serve as precedents.
21. After adverting to the aforesaid alleged offending mark of the defendant and the slavish ad-verbatim repetition/replication of TM1, TM2 and TM3 therein, learned counsel submitted that after granting of ex parte interim order in the instant suit, the defendant, on being served with copies of the same, wrote letters to the plaintiff. These letters, which are five in number, have been marked as Ex.P12. As five letters have been marked as a bunch, it would have been appropriate for the learned Master to mark them as Ex.P12 Series. I deem it appropriate to refer to the same as Ex.P12 Series. The nomenclature 'Ex.P12' will stand altered as 'Ex.P12 Series'. The five letters that constitute Ex.P12 Series are dated 28.01.2015, 15.09.2012, 10.10.2012 and 08.10.2012 (2 letters).
22. Specific reference was drawn to a letter dated 28.01.2015, which forms part of Ex.P12 Series. It was pointed out that defendant had categorically stated that they have stopped sales of their product i.e., capsules and dry syrup, particularly, Sacro HP capsule and dry syrup, marketed with aforesaid alleged offending mark. This has been articulated in the aforesaid letter dated 28.01.2015 and the same reads as follows:
'January 28, 2015
Registered A/D
To
Mr. Arun C. Mohan, Advocate
Ceebros Building, D-4, III floor,
#32, Cenotaph Road,
Teynampet,
Chennai - 600 018
Tamil Nadu.
Ref: Your Letter No. AAM/MJ/9787/3583 dated January 12, 2015 (Received by us on 22/02/0215)
Re In the High Court of Judicature at Madras (Ordinary Original Civil Jurisdiction) C.S. No. 28/2015.
Tablets (India) Ltd. v/s. D.R. Johns Lab Pharma Pvt. Ltd.
Dear Sir,
We are much surprised to receive your letter No. AAM/MJ/9787/3583 dated January, 12, 2015 (Received by 22/01/2015) that Tablets (India) Limited has instituted a suit for injunction restraining D R Johns Lab Pharma Pvt. Ltd. form infringing Tablets (India) Ltd. Registered trademarks using bacterial strain Identifications T-110, TO-A and TOA on products labels of Sacro HP capsule and Dry syrup.
As briefed to you over telephone on 22nd January, 2015, we submit that:
1. We had received a letter dated 15/09/2012 for Mr. Sunil Kumar Kothari, Vice President - Finance, Tablet (India) Limited for infringement of alleged Trade Marks using bacterial strain Identifications T-110, TO-A and TOA on products labels of Sacro HP capsule and Dry syrup. The Letter of Mr. Sunil Kumar Kothari, Vice President - Finance, Tablet (India) Limited is attached in "Annexure -I" for your ready reference.
2. We had stopped sales of Sacro HP capsule and Dry Syrup, marked with bacterial strain Identifications T-110, TO-A and TOA on products labels of Sacro HP capsule and Dry syrup immediately on receipt of the said letter. The stop sales letter dated 08/10/2012 is annexed in "Annexure-II"
3. We had recalled all stock of Sacro HP capsule and Dry Syrup, marked with bacterial strain Identifications T-110, TO-A and TOA on products labels of Sacro HP capsule and Dry syrup from market. The Recall letter dated 08/10/2012 is annexed in "Annexure-III"
4. We had discussed regarding stop sale and Recall of Stocks of Sacro HP capsule and Dry Syrup, marked with bacterial strain Identifications T-110, TO-A and TOA on products labels over telephone and confirmed to Mr. Sunil Kumar Kothari, Vice President - Finance vide our letter dated 10th October, 2012. The letter dated 10/10/2012 addressed to Mr. Sunil Kothari, Vice President - Finance is annexed, "Annexure-IV"
In view of above and our written undertaking to Tablets (India) Limited, we request you to withdraw above suit.
Thanking you,
Yours Truly
For D.R. Johns Lab Pharma Pvt. Ltd.
Sd/-
DAVID EMMANUEL
General Manager - Operations
Copy to:
Mr. A. Venkataraman, Vice President - Finance, Tablets (India) Limited for information and necessary instruction to your Counsel.'
23. I perused the deposition of PW1, which was recorded on 12.09.2018. A perusal of the same reveals that it is cogent and it is synchronized with the pleadings in the plaint and the submissions that have been made today. Besides the deposition being cogent, Exs.P1 to P12 have been marked and proved in a manner known to law.
24. Before parting with the case, it has become necessary to set out one aspect of the matter pertaining to the procedure to be followed under amended CPC as amended by said Act. The various steps, which the Commercial Division will follow in hearing a suit, have been adumbrated very specifically in Rule 2 of Order XV-A of amended CPC as amended by said Act. There are seven distinct steps which have been adumbrated in aforesaid Rule XV-A and they are as follows:
'Orders to be passed in a Case Management Hearing
In a case Management Hearing, after hearing the parties, and once it finds that there are issues of fact and law which require to be tried, the Court may pass an order -
(a) framing the issues between the parties in accordance with Order XIV of the Code of Civil Procedure, 1908 (5 of 1908) after examining pleadings, documents and documents produced before it, and on examination conducted by the Court under Rule 2 of Order X, if required;
(b) listing witnesses to be examined by the parties;
(c) fixing the date by which affidavit of evidence to be filed by parties;
(d) fixing the date on which evidence of the witnesses of the parties to be recorded;
(e) fixing the date by which written arguments are to be filed before the Court by the parties;
(f) fixing the date on which oral arguments are to be heard by the Court, and
(g) setting time limits for parties and their advocates to address oral arguments.'
25. A perusal of the above would reveal that there is a departure made from the usual procedure, particularly in that part of CPC, which remains untouched by said Act. That departure is, written arguments are to be filed before oral arguments are advanced. A perusal of amended CPC as amended by said Act would reveal that written arguments supra has to be filed in accordance with Order XVIII Rule 2 Sub Rules (3A) to (3F). This takes us to the question as to in a given case like this, where there is no contest, where ex parte evidence has been recorded, whether the Court i.e., Commercial Division can hear oral submissions and dispose of the suit before filing of written arguments.
26. To be noted, as mentioned supra, this suit was originally presented on 09.01.2015 before the constitution/notification of Commercial Division in this Court. Post Notification of Commercial Division in this Court in November/December 2017, this suit was transferred to this Commercial Division under Section 15 of said Act. Post transfer, jurisdiction of this Commercial Division was determined on 10.08.2018. Therefore, this is a suit which has been transferred to this Commercial Division under Section 15 of the said Act. A perusal of Sub Section (4) of Section 15 of the said Act reveals that discretion in this regard has been vested with Commercial Division qua steps adumbrated in Order XV-A of amended CPC (extracted and reproduced supra). I deem it appropriate to extract Sub Section (4) of Section 15, which reads as follows:
'(4) The Commercial Division or Commercial Court, as the case may be, may hold case management hearings in respect of such transferred suit or application in order to prescribe new timelines or issue such further directions as may be necessary for a speedy and efficacious disposal of such suit or application in accordance (with Order XV-A) of the Code of Civil Procedure, 1908 (5 of 1908)'
27. A perusal of the same reveals that in case of transferred suits, this Commercial Division can prescribe new time lines and can also issue further directions as may be necessary for speedy and efficacious disposal of suit. In the instant case, in the light of the sole defendant remaining ex parte and in the light of ex parte evidence being recorded, I am of the view that no reasonable purpose will be served by directing the plaintiff to file written arguments, more so, in accordance with Order XVIII Rule 2 Sub Rules (3A) to (3F). It will serve the interest of efficacious disposal, if the written arguments step is skipped and oral arguments are heard. Therefore, I have skipped written arguments and I have heard oral arguments today, after recording of ex parte evidence in the instant suit. As mentioned supra, the main suit has been filed with prayers of infringement and passing off. It is necessary to extract the prayer paragraph in the plaint. To be noted, prayer paragraph in the plaint is paragraph 26 and the same reads as follows:
'a) grant a permanent injunction restraining the Defendant, its directors, distributors, stockists, servants, agents, retailers, legal representatives, job-workers, manufacturers, overseas retailers and distributors, shipment agents, C & F agents, marketers, advertisers or any other person claiming under it from in any manner manufacturing, se ling, offering for sale, stocking, exporting, marketing, claiming, advertising or in any manner directly or indirectly dealing with the mark "Streptococcus faecalis T-110" or any mark deceptively similar thereto in ay manner whatsoever, thereby infringing the registered trademark of the plaintiff;
b) grant a permanent injunction restraining the Defendant, its directors, distributors, stockists, servants, agents, retailers, legal representatives, job-workers, manufacturers, overseas retailers and distributors, shipment agents, C & F agents, marketers advertisers or any other person claiming under it stocking, exporting, marketing, claiming, advertising or in any manner directly or indirectly dealing with bacterial strain markings "Streptococcus faecalis T-110", "Clostridium butyricum TO-A" and "Bacillius mesentericus TO-A" in any manner whatsoever, thereby misleading the trade and public as to origin of goods, amounting to passing off;
c) direct the defendant to pay to the Plaintiff a sum of Rs. 25,000/- as liquidated damages for committing acts of infringement and passing off against the plaintiff;
d) direct the Defendant be ordered and decreed to deliver up for destruction to the Plaintiff all the medicinal preparations, labels, cartons/ bottles/containers - empty or filled with contents, raw materials, leaflet, brochures, dyes, blocks, screen prints, hand bills, hoardings, wall posters, calendars, carry bags, stationery items and such other sales promotional materials bearing the marks "Streptococcus faecalis T-110", "Clostridium butyricum TO-A" and "Bacillus mesentericus TO-A" or any other marks similar thereto, for destruction purposes;
e) grant a preliminary decree in favour of the Plaintiff directing the Defendant to render accounts of profits made by it by use of the marks "Streptococcus faecalis T-110" "Clostridium butyricum TO-A" and "Bacillius mesentericus TO-A" and a final decree be passed in favour of the Plaintiff for the amount of profits found to have been made by the Defendant after the latter has rendered accounts and
f) for costs of the entire proceedings.'
28. With regard to sub paragraphs (a) and (b), which pertain to infringement qua TM1, TM2 and TM3 and passing off qua TM1, TM2 and TM3, the plaintiff has proved their case and they are entitled to a decree as prayed for.
29. With regard to sub paragraph (c) pertaining to damages in a sum of Rs. 25,00,000/-, no evidence has been let in. There is nothing on record to show damages, much less quantum of damages, which the plaintiff has suffered. Therefore, I am not acceding to sub paragraph (c) prayer for damages, however, with a rider that after rendition of accounts pursuant to prayer limb (e) infra, if the plaintiff is able to quantify the damages and if the plaintiff chooses to initiate proceedings for recovery of damages, after such quantification, they will be entitled to do so. In other words, this decree will not be an impediment and will not come in the way, if the plaintiff decides to adopt such a course of action.
30. This takes us to sub paragraph (d) of the prayer. With regard to sub paragraph (d) of the prayer, one has to necessarily straightaway refer to letter dated 28.01.2015 from the defendant to the plaintiff's counsel. To be noted, this letter forms part of Ex.P12 Series. Also to be noted, this letter has been written by the defendant to the plaintiff's counsel, after interim orders were granted by this Court and after the same were duly served on the defendant. Paragraph 2 of the aforesaid letter has already been extracted supra and it is not in dispute before me that the defendant has stopped sale of Sacro HP capsule and dry syrup with the offending mark. The letter is dated 28.01.2015. It is nearly four years ago. Plaintiff does not dispute that defendant has in fact stopped using offending cartons and wrappers as the same are not in the market now. Therefore, I am of the view that it may not be appropriate to decree prayer paragraph (d), which is for delivery of destruction of medicinal preparations, labels, raw materials, brochures etc. Even if there were some products left in 2015, I am sure that would have lost their shelf life by now. Therefore, sub paragraph (d) of paragraph 26 prayer is not acceded to.
31. This takes us to prayer sub paragraph (e) of prayer paragraph 26. As the plaintiff has prima facie established that there is infringement and passing off qua TM1, TM2 and TM3, they are certainly entitled to a preliminary decree directing the defendant to render accounts of profit made by it using the said marks i.e. TM1, TM2 and TM3. Therefore, prayer in sub paragraph (e) of prayer paragraph 26 is acceded to and decreed as prayed for.
32. This takes us to the prayer for costs, which is sub paragraph (f) in prayer paragraph 26. To be noted, sub paragraph (f) is dovetailed with another limb. It is the usual residuary prayer, which prays for other orders which are deemed fit and proper. I deem it appropriate to consider prayers for costs and the residuary prayer together. Plaintiff is certainly entitled to costs, as the defendant compelled the plaintiff to carry this litigation to its logical end over a period of four years expending time, money and energy. This would be actual costs. As far as the residuary prayer is concerned, I am of the view that the plaintiff is entitled to compensatory costs under Section 35-A of amended CPC as amended by said Act.
33. To be noted under the amended CPC, there is no cap with regard to compensatory costs, which is otherwise referred to as exemplary costs in common parlance. Considering the trajectory of this litigation and considering the fact that the suit was filed on 09.01.2015, though the defendant choose to write to the plaintiff on 28.01.2015 vide one of the letters in Ex.P12 Series, the defendant has not chosen to come to this Court and submit itself to decree. This has compelled the plaintiff to carry this litigation to its logical end by carrying the same over a period of four years, which includes several hearings, letting in evidence and marking of documents. Defendant after writing the aforesaid letter dated 28.01.2015, which forms part of Ex.P12 Series could have offered to come before this Court and submit itself to decree and that would have put an end to this suit, in the calendar year 2015 itself, but the defendant has not chosen to do so and has compelled the plaintiff to carry this litigation over nearly half a decade. I am of the view that this is a fit case for awarding compensatory costs under Section 35-A and compensatory costs of Rs. 1 lakh is awarded. To be noted, compensatory costs under Section 35-A is in addition to regular costs, the prayer for which is in sub paragraph (f) and which has been acceded to. Plaintiff can file bill of costs as per prevailing procedure with regard to costs.
34. Suit partly decreed with costs and compensatory costs on above terms. All interlocutory applications are closed.
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