Patna High Court
Parke Davis & Co. vs D.B.T. Pharmaceuticals on 4 July, 1979
Equivalent citations: AIR1980PAT107, AIR 1980 PATNA 107, 1979 BBCJ 828, 1980 BLJR 218, (1980) BLJ 1
JUDGMENT Shiveshwar Prasad Sinha, J.
1. This plaintiff's appeal is directed against an order dated 8th December, 1978, refusing to grant temporary injunction in favour of the plaintiff and against the defendant
2. The suit, which was in relation to infringement of trade mark rights, was for perpetual injunction against the defendant from using the trade mark. The plaintiff also prayed for grant of temporary injunction against the defendant.
The plaintiff is a manufacturer of various types of medicinal products having separate registered trade marks for each type and one which has given rise to the present cause is the alleged use by the defendant of the trade mark 'DRYL' of which the appellant-plaintiff was the registered proprietor having Registration No. 216356 dated 4-7-1963, The defendants are also manufacturers of medicinal products. The other trade marks of medicinal and pharmaceutical preparations of which the appellant is the registered proprietor are Benadryl, Caladryl. Ambodryl, Ergodryl, Bodryl and Combodryl. By virtue of the registration of the said trade marks, the plaintiff claims sole and execlusive right to its use.
3. It appears that some time in the year 1976, the plaintiff came to learn that the defendants, who were having their Head Office at Muzaffarpur, were manufacturing certain medicinal preparations giving it a mark "D.B. DRYL". It is stated on behalf of the appellant that the plaintiff first requested the defendants to abstain from using the word 'DRYL' in their medicinal preparation and ultimately filed the suit in question which has given rise to this appeal. The suit, as stated earlier, was filed for perpetual injunction of the defendant from using the trade mark of which the appellant claimed to have exclusive right of user. Besides, the appellant also claimed temporary injunction against the defendant.
The learned 1st Additional District Judge has refused to grant temporary injunction and the reason which weighed with him was that there was no chance of confusion in a purchaser's mind between plaintiff's and defendant's products even though the mark 'DRYL' was being used also by the defendant for its pharmaceutical preparation. In other words, according to the learned Judge, the plaintiff had no prima facie case. The prayer for grant of temporary injunction having thus been refused, the appeal is now laid before this Court.
4. Mr. Lall appearing for the appellant has submitted that once it is admitted that the appellant was the registered proprietor of the said trade mark 'DRYL' and the defendant was not, the defendant could not use it unless they established their right to do so. It would be irrelevant for a Court, while deciding the question of temporary injunction in such a case, to say that chances of deception betweer the plaintiff's goods and defendant's goods was nil even with that trade mark being put on their respective medicinal preparations. According to the learned counsel for appellant if there is an infringement of the plaintiff's exclusive right to use the trade mark, the plaintiff's right must be protected. In support of his argument, he has cited certain decisions of certain High Courts as also of the Supreme Court to which I shall advert at the appropriate place. On these arguments, the learned counsel for the appellant has submitted that the temporary injunction asked against the defendant must be granted to the appellant; firstly, because, there was a prima facie case (for) trial and secondly because, the balance of convenience lay in injuncting the defendant from using the said trade mark and lastly, because, irreparable injury would be caused to the plaintiff if the defendant was not injuncted. The injury to its goodwill could not be compensated in terms of money. He has, therefore, urged chat the impugned order of the trial Court bo set aside and the defendant be temporarily injuncted from using the said trade mark 'DRYL' for its pharmaceutical preparations.
5. Mr. Lal Narayan Sinha. appearing for the respondent, has urged that the learned Additional District Judge was justified in refusing the injunction because the defendant's product was a drug which came under Schedule L and could be sold only on prescription of registered medical practitioner. There was. therefore, no scope of deception or. confusion between the medicinal preparations manufactured by the petitioner and those made by the defendant. If no confusion or deception was possible, definitely there could be no prima facie case to be tried. It has further been submitted that the balance of convenience also did not lie in favour of granting temporary injunction. In this regard it is stated that, if injuncted the defendant might lose his total business, but it will be of no consequence for the plaintiff. Referring to the figures of sales made by the plaintiff, it has been submitted that the defendants' medicinal preparation had not at all affected it. Moreover, according to the learned counsel for the respondent, the word 'DRYL' had come to be used in a common way, for any medicine which has a potentiality of controlling diseases. On these grounds it has been urged on behalf of the defendant-respondent that the impugned order was a valid order which must be sustained.
6. As observed earlier, the plaintiff's prayer for grant of temporary injunction against the defendant has been rejected on the ground that the plaintiff had not had a prima facie case. It has been rather difficult for me to appreciate that view. Now, here is a case in which admittedly the plaintiffs are the registered proprietors of a trade mark 'DRYL'. They had been in exclusive use of that trade mark and have used it in many of their other preparations such as Benadryl, Caladryl, Comodryl etc. These preparations have achieved a certain respectability in the market. When, therefore, the plaintiffs came up with a suit for perpetual injunction against the defendant's using the said registered trade mark in their preparation, definitely the Court had to apply its mind to the cause as to why the defendant was enamoured of using the same mark on its preparations. If the word 'DRYL' had not had any particulat attraction for customers, why should the defendant have stuck to that mark for its medicinal preparations. These are some aspects of the matter wh.rh immediately attract attention and require consideration. This certainly means that there is a case for trial, namely, a prima facie case. Further, under Section 12 of the Trade and Merchandise Marks Act, 1958 (Act No. XLIII of 1958) there is a prohibition of registration of identical or deceptively similar trade mark. That has a purpose, namely, otherwise it may put the purchasers of the goods in confusion and deception. Section 29 of the Act prohibits infringement of trade mark rights in course of trade. User of such" a trade mark which is identical with or deceptively similar to a trade mark of a registered proprietor in relation to any goods is prohibited. The deception, as one can see, could generally be of two varieties: one, of being so similarly made as if they were the goods of the registered proprietor; the other, the goods manufactured though looking dissimilar in all respects, yet bearing on it a mark which might con-
fuse the purchaser as to its actual manufacturer. The Supreme Court in the case of Kaviraj Pandit Durga Dutt Sharma v. N. p. Laboratories, (AIR 1965 SC 980) has observed:--
"In an action for infringement, the plaintiff must no doubt, make out that the use of the defendant's mark is likely to deceive, but where the similarity between the plaintiff's and the defendant's mark is so close either visually, phonetically or otherwise and the Court reaches the conclusion that there is an imitation, no further evidence is required to establish that the plaintiffs rights are violated. Expressed in another way, if the essential features of the trade mark of the plaintiff have been adopted by the defendant, the fact that the get-up, packing and other writing or marks on the goods or on the packets in which he offers his goods for sale show marked differences, or indicate clearly a trade origin different from that of the registered proprietor of the mark would be immaterial: whereas in the case of passing off, the defendant may escape liability if he can show that the added matter is sufficient to distinguish his goods from those of the plaintiff."
Learned Additional District Judge has quoted this very passage in his order and yet, curiously enough, he has thought it proper to hold that there was no prima facie case for trial. I must say that confusion is likely to be created either by the similarity of the goods or by use of a name which might give rise to a belief in the purchaser's mind of there being some connection with the goods and the owner of the registered trade mark. If. therefore, there be a complaint by the registered owner of the trade mark, about any such deception being practised by another, it would be difficult to say that there is no cause to be tried. In one of its decisions, (1978) 3 Industrial Property Law Rep. 73, the Delhi High Court was seized with the question as to whether the use of a well known trade mark for the purpose of manufacturing goods other than the goods manufactured by the registered owner of the trade mark, was likely to confute the customers with regard to real manufacturer of the said goods. Their Lordships observed that "if a trade mark is an invented word (the word was 'Telerad') then the first user of such a trade mark obviously intends to have a monopoly of it and he will make every attempt to satisfy the authorities acting under the Trade and Merchandise Marks Act to protect his monopoly of the same." Their Lordships further observed "when a person copies as his own trade mark a word previously invented by another person, suspicion immediately arises why the copyist is trying to imitate the person, who has a priority in the trade. The appellant in the present case has not been able to give any satisfactory answer as to why it had raised 'Telerad' as its trade mark.........".
7. It would not be proper for me to go into the merits of the instant case, because the suit is still pending and I am told that it has been stayed in terms of Section 46 (1) (b) of the Act because, the defendant has filed a petition before the Registrar of Trade Marks, Bombay, stating that the plaintiff has not been using the trade mark 'DRYL' since a continuous period of 5 years expiring a month before the data of the application. The said application is pending before the Registrar of Trade Marks Bombay and I am told that the parties have filed their pleas and the matter may now be heard shortly, in course of the year. Be that as it may. upon what I have discussed above, it will be wrong to say that the plaintiff did not have a prima facie case. Upon the facts aforesaid there is a prima facie case for trial.
8. Learned counsel for the defendant-respondent has argued that because no dent had been caused on the plaintiffs business by the use of the mark 'DRYL' by the defendant, there was no question of the balance of convenience being in the plaintiffs favour. It is difficult to answer this question at this stage because whether or not a dent has been caused in the plaintiff's business requires to be decided on the basis of the evidence which the parties may hereafter produce.
9. In my opinion, therefore, since there is a prima facie case to be tried and the balance of convenience also lies in granting the injunction prayed for, otherwise one does not know what injury will be caused to the goodwill of the petitioner's business, the impugned order must be set aside. The impugned order is accordingly set aside and the defendants are temporarily injuncted from using the trade mark 'DRYL' in their pharmaceutical preparations from today until the disposal of the title suit or the decision of the Registrar, Trade Marks, Bombay on the petition under Section 46 (1) (b) of the Act whichever is earlier.
10. The appeal is allowed, but in the circumstances without costs.