Bombay High Court
The Himalaya Drug Company vs Gufic Limited, A Public Limited Company ... on 29 January, 2004
Equivalent citations: AIR2004BOM278, 2004(3)BOMCR510, 2004(29)PTC366(BOM), AIR 2004 BOMBAY 278, 2004 (2) COPYTR 16, (2004) 3 BOM CR 510, 2004 (2) BOM LR 937, 2004 BOM LR 2 937
Author: S. Radhakrishnan
Bench: S. Radhakrishnan
JUDGMENT S. Radhakrishnan, J.
1. By the above Appeal from Order the Appellant is challenging the injunction order dated 10th January, 2003 granted by the II Extra Joint District Judge, Thane in a pending Suit, against the Appellant, it's Directors' partners, dealers, servants, representatives and employees from using the Trade mark "Shallaki" for its pharmaceutical and medicinal preparations. By the aforesaid order the Appellant was granted a month's time to clear off its old stock and to file a statement regarding old stock within a week. The trial Court has also expedited the hearing of the above Suit.
2. The brief facts are that the Respondent No. 1 Gufic Ltd. is the registered proprietor of the trade Mark "SALLAKI", having registration No. 385295 in Class 5. It appears that Respondent No. 1 had applied to the Registrar of Trade Marks, Mumbai, for registration of an original and distinctive Trade Mark "Shallaki" on 13th January, 1982 objections. Respondent No. 1 has been after inviting objections. Respondent No. 1 has been using the gum resin extracted from a herbal plant "BOSWELLIA SERRATA" since 1981, in the pharmaceutical and medicinal preparations for treating and healing the joint pains of human body. By a public notice objections were invited before registration of said Trade Mark "SALLAKI". Ultimately, the Respondent No. 1's registration of Trade Mark was granted by the Registrar on 31.7.1985. The said registration was renewed from time to time and Respondent No. 1 has a valid registration of date. It is the contention of Respondent No. 1 that in view of Section 28 of Trade & Merchandise Marks Act, 1958, it has an exclusive right to use the aid Trade Mark in relation to their product. The said certificate is a prima facie proof of validity of registration. On 11th December, 1997, Respondent No. 1 has granted licence to it's sister companies to use said Trade Mark for their products. Respondent No. 1 had published a caution notice regarding it's Trade Mark.
3. The Respondent No. 1 after coming to know of infringement of their Trade Mark by the Appellants, filed a Suit in the District Court on 30th April, 2002. It is the contention of Respondent No. 1 that the Appellants are manufacturing and marketing identical goods in tablet form under the identical Trade Mark by using the word "SHALLAKI". Respondent No. 1 contends that the Appellants are encashing upon the goodwill and reputation of Respondent No. 1.
4. In the aforesaid Suit, the Appellants herein had filed a reply contending that they had commenced the manufacture and use of the said product under the name "Himalaya Pure Herbs", thereafter known as "Singles by Himalaya" in the year 199-2000. In February 2002, the Appellants had launched the same product by the name "SHALLAKI". The Appellants had also contended that they had sold the said product from February 2002 to June 2002 in the sum of Rs. 68,79,358/-. The Appellants had contended that they had spent a sum of Rs. 1,10,19,044/- till June, 2002 on the promotion of the above product.
5. The Respondent No. 1 had contended that their Trade Mark was registered and valid and subsisting, hence they are entitled to injunct Appellant from using the same or identical Trade Mark. It is the case of Respondent No. 1 that the Appellants had infringed the said Trade Mark in February, 2002, hence sought the injunction.
6. Mr. Kadam, the learned counsel for the Appellants contended that "SHALLAKI" is the descriptive word of the product. In that behalf, he strongly referred to and relied upon the extracts of the book "Bhavaprakasa Nighantu".
7. Shri. Kadam, the learned counsel for the Appellant contended that as the word "SHALLAKI" is the Indian name of an Ayurvedic Herb having a Latin name as "Boswellia Serrata". Therefore, he contended that the Appellants use of the name "Shallaki" is a bonafide description of the goods, hence in view of Section 34 of the Trade and Merchandise Mark Act, 1958. Appellants should be protected in use of that word "Shallaki".
8. Mr. Kadam, the learned counsel fairly conceded that though an argument was advanced in the memo of Appeal that in view of well-known and established use of "Shallaki", the registration of Trade Mark in favour of Respondent No. 1 should be deemed to have ceased in view of Section 35 of the Trade Mark Act, however, the Appellant is not pressing the above argument in this Appeal.
9. Mr. Kadam referred to "Bhavaprakasa Nighantu" various websites, as reflected in the compilation to contend that "Shallaki" is the Indian name of the Herb popular in Ayurvedic Medicine. Therefore, the learned counsel contended that it is a bonafide description of its product and the Appellants use of the same name ought to be protected as per the provisions of Section 34 of Trade Marks Act.
10. Mr. Kadam contended that Section 34 of the Trade Marks Act, disentitles the registered proprietor of such a Trade Mark from interfering with the use of the same by any person fr the purposes of bonafide describing the character or quality of the goods, and the same cannot be monopolised by any one trader. According to Mr. Kadam, the underlying principle is that a descriptive word is the antithesis of a distinctive Trade Mark. In that behalf Mr. Kadam referred to and relied upon a) The Canadian Shredded Wheat Company Limited v. Kellog Company of Canada Ltd., 55 RPC 125 (Privy Council), b) The Shredded Wheat Company Limited v. Kellog Co. of Great Britain Ltd. 1940 (57) RPC 137, c) In the matter of Trade Mark "Ordoola", 1909 RPC 850, d) Hindustan Development Corporation v. Dy. Registrar of Trade Marks .
11. Mr. Kadam, therefore contended that the trial Court had completely disregarded the above essential and fundamental aspects and has come to an erroneous conclusion, therefore the said judgment ought to be set aside and the injunction ought to be vacated.
12. Mr. Kadam finally relied upon the judgment of Hon'ble Supreme Court in Laxmikant V. Patel v. Chetanbhai Shah , to contend that the trial Court had ignored the settled principles of law governing the grant or refusal of interlocutory injunction in trade mark and trade name disputes. In the above, trial court and High Court had refused to grant injunction, inspite of overwhelming evidence and material available, hence the Supreme Court intervened and granted the injunction.
13. Mr. Shetye, the learned counsel for the Respondent No. 1 pointed out that the word "SALLAKI" is the Sanskrit name of the herb "BOSWELLIA SERRATA". The learned counsel pointed out that the gum resin extracted from the above herb forms the main ingredient of the product of Respondent No. 1 as well as that of Appellants. "Sallaki" is the name of the herbal plant, from which the said gum resin is taken out which is the principal ingredient of the product. Mr. Shetye pointed out that the said gum resin is known as "Kunduru" in Sanskrit. Mr Shetye also pointed out that the classification of the plant "Sallaki" is made as Kapuradhivarga" and that the gum resin extract as "Vatadivarga". In view of the above, Mr. Shetye pointed out "Shallaki" is not descriptive of the product at all. Therefore, the learned counsel for Respondent No. 1 pointed that "Shallaki" does not constitute the bonafide description of the character or quality of the goods, and as such can not take resort to Section 34 of Trade Marks Act. The learned counsel also pointed out that "Boswellia Serrata" is known in India by not less than 24 Indian names and one of them is "Shallaki".
14. The learned counsel also brought to my notice that the Appellants have already filed a Rectification Petition before the High Court under Section 56 of the Trade Marks Act in July-August 2002, and this Court had declined to grant any ad-interim or interim reliefs.
15. Apart from the above, the learned counsel also pointed out that the Appellants themselves have applied in February, 2003, for registration of "Shallaki" as their Trade Mark, even though they contend it is descriptive of their product. The above fact has been totally suppressed from this Court. The learned counsel for Respondent No. 1 also pointed out from the record, nearly 500 doctors all over India have identified "Sallaki" as a product of Respondent No. 1.
16. Mr. Shetye, the learned counsel strongly relied upon the Hon'ble Supreme Court Judgment Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd. and the Judgment of a learned Single Judge of this Court in Indchemic Health Specialities Pvt. Ltd. v. Naxpar Labs Pvt. Ltd. 2002 (3) Mah. L.J. 744, who had followed the above Supreme Court Judgment.
17. Mr. Shetye also referred to and relied upon the judgment of the Hon'ble Supreme Court in Wander Ltd. v. Antox India Pvt. Ltd. AIR 1990 (Supp) SCC 727, with regard to the scope of interference by the Appellate Court with regard to the injunction granted by the Trial Court.
18. The learned counsel for the Respondent No. 1 also relied upon the case in Canadian Shredded Wheat Co. case, wherein it is held that the words of the Mark may be descriptive of the goods, but if it is distinctive, then it would prevail. The learned counsel for the Respondent No. 1 referred to the Calcutta High Court judgment in , where it is held that the words should have a direct reference to the goods. Therefore, Mr. Shetye contended that the word "Sallaki" is a Sanskrit word and not known commonly at all, hence it cannot be descriptive of the product at all.
19. The learned counsel for the Respondent No. 1 also emphasised that the Appellants entered the market with "Shallaki" only in February 2002, whereas the Respondent No. 1 entered the market with "Shallaki" since January, 1982, i.e. over 20 years before and even the turnover of the product of Respondent No. 1 in the market is also much larger than that of the Appellants.
20. Perused the judgment and order of the Trial Court, which is impugned herein. The learned Judge has applied the correct tests to find out whether the words are similar and thereafter came to a prima-facie finding based on the material produced that both the trade-marks "Sallaki" and "Shallaki" are visually and phonetically similar. The learned Judge has also referred the Supreme Court case in Cadila Health Care Ltd. case and the Bombay High Court case in Indchemic Health Specialities Pvt. Ltd. case and has rightly applied the principles laid down therein. The learned Trial Judge has based on material clearly came to a conclusion that this is clear case of "passing off", hence granted the injunction.
21. In this context, it would be relevant to quote the scope of Appellate Court in interference in an interlocutory order, as has been held in Wander Ltd. v. Antox India P. Ltd. 1990 (Supp) S.C.C. 727, by the Supreme Court in paragraph 14 as under:-
14. The appeals before the Division Bench were against the exercise of discretion by the Single Judge. In such appeals, the appellate court will not interfere with the exercise of discretion of the court of first instance and substitute its own discretion except where the discretion has been shown to have been exercised arbitrarily, or capriciously or perversely or where the court had ignored the settled principles of law regulating grant or refusal of interlocutory injunctions. An appeal against exercise of discretion is said to be an appeal on principle. Appellate court will not reassess the material and seek to reach a conclusion different from the one reached by the court below if the one reached by that court was reasonably possible on the material. The appellate court would normally not be justified in interfering with the exercise of discretion under appeal solely on the ground that if it had considered the matter at the trial stage it would have come to a contrary conclusion. If the discretion has been exercised by the trial court reasonably and in a judicial manner the fact that the appellate court would have taken a different view may not justify interference with the trial court's exercise of discretion. After referring to these principles Gajendragadkar, J. in Printers (Mysore) Private Ltd. v. Pothan Joseph : (SCR 721) "... These principles are well established, but as has been observed by Viscount Simon in Charles Osenton & Co. v. Jhanaton .. the law as to the reversal by a court of appeal of an order made by a judge below in the exercise of his discretion is well established, and any difficulty that arises is due only to the application of well settled principles of an individual case."
The appellate judgment does not seem to defer to this principle.
22. Applying the above tests, I do not find in anyway the Trial Court has exercised it's discretion arbitrarily or capriciously or perversely. Similarly, I also do not find that the Trial Court had ignored the settled principles of law regulating the grant or refusal of interlocutory injunctions.
23. The main contention of the learned counsel for the Appellant that "Shallaki" is descriptive of the product cannot be accepted at all, since the herb "Bosewellia Serrata" is a herb and it is known in 23 names and one of them is "Shallaki". Another vital aspect to be noted is that the product is made out of the gum resin of the said herbal plant. Therefore, if the name were to be really descriptive of the product, it should be "Kunduru" which is the Sanskrit name for the said gum resin and not "Shallaki". Therefore, based on the material produced, one cannot at all say "Shallaki" is descriptive of the product. If that be so, the Appellant cannot take the benefit of Section 34 of Trade Marks Act. It is also not a bonafide description of the product.
24. In this context, it is relevant to note the following observations of the Supreme Court in the case of Durga Dutt Sharma v. Navaratna Pharmaceuticals Laboratories, "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 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 plaintiff's rights are violated".
The above observations would squarely apply in the instant case, as even Mr. Kadam, the learned counsel for the Appellants could not dispute that "Sallaki" and "Shallaki" are phonetically similar.
25. The Supreme Court in Amritdhara Pharmacy v. Satya Deo Gupta has held that the products will be purchased by both villagers and townsfolk, literate as well as illiterate and the question has to be approached from the point of view of a man of average intelligence and imperfect recollection. The above observations will also squarely apply in instant case, as it is an Ayurvedic product, available over the counter.
26. In the instant case the Appellants has also wilfully suppressed a material fact from this Court that it has already applied or registration of trade mark "Shallaki" in the month of February, 2003. This conduct is reprehensible and the Appellants cannot seek any relief from this Court.
27. The trial Court was right in its observations that it was not a bonafide use of the word "Shallaki" to describe the product by the Appellants. The least Appellants could have done is to verify the Trade Marks register, before choosing the name "Shallaki", as "Shallaki" has been registered in the name of Respondent No. 1 for over twenty years.
28. Under the aforesaid facts and circumstances, I do not find any merit whatsoever in the above Appeal from Order, hence the same stands dismissed with costs.
29. After the above order was pronounced, the learned counsel Shri Kadam, appearing for the Appellant prayed that the stay granted earlier in the above Appeal from Order be continued for a further period of eight weeks from today. No-one is appearing on behalf of the Respondents. In view thereof, the present Judgment and Order dated 29.1.2004 stands stayed for a period of eight weeks from today.
30. Issuance of Certified copy expedited. Parties to act on an ordinary copy of this order, duly authenticated by the Shirestedar/Court Stenographer.