Delhi District Court
M/S. Sas Pharmaceuticals vs . M/S. Sos Pharma on 11 December, 2014
M/s. SAS Pharmaceuticals vs. M/s. SOS Pharma
In the Court of Additional District Judge02, South District,
Room No. 602, Sixth Floor, Saket Courts Complex, New Delhi
In the matter of :
TM No. 16/2011
M/s. SAS Pharmaceuticals,
C55/1, Okhla Industrial Area, PhaseII,
New Delhi110020. ... Plaintiff
Versus
M/s. SOS Pharma,
202, Jeewan Nagar, Focal Point,
Ludhiana, Punjab. ... Defendant
Date of Filing : 10.05.2010
Date of Institution : 22.01.2011
Decision Reserved on : 27.11.2014
Date of Decision : 11.12.2014
JUDGMENT
{on Suit for Permanent Injunction, restraining infringement of Trade Mark, Delivery Up & Rendition of Account} Plaintiff's Case 1.1 Plaintiff M/s SAS PHARMACEUTICAL was initially a proprietorship firm established in the year 1990, its proprietor was Ms. Kamla Jain. However, in the year 1994, it became a partnership firm of TM No. 16/2011 Page 1 of 31 M/s. SAS Pharmaceuticals vs. M/s. SOS Pharma Ms. Kamla Jain and Mr. Sandeep Jain, the Form B ( now Ex.PW 1/1) has been issued by the Registrar of Firms. Sh. J.K.Puri has been constituted and appointed by way of Power of Attorney (now Ex.PW1/2) to sign and verify the plaint and to institute the suit on behalf of plaintiff. 1.2 In 1990, the plaintiff conceived and coined trade mark REGULIN in respect of Ayurvedic medicine and since then plaintiff has been using the Mark continuously, extensively, exclusively and openly. The plaintiff is carrying on old and established business of manufacturing and trading interalia of medicinal and Ayurvedic preparations. The plaintiff is registered proprietor of trade mark REGULIN FORTIS vide trademark no.1306019 dated 31.08.2004 (now Ex.PW1/3), it has been published in the trade mark Journal no. 1328suppl4 (now Ex.PW1/4). The plaintiff also adopted and started using trade mark / trade name SAS PHARMACEUTICALS since 1990, it is registered under no. 874848 dated 06.09.1999 (now Ex.PW1/5) in respect of Ayurvedic medicines, it was also published in the trade mark Journal Mega3 (now Ex.PW1/6), both are still valid and subsisting in full force, (the certificate of legal proceeding is now Ex.PW1/56 issued under the Trade Marks Act). The plaintiff is also registered proprietor of copyright in its blister packing of TM No. 16/2011 Page 2 of 31 M/s. SAS Pharmaceuticals vs. M/s. SOS Pharma REGULIN, REGULIN FORTE, REGULIN FORTIS qua its artistic work, the same have also been registered with the copyright office (the extracts are now Ex.PW1/7 to Ex.PW1/9). The plaintiff's packaging is shown in packaging (now Ex.PW1/43 of REGULIN FORTE). The plaintiff has applied for registration of trade mark REGULIN, it is in the process of registration before Registrar of Trade Mark. The plaint further narrates the detail of cases which were instituted by the plaintiff in respect of defendant's trade mark, vis a vis the same were decided in its favour by the various courts. The plaintiff has permitted M/s SAS Pharmaceuticals (Himachal Pradesh), a group/associate firm to use trade mark REGULIN, REGULIN FORTE, REGULIN FORTIS and SAS PHARMACEUTICALS.
On account of the superior quality and high effectiveness of the said medicine and due to long and continuous use of the said trade mark REGULIN, REGULIN FORTE, REGULIN FORTIS and SAS PHARMACEUTICALS for almost a decade, the plaintiff's said trade mark consisting of word 'REGULIN' and SAS PHARMACEUTICALS have acquired high degree of recognition, reputation and goodwill among the buying public in general and trade in particular. The said trade mark REGULIN, REGULIN FORTE, REGULIN FORTIS and SAS PHARMACEUTICAL connote and denote the said medicine as originating TM No. 16/2011 Page 3 of 31 M/s. SAS Pharmaceuticals vs. M/s. SOS Pharma from the plaintiff. The said trade mark REGULIN, REGULIN FORTE, REGULIN FORTIS and SAS PHARMACEUTICAL have become exclusively associated with the plaintiff and synonymous with the plaintiff. The statement of sales (from year 199394 to 200607, the same are now Ex.PW1/10) reflects the trends of higher sales and bills (for period 18.10.1990 to 01.04.2006, the same are now Ex. PW1/11 to Ex. PW 1/40) are in respect of plaintiff's product and Mark REGULIN, REGULIN FORTE, REGULIN FORTIS and trade name.
The plaintiff has given substantial publicity to its said trade mark REGULIN/REGULIN FORTE/REGULIN FORTIS and SAS PHARMACEUTICAL through different medias viz. trade literature, pamphlets, personal visits of medical representative to doctors, chemists, stockists for which the plaintiff has spent substantial amount. Further on account of extensive sale of the said medicine under the trade mark REGULIN, REGULIN FORTE, REGULIN FORTIS and SAS PHARMACEUTICAL coupled with publicity and sales promotional work since the year 1990, the plaintiff's said trade mark REGULI, REGULIN FORTE, REGULIN FORTIS and SAS PHARMACEUTICAL has acquired immense goodwill and reputation and has acquired status of well known trade mark and even the Hon'ble Delhi Court Syncom Formulation (I) Ltd TM No. 16/2011 Page 4 of 31 M/s. SAS Pharmaceuticals vs. M/s. SOS Pharma vrs SAS Pharmaceuticals and SAS Pharmaceuticals versus Emerson Labs Ltd. & Anr. have declared popular the said trade mark REGULIN, REGULIN FORTE, REGULIN FORTIS.
1.3 In the month of August 2006 the plaintiff came across publication of the defendant's trade mark REGULATOR (now Ex.PW1/41, claiming user since 1998) and the trade mark / trade name SOS PHARMA in Trade marks Journal (now Ex.PW1/42) and then the plaintiff lodged its protest against the impugned mark REGULATOR and SOS PHARMA by filing opposition before the Registrar of Trade marks. Despite opposition by the plaintiff, the Defendant is using the trade mark REGULATOR and the trade mark/ trade name SOS PHARMA.
The defendant has adopted and used the mark REGULATOR which is structurally, phonetically and visually similar to the plaintiff's registered trade mark REGULIN FORTIS and the defendant has also used the trade mark/trade name SOS PHARMA which is structurally, phonetically and visually similar to the plaintiff's registered trade mark SAS PHARMACEUTICALS in respect of identical goods i.e. medicine for which the plaintiff's trademark/name REGULIN FORTIS and SAS PHARMACEUTICAL are registered. Thus, the defendant has infringed TM No. 16/2011 Page 5 of 31 M/s. SAS Pharmaceuticals vs. M/s. SOS Pharma the plaintiff's registered trade mark REGULIN FORTIS and SAS PHARMACEUTICALS. The defendant has adopted similar mark in order to confuse and deceive the plaintiff's customers and to give a false impression that defendant's medicine under the mark REGULATOR and SOS PHARMA are the same as that of plaintiff.
1.4 Plaintiff's said trade mark REGULIN FORTIS and SAS PHARMACEUTICALS are distinctive and well recognized in public and as such illegal use of similar impugned mark REGULATOR and SOS PHARMA by the defendant will cause eventual erosion of the distinctive character of the plaintiff's said trade marks. Plaintiff is the registered proprietor of the trade mark REGULIN FORTIS and SAS PHARMACEUTICALS and as such the plaintiff has exclusive right to use it in respect of its goods/medicines to the exclusion of others and no body has any right to use any similar mark.
The defendant has no right or justification whatsoever for the adoption and use of the impugned mark REGULATOR and SOS PHARMA.
1.5 The adoption of the mark REGULATOR and SOS PHARMA TM No. 16/2011 Page 6 of 31 M/s. SAS Pharmaceuticals vs. M/s. SOS Pharma by the defendant is dishonest and malafide. The defendant has pirated and is still pirating the plaintiff's said trade mark REGULIN FORTIS and SAS PHARMACEUTICALS by adopting and using mark REGULATOR and SOS PHARMA, the adoption and user mark REGULATOR and SOS PHARMA in respect of identical medicine by the defendant is with fraudulent and malafide intention of trade upon and to encash the goodwill and reputation of the plaintiff's said trade mark/name REGULIN FORTIS and SAS PHARMACEUTICALS and make profits. The defendant is also guilty of passing off its inferior medicine as that of the plaintiff. 1.6 The plaintiff has suffered immense loss due to the defendant's unlawful and unjust trade activities and further losses and damages of trade and reputation of the plaintiff are inevitable unless the defendant is restrained permanently from manufacturing and using impugned mark REGULATOR and SOS PHARMA.
The buyers and users of medicine of both the parties are illiterate ladies of urban area and rural area, the medicines are made available across the counter without prescription of Doctors, therefore, it is in the public interest also that defendant's medicine under the said Mark be ousted from the market by appropriate injunction order. That is TM No. 16/2011 Page 7 of 31 M/s. SAS Pharmaceuticals vs. M/s. SOS Pharma why, the suit for perpetual injunctions vis a vis appropriate directions for deliver up the goods, packaging material etc and to direct the defendant to render accounts of profits.
Defendant's Case 2.1 The defendant filed detailed written statement, consisting preliminary objections and reply on merits, while opposing the case of petitioner as set up or the allegation against the defendant as reflected in paragraph no.1 above, to demonstrate that neither their exists any cause of action in favour of plaintiff nor the plaintiff is entitled for any relief, since the case/marks of plaintiff and case/marks of defendant are distinct, different and they cannot be construed similar or identical marks or trade names. The defendant also denies facts, figures, certificates and other record relied by the plaintiff. Further, the defendant also explains its own case. The defendant's case as set up in the written statement is detailed hereunder.
2.2. The defendant has adopted trade mark in the name of REGULATOR but never use it for medicinal purpose. Moreover plaintiff can not have monopoly over the word "REGULIN" as the same connotes TM No. 16/2011 Page 8 of 31 M/s. SAS Pharmaceuticals vs. M/s. SOS Pharma to the regulation and regulatory and has been used in over hundreds registrations as a constituent of the name under which the products relating to treatment associated to normalize the irregular menstrual cycle of women in the field of medicinal and pharmaceuticals preparations. The word REGULIN is, therefore, generic and common to trade in term of the medicines associated with the treatment of menstrual cycle in the women. The word has thus become public juris. It is descriptive in nature and common in use and as such nobody can claim an exclusive right to the use of "REGULIN" and as a constituent of any trade mark. 2.3 There is no possibility of any deception and confusion in the mind of purchasing public. The trade name SAS PHARMACEUTICALS and SOS PHARMA are entirely different and there is no phonetic, visual or structural similarity between the two trade names. Moreover the defendants has adopted the trade name SOS which is descriptive in nature in the field of medicine and the same is abbreviated form of 'Save Our Soul' which is used by the medical practitioner at the time of prescribing the medicine. Thus the mark SOS cannot be confused with the mark SAS of the plaintiff. The mark SOS has different sense and meaning and is well recognized medical term. How the plaintiff can claim TM No. 16/2011 Page 9 of 31 M/s. SAS Pharmaceuticals vs. M/s. SOS Pharma monopoly over the said trade name SAS or the defendant's trade name?
The defendant has established its firm SOS PHARMA in the year 1999 and it has been using the same name continuously and uninterruptedly since then and it is very well in the knowledge of the plaintiff. The plaintiff now can not be permitted to pursue with the case as there is implied consent on the part of the plaintiffs.
The defendant's trades name SAS PHARMA is entirely different and distinct, i.e. visually, phonetically and apparently, from the trade name SOS PHARMACEUTICALS and packaging material of the plaintiff. There is no likelihood and/or possibility of any confusion or deception among the consumers and two trade names because (a) the pronunciation of the plaintiff's name and defendant's name is entirely different, (b) colour combination, get up and even the font of the plaintiffs trade names and defendant's trade names are easily distinguishable and as such there is no likelihood of confusion and deception and (c) the names and get up must always be considered as a whole and the true test is whether the totality of the impression given both orally and visually is such that it is likely to cause mistake, deception or confusion.
Nobody can claim exclusive rights to use any word, abbreviation or acronym which has become publici juris. In the trade of TM No. 16/2011 Page 10 of 31 M/s. SAS Pharmaceuticals vs. M/s. SOS Pharma drugs, it is common practice to name a drug by the name of its purpose or ailment which the drug treats or the main ingredient of the drug. Such ailment or ingredient being publici juris and generic can not be monopolized by anyone for the use of its trade mark.
In fact the plaintiff is trying to avoid a healthy competition offered by the defendant by indigenous efforts to make available by the defendant, the standard quality goods at an affordable price in the market. Since the defendant has made available standard quality goods at affordable price than the plaintiff, this has instigated the plaintiff, to bring an action against the defendant despite being fully conscious of the fact that it has no case in facts as well as in law.
The plaintiff is not entitled for equitable relief since it has willfully suppressed and concealed the material facts from this Hon'ble Court and made wrong and misleading statements with a view to derive unjust gains. The plaintiff has not come to this Hon'ble Court with clean hands and their conduct has been misleading. Thus, the suit deserves dismissal.
2.4 However, the plaintiff files replication, which is replica of the plaint vis a vis it denies all allegations of written statement, the plaint has TM No. 16/2011 Page 11 of 31 M/s. SAS Pharmaceuticals vs. M/s. SOS Pharma been reaffirmed correct. The documents have also been reiterated as correct.
Issues
3. On 22.01.2011, Ld. Predecessor framed Issue No. 1 to 3 and today issue no.4 has been framed by separate order, thus issues are as follows :
1. Whether the plaintiff is entitled to a decree of perpetual injunction restraining the defendants, their agents, servants, dealers, representatives and on their agents/marketing and/or advertising of pharmaceutical or medicinal products or any other goods under the impugned mark REGULATOR or any other mark identical or deceptively similar to the Plaintiff's trade mark REGULIN FORTIS amounting to infringement of the Plaintiff's trade mark REGULIN FORTIS registered under No. 1306019? OPP
2. Whether the plaintiff is entitled to the decree of perpetual injunction restraining the defendant, their agents, servants, dealers, representatives and all other persons acting on their behalf from selling and/or marketing and/or advertising of pharmaceutical or medicinal products or any other goods under the impugned mark SOS PHARMA? OPP
3. Whether the defendant is liable to deliver the the goods, packaging, materials, advertising materials, letter pads, signboards, blocks, dies, stamps, printing materials etc under the TM No. 16/2011 Page 12 of 31 M/s. SAS Pharmaceuticals vs. M/s. SOS Pharma impugned mark regulator & SOS PHARMA? OPP
4. Whether the plaintiff is entitled for directions to defendant to render account of profits earned by the defendant on account of sale of medicinal products under the mark REGULATOR and / or SOS PHARMA? OPP
5. Relief.
Evidence of the Parties
4. In order to prove the case, plaintiff's attorney / author of the plaint PW1 Shri J.K. Puri, Chief Executive Office & Constituent Attorney stepped into the witness box and concluded the evidence. Whereas defendant's Shri Hitesh Dua, Proprietor of M/s. SOS Pharma (DW1) stepped into the witness box as an exclusive witness and then concluded the evidence. The issue no.4 has been framed today but parties had already led their evidence and also argued in detail, therefore, it was not required to put the case for retrial as observed separately in the order.
Final Hearing
5. At the stage of final hearing Sh. A.K. Goel, Advocate for plaintiff and Sh. Aditya Jain, Advocate for defendant presented their TM No. 16/2011 Page 13 of 31 M/s. SAS Pharmaceuticals vs. M/s. SOS Pharma contentions; the plaintiff' has also filed their written synopsis. Both the parties have also argued on additional points which were not directly in the form of issues but stating the same are relevant, therefore, the same are to be dealt firstly, before taking the formal issues. 6.1 Ld. Counsel for defendant requests that the plaint is liable to be dismissed as it has not been signed and filed by competent person/registered proprietor of trade marks and secondly the plaint is barred by law of limitation. Section 2(v) of the Trade Marks Act, 1999 talks about registered proprietor and as per plaintiff's own case the registered proprietor are Smt. Kamla Jain and Sandeep Jain but they have not authored the plaint, the suit has been filed by name M/s SAS PHARMACEUTICALS, who is not a registered proprietor of marks. The suit is liable to be dismissed on this sole ground. Reliance is placed on Arm Group Enterprises Ltd. vs. Waldorf Restaurant (2003) 6 SCC 423 (SC) 4106, wherein it was held in section 14 of the Indian Partnership Act, 1932 that in the absence of an agreement contrary, property exclusively belonging to a person, on his entering into partnership with others it does not become the property of the partnership because it is used for business of partnership. Secondly, as per plaint , the defendant came TM No. 16/2011 Page 14 of 31 M/s. SAS Pharmaceuticals vs. M/s. SOS Pharma across publication of defendant's trade mark REGULATOR in August 2006 but the suit was filed in 2010, it is barred by ordinary period of limitation of three years. The plaintiff relies upon Biswaroop Roy Choudhary vs. Karan Johar 2006 (Sup) PTC 381, wherein at the juncture of ad interim injunction application it was held that delay in approaching the court for grant of equitable relief is always fatal, if the plaintiff is a serious producer of film he ought not to have ignored gossip within his trade whether it was in the form of press, or exchange of communication to the Guild or Association claiming the same title. There is no plausible reason discerned for not filing the case at least upon defendant's performing the Mahurat. The application was dismissed and things were to be determined in trial.
Whereas the plaintiff opposed the contentions that Sh. J.K. Puri has been authorized by way of Power of Attorney (Ex.PW1/2) to sign and verify the plaint and to institute the suit. The plaintiff is a partnership firm, the prescribed Certificate/Form B (Ex.PW1/1) names the plaintiff firm as well as his partner. There is no flaw, the plaint has been signed and verified by competent person and suit has been instituted by the plaintiff in proper way. Secondly, there is no delay in filing the suit, in case of infringement of trade mark or of copyright, everyday infringement TM No. 16/2011 Page 15 of 31 M/s. SAS Pharmaceuticals vs. M/s. SOS Pharma makes new cause of action or under the Intellectual property rights there is continuance cause of actions and Section 22 of Limitation Act also talks about the same. The plaintiff relies upon Bengal Waterproof Ltd. vs. Bombay Waterproof Mnfg. Co., 1997 PTC(17), where it was held in case of in cases of continuous causes of action or recurring cause of action bar of Order 2 Rule 2 subrule (3) cannot be invoked. In this connection it profitable to have a look at Section 22 of the Limitation Act, 1963. It lays down that in case of a continuing breach of contract or in case of a continuing tort, fresh period of limitation begins to run at every moment of the time during which it breach or the tort, as the case may be, continues'. As act of passing off is an act of deceit and tort every time when such tortuous act or deceit is committed by the defendant the plaintiff gets a fresh cause of action to come to the court by appropriate proceedings. Similarly infringement of a registered trade mark would also be a continuing wrong as so long as infringement continues. Therefore, whether the earlier infringement has continued or a new infringement has taken place cause of action for filing a fresh suit would obviously arise in favour of the plaintiff, who is aggrieved by defendant. The cause of action is still subsisting and plaintiff relies upon M/s Jawahar Engineering Company & Ors Vs. M/s Jawahar Engineers Pvt. Ltd. Sri Rampur, Distt. TM No. 16/2011 Page 16 of 31 M/s. SAS Pharmaceuticals vs. M/s. SOS Pharma Ahmednagar, 1983PTC207, as injunction being prohibitive in nature is intended to prevent something that is likely to happen. Once the plaintiffs have learned that the defendants have applied for registration of trade mark in Delhi, they can claim an injunction to prevent any sale of the infringing product in Delhi. The contentions of defendant are not legally sound.
6.2 The contentions are analyzed. The plaintiff partnership firm M/s SAS PHARMACEUTICALS was registered in the year 1999 and plaintiff's trademark was registered on 06.09.1999 (Ex.PW1/5, publication is Ex.PW1/6) and at that time it was not a proprietorship firm but a partnership firm, both the publication and certificate names its partners Sh. Sandeep Jain and Sh. Kamla Jain. Therefore, the suit can be filed by a partnership firm, it has been so filed, although it is authored by Sh J K Puri, however, he has been authorized by Power of Attorney, (Ex.PW 1/2), consequently the plaint has been properly signed and verified and suit has also been properly instituted vis a vis it is as per section 2(v) of the Trade Marks Act, 1999. The contention of defendant to that extent carries no weight.
TM No. 16/2011 Page 17 of 31 M/s. SAS Pharmaceuticals vs. M/s. SOS Pharma 6.3 The defendant's second contention that the suit is barred by time is also considered from the narration of pleadings and documents. It is a fact that in paragraph 16 of plaint and para 16 of affidavit of Sh. J.K. Puri, the plaintiff came across publication of plaintiff's Mark REGULATOR in the trade mark Journal in the month of August, 2006 but the suit was filed in May, 2010.
Whereas the documentary record available does not make the suit barred by time. The defendant had filed an application on 17.05.2010 (Ex.PW1/54), before the Trade Mark Registry {consequent to opposition of defendant's application for registration of mark and name} for withdrawal of application no. 1124148. Thus, by applying the law laid down in M/s. Jawahar Engineering Company (Supra), the cause of action is still subsisting as the application for withdrawal is yet to be adjudicated by the Trade Mark Registry (as per evidence on record). There is delay in filing the suit after 2006 but cause of action is still subsisting and continuing, consequently the suit is not barred by law. Accordingly, this objection of defendant stand disposed off.
6.4 There is one more objection was raised and recorded. When PW1 Sh. J K Puri tendered his evidence, there was objection with TM No. 16/2011 Page 18 of 31 M/s. SAS Pharmaceuticals vs. M/s. SOS Pharma regard to tendering of legal proceeding certificates (Ex.PW1/55 and Ex.PW1/56) on the mode of its proof. In fact, the certificates themselves are speaking, like the certificate was of computerized data and there is a disclaimer but simultaneously it has been certified under the signature of examiner of Trade Mark, Govt. of India and in terms of Section 137 of the Trade Marks Act, 1999, such record shall be admitted in evidence in all Courts and in all proceedings without further proof or production of original. Consequently, the record of material/certificate Ex.PW1/55 and Ex.PW1/56 will be read and considered in assessing the evidence. This objection stand disposed off.
Now the issues are taken one by one, to be determined in the light of provisions of law vis a vis case/evidence of the parties. 7.1 Issues No. 1 and 2 Issue No. 1 Whether the plaintiff is entitled to a decree of perpetual injunction restraining the defendants, their agents, servants, dealers, representatives and on their agents/marketing and/or advertising of pharmaceutical or medicinal products or any other goods under the impugned mark REGULATOR or any other mark identical or deceptively similar to the Plaintiff's trade mark REGULIN FORTIS amounting to infringement of the Plaintiff's trade mark REGULIN FORTIS registered under No. 1306019? OPP TM No. 16/2011 Page 19 of 31 M/s. SAS Pharmaceuticals vs. M/s. SOS Pharma Issue No. 2 Whether the plaintiff is entitled to the decree of perpetual injunction restraining the defendant, their agents, servants, dealers, representatives and all other persons acting on their behalf from selling and/or marketing and/or advertising of pharmaceutical or medicinal products or any other goods under the impugned mark SOS PHARMA? OPP The onus to prove issue no.1 and 2 lies on the plaintiff. According to plaintiff, it is registered proprietor of Trade Mark REGULIN FORTIS and REGULIN FORTE as well as trade name M/s. SAS Pharmaceuticals, however, the defendant has infringed plaintiff's trade mark and trade name by adopting mark REGULATOR and SOS PHARMACEUTICALS, it is causing not only confusion in the mind of unwary customer, since medicine is generally used by ladies and the medicine are available across all the chemists counters, even without description by the doctors, since, plaintiff has made a lot of advertisement and all are knowing about the use of medicine. But because of similar and deceptive similar name REGULATOR or SOS PHARMACEUTICALS , the medicine of defendant are passing off as goods of plaintiff. It has been held in catena of judgments that REGULIN is not a general term nor the trade name as claimed by the defendant. The plaintiff is prior user of trade name REGULIN, which was got registered, therefore plaintiff is a TM No. 16/2011 Page 20 of 31 M/s. SAS Pharmaceuticals vs. M/s. SOS Pharma registered proprietor and it is protected under statutory rights. During the pending of case, the registration has been renewed for further period of 10 years from 31.8.2014, the certificate dated 6..8.2014 has also been placed on record. The other reasons and contentions are derived by the plaintiff while relying upon : i. Lilly ICOS LLC & Anr Vs. Maiden Pharmaceuticals Lim, 2009 (39) PTC 666(Del.) while dealing with interim application for injunction, plaintiff's trademark CLALIS and defendant's mark MCALIS were in issue, it was held that there is similarity and affinity of sound between the words / marks CLALIS & MCALIS; also held that defendant had no justification to adopt and use deceptive and similar trademark with device and trade dress of tablet.
ii. Syncom Formulations Vs. SAS Pharmaceuticals, 2004(28) PTC 632 (Del), while deciding interim application of injunction, it was held that Mark REGULIN FORTE of plaintiff and of Mark REGU30 of defendant has same visual and phonetic similarity of first four letters, which are enough to confuse or mislead unwary customers. iii. M/s SAS Pharmaceuticals Vs. M/s Emerson Labs Ltd & Anr, MIPR 2008 (1) 0053, while determining the issue finally in the judgment, it was held that trade mark REGULIFE used by defendant is deceptively similar to plaintiff's mark REGULIN. Moreover, punitive damages were also awarded.
iv. M/s SAS Pharmaceuticals Vs. M/s Unicure Remedies Pvt. Ltd, CS no. 232/10/07, DOD 01.04.2013, the court of Additional District Judge decreed the suit against defendant by holding that defendant's mark REGURNIL infringed plaintiff's mark REGULIN FORTIS and damages of Rs.5 lac were awarded.
TM No. 16/2011 Page 21 of 31 M/s. SAS Pharmaceuticals vs. M/s. SOS Pharma v. M/s SAS Pharmaceutical Vs. M/s Syncom Formulations (India) Ltd, suit no. 148/2003, DOD 24.11.2006, the court of Additional District Judge decreed the suit against defendant by holding that defendant's mark REGU30 infringed plaintiff's mark REGULIN and damages of Rs.5 lac were awarded.
vi. Indofill Organic Industries Ltd Vs. Mr. Amar Vakil & Ors, 2011 (46) PTC 395 (Del.), plaintiff having trademark registered 'Indofil' in respect of chemicals, plaintiff found that another domain name 'Indofil.com' registered in the name of defendant, the plaintiff suit was decreed by restraining the defendant from using such domain name vis a vis damages were awarded besides interest. vii.Himalaya Drug Company Vs. S.B.L. Limited, 2013 (53) PTC 1, plaintiff is registered owner of Liv.52 and defendant was using mark LivT, the defendant took the defence that mark Liv is publici juris and many persons are using the similar mark, however, it is held that in the absence of any cancellation of petition being filed by the defendant such defence is not available in respect of registered mark. The defendant was restrained from using the mark 'Liv' as part of a trademark.
viii.Lachhman Das Behari Lal Vs. Ghanshyam Das Jetha Nand & ors, 2007 (35) PTC 693 (Del), the plaintiff's registered mark SWAMI was found infringed by the defendant, by adopting similar mark, therefore, compensation / damages of amount in lieu of rendition of account was directed alongwith interest.
ix. Adobe Systems, Inc & Anr Vs. Mahindra Saxena & anr, CS (OS) no. 782/2002, in infringement of trademark and copy right, passing off, compensatory damages were awarded and a sum of Rs.5 lac on account of punitive / exemplary damages were also awarded in favour of plaintiff.
x. The cause of action is still subsisting and plaintiff relies upon M/s Jawahar Engineering Company & Ors Vs. M/s Jawahar Engineers TM No. 16/2011 Page 22 of 31 M/s. SAS Pharmaceuticals vs. M/s. SOS Pharma Pvt. Ltd. Sri Rampur, Distt. Ahmednagar, 1983PTC207, as injunction being prohibitive in nature is intended to prevent something that is likely to happen. Once the plaintiffs have learned that the defendants have applied for registration of trade mark in Delhi, they can claim an injunction to prevent any sale of the infringing product in Delhi and the court will have jurisdiction. 7.2 Whereas defendant has reservations that neither the defendant infringed the plaintiff's mark or trade name but the defendant has adopted mark REGULATOR of its own, but it was never used by defendant for medicine ; REGULIN is a generic and common trade term. Plaintiff may claim rights in respect of whole registered mark REGULINE FORTE but not on part word like REGULINE or REGU. So far name SOS PHARMACEUTICAL is concerned, it is neither causing any confusion nor it has been adopted from the name of plaintiff; in fact SOS stands for SAVE OUR SOUL, it has no nexus with the plaintiff's name SAS. Moreover, the trade name SAS PHARMACEUTICAL and SOS PHARMA are distinct, in its structure, phonetic pronunciation as well as appearance, in case both are kept aside. It does not cause any confusion because there is no similarity or identical appearance. The plaintiff could not establish the issues no.1 and 2, therefore, it is not entitled for any relief of injunction. The issue no.1 and 2 are to be decided against the TM No. 16/2011 Page 23 of 31 M/s. SAS Pharmaceuticals vs. M/s. SOS Pharma plaintiff. The further contention of defendant are based on the reasons given in judicial pronouncements, which are : i. ITM Trust vs. Educate India Society, 2012 (52) PTC 276, while disposing off / rejecting the application, for interim injunction, the plaintiff's mark 'Institute of Technology & Management and ITM' and defendant's Mark 'ITM', it was held that registration of Mark as a whole would not confer any statutory right in favour of the plaintiff with respect of parts of words used in a mark which is registered as a whole - No overall similarity between two marks except for alphabet ITM.
ii. Skyline Education Institute (India) Private Ltd. Vs. S.L. Vaswani and another, 2010 AIR (SC) 3221, the appellant operates business with name prefixed 'Skyline' and respondent institute of engineering and technology also prefixes words 'skyline', however appellant's request to restrain the respondent was declined by holding 'skyline' was a generic work, since the same is being used as trade name by various institutions and companies. iii. Lohia Auto Industry vs. Lohia Starlinger Ltd., 2010(1) ALL. LJ 117, both parties are using Lohia group and it was held that the same is generic word, no one claim monopoly right over the generic word vis a vis they were using different logo.
iv. Nne Parmaplan India Ltd. vs. M/s. Cgmp Pharmaplan Pvt. Ltd. & Ors. 2010 (43) PCT 66, the names of plaintiff and defendant were held not similar because they are not only worded differently, but the nature and manner of composition of alphabets is also distinct which cannot cause confusion or deception in the minds of customers, the interim injunction application was dismissed. v. Registrar of Trade Marks vs. Ashok Chandra Rakhit Ltd. AIR 1955 SC 558, in paragraph no.14 it was held that where a distinctive label is registered as a whole, such registration cannot possibly give TM No. 16/2011 Page 24 of 31 M/s. SAS Pharmaceuticals vs. M/s. SOS Pharma any exclusive statutory right to the proprietor of the trade mark to the use of any particular word or name contained therein apart from the mark as a whole.
vi. Biofarma & Anr. vs. Sanjay Medical Store & Ors. 1997 PTC 355, plaintiff medicine are sold under the mark 'Flavedon' and defendant's medicine under the mark 'Trivedon', however it was held that not only the said medicine are visually dissimilar but the same are to be purchased on the prescription of Doctor, being scheduled H drug, there is no likelihood of confusion and interim injunction was refused.
vii.Cadila Laboratories Ltd. & Anr. vs. Dabur India Ltd. 1997 PTC 417, plaintiff medicine are sold under the mark 'Mexate' and defendant's medicine under the mark 'Zexate', however it was held that not only the said medicine are visually dissimilar but the same are to be purchased on the prescription of Doctor, being scheduled H drug, there is no likelihood of confusion and interim injunction was refused.
viii.Ranbaxy Laboratories Limited vs. Cipla Limited 2011 945) PTC 153, while dealing with passing off medicines having similar orange colour by two manufacturers with same shape and design, it was held that the same would not cause any confusion as the medicines are sold under prescription of medical practitioner, the colour and packing is not the basis of sale and purchase of medicine nor the colour and shape. The adinterim injunction was vacated in appeal. 7.3 Now the contentions are to be assessed with the material on record. The plaintiff seeks relief that it is protected by statutory provisions because of registered marks {REGULINE FORTE, SAS PHARMACEUTICAL} but defendant has two fold stand viz. firstly, the TM No. 16/2011 Page 25 of 31 M/s. SAS Pharmaceuticals vs. M/s. SOS Pharma marks REGULATOR or SOS PHARM are unique in themselves, the marks REGULINE is generic term, plaintiff has no monopoly on word REGULINE or its part REGU and secondly marks of defendant and of plaintiff are not similar either structurally, visually or in phonetic sounds. The following conclusions are drawn :
(i) The defendant's own pleading and examination in chief on one side and cross examination of DW1 on the other side are contradictory in respect of generic terms. DW1 in his cross examination says ' it is correct that Regulin is not the name of any ailment or human organ or chemical composition of medicine'. ...' it is correct that Regulin is not a generic word'.
(ii)Generic term means, which is common word, or used in a particular field commonly or it is found in dictionary and it is so common, that people use it in their ordinary day to day affairs. Word REGULINE is not mentioned/found in the dictionary (like The New Shorter Oxford English Dictionary, the New Authority on the English Language, Edn 1993) but it is mentioned as an adjective under word Regulus (in the Chambers Dictionary 1996 Edn). Word 'Regulator' is also mentioned as common word in the dictionaries.
(iii)However, the plaintiff has registered mark under the name 'REGULIN FORTIS, therefore, plaintiff's marks are protected by the law.
TM No. 16/2011 Page 26 of 31 M/s. SAS Pharmaceuticals vs. M/s. SOS Pharma
(iv)The observations laid down in Syncom Formulations Vs. SAS Pharmaceuticals, 2004(28) PTC 632 (Del), that Mark REGULIN FORTE of plaintiff and of Mark REGU30 of defendant has same visual and phonetic similarity of first four letters, which are enough to confuse or mislead unwary customers, applies in this situation since word REGULATOR, also carries first four letters, from plaintiff's mark.
(v) The plaintiff's registered trade name/mark SAS PHARMACEUTICALS is also registered (Ex PW1/6), it can be described. There is rectangle, inside the rectangle words SAS is written, outside rectangle on top left words 'Mfd.by', at bottom words 'PHARMACEUTICALS' and on right top corner is slashed with bold line in italics { / }. There is disclaimer that registration of this trade mark shall give no right to the exclusive use of the word 'PHARMACEUTICALS'. Whereas, defendant's trade mark/name (as applied and published in Journal Ex PW1/42, user since 1998) for exclusive use of device of cross, is a big square containing two square inside it and in the inner there is a cross ( + ) and at the outer of second square, at its bottom words 'SOS PHARA' is written.
Now, other evidence on record is also to be read.
DW1 says ' I do not know whether SAS Pharmaceuticals is older to my firm. I cannot say whether SAS Pharmaceuticals is existing since 1990'. ....'It is correct that I am using firm name/ tradename SOS Pharma afterward plaintiff's firm name/trade name SAS Pharmaceuticals'....'I have never used the trade mark Regulator'.
It is apparent from evidence of the parties as well TM No. 16/2011 Page 27 of 31 M/s. SAS Pharmaceuticals vs. M/s. SOS Pharma as the trade names that SAS PHARMACEUTICALS and name SOS Pharma similar in appearance, they are identical visually and phonetically. The plaintiff is writing its complete trade name, not a word 'pharmaceuticals' in isolation. The defendant coined it after the name of the plaintiff. The defendant cannot derive any benefit that SOS is abbreviation of a particular prescription of doctor, since plaintiff having registered mark/ name is protected by law.
(vi)The defendant has applied for registration of trade mark Regulator (by application Ex PW1/41) and for SOS Pharma (Ex PW1/42) and defendant has also requested for withdrawal of application of registration of Regulator (Ex PW1/54), whether, in such eventuality, defendant has been left with any right to claim rights?. The answer goes in negative.
(vii)The application for registration of trade mark before Trade Marks Registry means that the applicant intends to use the mark applied for, although the other version of the defendant is that it has been using the marks since 1998. The DW1 says, it has never used mark Regulator.
The aforementioned conclusions proves infringement of plaintiff's trade mark/name, in terms of section 29(5) of the the Trade Marks Act 1999, the issue no.1 and issue no.2 are decided in favour of the plaintiff and against the defendant, accordingly both are answered in favour of plaintiff and against the defendant.
TM No. 16/2011 Page 28 of 31 M/s. SAS Pharmaceuticals vs. M/s. SOS Pharma 7.4 Issues No. 3 and 4 Issue no. 3 Whether the defendant is liable to deliver the the goods, packaging, materials, advertising materials, letter pads, signboards, blocks, dies, stamps, printing materials etc under the impugned mark regulator & SOS PHARMA? OPP Issue no. 4 Whether the plaintiff is entitled for directions to defendant to render account of profits earned by the defendant on account of sale of medicinal products under the mark REGULATOR and / or SOS PHARMA? OPP Again onus to prove both the issues lies on the plaintiff. Two set of things are there, the plaintiff alleges that defendant has applied for registration of marks REGULATOR and SOS PHARMA vis a vis plaintiff suffered a lot on account of use of similar and identical mark by the defendant. On the other side, the defendant claims that it has applied for registration because of within its rights and perception, besides its application dated 30.5.2012 (Mark A/D) for license under Ayurvedic medicines to Ayurvedic Department, Government of Punjab. However, it never used mark Regulator for medicine. The plaintiff could not establish any advertisement, publications of medicine by the defendant under mark Regulator except Trade Marks Journal and applications seeking registration of marks. Therefore, issue no. 3 and 4 could not have been TM No. 16/2011 Page 29 of 31 M/s. SAS Pharmaceuticals vs. M/s. SOS Pharma established by the plaintiff. Both the issues are decided against the plaintiff. Since, issue no.4 has been decided against the plaintiff, therefore, plaintiff is not entitled for any damages or compensation in lieu of accounts for profits or punitive damages. This request is declined. 7.5 Issue No. 5 - Relief.
In view of the findings given on issues 1 to 4 above, the plaintiff is held entitled for decree of permanent injunctions qua issue no.1 and 2, alongwith costs of the suit. But the suit is dismissed qua other reliefs of issue no.3 and 4.
8. The plaintiff's suit is decreed as follows :
(i) the plaintiff's suit for perpetual injunction is decreed in favour of plaintiff and against the defendant by restraining the defendant/its proprietor, its servants, dealers, representatives and agents/ marketing and/or advertising of pharmaceutical or medicinal products or any other goods under the mark REGULATOR or any other mark identical or deceptively similar to the Plaintiff's registered trade mark REGULIN FORTIS amounting to infringement of the Plaintiff's trade mark REGULIN FORTIS registered under No. 1306019 with Trade Marks Registry;
(ii) the plaintiff's suit for perpetual injunction is further decreed in favour of plaintiff and against the defendant by restraining the TM No. 16/2011 Page 30 of 31 M/s. SAS Pharmaceuticals vs. M/s. SOS Pharma defendant, its proprietor, servants, dealers, representatives and all other persons acting on their behalf from selling and/or marketing and/or advertising of pharmaceutical or medicinal products or any other goods under the impugned mark SOS PHARMA.
(iii)However, suit for delivery up of goods or of accounts of profits or damages/compensation in lieu of accounts for profits is dismissed.
Costs of the suit are allowed in favour of the plaintiff and against the defendant. Decree sheet be drawn accordingly.
File is consigned to record room.
Announced in the open Court (Inder Jeet Singh)
on Agarhayana 20, Saka 1936 Additional District Judge02 (South)
Saket, New Delhi
11.12.2014
TM No. 16/2011 Page 31 of 31
M/s. SAS Pharmaceuticals vs. M/s. SOS Pharma
TM No. 16/2011
11.12.2014
Present : Clerk for counsel for plaintiff.
Clerk for counsel for defendant.
Bar has suspended the work today, however, it is a
judgment date in the present case today, final arguments were heard on 27.11.2014 and 01.12.2014.
The plaintiff filed suit for injunction, infringement of trademark, delivery up and rendition of account and there is also prayer to this effect and during the course of arguments both the parties have also advanced arguments on the point of account of profits or damages but when issues were framed by Ld. Predecessor on 22.01.2011, no issue was framed on the point of profit or damages. As per order XIV R 5 CPC additional issue may be framed prior to judgment/decree, such circumstances are existing, therefore, issue no.4 is framed today and earlier issue no.4 of relief is recasted as issue no. 5 : Issue No. 4 : Whether the plaintiff is entitled for directions to defendant to render account of profits earned by the defendant on account of sale of medicinal products under the mark REGULATOR and / or SOS PHARMA? OPP TM No. 16/2011 Page 32 of 31 M/s. SAS Pharmaceuticals vs. M/s. SOS Pharma Issue No. 5 : Relief.
Since parties have already led their complete evidence on this issue also, it does not require to relist the case for evidence on issue no.4 above. They have also argued on this point. It also does not require to rehearing the arguments.
Vide separate judgment announced today, the plaintiff's suit is decreed as follows :
(i) the plaintiff's suit for perpetual injunction is decreed in favour of plaintiff and against the defendant by restraining the defendant/its proprietor, its servants, dealers, representatives and agents/ marketing and/or advertising of pharmaceutical or medicinal products or any other goods under the mark REGULATOR or any other mark identical or deceptively similar to the Plaintiff's registered trade mark REGULIN FORTIS amounting to infringement of the Plaintiff's trade mark REGULIN FORTIS registered under No. 1306019 with Trade Marks Registry;
(ii) the plaintiff's suit for perpetual injunction is further decreed in favour of plaintiff and against the defendant by restraining the defendant, its proprietor, servants, dealers, representatives and all other persons acting on their behalf from selling and/or marketing and/or advertising of pharmaceutical or medicinal products or any other goods under the impugned mark SOS PHARMA.
TM No. 16/2011 Page 33 of 31 M/s. SAS Pharmaceuticals vs. M/s. SOS Pharma
(iii)However, suit for delivery up of goods or of accounts of profits or damages/compensation in lieu of accounts for profits is dismissed.
Costs of the suit are allowed in favour of the plaintiff and against the defendant. Decree sheet be drawn accordingly.
File is consigned to record room.
(Inder Jeet Singh)
ADJ02 (South), Saket
N New Delhi / 11.12.2014
TM No. 16/2011 Page 34 of 31