Delhi District Court
M/S Parkin Laboratories vs M/S WestCoast Pharmaceutical Works on 3 January, 2013
1
IN THE COURT OF SHRI MAN MOHAN SHARMA
ADDITIONAL DISTRICT JUDGE (CENTRAL) 1
TIS HAZARI COURTS,DELHI.
TM No. 105/2011
Unique I.D. No. 02401C5269442004
M/s Parkin Laboratories
E53, South Side of G.T. Road,
Industrial Area,
Ghaziabad201 009 ...Plaintiff
Versus
M/s WestCoast Pharmaceutical Works
3rd Floor, Dlway House,
Gurukul Road, Memnagar,
Ahmadabad300 052 ...Defendant
Date of institution of suit :17.04.2004
Date of reserving the judgment :03.12.2012
Date of pronouncement of judgment :03.01.2013
JUDGMENT: This is a suit for permanent injunction for restraining infringement of its trade mark and passing off. The plaintiff has also sought rendition of accounts as well as for delivery up etc. of the infringing material.
T M No.105/2011 Parkin Laboratories vs. WestCoast Pharma. Wrks. Page 1 of 27 2
2. The case of the plaintiff has been propounded on the cause of action constituting the following bundle of facts:
(i). Status of the plaintiff: The plaintiff is a partnership firm. It is engaged in the business of medicines and drugs manufacturing and got a license in the year 1987. The plaintiff obtained additional category of tablets on existing drug manufacturing under the trade mark CLOFEMOL on 30.07.1993 from the drug license authority.
(ii). Genesis of Trade Mark & Copyright: The trademark CLOFEMOL was conceived, invented and adopted by the plaintiff in the year 1993 and the same has been in use continuously, openly and extensively till date. The plaintiff is also the registered proprietor of the said trade mark under no. 1132379 w.e.f. 10.09.2002 which is subsisting and in full force. The plaintiff has also uniquely conceived, designed and developed the carton, design of tablet and design of blister packing of the above medicine CLOFEMOL. It has the copyrights in the same being its original artistic works.
(iii). Goodwill etc. : On account of superior quality, high effectiveness of medicine and long continuous use the said trademark and label CLOFEMOL has acquired reputation and goodwill amongst the public. It has become distinctive of the goods of plaintiff and is T M No.105/2011 Parkin Laboratories vs. WestCoast Pharma. Wrks. Page 2 of 27 3 source identifier. The plaintiff also incurred substantial expenses on promotion and publicity through various media.
(iv). Violation: The defendant has recently adopted identical/deceptively similar trade mark CLOFEMOL and is passing of its medicines as if they originate from the plaintiff. It is an act of piracy, riding upon the goodwill of plaintiff and deriving undue advantage. It works against the interest of general public as well. The defendant's acts are illegal and malafide. They are causing pecuniary and other loss to the plaintiff. The consumers are being taken for a ride. The defendant is guilty of infringement and passing off. On 24.09.2003 the defendant wrote a letter to plaintiff drawing its attention that it is also manufacturing medicines under the trademarks CLOFEMOL and it was replied to by plaintiff vide latter dated 01.10.2003. Thereafter, there was exchange of some correspondence between the parties but the defendant did not comply with the plaintiff's request. Hence the suit.
3. Notice to defendant: The defendant was duly served and put a contest to the suit by filing a written statement.
4. Preliminary Objections: As preliminary objection the defendant pleaded the suit to be misconceived and devoid of any cause T M No.105/2011 Parkin Laboratories vs. WestCoast Pharma. Wrks. Page 3 of 27 4 of action; plaintiff not having approach the court with clean hands; plaintiff not being the proprietor of trademarks CLOFEMOL; the claim of the plaintiff being fraudulent and malicious; the defendant being the lawful proprietor of trademarks in respect of pharmaceutical and medicine preparation; suit barred by limitation as well as by principles of waiver, acquiescence, estoppel, latches and delay.
5. Reply on Merits: On merits, the material averments of the plaint on which the plaintiff has propounded its cause of action have been denied in the written statement. It is submitted that the use claimed by plaintiff is not substantiated with the FDA permission with respect to manufacturing and marketing of preparation. The use of defendant is prior and bonafide visavis the trademark CLOFEMOL. It is the plaintiff who is guilty of passing off. There is no question of any clandestine sale by the defendant as the defendant is a reputed manufacturer of Gujarat getting orders from well reputed traders throughout India. As additional facts the defendant submitted that it is a registered partnership firm based in Ahmedabad (Gujarat) and having the state of art manufacturing facilities at Ahmedabad. The firm is engaged in the business of manufacture and marketing of medicinal and pharmaceutical preparation since 30 years. Their trade mark T M No.105/2011 Parkin Laboratories vs. WestCoast Pharma. Wrks. Page 4 of 27 5 CLOFEMOL is well reputed and popularized at much cost and expense by the defendant. It is prayed that the suit be dismissed.
6. Replication: Replication has been filed by the plaintiff thereby denying the material averments of the written statement and reiterating the averments of plaint.
7. Issues: On the available pleadings vide minutes of proceedings dated 16.11.2007 following issues have been framed. Issue no.1 Whether the defendant has infringed the plaintiff's trade mark CLOFEMOL registered under no.1132379 by using identical trade mark? OPP Issue no.2 Whether the defendant has passed off its medicinal products as that of the plaintiff? OPP Issue no.3 Whether the plaintiff is entitled to the rendition of accounts as claimed? OPP Issue no.4 Whether the defendant is the prior and continuous user of trade mark CLOFEMOL since 1992 prior to the plaintiff? OPD Issue no.5 Whether the firm of the defendant has (not) been represented through proper and authorized person? OPD (Note: the word (not) has been added in this issue at the time of passing judgment to make it meaningful to the context.) T M No.105/2011 Parkin Laboratories vs. WestCoast Pharma. Wrks. Page 5 of 27 6 Issue no.6 Relief?
8. Witnesses: The plaintiff examined Sh. R. K. Tyagi, one of the partners of plaintiff, as PW1 as its sole witness who also tendered various documents in evidence. The witness has been cross examined by the defendant. The PE was closed on 17.03.2009. Thereafter repeated opportunities had been afforded for DE. Affidavit of one witness Sh. Hemennt Bhatt had been filed in evidence of defendant but he witness has not been tendered in the evidence. DE was closed on 13.03.2012.
9. Arguments: Arguments have been addressed by Shri A. K. Goel, Ld. Counsel for the plaintiff and written arguments have also been filed by the plaintiff. Defendant was afforded opportunity to address final arguments but the same was also not availed. On 16.08.2012 the defendant was awaited till 2.20 p.m. and on there being no presence it was proceeded as exparte. It did not join the proceedings thereafter.
Arguments of Plaintiff
10. Shri A. K. Goel, Ld. Counsel for the plaintiff has argued that the plaintiff has duly proved it to be the registered proprietor and prior user of the trademark CLOFEMOL. The usage is since 1993 and the T M No.105/2011 Parkin Laboratories vs. WestCoast Pharma. Wrks. Page 6 of 27 7 trademarks registration is of 10.09.2002. The registration certificate has been issued on 09.03.2005. The defendant has deliberately opted not to file written statement to the amended plaint and thus there is no denial of the averment that the plaintiff is the registered and equitable proprietor as well as prior user of the trademark. This is deemed admission. The plaintiff has proved the registration certificate, invoices of sale, certificate from Drug Controller UP, approval from MCD and other documents to show its consistent use of trademark, its goodwill etc.
11. Next it is submitted that the goods of plaintiff as well as of defendant are the same; they are sold through same trade channel; they are having same class of customers and buyers. As such, the apprehension of confusion and deception among traders and general public is inevitable.
12. It is further submitted that the testimony of the witness PW1 testimony could not be shaken in his cross examination. Thus the oral and documentary evidence has remained unchallenged. Section 28, 29(1) and 29(2)(b) of TMA 1999 speak of the exclusive rights of plaintiff and infringement action on the part of defendant. Passing off is also proved as there is phonetic and visual similarities between the T M No.105/2011 Parkin Laboratories vs. WestCoast Pharma. Wrks. Page 7 of 27 8 two trade mark and goods are the same. The defendant did not enter into the witness box and thus has not proved its case at all.
13. Ld. Counsel for the plaintiff has also relied upon a catena of case laws. Lilly Icos Llc & Anr. Vs. Maiden Pharmaceuticals Lim' 2009(39) PTC 666(Del.) has been cited on the point that injunction can be granted when defendant could not put forth any justification to adopt and use a deceptively similar trademarks as well as trade dress of the tablets as that of the plaintiff. The law propounded in Syncom Formulations Vs. SAS Pharmaceuticals' 2004(28) PTC 632 (Del.) is that when there are visual and phonetic similarities between both the marks injunction granted. It is submitted that same is the case in hand.
14. The case of Sun Pharmaceuticals Industries Ltd. Vs. Cipla Limited' 2209(39) PTC 347(Del.) has been cited to submit that the assignee derives the title to trade mark immediately on execution of the writing constituting assignment. Recordal by RTM only takes note of the factum of assignment.
15. The plaintiff has relied upon M/s Avis Internatioal Ltd. Vs. M/s Avi Footwear Industries and another AIR 1991 Delhi 22 to cite that statutory registration establish prima facie case in favour of plaintiff and the plea of non user by defendant is of no consequence. T M No.105/2011 Parkin Laboratories vs. WestCoast Pharma. Wrks. Page 8 of 27 9
16. Midas Hygiene Industries P. Ltd. & Anr Vs. Sudhir Bhatia & Ors. 2004(28) PTC 121 (SC) has been cited on the point that on defendant's failure to explain adoption of trademark injunction is bound to follow and that mere delay in bringing action not sufficient to defeat the grant of injunction when prime facie adoption of mark itself dishonest on the part of the defendant. The case of M/s Hindustan Pencils Pvt. Ltd Vs. M/s India Stationery Products Co. and another AIR 1990 Delhi 19 has been cited that if the use or adoption of trademark by defendant is fraudulent plaintiff is not guilty of in ordinate delay and acquiescence.
17. Ld. Counsel for the plaintiff has cited the case of Century Traders Vs. Roshan Lal Duggar & Co. and others AIR 1978 Delhi 250 to propound that while considering injunction registration of trade mark is not relevant. Indofill Organic Industries Ltd. Vs. Mr. Amar Vakil and Ors' 2011 (46) PTC 395 (Del.) has been cited on the aspect that extreme preponderance of probability in favour of plaintiff entitle for injunction.
18. The case of Lilly Icos Llc and another Vs. Scilla Biotechnologies Pvt. Ltd. and Anr. 2009(39) PTC 573(Del.) has T M No.105/2011 Parkin Laboratories vs. WestCoast Pharma. Wrks. Page 9 of 27 10 been cited on the aspect of damages. Lachhman Das Behari Lal Vs. Ghanshyam Das Jetha Nand & Others 2007(35) PTC 693(Del.) has been cited to read the pronouncement of law that the provisions of the Partnership Act cannot be read into the provisions of the Copyright Act as there can be joint authors if all contribute in creation of work.
19. Finally Ld. Counsel for the plaintiff conclude his arguments stating that the Plaintiff has successfully proved its case on strong preponderance of probabilities and it is entitled to all the reliefs claimed. It is prayed that suit of the plaintiff be decreed with costs.
20. No other point has been argued or urged.
Appreciation, Findings and Reasons
21. I have considered the submissions and the material on record. My findings on the various issues are as under: Issue no.1 Whether the defendant has infringed the plaintiff's trade mark CLOFEMOL registered under no.1132379 by using identical trade mark? OPP
22. Section 28 of the Trade Marks Act, 1999 reads as under: "28. Rights conferred by registration: (1) Subject to the other provisions of this Act, the registration of a trade mark shall, if valid, give to the registered proprietor of the trade mark the ex clusive right to the use of the trade mark in relation T M No.105/2011 Parkin Laboratories vs. WestCoast Pharma. Wrks. Page 10 of 27 11 to the goods or services in respect of which the trade mark is registered and to obtain relief in re spect of infringement of the trade mark in the man ner provided by this Act.
(2) The exclusive right to the use of a trade mark given under subsection (1) shall be subject to any conditions and limitations to which the registration is subject.
(3) Where two or more persons are registered pro prietors of trade marks, which are identical with or nearly resemble each other, the exclusive right to the use of any of those trade marks shall not (ex cept so far as their respective rights are subject to any conditions or limitations entered on the regis ter) be deemed to have been acquired by any one of those persons as against any other of those per sons merely by registration of the trade marks but each of those persons has otherwise the same rights as against other persons (not being regis tered users using by way of permitted use) as he would have if he were the sole registered propri etor."
23. The witness PW1 has proved the copy of registration certificate no. 1132379 dated 10.09.2012 for the trade mark CLOFEMOL in favour of the plaintiff as Ex.PW1/1. The witness PW1 in his evidence has not been impugned about the registration.
24. The certificate of registration is the primafacie evidence of the T M No.105/2011 Parkin Laboratories vs. WestCoast Pharma. Wrks. Page 11 of 27 12 registration of trade mark. There is nothing to suggest that the registration has been invoked or cancelled.
25. The averments in the written statement of cross examination of PW1 go to show that the defendant is claiming the user of the trade mark CLOFEMOL prior to that of the plaintiff. However except the suggestions the defendant has failed to bring any evidence worth its name on record to show that it is the prior user or honest concurrent user. Even the plea of honest concurrent user is conspicuous by absence.
26. Section 29 of the Trade Mark Act, 1999 reads as under: "29. Infringement of registered trade marks (1) A registered trade mark is infringed by a per son who, not being a registered proprietor or a per son using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark.
(2) A registered trade mark is infringed by a per son who, not being a registered proprietor or a per son using by way of permitted use, uses in the course of trade, a mark which because of T M No.105/2011 Parkin Laboratories vs. WestCoast Pharma. Wrks. Page 12 of 27 13
(a) its identity with the registered trade mark and the similarity of the goods or services covered by such registered trade mark; or
(b) its similarity to the registered trade mark and the identity or similarity of the goods or services covered by such registered trade mark; or
(c) its identity with the registered trade mark and the identity of the goods or services covered by such registered trade mark, is likely to cause con fusion on the part of the public, or which is likely to have an association with the registered trade mark.
(3) In any case falling under clause (c) of subsec tion (2), the court shall presume that it is likely to cause confusion on the part of the public.
(4) A registered trade mark is infringed by a per son who, not being a registered proprietor or a per son. using by way of permitted use, uses in the course of trade, a mark which
(a) is identical with or similar to the registered trade mark; and
(b) is used in relation to goods or services which are not similar to those for which the trade mark is registered; and
(c) the registered trade mark has a reputation in In dia and the use of the mark without due cause takes unfair advantage of or is detrimental to, the T M No.105/2011 Parkin Laboratories vs. WestCoast Pharma. Wrks. Page 13 of 27 14 distinctive character or repute of the registered trade mark.
(5) A registered trade mark is infringed by a per son if he uses such registered trade mark, as his trade name or part of his trade name, or name of his business concern or part of the name, of his business concern dealing in goods or services in respect of which the trade mark is registered. (6) For the purposes of this section, a person uses a registered mark, if, in particular, he
(a) affixes it to goods or the packaging thereof;
(b) offers or exposes goods for sale, puts them on the market, or stocks them for those purposes un der the registered trade mark, or offers or supplies services under the registered trade mark;
(c) imports or exports goods under the mark; or
(d) uses the registered trade mark on business pa pers or in advertising.
(7) A registered trade mark is infringed by a per son who applies such registered trade mark to a material intended to be used for labelling or pack aging goods, as a business paper, or for advertising goods or services, provided such person, when he applied the mark, knew or had reason to believe that the application of the mark was not duly au thorised by the proprietor or a licensee.
(8) A registered trade mark is infringed by any ad vertising of that trade mark if such advertising T M No.105/2011 Parkin Laboratories vs. WestCoast Pharma. Wrks. Page 14 of 27 15
(a) takes unfair advantage of and is contrary to honest practices in industrial or commercial matters; or
(b) is detrimental to its distinctive character; or
(c) is against the reputation of the trade mark. (9) Where the distinctive elements of a registered trade mark consist of or include words, the trade mark may be infringed by the spoken use of those words as well as by their visual representation and reference in this section to the use of a mark shall be construed accordingly."
27. The trade mark as used by the defendant is identical to the registered trade mark of the plaintiff and in respect of the same/similar goods. As such on the face of it the infringement of the plaintiff's trade mark on the part of the defendant is writ large on the face of the record.
28. This issue is answered in affirmative.
Issue no.2 Whether the defendant has passed off its medicinal products as that of the plaintiff? OPP
29. Passing off is a common law remedy and is based in equity. For passing off prior user and goodwill is necessary. Courts will always protect goodwill. Passing off will lie when defendants trade mark is calculated to deceive and divert business. While gauging passing off cause of action cannot be limited to the date of proceedings only. Court T M No.105/2011 Parkin Laboratories vs. WestCoast Pharma. Wrks. Page 15 of 27 16 will have regard to the way business may be carried out in future. Further it is not necessary that confusion must have been actually caused, a probability of confusion is enough. Competitor in same business under same/similar name is capable to cause injury. Law does not permit any one to carry on his business in such a way as to persuade customers into believing that goods or services belong to someone else or are associated therewith. Fraudulent intent of defendant is not material. It has been held in a catena of case law that for passing off action two basic considerations (a) honesty and fair play are basic policies of the world; and (b) if deceptive/similar names are adopted confusion would arise, customers would be diverted and injury would result.
30. At the cost of repletion , in passing off action it is not the actual deception that is material; it is the likelihood of deception that is material. It is riding on the goodwill of someone else by creating a deception. It is making merry at the expense of other. It is passing one's own goods or service as if they come from some other source. It is not permissible under the law for any other person to start selling goods or rendering services either using the same name or dishonestly imitating the trade mark of another person as to cause injury to that T M No.105/2011 Parkin Laboratories vs. WestCoast Pharma. Wrks. Page 16 of 27 17 person and unjustifiably enrich himself at the cost of that person who had already been using that name and had acquired a certain reputation with the passage of time and on account of the quality of the goods sold or services rendered by him. Any attempt on the part of a person to enrich himself by riding upon the goodwill generated by any other person needs to be curbed by the court whenever approached by the aggrieved party in this regard.
31. Besides the oral evidence of the plaintiff it has tendered on record various documents. Copy of registration certificate no. 1132379 dated 10.09.2012 for the trade mark CLOFEMOL is Ex.PW1/1 which shows the mark is registered. However registration of mark is not the sinequanon for passing off action. As passing off is a breach of goodwill the plaintiff has to show actual usage and prior adoption.
32. PW1 has pressed into service sales bills showing sale of plaintiff's medicines under the trade mark CLOFEMOL as Ex.PW1/2 to Ex.PW1/34. The statement of figures of plaintiff is Ex.PW1/35. Though the former is independent evidence the latter is only self serving evidence.
33. Plaintiff's existence in business visàvis the trade mark and product is shown by the certificate from Drug Controller, U.P. dated T M No.105/2011 Parkin Laboratories vs. WestCoast Pharma. Wrks. Page 17 of 27 18 26.04.2001, conforming to the format recommended by WHO which is Ex.PW1/36; plaintiff's BMP certificate dated 17.12.2003, from Director General of Medical and Health Service, U.P. which is Ex. PW/37; copy of approval, dated 15.09.2000, obtained from MCD (Health Department) by the plaintiff which is Ex.PW1/38 and the copies of the renewal certificates of the existing drug manufacturing license on which plaintiff obtained additional category of tablets under the trademarks CLOFEMOL on 30.07.1993 as Ex.PW1/43.
34. The fact that the plaintiff has been zealously guarding its trade mark and goodwill is exhibited by the copy of Adinterim injunction order dated 07.11.2002 passed by Hon'ble High Court in suit no. 1725/02 against M/s Sunny Drug & Pharmaceutical Ltd. which Ex.PW1/39; defendant's letter dated 24.09.2003 drawing attention of the plaintiff that they are also manufacturing medicines under the trademark CLOFEMOL which Ex. PW1/40 and the copy of plaintiff's reply letter dated 01.10.2003 to the same which Ex.PW1/41. These go to show the concern of the plaintiff for its trade mark and goodwill.
35. PW1 has also tendered in evidence trademarks journal MEGA6 dated 25.11.2003 at page no.2176 in which trade mark CLOFEMOL has been published as Ex.PW1/42.
T M No.105/2011 Parkin Laboratories vs. WestCoast Pharma. Wrks. Page 18 of 27 19
36. The witness PW1 has deposed in terms of the averments of the plaint. He has been cross examined by the defendant but nothing effective to support the case of defendant could be culled out of the testimony of the PW1.
37. PW1 further stated in his cross examination that the plaintiff took the drug license for manufacturing CLOFEMOL in the year 1993 and that it came to know from the letter of the defendant dated 24.09.2003 that they had also been manufacturing the same medicine under the same name. It is further stated that the plaintiff supplies their drugs to various states including West Bengal, UP, MP, AP, Tamil Nadu and Gujarat and that it has filed so many bills to show that it has been supplying its medicines in the State of Gujarat.
38. The witness PW1 denied the suggestion that the defendant had been manufacturing the medicine CLOFEMOL since prior to 1993 and the defendant is the prior user of the impugned trademarks. PW1 also denied the suggestion that the defendant had been selling CLOFEMOL since 1992. PW1 further denied the suggestion that it is the plaintiff who has been passing off the medicines of the defendant or that it is wrong to suggest that it is the defendant has incurred pecuniary losses on account of passing off their medicines by the plaintiff. T M No.105/2011 Parkin Laboratories vs. WestCoast Pharma. Wrks. Page 19 of 27 20
39. Suggestions are not substantive evidence. Suggestions to a witness, unless admitted, do not create any right in favour of the adversary. It only paves the way for proving the facts suggested but not admitted. Thus merely from the suggestions the defendant could not impugn the testimony of PW1, when it has itself failed to enter into the witness box.
40. The defendant has also made a frail attempt to challenge the jurisdiction of the Court though no foundation for the same has been made in the pleadings. In his cross examination PW1 stated the he did not know whether the defendant does not have any market for their medicine in Delhi. He admitted having seen para 17 of the plaint and stated that it was correct that in para 17 I have stated that defendant is selling offending goods at Delhi without issuing bills/cash memos. He stated that he got mentioned this fact in para 17 of the plaint because the Director of the defendant had told him on telephone that the defendant had been selling the goods under the impugned trademark in Delhi without issuing bills/cash memos. However PW1 could tell his name and volunteered to state that the incident relates to the year 2003. I may state at the cost of the repletion that this cross examination is superfluous for want of foundation of factual aspect or challenge in the T M No.105/2011 Parkin Laboratories vs. WestCoast Pharma. Wrks. Page 20 of 27 21 pleadings.
41. 'Res ipsa loquitor' is a dictum which is commonly applied in case of torts primarily accidents caused due to negligence where the scene speaks for itself that the negligence is apparent on the face of the things. In the same vein the apprehension of passing off is very must writ large. The trade mark is the same; the goods are same and similar; they are sold through the same trade channels. Thus the likelihood of passing off cannot be ruled out by any standards, rather it is the only conclusion which emerges.
42. The finding on this issue is returned in affirmative. Issue no.3 Whether the plaintiff is entitled to the rendition of accounts as claimed? OPP
43. With the findings on the issue nos. 1 and 2 being in the affirmative, the finding on this issue is anyone's guess. Rather it is a logical corollary.
44. The finding on this issue is returned in affirmative. Issue no.4 Whether the defendant is the prior and continuous user of trade mark CLOFEMOL since 1992 prior to the plaintiff? OPD
45. The onus of this issue has been on the defendant. However the T M No.105/2011 Parkin Laboratories vs. WestCoast Pharma. Wrks. Page 21 of 27 22 defendant has not led any evidence.
46. Can a finding on an issue be necessarily returned against a party merely for the reason that it has failed to step into the witness box? My answer is in the negative.
47. In my considered view, it is not mandatory for any party to compulsorily enter into the witness box to prove its case, if there is other evidence available on record to prove what it ought to have proved. The law of evidence does not mandate that a party, must as a religious ritual, enter into the witness box and failure to do shall always go against it. It is not an act which must be performed as a sine qua non to prove one's case. A party can always bank upon other evidence on record and if that is sufficient to discharge the onus, the party may recluse from entering into the witness box, yet may claim discharge of the onus.
48. A case generally has a cluster of facts, as cause of action is a bundle of facts, which are required to be established. Entering into the witness box to depose orally is not the only mode of proving the facts; it is one of the modes available. The facts in issue or relevant facts may be proved by one or more of the following modes:
(i). oral admissions (express or deemed) of the adversary T M No.105/2011 Parkin Laboratories vs. WestCoast Pharma. Wrks. Page 22 of 27 23 either in pleadings or in cross examination; or
(ii). admissions of documents relevant to the controversy;
(iii). by statutory presumptions; or
(iv). by bringing person(s) into the witness box who are privy to any transaction or part of transaction; or
(v). by party itself entering into the witness box; or,
(vi). by adverse inference on account of any party not producing a document or fact in its power and possession; or
(vii). in any other mode or by any other means recognized by the law.
49. Thus, in my view, it is not always incumbent upon a party to enter the witness box, if the facts can be proved by other evidences, and in such an eventuality nonappearance of a party into the witness box cannot be taken as a circumstance against it. However, if certain facts are within the personal and especial knowledge of a party, and if it shies away from entering into the witness box, it can be taken as a circumstance against it. Section 106 of the Evidence Act, 1872 can be referred to.
50. In the case in hand, the defendant could not cull out any thing in its favour in the cross examination of PW1. No document(s) of plaintiff T M No.105/2011 Parkin Laboratories vs. WestCoast Pharma. Wrks. Page 23 of 27 24 support the stand of the defendant. Whether the defendant has been prior in adoption and use of the trade mark CLOFEMOL is a fact which is in its especial knowledge and thus it was under a duty to prove this fact. The plaintiff cannot be asked to prove the negative as negative is usually incapable of being proved.
51. The finding on this issue is returned in negative. Issue no.5 Whether the firm of the defendant has not been represented through proper and authorized person? OPD
52. In his cross examination PW1 stated that the plaintiff firm has three partners. He admitted the suggestion that he has not filed the copy of the partnership deed on record or that he has not filed any authorization letter.
53. In fact, a partner does not require any authority from other partners as a partner is the principal for himself and agent of the other partners. Thus this cross examination cuts no ice.
54. This issue is answered in negative.
Issue no.6 Relief?
55. In view of my findings on the above issues the plaintiff is entitled to the relief(s).
56. As regards the relief of rendition of accounts, I am of the view T M No.105/2011 Parkin Laboratories vs. WestCoast Pharma. Wrks. Page 24 of 27 25 that though the defendant has used the plaintiff's trade mark/and trade dress for quite some time but the exercise of rendition of accounts is very complex in view of the numbers of transactions involved; categorization/bifurcation of transactions into different slots where the plaintiff's goodwill has been exploited and where it has not been so exploited being a stumbling block; cumbersome calculations involved; the case being more than eight years old and a host of other relevant factors particular to the case, the remedy of rendition of accounts may not be appropriate. On the contrary, it may involve such costs and expense which is avoidable. In my view, instead of rendition of accounts lumpsum and consolidated damages can be awarded and in the facts and circumstances of case, a sum of Rs. 2,00,000/ as compensatory consolidated damages would meet the ends of justice.
57. The suit of the plaintiff is therefore decreed as under:
(i) A decree for permanent injunction restraining the defendant, its agents, servants, dealers etc. from manufacturing and marketing said medicines under the trademark CLOFEMOL or any other trademark identical/deceptively similar to plaintiff's trade mark CLOFEMOL as to constitute passing off is passed in favour of the plaintiff and against the defendant.
T M No.105/2011 Parkin Laboratories vs. WestCoast Pharma. Wrks. Page 25 of 27 26
(ii) A decree of perpetual injunction restraining the defendant's, its agents, servants, dealer representatives and all other persons on their behalf from infringing/offending or violating the plaintiff's registered trade mark trade mark CLOFEMOL under no.1132379 dated 10.09.2002 by using the trade mark CLOFEMOL or any other trade mark identical and / or deceptively similar to the plaintiff's registered trade mark CLOFEMOL is passed.
(iii). A decree for a sum of Rs. 2,00,000/ (Rupees One Lakh Only) as compensatory consolidated damages to the plaintiff payable by the defendant in lieu of a decree for rendition of accounts.
(iii). A decree for orders of delivery up etc. of all the incriminating/infringing material violating the plaintiff's trade mark/copyright like publicity/promotional material, packaging material, stationery items, letter heads/printed material, etc. by the defendant, their agents representatives, assigns, officers, partners, servants, administrators etc. to the plaintiff for destruction.
(iv). The defendant shall also pay the cost of the present suit to the plaintiff.
58. The plaintiff will make up the deficient court fees which has occasioned due to award of damages and on payment thereof, decree T M No.105/2011 Parkin Laboratories vs. WestCoast Pharma. Wrks. Page 26 of 27 27 sheet be drawn accordingly.
59. File be consigned to Record Room.
Announced in the Open Court On this 03rd day of January 2013 (MAN MOHAN SHARMA) ADJ (Central)1, Delhi T M No.105/2011 Parkin Laboratories vs. WestCoast Pharma. Wrks. Page 27 of 27