Bombay High Court
Medley Pharmaceuticals Ltd vs Winsome Laboratories Ltd. & Anr on 22 September, 2008
Equivalent citations: AIR 2009 (NOC) 2571 (BOM.), 2009 (5) AIR BOM R 145, 2009 A I H C 3598, 2009 CLC 1173 (BOM)
Author: A.V. Nirgude
Bench: A.V. Nirgude
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
ORDINARY ORIGINAL CIVIL JURISDICTION
NOTICE OF MOTION NO.931 OF 2006
IN
SUIT NO.830 OF 2006
Medley Pharmaceuticals Ltd. ...Plaintiffs
V/s.
Winsome Laboratories Ltd. & Anr. ...
Defendants
Mr.H.W. Kane a/w. A.H. Kane, Vaibhav Kini, Rahul Kadam
and Hiren Kamod, for the Plaintiffs.
Mr.Salil
Jehangir
Shah a/w.
Gulabbhai
ig &
Rahul Dhande, Parag
Bilamoria
Dalal, i/b.
& Daruwalla, for the
Defendants.
CORAM : A.V. NIRGUDE, J.
DATE : 22ND SEPTEMBER, 2008.
ORAL ORDER :-
. This Notice of Motion is taken out for seeking an order of temporary injunction to prevent the Defendants from infringing the Plaintiff's registered trade mark "Nimsaid" or "Nimsaid Wah" using the impugned trademark which is said to be deceptively similar. The case of the Plaintiffs is as under :-
::: Downloaded on - 09/06/2013 13:53:18 :::2. The Plaintiffs is a company incorporated in 1956. They carry on business of manufacture and trade of pharmaceutical and medicinal preparations. The Plaintiff-
company adopted a distinctive trade mark "Nimsaid" for a medical preparation containing the drug "Nimesulide".
After some time the Plaintiff also adopted a variation of
the above mentioned trade mark namely "Nimsaid- P" in
respect of a
medical preparation containing drugs
"Nimesulide" and "Paracetamol".
3. In or about March, 1998, June, 1998 and September,
1999, the Plaintiff obtained permission for
manufacturing medical and pharmaceutical
preparations under mark "Nimsaid- T" (Tablet) and
"Nimsaid- P" (Suspension). In May, 1998, the Plaintiff
commenced manufacturing and selling preparations in the
form of tablets bearing trade name "Nimsaid". After
June, 1998, they started manufacturing and selling tablet
under the trade name of "Nimsaid- P" containing the
::: Downloaded on - 09/06/2013 13:53:18 :::
drugs "Nimesulide" and "Paracetamol". After September,
1999, they started selling suspension containing
"Nimesulide" and "Paracetamol" under the trade name
"Nimsaid- P".
4. On 2nd August, 1999, the Plaintiff made application for registration of trade mark "Nimsaid Wah" in respect of a medical and pharmaceutical preparation. The Registrar of Trade Mark has agreed to advertised the said application before its acceptance, subject to certain conditions. The Plaintiff, some time after September, 1999, commenced manufacturing and selling "Nimsaid Wah Tab.". The Plaintiff said using the said trade marks since 1998 till the date of filing of the Suit, they had sold these preparations and achieved progress in sale figures. The Plaintiff said that they took efforts to promote the trade mark "Nimsaid", "Nimsaid- P" and "Nimsed Wah" by spending sizable sums of money.
5. On the other hand, the Registrar of Trade Marks ::: Downloaded on - 09/06/2013 13:53:18 ::: advertised the trade mark "Nimsaid Wah" in the trade mark journal dated 25 th November, 2003 and since no one opposed the registration of the said trade mark within prescribed time, the Registrar registered it on 29th June, 2005, and issued a certificate to that effect to the Plaintiffs. In order to claim benefit of user of the trade mark "Nimsaid" since 1998, the Plaintiff on 17th August, 2001, made application for registration of the said trade mark. The Registrar advertised the trade mark in the trade mark journal dated 30th March, 2005 and as no one opposed the registration within prescribed time, the Registrar registered the same on 22 nd December, 2005 and issued a certificate to that effect. The Plaintiff said that by regular and extensive use of these trade marks, the Plaintiffs have popularized the preparations and they enjoy high reputation and goodwill. The Plaintiff stated that these trade marks have become distinctive of the Plaintiff's goods.
6. In September, 2001, the Plaintiff came to know that ::: Downloaded on - 09/06/2013 13:53:18 ::: the Defendants were manufacturing and selling same medical preparations under a deceptively similar trade mark "Nimaid" and "Nimaid- P". The Plaintiffs through their Advocates letter dated 12 th September, 2001 requested the Defendants to cease and desist from using the trade mark "Nimaid- P" etc. The Defendants by their letter in reply denied that their trade mark was similar to that of the Plaintiffs. They stated that it was different because the Plaintiff's mark has distinctive phonetical sound of (s). The Plaintiff thereafter filed their first Suit which came to be withdrawn later- on on 28th February, 2006 with a liberty to file this Suit and this Suit came to be filed on the same date.
7. The Defendant No.1 through their reply took up following line of defense :-
8. The 1st Defendant is a Proprietor of the two trade marks "Nimaid- P" and "Nimaid Wah" and the 2nd Defendant is the manufacture of the drug under the said ::: Downloaded on - 09/06/2013 13:53:18 ::: trade mark.
9. In January, 1999, the Defendant No.1 adopted the word "Nimaid- P" in respect of the combination of drug "Nimesulide" and "Paracetamol" and some time later they introduced trade mark "Nimaid". They stated that in their mark the prefix "Nim" is taken from the word "Nimisulide" and the suffix "aid" stood as abbreviation to words "Anti Inflamma tory Drug". They stated that the prefix "Nim" is common to pharmaceutical trade and is accepted abbreviation for word "Nimisulide".
10. The Defendant No.2 then made an application on 2nd January, 1999 to the State Drug Controller of State of Hariyana for permission to manufacture the preparation under the name "Nimaid- P". The permission was granted on 18th February, 1999. Similar permission was also obtained on 26th October, 1999 in respect of the preparations under the trade name "Nimaid".
::: Downloaded on - 09/06/2013 13:53:18 :::11. The 1st Defendant made application for registration of the trade mark "Nimaid- P" in the office of the Trade Mark Registrar at New Delhi. On 10th September, 1999, the Registrar did not mention to them that the Plaintiff's trade marks "Nimsaid and Nimsaid Wah" were already pending registration. Their trade marks "Nimaid- P" and "Nimaid Wah" were then advertised in the Trade Mark Journal dated 13th March, 2003. On 5 th June, 2003, the Plaintiff's filed objection and opposed the Defendant's proposal to register the trade mark "Nimaid- P". The objection is pending.
12. They stated that their preparations under the said trade marks have been manufactured on a large scale but are only sold and distributed in the States of U.P., Hariyana, Punjab, M.P., Chattisgarh, Delhi and Rajasthan.
The Defendants also stated that since April, 1999, they achieved a lot of progress in increasing the sale of their products. They even stated that in order to popularize their product, they have been regularly spending sizable amounts on advertisements.
::: Downloaded on - 09/06/2013 13:53:18 :::13. The Defendants further stated that there are several preparations in the market of the drug "Nimisulide" having prefix "Nim" as prominent and dominant part of the trade mark. They stated that such products are available in the markets since prior to the Plaintiff's product appeared in the market. They stated there has been no instance of confusion or deception due to this aspect of the trade name.
14. They stated that the trade names of both the parties are distinctly different from each other. They stated that the packing of the products are different using different color scheme etc.
15. They stated that Nimisulide preparations fall within the category of Schedule "H" drug and can only be dispensed by a registered chemical practitioner. So there is no likelihood of any confusion or deception and the products of both the parties so far have co-existed and can co-exist in future also.
::: Downloaded on - 09/06/2013 13:53:18 :::16. They stated that the application for temporary injunction is bad due to gross delay and latches. They further pointed out that in the earlier Suit, the Plaintiffs failed to obtain ad- interim relief against the Defendants and by a speaking order dated 12th December, 2001, the ad-
interim injunction was refused to the Plaintiff.
17. From the above narration it is clear that the Plaintiffs commenced manufacturing and selling their product "Nimsaid" in May, 1998 whereas their other product "Nimsaid- P" went for manufacturing some time after September, 1999. As early as on 2nd August, 1999, the Plaintiffs made application for registration of the trade mark "Nimsaid Wah". The Certificate of Registration dated 29th June, 2005 was thereafter obtained. The Plaintiffs applied for registration of their other mark "Nimsaid" on 17th August, 2001 and obtained certificate of registration on 22nd December, 2005. The Defendants so far have not succeeded in obtaining ::: Downloaded on - 09/06/2013 13:53:18 ::: registration of their marks "Nimaid" and "Nimaid- P".
18. As said above, the Plaintiffs opposed the application and succeeded in stalling registration of their trade marks.
Despite of this, the Defendants are manufacturing and selling their products and as early as in September, 2001 the Plaintiffs objected to their trade marks. When the Plaintiffs filed their first Suit in 2001, admittedly their trade marks were not registered. After the registration of the trade marks, the Plaintiffs withdrew their Suits in 2006 and the present Suit came to be filed. So, the present action is based mainly on the fact that the Plaintiffs are the Proprietor of the registered trade marks "Nimsaid" and "Nimsaid- P" and they are alleging infringement of these marks as a registered proprietor of these trade marks.
They have certain right under Section 28 of the Trade Marks Act, 1999 (hereinafter referred to as "the said Act").
19. Section 28(1) of the Act confers upon the Plaintiffs the exclusive right to use the trade marks in relation to the ::: Downloaded on - 09/06/2013 13:53:18 ::: goods in respect of which the trade marks are registered and to obtained leave in case of infringement of the trade marks. Section 29(1) provides that a registered trade mark is infringed by a person who is not a registered proprietor or a person not using by way of permitted use, uses in the course of trade a mark which is either identical with or is deceptively similar to the registered trade mark of the another person. The expression deceptively similar is also defined in Section 2(1)(h) as under :-
"A mark shall be deemed to be deceptively similar to another mark if it so nearly resembles than other mark as to be likely to deceive or cause confusion."
20. So the first question is whether the Defendant's marks are deceptively similar to the Plaintiffs registered marks? The principle which guides the Court in determining this question was stated in the judgment of the Pionotist's case reported in 1906 (23) RPC 774.
"You must take the two words. You must judge them, both by their look and by ::: Downloaded on - 09/06/2013 13:53:18 ::: their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks. If, considering all those circumstances, you come to the conclusion that there will be a confusion - that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods - then you may refuse the registration, or rather you must refuse the registration in that case."
21. This old judgment is cited with approval in Judgments of the Supreme Courts. The Supreme Court in the Judgment of Cadila Health Care Ltd. V/s. Cadila Pharmaceuticals Ltd. reported in 2001 PTC 541 (SC) re-
visited the entire issue of deceptive similarity in the context of pharmaceutical preparations. The Supreme Court also considered all its earlier decisions and also the decision in the case of S.M. Dyechem Ltd. V/s. Cadbury ::: Downloaded on - 09/06/2013 13:53:18 ::: (India) Ltd. reported in 10 (2000) 5 SCC 573. The Supreme Court disapproved the formulation of legal principle laid down in the case of S.M. Dyechem and observed that the decisions of the Supreme Court over the last 40 years have laid down as to what was required to be seen in such action for passing of. The Supreme Court laid down following factors which are enunciate in deciding the issue of deceptive similarity.
"(a). The nature of the marks i.e. whether the marks are word marks or label marks or composite marks, i.e. both words and label marks;
(b). The degree of resemblance between the marks, phonetically similar and hence similar in idea;
(c). The nature of the goods in respect of which they are used as trade marks;
(d). The similarity in the nature, character and performance of the goods of the rival traders;
(e). The class of purchasers who are likely to buy the goods bearing the marks they require, or their education and intelligence and a degree of care ::: Downloaded on - 09/06/2013 13:53:18 ::: they are likely to exercise in purchasing and/or using the goods;
(f). The mode of purchasing the goods or placing orders for the goods; and
(g). Any other surrounding circumstances which may be relevant in the extent of dissimilarity between the competing marks."
22. Thus, having regard to the above mentioned factors, I have to appreciate the facts of this case. We have two names the Plaintiff's one is "Nimsaid" and the Defendant's one is "Nimaid". The question is whether these marks are resembling. The answer to this is in affirmative.
There is hardly any difference between the two except of one syllable namely (s). The entire word except the syllable (s) are identical (both words) even phonetically. In my view, the syllable (s) would really not make much difference having regard to the class of purchasers who would go to market to buy the Plaintiff's product. It is not in dispute that the drug used in both the preparations is / are identical. Both these products are either preparation of generic "Nimisulide" which is an Anti Inflammatory Drug or a ::: Downloaded on - 09/06/2013 13:53:18 ::: combination of two Anti Inflamma tory and Pain Relief Drugs namely "Nimisulide" and "Paracetamol". The other circumstances that are required to be appreciated are that the Plaintiff's drugs are available all over India including the States where the Defendant's products are available. The Plaintiff's volume of manufacture and sale of the product is much larger than the Defendants. I am not giving importance to the fact that the packaging, color scheme on cartons etc. of the two products are the not similar. Here in a pharmaceutical product what matters more is the name of the drug. It is clear that the Defendant's trade names of their products are deceptively similar to the Plaintiff's registered trade marks.
23. Mr. Shah for the Defendants argued that the Plaintiff's action and this application for temporary injunction suffers from delay and latches. He pointed out that the first Suit alleging passing of was filed in 2001. In that Suit the Plaintiff's application for temporary injunction was ::: Downloaded on - 09/06/2013 13:53:18 ::: rejected. The Plaintiffs continued with this situation and allowed the Defendants to sell their products till the present application is moved seeking temporary injunction in 2006. He also raised doubts as to why the Plaintiffs withdrew their earlier action in 2006. He asserted that it was probably because the Plaintiffs sensed that their Suit of 2001 would be dismissed for want of jurisdiction etc. I do not agree with this argument. The Plaintiff's earlier Suit was a passing of action alone. It was not based on the registration of trade marks and infringement etc. The Plaintiffs continued that action till they filed the present Suit. It is thus clear that the Plaintiffs did not tolerate the Defendant's user of their deceptively similar trade marks.
The rejection of their interim application in that Suit, in my view, was of no consequences. Had the Plaintiffs not been keen in preventing the Defendants from using their deceptively similar marks, the Plaintiffs would not have pursued their application for registration, they would not have opposed the Defendant's application for registration of their trade marks and they would not have filed the ::: Downloaded on - 09/06/2013 13:53:18 ::: present Suit. There is hardly any delay in filing of this Suit from the date of the new cause of action which is based on registration of the trade mark. Any legal action such as this the period that was lost to the Plaintiffs between November, 2001 till date cannot be said to be a lapse on the part of the Plaintiffs. The Plaintiffs were not at all responsible for the delay in getting the relief they sought even in their earlier Suit. So the argument mentioned above is not accepted.
24. This issue was discussed in the judgment of the Supreme Court in the case of Corn Products Refining Co. V/s. Shangrila Food Products Ltd. reported in AIR 1960 SC 142. The Supreme Court held that before a party could assert presence of a number of marks having one or more common features in the trade, he has to prove that these marks had acquired a reputation by user in the market. The onus of establishing this lies on such party.
In this case the Defendants have merely produced copies of Trade Journal showing that the above named products are ::: Downloaded on - 09/06/2013 13:53:18 ::: in the market. These Journals, however, do not establish even prima- facie that the products named above have wider circulation and have acquired reputation.
25. The second line of argument pursued by Mr.Shah for the Defendants, an attractive one, is that since September -
October, 1998, there are several products of several manufacturers using the prefix "Nim" namely Nimisulide, Nemusen, Nimcet, Nemesaid, Neosaid, Nimeside. He said all these products are preparations of basic drug "Nimisulide". He said if the Plaintiffs are aware of the existence of such products in the market, the Plaintiffs could not have targeted the Defendants. This argument is misleading. It is for the Plaintiffs to decide as to against whom they should take action of infringement. The infringer cannot question the choice made by the Proprietor of the registered trade mark to sue.
26. The third point raised by Mr.Shah for the Defendants is again quite convincing. He said the prefix of both the ::: Downloaded on - 09/06/2013 13:53:18 ::: trade marks is word "Nim". He said the word "Nim" is descriptive and indicating the generic term of the basic drug. He said both the names thus are indicating the composition of the medicine. He, therefore, said that the Plaintiff's trade mark being descriptive and indicative of the composition of medicine cannot be protected under the provisions of the Trade Marks Act. He placed reliance on a judgment of the Delhi High Court in the case of M/s.Panacea Biotec Ltd. V/s. Recon Ltd. reported in AIR 1997 Delhi 244.
27. He placed reliance on several other judgments of Delhi High Court in the matter of S.B.L. Ltd. V/s. Himalaya Drug Co. reported in AIR 1998 Delhi 126, the Madras High Court in the case of Indo- Pharma Pharmaceutical Works Ltd. V/s. Citadel Fine Pharmaceuticals Ltd. reported in AIR 1998 Madras 347, USV Ltd. V/s. Systopic Laboratories Ltd.
& Anr. reported in 2003 (27) PTC 203 (Mad).
28. In my view, this line of argument is no longer available ::: Downloaded on - 09/06/2013 13:53:18 ::: to the Defendants in view of what is held in the Cadila's case by the Supreme Court.
::: Downloaded on - 09/06/2013 13:53:18 :::29. The Supreme Court in that Judgment emphasised the need for a stricter standard in the matters of infringement and passing of involving pharmaceutical products. It held as under :-
"Public interest would support lesser degree of proof showing confusing similarity in the case of trade mark in respect of medicinal product as against other non- medicinal product. Drugs are poisons, not sweets. Confusion between medical products may, therefore, be life threatening, not merely inconvenient.
What is likely to cause confusion would vary from case to case. However, the appellants are right in contending that where medicinal products are involved, the test to be applied for adjudging the violation of trade mark law may not be at par with cases involving non- medicinal products. A stricter approach should be adopted while applying the test to Judge the possibility of confusion of one medicinal product for another by the ::: Downloaded on - 09/06/2013 13:53:19 ::: consumer. While confusion in the case of non- medicinal products may only cause economic loss to the plaintiff, confusion between the two medicinal products may have disastrous effect on health and in some cases life itself.
Stringent measures should be adopted specially where medicines are the medicines of last resort as any confusion in such medicines may be fatal or could have disastrous effects. The confusion as to the identity of the product itself could have dire effect on the public health."::: Downloaded on - 09/06/2013 13:53:19 :::
30. A similar case was before this Court in the matter of Wyeth Holdings Corporation & Anr. V/s. Burnet Pharmaceuticals (Pvt.) Ltd. and the learned Single Judge of this Court was considering as to whether the Defendant's attempt to get his mark "Fol- V" was rightly refused registration due to the Plaintiff's opposition to protect his registered trade mark "Folvite" and whether the Plaintiffs were entitled to prevent the Defendants from using their deceptively similar trade mark "Fol- V". The arguments advanced before that Court were more or less identical. On facts, the learned Judge held that the Defendant's mark was deceptively similar and then the learned Judge having regard to the observations of the Supreme Court in Cadila's case went on to hold as under:-
"An ostensibly innocuous medicinal preparation taken for an affliction which is not life threatening may yet result in a serious danger to life and health, where the drug is not manufactured under correct conditions.
A consumer who desires to obtain a medicine even for an ordinary ailment is entitled to be sure that the drug that he purchases is of an assured character and quality. A manufacturer builds up a reputation for quality and standards assiduously over a length of time and an established mark assures to the consumer ::: Downloaded on - 09/06/2013 13:53:19 ::: that the medicine which he has purchased is of a requisite quality that is associated with the mark. A less than strict standard cannot be applied on the hypothesis that the ailment which the drug is intended to treat is not life threatening, nor for that matter can the application of a lower standard be justified merely on the ground that the composition of the Plaintiff's product is the same as that of the Defendant and the confusion caused by mistaking one for the other would not result in a danger to health. Undoubtedly, where the competing drugs are meant to cure the same ailment but the compositions are different, mistaking one for the other may result in deleterious consequences. But, merely because the two competing marks are used for drugs with the same composition that would not justify applying a lower standard of scrutiny. For, even in such a case, the public interest lies in protecting the ::: Downloaded on - 09/06/2013 13:53:19 ::: consumer against an unwary purchase of a deceptively similar product. The consumer must be protected against a reasonable possibility of confusion arising out of a deceptively similar mark."
31. The above quoted passage is clearly emphasizing the need to apply stricter standard even when the competing marks are used for drugs with the same composition. In this case the competing marks are used for manufacturing identical drugs and so would not justify applying a lower standard of scrutiny.
32. During arguments, the Defendant's Counsel also tried to suggest that both the parties almost simultaneously adopted and started user of the competing marks for manufacturing and sale of their products and so the Defendants cannot be accused of being dishonest. This aspect, however, is not significant. This is clearly not a case of passing of. It is a case of infringement ::: Downloaded on - 09/06/2013 13:53:19 ::: of registered trade mark.
33. No doubt, the statutory provisions relating to the infringement of trade mark is based on the same fundamental idea as that of the law relating to passing of but it defers in two aspects. It is about one method of passing of and that is the use of a trade mark and the secondly the statutory liability is absolute in the sense that in an action for ig infringement, the Court will not inquire whether the infringement is such as is likely to deceive or cause confusion etc. So the question of dishonesty is immaterial. In this case the Plaintiff's mark is registered mark and the Plaintiffs are entitled to statutory protection.
34. The Defendants then placed reliance on the Judgment of Delhi High Court in the case of Kalindi Medicure Pvt.
Ltd. V/s. Intas Pharmaceuticals Ltd. & Anr. reported in 2007 (34) PTC 18 (Del.). This is a judgment of 2006. It is passed having due regard to the law laid down by the ::: Downloaded on - 09/06/2013 13:53:19 ::: Supreme Court in the Cadila's case. The Plaintiff was Proprietor of registered trade mark "Loprin" whereas the Defendant adopted trade mark "Loparin". Despite of similarity in the names, the learned Judge refused injunction on the ground of balance of convenience which was noticed with the Defendant's product sold as Anti Muscular Injection with huge difference in the price and having sale of about 8 crores a year. On the other hand, the Plaintiff was using this trade mark for his product which was a pill.
This judgment can certainly be distinguished on the facts and, in my view, will not affect the appreciation of facts of this case.
35. In view of the aforesaid observations, I pass the following order :-
"O R D E R "
"The Plaintiffs have succeeded in making out a prima- facie case.::: Downloaded on - 09/06/2013 13:53:19 :::
The Notice of Motion is made absolute in terms of prayer clause (a).
There shall be no order as to costs."
[A.V. NIRGUDE, J.] ::: Downloaded on - 09/06/2013 13:53:19 :::