Delhi District Court
M/S. Mankind Pharma Ltd vs M/S. Mascot Drugs Pvt. Ltd on 3 August, 2013
1
IN THE COURT OF SH MUKESH KUMAR GUPTA: ADDITIONAL
DISTRICT JUDGE06(CENTRAL):DELHI
TM No.08/10/07
UID No.02401C0915732007
[Old Case : More than 5 years old]
M/s. Mankind Pharma Ltd.
236, Okhla Industrial Estate
Phase - III, New Delhi 110020. ...... Plaintiff
Versus
M/s. Mascot Drugs Pvt. Ltd.
C27/S2, Dilshad Colony
Delhi - 110095. ...... Defendant
Date of institution of suit : 17.09.2007
Date of assignment : 10.01.2012
Date of hearing argument : 24.07.2013
Date of Judgment : 03.08.2013
Appearance(s) : Sh. A. K. Goel, Advocate, Ld. Counsel for the plaintiff.
Sh. Nalin Sahay & Sh. A. K. Pandey, Advocates, Ld. Counsels for
the defendant.
JUDGMENT :
1. By way of present judgment I shall conscientiously adjudicate upon the plaintiff's suit for permanent injunction, infringement of trade mark, rendition of accounts and delivery up of the infringement material against the defendant.
2. Eschewing prolix reference to the pleadings crystallizing the same, the plaintiff is stated to be a public limited company registered under the Companies Act, 1956. The plaintiff company was stated TM No.08/10 M/s. Mankind Pharma Ltd. Vs. M/s. Mascat Drug (P) Ltd. 1/21 2 to be initially incorporated as a private limited company under the name M/s. Mankind Pharma Pvt. Ltd., which was thereafter converted into a public limited company vide resolution dated 14.07.2005. The present suit has been instituted through Sh. R. K. Saxena stated to be the General Manager of the plaintiff company well conversant with the facts and circumstances of the case and authorized vide resolution passed by the Board on 21.03.2007. It is the case of the plaintiff that the plaintiff company is engaged in manufacturing and trading of pharmaceutical and medicinal preparations for more than a decade. It has been further stated that the plaintiff is the proprietor of trade mark OMIDON registered under trade mark No. 848566 dated 30.03.1999 in class 5 in respect of pharmaceutical preparations with user since 13.05.1995 which the plaintiff is stated to have received by virtue of an assignment under the Trade and Merchandise Marks Act, 1999 from its earlier proprietor Sh. AGPA Pharmaceutical. It is the case of the plaintiff that the registration is valid, subsisting and in full force and has been used by it and its predecessor in title of the trade mark since 1995 openly, continuously, extensively and uninterruptedly. The plaintiff has further claimed to be the registered proprietor of trade mark EMEDOM, registered under TM No. 802149 dated 14.05.1998 which is also stated to be valid, subsisting and in full force. It is further the case of the plaintiff that the plaintiff has further conceived, coined and adopted the trade mark OMIDOM in respect of medicinal preparations in the year 1999 and has used so since then extensively, openly and continuously on a large scale. The plaintiff has further stated to have proceeded with the registration of TM No.08/10 M/s. Mankind Pharma Ltd. Vs. M/s. Mascat Drug (P) Ltd. 2/21 3 the trade mark OMIDOM in class 5 under no. 958970 dated 26.09.2000 which is advertised in Trade Mark Journal. Plaintiff has thus claimed to be the honest, bonafide, originator inventor, adopter and lawful proprietor of the trade marks OMIDON, EMEDOM, OMIDOM. It is the case of the plaintiff that on account of superior quality and high efficacy, the goods have acquired a high degree of reputation and goodwill amongst the buying public in general and trade circles in particular and the trade marks mentioned aforesaid connote and denote the goods originated from the plaintiffs and synonymous with the trade of the plaintiff. The plaintiff has further claimed to have spent substantial amount on its publicity through various medias including trade literature, pamphlets, personal meetings etc.
3. It is the case of the plaintiff that in the month of July 2005, the application for registration of the trade mark OMEDO was made by the defendant which was published in the Trade Mark Journal wherein the defendant claimed user of the impugned mark and accordingly aggrieved by the aforesaid plaintiff as taken recourse by filing an opposition with the trade mark registry. The plaintiff is stated to have received a counter statement in the aforesaid opposition proceedings wherein the defendant has claimed commercial user of the impugned mark. It is the case of the plaintiff that by way of the aforesaid commission and acts, the defendant is trying to confuse and deceive the unwary consumers by giving false and fraudulent impression, adoption of identical/deceptively similar trade marks and is likely to trade upon and to encash upon TM No.08/10 M/s. Mankind Pharma Ltd. Vs. M/s. Mascat Drug (P) Ltd. 3/21 4 the goodwill and reputation created by the plaintiff in respect of the aforesaid marks over a period of time. Further it has been alleged that the defendant by doing so is not only infringing the registered trade marks of the plaintiffs mentioning aforesaid but also trying to pass off its goods to the consumers as that of goods belonging to the plaintiff which may result into erosion of goodwill and reputation besides causing heavy financial loss to the plaintiff and unlawful gains to the defendants. The plaintiff has further stated that even in filing of the suit, the plaintiff has already suffered both in terms of the reputation but also in terms of the trade because of the acts of defendant as the trade channels are the same. The locality and purchase market of the plaintiff and defendant are the same and the defendant is trying to make use of a deceptively similar identical trade mark OMEDO which is causing confusion and deception in the market and as such required to be injuncted by this court. Hence, the present suit thereby claiming following :
a). perpetual injunction restraining the defendant, its agents, servants, dealers, representatives and all other persons on its behalf from manufacturing and/or marketing and /or selling and /or offering for sale and /or dealing in any manner directly or indirectly of pharmaceuticals and/or medicinal preparations and /or any other goods under the mark OMEDO or any other mark identical and /or deceptively similar to the plaintiff's registered trade mark OMIDON TM No.08/10 M/s. Mankind Pharma Ltd. Vs. M/s. Mascat Drug (P) Ltd. 4/21 5 & EMEDOM amounting to infringement of the plaintiff's trade mark OMIDON & EMEDOM registered under no. 848566 and 802149 respectively and
b). perpetual injunction restraining the defendant, its agents, servants, dealers, representatives and all other persons on its behalf from manufacturing and /or marketing and /or selling and/or offering for sale and /or dealing in any manner directly or indirectly of pharmaceuticals and /or medicinal preparations and/or any other good under the mark OMEDO or any other mark identical and /or deceptively similar to the plaintiff's trade marks OMIDOM, OMIDON & EMEDOM amounting to passing off and
c). mandatory injunction directing the defendant to deliver of the medicines and packagings including stationary, dies, blocks and other materials bearing the impugned mark OMEDO to the plaintiff for the purpose of destruction / erasure and
d). mandatory injunction directing the defendant to disclose on affidavit quantities of TM No.08/10 M/s. Mankind Pharma Ltd. Vs. M/s. Mascat Drug (P) Ltd. 5/21 6 the goods manufactured, sold and /or exported and/ or stocked under the impugned mark OMEDO and
e). an order against the defendant to render its account in order to ascertain profits earned on account of the sales of the medicinal preparations under the impugned mark OMEDO and further order for payment of the said amount to the plaintiff.
4. The defendant contested the suit by filing a detailed written statement thereby denying each and every allegation as raised by the plaintiff in its suit. The defendant has raised various preliminary objections stating that the suit is liable to be dismissed under order VII Rule 11 CPC and the same is devoid of any valid and subsisting cause of action. The defendant is stated that the trade mark OMEDO has no similarity whatsoever to the plaintiff's trade mark OMIDON, OMIDOM & EMEDOM and they are neither similar nor deceptive on any of the grounds i.e. origin, phonetics and presentation in the market. The defendant has claimed to be the true and lawful proprietor of the trade mark OMEDO having coined the same in the year 2002 and adopted the same after deriving it from the initial letters of salt OMEPRAZOLE and the other salt DOMPERIDONE with using the first three letters OME and first of letters of the other word DO which is stated to be distinct and meant for curing stomach ailment, vomiting, nausea, dyspepsia and TM No.08/10 M/s. Mankind Pharma Ltd. Vs. M/s. Mascat Drug (P) Ltd. 6/21 7 esophagitis. The defendant has claimed that the trade mark OMEDO has been used by it openly, continuously and extensively to the exclusion of any other and has been popularized in the trade circles by incurring and investing the sufficient time, skill and efforts. It has been further stated that the efforts of the defendant to popularize and sales promotion activity on account of superior quality of goods, the trademark OMEDO has come to be exclusively identified and associated with the name of the answering defendant. It has been further stated that the plaintiff cannot claim exclusivity to the names of chemical salt which is generally used in the commercial field. It has been further stated that even otherwise, the medicine had got a universal name and the plaintiff's trade mark are very different and differs in pronunciation and phonetics besides the presentation in the commercial market as the packing and presentation of the plaintiff's product is ALUALU whereas the product of the defendant is packed in foil and as such section 9(2)
(a), 11(1) and section 2 of the Trade Mark Act, are not applicable. It has been further stated that the suit of the plaintiff is also liable to be dismissed as the matter regarding opposition is pending before the Registrar of Trade Mark, who is already seized of the matter and the Civil Court as such shall have no jurisdiction to entertain and try the instant litigation when the trade mark registry already dealing with it.
In its reply on merits, the defendant while denying each and every allegations has specifically reiterated the grounds of differentiation taken by the defendant in preliminary objections. The defendant has prayed for dismissal of the suit with heavy costs.
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5. Replication to the written statement was also filed by the plaintiff denying each and every allegations raised by the defendant in the written statement and reiterating the contents of the plaint as correct. It has been categorically stated that the word OMEDO is similar to the plaintiff's trade mark OMIDON, OMIDOM and bound to create certain confusion and deception amongst the public and en consumers who are unwary all the technicalities. Registrar Trade Marks has no powers to issue injunctions restraining the persons from imitating mark and as such suit of the plaintiff is maintainable in its present form.
6. Vide order dated 20.03.2010 as passed by Ld. Predecessor of this court, the ad interim application under order XXXIX Rule 1 & 2 CPC of the plaintiff was allowed and the defendants, its servants, agents, dealers, representatives etc, were restrained from manufacturing, marketing, selling or advertising the medicinal preparations under the deceptively similar mark OMEDO or any other mark deceptively similar to the plaintiff's mark OMIDON, EMEDOM, OMIDOM, till disposal of the suit.
7. Vide order dated 05.05.2010 as passed by Ld. Predecessor of this court, following issues were framed for adjudication :
ISSUES :
i). Whether the defendant has infringed the plaintiff's trade mark OMIDON and EMEDOM by using the trade mark OMEDO?
OPP.
TM No.08/10 M/s. Mankind Pharma Ltd. Vs. M/s. Mascat Drug (P) Ltd. 8/21 9
ii). Whether the defendant has passed off its medicines under the trade mark OMEDO as that of the plaintiff's trade mark OMIDOM ?
OPP.
iii). Whether the plaintiff is entitled to the reliefs claimed ? If so, to what reliefs ? OPP.
iv). Relief.
8. Vide order dated 22.07.2011, as passed by Ld. Predecessor of this court, the defendant was proceeded exparte.
9. Plaintiff in support of its case, got examined its company secretary Sh. Sanjeev Kumar Singh as PW1 who has filed his affidavit by way of his evidence reiterating the contents of the plaint on oath as Ex. PW1/A. The witness has deposed on similar lines as that of the case of the plaintiff in the plaint and got exhibited the resolution passed by the meetings of the board of the plaintiff company in his favour dated 19.02.2008 at Ex. PW1/1. The certificate of incorporation of the plaintiff company, whereby which the plaintiff was converted into a public limited company, got exhibited on record as Ex. PW1/2. Copy of the registration certificate in respect of trade mark OMIDON existing in the name of the predecessor in title Sh. AGPA Pharmaceuticals in class 5 under no. 848566 got exhibited on record as Ex. PW1/3. Copy of the relevant page of Trade Mark Journal in respect of the aforesaid trade mark got exhibited on record as Ex. PW1/4. The order of the registered trade marks whereby which the application TM24 of the plaintiff for assignment as registered TM No.08/10 M/s. Mankind Pharma Ltd. Vs. M/s. Mascat Drug (P) Ltd. 9/21 10 proprietor of the mark being allowed on 19.04.2004 got exhibited on record as Ex. PW1/5. The relevant page of trade mark journal no. 1319 dated 16.05.2004 mentioning the change of proprietorship in the name of the plaintiff company got exhibited on record as Ex. PW1/6. Copy of the registration certificate dated 04.05.1998 in respect of the trade mark EMEDOM in the name of the plaintiff in class 5 got exhibited on record as Ex. PW1/7. The plaintiff has also filed the extracts of its sales figures for the year 200001 uptil 200506 got exhibited on record as Ex. PW1/8. The witness has further exhibited various trade invoices showing the sale of the product covered under the registered trade marks dated 01.05.2002 as Ex PW1/9 and dated 10.10.2003 as Ex. PW1/10. The sales invoices in respect of the product covered by the trade marks of the plaintiff got exhibited on record as Ex. PW1/11 to Ex. PW1/20. The earlier sales invoices pertaining to the predecessor in interest and title of the present plaintiff got exhibited on record showing the user since 1995 got exhibited on record as Ex. PW1/21 to Ex.PW1/34. The copy of the excise invoices pertaining to the goods covered under the trade mark for the year 1997 got exhibited on record as Ex. PW1/35 to Ex.PW1/37 and finally the copy of the trade mark journal no. 1328 dated 07.02.2005 wherein the defendant has published his trade mark for registration got exhibited as Ex. PW1/38.
10.Vide order dated 22.07.2011, as passed by Ld. Predecessor of this court, the plaintiff's evidence was closed. The defendant has not led any evidence in support of its case and as such only the evidence of the plaintiff has come on record.
TM No.08/10 M/s. Mankind Pharma Ltd. Vs. M/s. Mascat Drug (P) Ltd. 10/21 11
11.I have heard Ld. Counsel for the parties and perused the entire record including the pleadings, documents & testimony of witnesses. I have also given a thoughtful consideration to the same. My issue wise findings are as under :
ISSUE No.1 & 2 Whether the defendant has infringed the plaintiff's trade mark OMIDON and EMEDOM by using th trade mark OMEDO? OPP.
Whether the defendant has passed off its medicines under the trade mark OMEDO as that of the plaintiff's trade mark OMIDOM ? OPP.
12.The onus of proving these two issues have been held on the plaintiff.
These two issues are taken up together. Since they are interconnected and the evidence led in this regard is also common. As per the case of the plaintiff, the plaintiff is the registered proprietor of the trade marks OMIDON & EMEDOM vide their registration no. 848566 dated 30.03.1999 and trade mark no. 802149 dated 14.05.1998 both registered with the Registrar of Trade Marks in class 5 relating to pharmaceuticals. While the first trade mark OMIDON has come to the plaintiff on 19.04.2004 by way of assignment the other trade mark stated to have originally conceived and adopted by the plaintiff since the year 1990. The plaintiff has further claimed that it has already applied for the other trade mark OMIDOM in class 5 vide trade mark application no. 958970 dated 26.09.2000 which has also been published in trade mark journal. It is further the case of the plaintiff that in the month of July 2005, it has come to the knowledge that the defendant has used a deceptively similar trade mark OMEDO in respect of same pharmaceutical preparation with an intention to infringe the TM No.08/10 M/s. Mankind Pharma Ltd. Vs. M/s. Mascat Drug (P) Ltd. 11/21 12 registered trade marks of the plaintiff. The plaintiff as mentioned aforesaid besides trying to pass of its goods as that of plaintiff in the mark and trade circles thereby causing a deception and confusion in the minds of the enconsumers and unjustly enrich thereby encashing upon the reputation and goodwill created by the plaintiff mark. The plaintiff has claimed protection of not only his statutory rights as provided under section 134 & 135 of the Trade Marks Act 1999 but also his rights provided under the English Common Law for a relief of passing off. It is the case of the plaintiff that the use of the trade mark OMEDO which is phonetically similar to the plaintiff's registered trade mark OMIDON, EMEDOM, OMIDOM is likely to create confusion as unwary consumer is likely to pick up the goods belonging to the defendant presuming the same to be that of the plaintiff.
13.In this regard, it may be seen that section 28 of Trade & Merchandise Act 1999 gives an exclusive right to the trade mark in favour of the registered trade mark owner for which the registered trade mark is registered. Similarly, section 29 (1) of the Act provides that an infringement under section 134 & 135 of the Trade and Merchandise Mark Act, has been made out in case of identical or deceptively similar trade mark is being used for similar goods. Section 29 (2) (b) further provides that in case of similarity to the registered Trade Mark and identity or similarity of goods likely to cause confusion and action by registered trade mark holder shall be mandatory, the law in this regard is well settled to be reproduced. It is a settled preposition of law laid down in a catena of cases that a proprietary TM No.08/10 M/s. Mankind Pharma Ltd. Vs. M/s. Mascat Drug (P) Ltd. 12/21 13 right in a trade mark can only be claimed through priority in adoption and use and not otherwise. Reliance placed on AIR 1965 Bombay titled Consolidated Food Corporation Vs. Brandon and Co. Ltd., duly applied by our own Hon'ble High Court in PTC (Suppl.) (2) 564 titled L. D. Malhotra Vs. Ropi Industries and also approved by Hon'ble Apex Court in 1996 PTC (16) 583 titled N. R. Dongre Vs. Whirlpool Corporation.
Intellectual property jurisprudence and the rationale behind it has been beautifully summarised by a judgment of the Hon'ble Apex Court reported in B. K. Engineering Vs. O. B. Enterprises 1985 PTC Page 1 relying upon the pronouncement of law laid down in 1962 RPC 265 (Parkar Knoll Ltd. Vs. Knoll Interenational Limited).
"in the interest of fair trading and of all who buys or sell goods, law recognises limitation on freedom of action. Trading must not only be honest but must not be unintentionally be unfair".
14.Thus, the Hon'ble Superior Courts including the Hon'ble Supreme Court have repeatedly held that the purity of trade environment is required to be protected and the use of the trade mark deceptively similar to that of the original proprietor which is likely to create confusion and deception of the mark. The proprietor thus has all the rights to bring in an action for infringement as well as for passing of.
15.In the instant case, it may be seen that the plaintiff by way of his TM No.08/10 M/s. Mankind Pharma Ltd. Vs. M/s. Mascat Drug (P) Ltd. 13/21 14 testimony as PW1 has duly deposed in support of its case. He has already proved on record copy of trade mark certificate in respect of the trade mark OMIDON as Ex. PW1/3. A TM24 dated 19.04.2004 whereby which the trade mark has been assigned to the plaintiff herein from the earlier proprietor Sh. AGPA Pharmaceutical by the Registrar of Trade Marks got exhibited on record as Ex. PW1/5. Similarly, the Trade Mark Journal No. 1288 dated 08.02.2003 in respect of the trade mark OMIDON has already been proved on record as Ex. PW1/4. This assignment has been duly recorded in the name of the plaintiff and the relevant publication in the Trade Mark Journal no. 1319 dated 16.05.2004 has also been shown on record as Ex. PW1/6. Similarly in respect of the trade mark EMEDOM, the trade mark no. 802149, dated 14.05.1998 has already been exhibited as Ex. PW1/7. The plaintiff has further shown the factum of the use of trade mark by the plaintiff's predecessor extensively and openly in the trade circles by way of sales invoices Ex.PW1/21 to Ex.PW1/24 and the excise invoices in respect of the medicines covered under the trade mark OMIDON as Ex. PW1/35 to Ex. PW1/37. The sales figures of the plaintiffs showing the sale of medicines covered under trade mark OMIDOM since the financial year 200001 is shown on record as Ex. PW1/8 and similarly, a purchase invoices in respect of the mark got exhibited on record as Ex. PW1/9 & Ex. PW1/10. The sales invoices of the medicines covered under the plaintiff's mark got exhibited on record as Ex. PW1/11 to Ex. PW1/20. The defendant's mark and its use with an intention to use the same has been shown with the publication of the trade mark OMEDO in Trade Mark Journal no. 1328, Ex. PW1/38. It may be seen that the mark of TM No.08/10 M/s. Mankind Pharma Ltd. Vs. M/s. Mascat Drug (P) Ltd. 14/21 15 the defendant is phonetically similar to that of the mark of the plaintiff and the trade circles are also the same. Thus an unwary customer having only a reasonable prudence is likely to pick up the product of the defendant' as that of the product of the plaintiff thinking the same to be that of plaintiff. Furthermore, it may be seen that both these marks belonging to the plaintiff as well as defendant are to be used on the same medicines used for same purpose namely stomach disorder, acidity & vomiting. It is a settled preposition of law laid down in one of the cases of the plaintiff itself reported in 2004 (28) PTC 632 (Delhi) titled Syncom Formulations Vs. SAS Pharmaceuticals in which Hon'ble Mr. Justice Madan B. Lokur (as his lordship was then).
".....The trade channels are the same as are consumers of the product. The class of purchasers include semi literate or illiterate persons who may confuse on product with the other. Further the product does not required a prescription for its purchase and medicine can easily be purchased from over the counter all this is certainly likely to create confusion leading to deception ...."
16.The Hon'ble court thus held that the unwary purchaser and consumer of the product is likely to be misled on account of commonality both visual and phonetics of the first four letters of both the words. The Hon'ble court has further held that the courts are required to see as to whether the act of the defendant is likely to create confusion in the market or may lead to imperfect collection by the purchasers and in such eventuality ipsofacto creates confusion and passing off product of the defendant as product of TM No.08/10 M/s. Mankind Pharma Ltd. Vs. M/s. Mascat Drug (P) Ltd. 15/21 16 the plaintiff.
17.Furthermore, it has been duly shown on record by the unrebutted testimony of PW1 that the plaintiff or its predecessor in interest in title has been using the trade marks since 1990 when it was conceived and adopted for the first time and the documents discussed above, more particularly the trade invoices Ex. PW1/21 to Ex. PW1/28 and Ex. PW1/11 to Ex. PW1/20 clearly shown that these products and the marks have been used by the plaintiff and/or ex predecessor in interest since the year 1990 openly and extensively. On the other hand, the defendant's has claimed that their mark OMEDO is not phonetically similar and have also pleaded that there can be no trade mark or exclusivity on the generic name. However, the defendant has failed to prove the same in accordance with law. In any case, the words used by the plaintiff in their marks discussed above, do not form only the generic name though the same has been derived from generic drugs/salts. It is a settled preposition of law laid down in the catena of judgments that though the generic name cannot be adopted as a mark unless written in a particular shape and style, however, the same can form basis of trade name or mark when coupled with other alphabets or characteristics distinctive to the trade circles. Thus, taken on the preponderance of probabilities yardstick, the court has no reason to disbelieve the unrebutted testimony of PW1 coupled with the documents discussed above and as such this court is of the considered opinion that the plaintiff has been able to show that the defendant has not only infringed the plaintiff's registered trade TM No.08/10 M/s. Mankind Pharma Ltd. Vs. M/s. Mascat Drug (P) Ltd. 16/21 17 marks but has also intended to pass of its goods as that of plaintiff under the trade mark OMEDO thereby creating confusion and deception in the mark besides trying to encash upon the goowill generated by plaintiff's mark in the trade circles. Furthermore, it is now a settled preposition of law laid down in catena of judgments that the interest of the end consumer is required to be the prime consideration of the court while considering the cases of infringement and passing off. And if the defendant is allowed to continue to infringe the intellectual property rights of the plaintiff, it would be the consumer or the purchaser who shall alone & ultimately suffer and shall not be in a position to be compensated. Reliance placed on AIR 1990 Delhi 19. The Hon'ble Court has further held that courts are required to act in order to curve the menace of manufacturer production and sale of goods in patent violation of the intellectual property rights.
18.Thus, on the basis of abovesaid discussion, the court is of the considered opinion that the defendant has not only infringed the plaintiff's trade marks by using its mark but has also tried to pass off its medicines under the trade mark OMEDO presuming the same to be that of the plaintiff's mark. These two issues are accordingly decided in favour of the plaintiff and against the defendants.
ISSUE No. 3 : Whether the plaintiff is entitled to the reliefs claimed ? If so, to what reliefs? OPP.
19.The onus of proving this issue was so held on the plaintiffs who has claimed basically claimed 4 reliefs. One regarding perpetual TM No.08/10 M/s. Mankind Pharma Ltd. Vs. M/s. Mascat Drug (P) Ltd. 17/21 18 injunction in respect of the plaintiff's registered trade mark. The second regarding passing of defendant's good as that of plaintiff's goods in a trade circle. Third regarding delivery up and the fourth regarding the rendition of accounts/damages on account of sale of medicinal preparation under the impugned mark OMEDO belonging to the defendant. These four reliefs are the general reliefs which are claimed by a plaintiff in an intellectual property right action, seeking protection and preservation of its mark and enforcing the right to remedy of infringement and passing off. In this regard, it may be seen that the plaintiff has examined (Sh. Sanjeev Kumar Singh, Company Secretary) as PW1 and his testimony coupled with documents have duly been discussed by the court during the discussion of issues no. 1 & 2. The relief of injunction pursuant to the infringement of the plaintiff's mark and passing off on defendant's good under the garb of goodwill created by the plaintiff's mark by the defendants are natural and consequent to the determination of issue no. 1 & 2. The testimony of PW1 has remained unrebutted and unchallenged. The PW1 has duly deposed in support of the plaintiff's goods, coupled with documents referred to above. PW1 has not been subjected to any serious cross examination and nobody in evidence either oral or documentary. The deposition of PW1 has been putforth by the defendant counsel, once it has been proved on record that the defendant is guilty of infringement of plaintiff's trade mark OMIDOM & EMEDOM by using the trade mark OMEDO and has tried to pass of its medicine by using the deceptively similar mark OMEDO and that of plaintiff's mark OMIDOM. The plaintiff is TM No.08/10 M/s. Mankind Pharma Ltd. Vs. M/s. Mascat Drug (P) Ltd. 18/21 19 entitled to the relief of injunctions as prayed for. Consequently, in terms of section 135 of Trade Marks Act 1999, the plaintiff is also entitled to an order of deliver up of infringing labels and marks for destruction or erasure.
20. In so far as, the issue regarding entitlement of the plaintiff to rendition of account is concerned. The plaintiff is also entitled to accounts and profits which the defendants have earned by selling medicine under the infringing mark OMEDO. However, the calculation of accounts and the profits coming out of sale shall not be easy to determine and in this regard a reference of the provision of section 135 of the Trade Marks Act, 1999, can be made which is reproduced herein for ready reference :
135. Relief in suits for infringement or for passing off. 1). The relief which a court may grant in any suit for infringement or for passing off referred to in section 134 includes injunction (subject to such terms, if any, as the court thinks fit) and at the option of the plaintiff, either damages or an account of profits, together with or without any order for the deliveryup of the infringing labels and marks for destruction or erasure.
21.Thus, section 135 itself provides that the plaintiff may claim either rendition of accounts or damages. Keeping in view the facts and circumstances of the case, this court is of the considered opinion that the defendant has used the trade mark OMEDO for quite sometime and it is almost impossible to draw up and ascertain a separate amount for one product while the defendant has been TM No.08/10 M/s. Mankind Pharma Ltd. Vs. M/s. Mascat Drug (P) Ltd. 19/21 20 manufacturing several other products also which further appears to be an almost impracticable and cumbersome procedure for dividing into the profits earned by the defendant by selling the product OMEDO. Further the same shall also require calculations of conclusion of input cost and production cost besides marginal profit at different levels i.e. Costs distributors and retailers. The Hon'ble Delhi High Court in a similar situated case reported in 2004 (28) PTC 632 Delhi has held that awarding a lumpsum amount as damages instead of rendition of account shall be an appropriate remedy. Similar views were held by Hon'ble High Court 2011 (46) PTC 395 & MIPR 2007 (1) 72. Accordingly, this court is of the considered opinion that interest of justice would be met if the plaintiff is granted a lumpsum token consolidated damages to the tune of Rs. 5,00,000/ in lieu of the rendition of accounts of profits earned by defendant by selling medicines under the trade mark OMEDO. This issue is accordingly decided in favour of the plaintiff and against the defendant.
ISSUE NO. 4 : Relief
22.In view of the aforesaid discussion and findings of the court, this court is of the considered opinion that the plaintiff has been successfully established his case atleast to the preponderance of probabilities. The plaintiff is entitled to following reliefs :
a). A decree for perpetual injunction restraining the defendant, its agents, servants, dealers, representatives and all other persons on their behalf from using the trade mark OMEDO or any other trade mark identical TM No.08/10 M/s. Mankind Pharma Ltd. Vs. M/s. Mascat Drug (P) Ltd. 20/21 21 and / or deceptively similar to the plaintiff's registered trade mark OMIDON, EMEDOM & OMIDOM which amounts to infringement of the plaintiff's registered trade mark OMIDON, EMEDOM & OMIDOM under no. 848566, 802149 & 958970 and
b). A decree for an order of delivery of the medicine of the defendant under the impugned trademark OMEDO unto the plaintiff for the purpose of destruction/erasure including the stationery, blocks and dice etc, which may be used as packaging distribution advertising or sale material and;
c). A decree for a sum of Rs. 5,00,000/ as token consolidated damages to be paid by the defendant to the plaintiff within 30 days from the date of this order, beyond which the plaintiff shall also be entitled to a nominal interest of 12% p.a. on such amount uptil realisation against the defendant. In a specific facts and circumstances of the case, parties are bear to their own costs. The suit of the plaintiff is decreed accordingly.
23.Decree sheet be drawn accordingly, subject to payment of the deficient court fee on account of damages awarded by this court.
24.File be consigned to Record Room after due completion.
(MUKESH KUMAR GUPTA)
DATED 03.08.2013 ADJ06/CENTRAL/DELHI
ANNOUNCED IN THE OPEN COURT (jb)
TM No.08/10 M/s. Mankind Pharma Ltd. Vs. M/s. Mascat Drug (P) Ltd. 21/21
22
TM No. 08/10/07
M/s. Mankind Pharma Ltd. Vs. Mascot Drugs Pvt. Ltd.
03.08.2013
Present : Sh. A. K. Goel, Advocate, Ld. Counsel for the plaintiff.
Sh. Nalin Sahay & Sh. A. K. Pandey, Advocates, Ld. Counsels for the defendant.
Vide separate judgment announced in the court, the suit of the plaintiff is decreed accordingly. Decree sheet be drawn accordingly, subject to payment of the deficient court fee on account of damages awarded by this court.
File be consigned to Record Room after due completion.
(MUKESH KUMAR GUPTA) ADJ06/CENTRAL/DELHI 03.08.2013 TM No.08/10 M/s. Mankind Pharma Ltd. Vs. M/s. Mascat Drug (P) Ltd. 22/21 23 TM No.08/10 M/s. Mankind Pharma Ltd. Vs. M/s. Mascat Drug (P) Ltd. 23/21 24 TM No.08/10 M/s. Mankind Pharma Ltd. Vs. M/s. Mascat Drug (P) Ltd. 24/21