Delhi District Court
Laborate Pharmaceuticals India Ltd vs Sgs Pharmaceuticals Pvt. Ltd on 23 October, 2024
IN THE COURT OF AMIT KUMAR : DISTRICT JUDGE
(COMMERCIAL)-08 : TIS HAZARI COURTS, CENTRAL:
DELHI
(Commercial Case No. 2842/2019)
CNR No. DLCT01-016123-2019
M/S. LABORATE PHARMACEUTICALS INDIA LTD.
CORPORATE OFFICE
308-309, CROWN HEIGHTS,
SECTOR-10, ROHINI,
NEW DELHI-110085
REGISTERED OFFICE
E-11, INDUSTRIAL AREA,
PANIPAT, HARYANA-132103
.....PLAINTIFF
VS
SGS PHARMACEUTICALS PVT. LTD.
1608 DEWAN HALL BUILDING
6/2 Ist FLOOR BHAGIRATHI PLACE
DELHI- 110006
....DEFENDANT
Date of institution of case : 03.12.2019
Date of arguments : 15.10.2024
Date of pronouncement of judgment : 23.10.2024
JUDGMENT:
1. Present is a suit seeking relief of permanent injunction restraining infringement of registered trademark, copyright, passing off of the trade dress, rendition of accounts, delivery up etc. on the averments that plaintiff is a company incorporated under the provisions of Indian Companies Act since 01.03.1990 and is in the business of manufacturing pharmaceutical and medicinal preparations for more than two decades. The plaintiff -1- as per report published by ORG-IMS in August, 2006 is in top fifty positions of leading pharmaceuticals manufacturing company. At present, the plaintiff is manufacturing various pharmaceutical products at its factory at Panipat, Haryana and Paonta Sahib, Himachal Pradesh. The plaintiff in 2001 adopted the trademark "RELIEF" prefixed by the mark "LABDIC" in respect of anti inflammatory analgesic. The trademark Relief on the product packaging is boldly printed with prefix Labdic written in white colour with blue rounded rectangular device. The plaintiff filed an application for registration of trademark Relief prefixed with mark Labdic and plaintiff is the registered proprietor of the trademark Labdic Relief. Apart from it, the trademark Labdic Relief is also registered in China in favour of the plaintiff. It is further claimed that additionally the word Fast Dissolving appear printed in white colour with the acronym FD in bold print in distinct blue and white colour on its blister pack. All the aforementioned features of the plaintiff artistic blister pack form a subject matter of artistic copyright and which labels were authored by an in house employee of the plaintiff Mr. Shiv Kumar under a contract of service with the plaintiff. The plaintiff is first owner and publisher of the artistic work and on account of this, the plaintiff has sole and exclusive right to use the same.
2. It was stated that in the third week of November, 2019, it came to the knowledge of the plaintiff that defendant is manufacturing and marketing its pharmaceutical products bearing the trade name "Relief" prefixed with Mark "Diclozen" in a deceptively similar packaging as that of the plaintiff. The product of the defendant is similar analgesic product packed in -2- deceptively similar blister/dispenser packs having identical features and pictorial representation as that of the plaintiff product. The get up, layout, colour combination etc. of the defendant's product is deceptively similar to the plaintiff product and the defendant is actuated by malafide with intention to encash the goodwill and reputation of the plaintiff. It was claimed that the defendant has copied each and every essential feature of the plaintiff's product including part of its registered trademark, colour combination, description of contents, depiction of contents and it is impossible for an ordinary unwary purchaser to distinguish between the two products and the impugned product of the defendant constitute infringement of plaintiff's trademark and also amounts to passing off its products as that of the plaintiff. The present suit has been filed seeking decree for permanent injunction restraining the defendant from using its infringing trade name "Diclozen Relief", passing off, rendition of accounts, delivery up etc.
3. The defendant did not file the written statement and vide order dated 20.10.2020 it was observed that right to file written statement stands closed by operation of law. This order was challenged by defendant in FAO 226/2020 but appeal was withdrawn on 07.08.2023 with liberty to file the appeal before appropriate bench, but was never filed. In facts, there is no written statement or defence qua facts on record.
4. Plaintiff examined its AR as the sole witness who was duly cross examined.
5. Arguments were advanced by both the counsels at length and written arguments were also filed by both the parties. It was argued for the plaintiff that the plaintiff is the registered -3- proprietor and prior user of the trademark Labdic Relief. The product of the plaintiff is sold in unique and artistic blister and dispenser pack having distinguishing features and the plaintiff is the first owner of the copyright of the said artistic work. The defendant has subsequently been using the infringing mark Diclozen Relief dishonestly and has copied all the prominent features of the plaintiff's product under the impugned mark Diclozen Relief. It was argued that for comparison, the broad and essential features of the two products are to be considered to find out the similarity and the broad essential features are to be construed to see overall similarity and not the differences in the mark. The defendant's product being an anti inflammatory analgesic is a medicinal product and stricter approach should be applied while testing the possibility of confusion amongst the public. There are several orders passed by Hon'ble Delhi High Court and District Judges, (Commercial Courts) Delhi in favour of the plaintiff in similar litigations filed against other infringing entities and the plaintiff has proved its case through documents on record which remains unchallenged and suit should be decreed.
6. Ld. counsel for the plaintiff in support of her submissions has relied upon the following judgments:
(iii) United Bank of India vs.Naresh Kumar (1996)6 SCC 660
(iv) Sahana Pal Vs. UK Samanta, 2015 SCC Online Del 10724
(v) International Association of Lions Club Vs. National Association of Indian Lions, 2006 SCC Online Bom 89
(vi) Sanjay Soya (P) Ltd. Vs. Narayani Trading Co., 2021 SCC Online Bom 407
(vii) Parle Products (P) Ltd. Vs. J.P. and Co., (1972) 1 SCC 618 -4-
(viii) Bihar Tubes Ltd. Vs. Garg Ispat Ltd., (2009 SCC Online Del 3369)
(ix) Cadila Health Care Ltd. Vs. Cadila Pharmaceuticals Ltd., (2001) 5 SCC 73
(x) Copy of Judgement dated 04.01.2007 passed by the Hon'ble High Court of Delhi in Laborate Pharmaceuticals India Ltd. Vs. Rhydburg Pharmaceuticals Ltd. & Ors. (CS (OS) No. 32/2007)
(xi) T.V. Venugopal vs. Ushodaya Enterprises Limited and Another (2011) 4 SCC 85
7. Apart from these, plaintiff has also relied upon few judgments of District Courts, Delhi, in its favour, involving plaintiff's trademark.
8. On behalf of the defendant, it was argued that as per Section 17 (2) (b) of the Trademark Act, 1999 where a trademark contains any matter which is common to the trade or is otherwise of a non distinctive character, the registration thereof shall not confer any exclusive right in the matter forming only a part of the whole of the trademark so registered. The plaintiff has not come to the court with clean hands as the composition of the plaintiff's product is entirely different viz a viz that of the defendant's product. Plaintiff cannot claim any monopoly over the words, shape and colour of the medicines, which are common to the trade. The term "Relief" is generic in the field of pharmaceutical companies and there are several medicines available in the market with the word "Relief" prefixed or suffixed to the product. Plaintiff did not have any registration over the suffix "Relief" or "FD" as standalone trademarks and therefore, it cannot claim any exclusivity over the standalone trademark and the question of infringement does not arise. It was argued that both the products of the plaintiff and defendant can be sold only -5- against prescription and the chemist will sell only what is prescribed by the doctor and there cannot be any confusion amongst the consumer of the medicines as alleged. Suit has not been filed by duly authorized persons. The resolutions passed by the company must contain mobile numbers, email, DIN number of the directors and the persons, who attended the meeting. Each and every minutes book is required to be numbered. Resolution dated 01.11.2023 cannot be approved on 01.12.2023 as has been done in the present case and suit should be dismissed on this ground as well.
9. Ld. Counsel for the defendant in support of his submissions relied upon the following judgments:
(i) Macleods Pharmaceuticals Ltd. vs Swisskem Healthcare aand Ors. MANU/MH/1771/2019
(ii) Sun Pharmaceutical Laboratories Ltd. vs Hetero Healthcare Ltd. and ors. MANU/DE/3092/2022
10. I have heard the submissions and have perused the record and judgments relied upon.
11. Admittedly there is no written statement on record. So, there is no defence on facts. The averments made in plaint are not controverted and there remains no dispute that plaintiff's product Labdic Relief is prior in user and plaintiff has a trademark registered. The trademark of the plaintiff, it is a word mark and the trademark is "Labdic Relief" registered in class 5 relating to Medicinal and Pharmaceutical preparations. The defendant has not disputed the registered trademark of the plaintiff. Ld. Counsel for the defendant argued that no monopoly can be claimed on the word "Relief" in view of Section 17 (2) (b) of the Trademark Act -6- and therefore, the defendant has every right to use the name Diclozen Relief for its products. Though it is correct that the word "Relief" is non distinctive and is a common word yet it has to be seen whether it has acquired goodwill and reputation for the product in question and whether the plaintiff can seek injunction restraining the use of the word "Relief" for identical product in identical packaging. In this regard counsels for the parties have relied upon several judgments.
12. Plaintiff has relied upon the judgement of Hon'ble Supreme Court passed in the case of Cadila Health Care (Supra). In this judgement, the Hon'ble Supreme Court was hearing an appeal where the trial court and the Hon'ble High Court refused to grant interim injunction in favour of the plaintiff in respect of the two names in question i.e. "Falcigo" and "Falcitab". The Hon'ble Supreme Court did not interfere with the orders passed by the trial court and the High Court but laid down the principles on which the cases relating to infringement and passing off should be decided. The Hon'ble Supreme Court in this case referred to another judgement of Supreme Court passed in the case of Amrit Dhara Pharmacy Vs. Satya Deo Gupta, AIR 1963 SC 449 wherein the Hon'ble Supreme Court held that the trade name Amritdhara and Laxmandhara are likely to deceive the public and cause confusion. The Hon'ble Supreme Court was of the opinion that both products are medicinal preparations and purchased mostly by people who instead of going to a doctor wish to purchase the medicine over the counter and includes literate as well as illiterate purchasers. In that case, the Hon'ble Supreme Court agreed that the word Dhara literally means current or stream but that by itself is not decisive of the matter.
-7-The court has to consider overall similarity of the composite words having regard to the circumstances that the goods bearing two names are medicinal preparations of the same description. The Hon'ble Court observed:-
"A critical comparison of the two names may disclose some points of difference but an unwary purchaser of average intelligence and imperfect recollection would be deceived by the overall similarity of the two names having regard to the nature of the medicine he is looking for with somewhat vague recollection that he had purchased a similar medicine on a previous occasion with similar name. The trademark is a whole thing-- a whole word has to be considered."
13. Similarly in another case titled as Kaviraj Pandit Durga Dutt Sharma Vs. Navratana Pharmaceutical Laboratories AIR 1965 SC 980, before the Hon'ble Supreme Court, the trademarks in controversy were Navaratna Pharmaceutical Laboratories and Navaratna Pharmacy. In that case, the trial court has held that the word Navratna is a common word in Ayurvedic phraseology and plaintiff could not claim an exclusive title to use that word by the reason of having used it for number of years. The trial court found that there were several concerns manufacturing ayurvedic preparations for a long time, which includes and describe their products by calling them Navratna alone or in combination with other words and resultantly the right of the plaintiff to relief on ground of infringement of the mark was disallowed. However, on the question whether the mark "Navratna Pharmaceutical -8- laboratories" could be validly registered the trial court answered in the affirmative and plaintiff was granted a decree for injunction confined to the trademark Navaratan Pharmaceutical Laboratories. In appeal, the Hon'ble High Court confirmed the findings of the trial court. The matter came up before Hon'ble Supreme Court where the Hon'ble Supreme Court after discussing the law on the issue held that the conclusion reached by the courts below that the appellants mark is deceptively similar cannot be stated to be erroneous.
14. The Hon'ble Supreme Court in this judgment referred to Kerly on trademark 8th Edition, 407 and quoted "where common marks are included in the trade marks to be compared or in one or in one of them, the proper course is to look at the marks as wholes and not to disregard the parts, which are common".
15. In the case of T.V. Venugopal vs Ushodaya (supra), the Hon'ble Supreme Court protected the brand name "Eenadu" which was a descriptive word meaning "Today" in Telugu language as it had acquired a secondary meaning because of it user over a long period.
16. In view of these judgments, there is no force in the argument of Ld. Counsel for the defendant that the words Labdic Relief as registered in the word mark of the plaintiff should be separated and plaintiff cannot be allowed to claim any right on the word Relief. The trade mark Labdic Relief is registered with plaintiff since 25/10/2002 and is being used since 2001 and has acquired distinction over a period of time and having acquired factual distinctiveness is entitled for protection. The sales figure over a period of time proved by plaintiff have not been questioned nor challenged by defendant.
-9-17. Coming to the judgments relied by ld. Counsel for the defendant. In the judgement of Hon'ble Delhi High Court passed in the case of Sun Pharmaceutical Laboratories Ltd. (supra), the Hon'ble High Court refused to interfere in the order passed by Commercial Court on the application U/o XXXIX Rule 1 and 2 CPC where the application of the appellant was dismissed by the Trial court. The plaintiff in that case filed suit alleging infringement of its trademark Letroz restraining the defendant from using the trademark Letero. The Hon'ble High Court amongst other points also considered the packaging and the manner in which the trademark of the plaintiff and the defendant are depicted. The Hon'ble High Court found the same to be distinctly different including the colour scheme of the packaging and the get up. However, in the present case, the packaging, colour scheme, get up of the defendant's product is exactly similar to that of the plaintiff and the judgement is distinguishable.
18. Coming to the judgement of Macleods Pharmaceuticals Ltd. (supra). The Hon'ble Bombay High Court in that case found that the trademarks of the plaintiff Panderm and that of the defendant Polyderm are not similar. It was found that the prefix Pan and Poly are not likely to confuse or deceive the public. The facts of the present case are distinguishable from the facts before Hon'ble High Court.
19. Now coming to the question of similarity between the two marks as well as their depiction and description of the contents on the products. The comparison of two products show that the entire packaging, colour combination, use of the words in the defendant's products is identical to that of the plaintiff's product.
-10-The manner in which the words Relief and FD are written in both the products is same. The colour combination is same. Though none can claim proprietary over a colour but certainly on combination of colours used in a particular manner. The plaintiff adopted the trademark Labdic Relief in the year 2001 in respect of anti inflammatory analgesic and is in continuous use since then. A bare perusal of the competing dispenser packs of the plaintiff and defendant clearly demonstrate that the distinctive literally and artistic features, their placement, get up, layout colour combination are deceptively similar to each other except of the upper back of a person shown on pack of defendant. It appears that the defendant has kept the pack of the plaintiff in front while preparing its pack. Plaintiff has claimed that the pack of the plaintiff is an original artistic work authored by its house employee Shiv Kumar under a contract. There is no rebuttal to this nor the defendant has shown that its work on packaging is an original artistic work. The cross examination of PW-1 is also relevant. Most of the cross examination is restricted to the authority of the witness to depose and the board resolution and the minutes of the meeting. The plaintiff has proved that plaintiff is the prior user and that the product of defendant is deceptively similar to that of plaintiff's.
20. The adoption and use of the packaging of the plaintiff by the defendant is actuated by malafide and is likely to lead to immense confusion and create an impression that the defendant's product is connected to the plaintiff product. The defendant did not contest the matter seriously on the facts of the case. The written statement was not filed. The FAO filed before Hon'ble High Court was withdrawn and no steps were taken to place the -11- written statement on record. The contents of the written arguments on factual aspect of the case can not be relied and referred upon more so when there is no evidence. The product of the defendant is so similar that the same is likely to cause confusion among the consumer.
21. Coming to the argument of the defendant about institution of the suit. Record shows that suit was filed on behalf of the plaintiff by Mr. Hemant Mehta, who was the Legal Manager and Attorney of the plaintiff. Later on, he was substituted and in his place, Mr. Paras Farmaha, the Assistant Legal Manager continued with the suit. He placed on record all the relevant documents regarding his authority to depose. He also produced on record the original minutes of the meeting dated 01.12.2023 and the attendance register of the board meeting dated 01.12.2023 Ex. PW1/D1. These documents show that a board meeting was held on 01.12.2023 wherein the resolution was passed in favour of Paras Farmaha authorizing him to deal with the matters of intellectual property rights of the company. It is settled law that a company can authorize a person to file cases on its behalf and also that the previous acts done by that person can also be rectified. PW1 was duly authorized by the resolution passed on 01.11.2023, which was done through circulation and the same was approved on 01.12.2023. Therefore, the suit has been property filed and instituted by duly authorized person and there are no merits in the argument of Ld. Counsel for the defendant that suit has not been filed by duly authorized person.
22. The plaintiff and defendant's goods are of same nature i.e. medicines. Both the products use the same combination of salts though in different ratio. What has to be seen is whether a -12- common person can be deceived or not. There is no force in the argument of Ld. Defence counsel that the two products have different combination which defence otherwise is unavailable to defendant since there is no written statement. The plaintiff in facts has proved that the defendant has intentionally and malafidely copied its product and has infringed its trademark Labdic Relief through its impugned mark Diclozen Relief and defendant has passed off its product as that of the plaintiff's and is entitled to permanent injunction.
RELIEF:
23. In view of my findings given on the above issues, the suit is decreed and a decree for permanent injunction is passed in favour of the plaintiff and against the defendant thereby restraining the defendant itself and through its proprietors, partners, directors, agents, representatives, assigns, heirs, successors, stockist for and on its behalf manufacturing, marketing, using, selling, soliciting, exporting, displaying advertising or in any other manner dealing in the impugned trademark Diclozen Relief or any other trade label deceptively similar to the trademark of the plaintiff Labdic Relief, which amounts to infringement of the plaintiff trademark, passing off and violation of plaintiff trademark and trade label, violation of the plaintiff's trade name and infringement of plaintiff copyright in its art work of its blister/dispenser pack. Defendant is also restrained from using the identical blister packaging having same colour combination, outlook,design as that of plaintiff's blister pack. Defendants are further directed to deliver up all the finished and unfinished material bearing the impugned and -13- violative trademark and label to the plaintiff for the purpose of destruction.
24. As far as the prayer for rendition of accounts is concerned, the plaintiff has valued its suit at Rs. 5 Lac. However, there is no material on record to ascertain the sale of the defendant from the relevant product and as a matter of fact, the plaintiff did not take any steps during the trail seeking production of books of account by the defendant. The plaintiff therefore is not entitled to rendition of account as prayed but is entitled to damages as defendant malafidely infringed the trademark and copy right of plaintiff in packaging and tried to pass off its product as that of plaintiff's. Plaintiff is given nominal damages of Rs. 5,00,000/- in lieu of its prayer for rendition of accounts. The plaintiff shall also be entitled to the cost of the suit.
25. Copy of the judgment be sent to both the parties by electronic mode, if available or otherwise.
26. Decree sheet be prepared.
27. File be consigned to Record Room. Digitally signed by AMIT KUMAR AMIT Date:
KUMAR 2024.10.23
15:14:05
+0530
(AMIT KUMAR)
District Judge, Comm. Court-08
Central, Tis Hazari Courts
Extension Block, Delhi/23.10.2024
-14-