Delhi District Court
M/S Arbro Pharmaceuticals Ltd vs M/S Maiden Pharmaceutical Ltd on 5 August, 2014
IN THE COURT OF MS. ANJU BAJAJ CHANDNA
ADDITIONAL DISTRICT JUDGE01 (CENTRAL)
TIS HAZARI COURTS, DELHI
TM119/2011
Unique I. D. No. 02401C0857762005
M/s Arbro Pharmaceuticals Ltd.
6/14, Kirti Nagar Industrial Area,
New Delhi110015.
......Plaintiff
Versus
M/s Maiden Pharmaceutical Ltd.
81, H.S.I.D.C, Industrial Area,
Haryana.
.......Defendant
Date of institution of suit : 21.09.2005
Date of reserving the judgment : 16.07.2014
Date of pronouncement of judgment : 05.08.2014
SUIT FOR PERMANENT INJUNCTION RESTRAINING
INFRINGEMENT OF COPYRIGHT, PASSING OFF, RENDITION
OF ACCOUNTS ETC.
TM119/2011 1/23
JUDGMENT
1. The plaintiff has brought the present suit against the defendant seeking permanent injunction with respect to infringement of copyright, passing off and rendition of accounts under the provisions of Copyright Act, 1957 and Trade Marks Act, 1999.
2. The relevant facts of the case are that plaintiff is a company incorporated under the provisions of Companies Act, 1956 and the suit has been filed through Sh. Sanjay Gupta, Assistant Manager, duly authorised in this behalf. The plaintiff company has been in the business of manufacturing and marketing of pharmaceutical preparations. According to the plaintiff, its products are sold extensively within India and abroad and are widely relied upon as cost effective and relief giving preparations. The manufacturing facilities of the plaintiff company are duly certified under ISO:9000:2000.
3. It is asserted that plaintiff conceived and adopted a trade mark "NORKIN" with respect to one of its pharmaceutical preparations in the month of January, 1995. The said trade mark is an invented/coined TM119/2011 2/23 name. The said pharmaceutical preparation of the plaintiff company is marketed both in suspension and tablet form and a sample carton of the plaintiff's product in its suspension form is annexure 'A' to the plaint. The pharmaceutical product of the plaintiff's company "NORKIN PLUS" is being manufactured since the month of June, 1995 in a distinctive artistic carton and under a valid and subsisting licence issued under the provisions of Drugs & Cosmetics Act, 1940. The aforementioned trade mark of the plaintiff company has acquired reputation of being extremely safe and reliable drug and consequently pharmaceutical preparations bearing trade mark "NORKIN PLUS" have come to signify the products originating from the plaintiff company extensively. No person without the permission or consent of the plaintiff, has any right to use, reproduce or export any goods bearing the said trade mark/artistic work of the plaintiff. The plaintiff has also been advertising its product under the said trade mark "NORKIN PLUS" in trade journals and other promotional literature. Also, on account of superior quality, the trade mark of the plaintiff has acquired a unique reputation and valuable goodwill in the eyes of medical profession, pharmaceutical industries and general public at large. Accordingly, the plaintiff has extensive right to TM119/2011 3/23 use or reproduce the said trade mark/artistic work and any other deceptively similar mark/artistic work done by anyone else without the leave, licence or consent of the plaintiff, would constitute violation of the plaintiff's legal rights. The plaintiff has given sale figures with respect to the pharmaceutical preparation "NORKIN", showing constant increase from the year 2000 to 2005, indicating that goodwill and reputation of the plaintiff has increased and trade mark of the plaintiff has achieved a well known status.
4. It is further alleged by the plaintiff that in the third week of September, 2005, it came to the knowledge of plaintiff that defendant has launched a pharmaceutical product bearing impugned trade mark/infringing artistic work "NORKEN PLUS" which is being sold without the issuance of any bill/cash memo. The plaintiff has been using distinctive artistic packaging and, therefore, became the owner thereof and also on account of prior user of the trade mark "NORKIN PLUS", has an unqualified right to seek injunction against the person using the deceptively similar mark. The product of the defendant is deceptively similar to that of the plaintiff's trade mark/artistic work and these two TM119/2011 4/23 competing marks/artistic works are visually, structurally and phonetically very similar to each other as visible from annexure 'B' to the plaint, the carton of the defendant. The defendant has malafidely encashed upon the goodwill and reputation of the plaintiff with the adoption and use of trade mark and distinctive artistic work of the plaintiff. The defendants are causing confusion to the public and the persons involved in the same trade, which is being resulted in damaging the business of the plaintiff as well as its goodwill and reputation. The plaintiff has been extremely vigilant about the protection of its intellectual property rights and has taken steps for protection of the same by filing other cases also, as detailed in the plaint. It is asserted that use of deceptively similar trade mark/artistic work "NORKEN PLUS" creates confusion in the minds of public and consumers.
5. According to the plaintiff, defendant is selling, advertising, offering for sale and carrying on its business of pharmaceutical preparation within the jurisdiction of this court and, accordingly, the suit is being brought, seeking relief(s) of perpetual injunction restraining the defendant, its servants, retailers, stockists, distributors, representatives TM119/2011 5/23 and agents from manufacturing, selling, offering for sale, stocking, advertising, directly or indirectly dealing in pharmaceutical preparations annexed as Annexure 'B' to the plaint or any other artistic/literary work. Also, the relief of perpetual injunction is sought against the defendant and its agents etc. from dealing in pharmaceutical preparation under the impugned trade mark/artistic work "NORKEN " which are identical and deceptively similar to "NORKIN", amounting to passing off the products of the plaintiff. The plaintiff has also sought order for rendition of accounts of profits illegally earned by the defendant by manufacturing and selling the pharmaceutical preparations under the trade mark/artistic work "NORKEN PLUS" and for destruction of all the impugned cartons, tablets, labels, dies, bottle, boxes etc. for infringing the copyright and trade mark of the plaintiff. It is also prayed that defendant be directed to disclose by way of filing the evidence the details about the permission, if any, it has applied for and has obtained from statutory authorities with respect to manufacturing and selling the pharmaceutical preparations bearing impugned trade mark/artistic work "NORKEN PLUS".
6. Defendant came forward to file written statement taking TM119/2011 6/23 preliminary objections about cause of action, maintainability of the suit and concealment of material facts. According to the defendant, its company is duly registered with the Registrar of Companies and is carrying on the business in the field of pharmaceutical and maintaining all standards as prescribed by the Drug Controller under the Drugs & Cosmetics Act, 1940. It is stated that Norfloxacin is a basic formulation which is marketed by many drug companies under different brands in the market. The defendant is having a valid drug approval by the Drug Controller. It is denied that there is any violation of copyrights, as alleged by the plaintiff and it is asserted that there is no deceptive similarity as agitated by the plaintiff and as such no infringement of any material. According to the defendant, Norkin is a public juris and is being used by many other manufacturers for the same drug and, thus, plaintiff cannot have any monopolistic right over the mark. The sale figures as shown by the plaintiff are also disputed. It is submitted by the defendant that products are being sold by the defendant since long with the prior approval by the drug authorities. The defendant has been selling the products without knowing the product of the plaintiff in the market. The averments of deceptive similarities in the cartons of plaintiff and TM119/2011 7/23 defendant are also denied, as according to the defendant, there is no infringement of copyright. The defendant has pointed out the dissimilarities in the carton of plaintiff, particularly, pertaining to the doll imprinted thereon. Further, denying the averments of the plaint with respect to the infringement of trade mark, defendant has prayed for dismissal of suit of the plaintiff with exemplary costs.
7. Plaintiff filed replication to the written statement reiterating the averments of the plaint and denying those of the written statement.
8. From the pleadings of the parties, following issues were framed vide order dated 08.05.2008 :
1)Whether the impugned packaging of the defendant annexed as Annexure B to the plaint amounts to infringement of the copy right of the plaintiff in its artistic packaging annexed as Annexure A to the plaint? If so, its effects. OPP
2)Whether the trade mark "NORKEN PLUS" of the plaintiff is "Publicjuris" and TM119/2011 8/23 whether the plaintiff cannot have any monopolistic right over the same? If so, its effects. OPD
3)Whether the defendant is guilty of passing of its goods under the impugned trade mark " NORKEN PLUS" as the goods of the plaintiff under the plaintiff's trade mark in "NORKIN PLUS"? If yes, its effects. OPP
4)Whether the defendant is liable to render its accounts in respect of the sales made for its impugned product? OPP
5)Whether the defendant is liable to deliver up impugned cartons, tablets, labels, dyes, bottles, boxes and any other infringing copies to the plaintiff for destruction? OPP
6) Relief
9. In evidence, plaintiff examined PW1: M.S. Rawat, UDC from the office of Drug Controller. The witness brought the record pertaining to manufacturing licence of the plaintiff company Ex. PW1/1 and order about the renewal of the said licence Ex. PW1/2. TM119/2011 9/23
10. PW2: Sunil Kumar Jaitely is the Director of the plaintiff company and duly aurhtorised through Ex. PW2/1 (Board Resolution) to depose in the court. The witness has reiterated the averments of the plaint and proved sample carton Ex. PW2/5 of the plaintiff, copies of sale invoices/cash memos Ex. PW2/6 to Ex. PW2/114, copies of tax invoices Ex. PW2/115 to Ex. PW2/117 and sample carton of defendant Ex. PW2/118. The witness tendered evidence vide affidavit Ex. PW2/A and has been crossexamined at length on behalf of defendant.
11. PW3: Munshi Ram, Peon, Trade Marks Registry could not bring the summoned record and, therefore, PW4: Rajesh Oberoi, Assistant Examiner from the office of Registrar of Trade Marks was summoned, who brought the certified copy of trade mark application, moved by the plaintiff Ex. PW4/1 with respect to trade mark 'NORKIN PLUS'. Status of the application was abandoned as per the record. Thereafter, plaintiff closed its evidence.
12. The defendant did not opt to lead evidence. Accordingly, TM119/2011 10/23 defendant's evidence was closed vide order dated 08.11.2011.
13. I have heard counsel Sh. R.K. Jain for the plaintiff and counsel Sh. Inder Jeet Singh for the defendant and given due consideration to the facts and circumstances of the case, evidence and documents appearing on record and rulings submitted by both the sides.
14. My findings on the above mentioned issues are as follows: Issue No. 1: Whether the impugned packaging of the defendant annexed as Annexure B to the plaint amounts to infringement of the copy right of the plaintiff in its artistic packaging annexed as Annexure A to the plaint? If so, its effects. OPP The plaintiff's company claimed to be the owner of artistic packaging work with respect to medicine "NORKIN PLUS" which is an antidiarrhoeal suspension and pharmaceutical preparation. According to the plaintiff, the trade mark "NORKIN" has been created in the year 1995 and the preparation is also being sold since the year 1995. The TM119/2011 11/23 invoices Ex. PW2/8 & 9 show the sale of this harmaceutical preparation on behalf of plaintiff from the year 1995 onwards. The plaintiff has obtained licence under the provisions of Drugs & Cosmetics Act, 1940 in the year 1995 and the same has also been renewed thereafter, as evident from Ex. PW1/1 & Ex. PW1/2. All these documents clearly establish on record that plaintiff has been manufacturing and selling the pharmaceutical preparation under the name of "NORKIN PLUS". The carton Ex. PW2/5 is in specific and distinctive form whereupon "NORKIN PLUS" has been written in dark pink colour and below this, there is a doll appearing in sitting/animated mode. The pictorial presentation of the carton, overall placement of letters/words, colour combination used and imprint of doll thereupon, is clearly an artistic work created by the plaintiff company, selling the suspension "NORKIN PLUS".
15. The issue now remains as to whether the defendant has infringed the copyright of the plaintiff company by adopting the similar artistic work on the carton of medicine. It is not the case of the defendant that medicine in question has been sold by the defendant prior to the year TM119/2011 12/23 1995. The pleadings of the defendant in written statement, give clear impression that product of the defendant has been subsequent creation after the mark of the plaintiff came up in the market. On examining the carton of defendant Ex. PW2/118, I find that same is formed similarly to that of the plaintiff. The defendant has copied the essential and basic features of the carton and packaging of the plaintiff whereby "NORKEN PLUS" has been written in dark pink colour and below this, there is a doll with one arm raised having a bird. Although, there are certain dis similarities also in the dolls imprinted on the cartons of plaintiff and defendant but they can only be discerned by placing carton/bottle side by side. An ordinary consumer usually does not have the opportunity to compare two cartons so minutely and closely. There is clear resemblance in both the cartons and it would not be possible for an ordinary person to recall the differences and there is every possibility that consumer would get confused with both the products/cartons. I do not find much differences in the design and essential features of the cartons and, in my opinion, the defendant has adopted/copied the artistic packaging work of the plaintiff company, which amounts to infringement of copyright created by the plaintiff's company. The defendant is, therefore, restrained TM119/2011 13/23 from using the artistic packaging work of the plaintiff company with respect to pharmaceutical preparation "NORKEN PLUS". The issue is answered accordingly.
Issue no. 2: Whether the trade mark "NORKEN PLUS" of the plaintiff is "Publicjuris" and whether the plaintiff cannot have any monopolistic right over the same? If so, its effects. OPD
16. The main grievance of the plaintiff has been that its trade mark "NORKIN" has been violated and infringed by the defendant by using the trade mark "NORKEN" as the same is deceptively similar and is likely to mislead the public and other persons concerned in the trade.
17. According to the plaintiff, the defendant is also guilty of passing off its product under the trade mark of the plaintiff, which has attained goodwill and reputation in the market since 1995. On the other hand, it has been the contention of the defendant that trade mark "NORKEN" is a public juris and plaintiff company cannot have any monopolistic right to use the same.
TM119/2011 14/23
18. Burden of proving this issue has been upon the defendant but no evidence is led by the defendant on this aspect. However, considering the facts and circumstances of the case and the evidence appearing on record on behalf of plaintiff, I am of the opinion that trade mark of the plaintiff "NORKIN" has been infringed and violated by the defendant with the use of mark "NORKEN". Both the marks are visually, structurally and phonetically similar as only difference is of one letter i.e. "I" is replaced by "E". It is not in dispute that the plaintiff has been prior user of the product under the said trade mark since 1995. The defendant has not brought anything on record to show since when it has been using this trade mark. It is also evident that basic features of the goods are same and they are sold on the same counter and to the same class of customers. The important and basic features of both the products are similar. By all tests on the product in question, I found that they are deceptively similar and the plaintiff company, being prior user of the same, its right to use the same is to prevail upon. The defendant cannot be allowed to use the similar trade mark and sell the goods under confusion to that of the plaintiff.
TM119/2011 15/23
19. In an action for passing off on the basis of unregistered trade mark, generally for deciding the question of deceptive similarity, the following factors to be considered:
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
works.
b) The degree of resembleness 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, on
their education and intelligence and a degree
of care 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
TM119/2011 16/23
g) Any other surrounding circumstances which
may be relevant in the extent of dissimilarity
between the competing marks.
(Relied upon Cadila Health Care Ltd. Vs.
Cadila Pharmaceutical Ltd., 2001 (21)
PTC Supreme Court of India)
20. Applying the aforesaid tests to the case in hand, I find that there is resemblance in all respects in the trade mark "NORKIN" and "NORKEN". In the field of medical profession, it is important that great care should be taken to prevent the possibility of any confusion and the settled legal position has been that in case of medical products, strict approach should be adopted as it is dangerous to allow two marks to operate in the market as confusion will arise not only in the minds of consumers but also in the minds of pharmacists, who will be offering these products mistakenly to the public across the counter. The public interest is to be given preference over the individual interest, particularly, in the case of medical products.
21. In the present case, both the trade marks "NORKIN" and TM119/2011 17/23 "NORKEN" are similar in all respects and it is not possible to differentiate to each other. It is established on record that plaintiff has been using this trade mark since 1995 and at that time defendant was not in the market.
22. The assertion of the defendant that trade mark "NORKEN" is a public juris and has been derived from Norfloxacin, carries no merit or substance. Although, first three letters "NOR" are being derived from the chemical name but the rest three letters "KIN" or "KEN" cannot be said to be derived from the chemical name. The defendant has adopted the similar trade mark as that of the plaintiff and I find no justification to hold that trade mark "NORKEN" is a public juris and, therefore, anyone is entitled to use this chemical name. I am not in agreement with the arguments advanced on behalf of defendant on this aspect.
23. In view of my findings on issue no.1 as well as evidence with respect to trade mark "NORKIN", I am of the opinion that defendant has been guilty for not only infringing of the copyright of the plaintiff but also the trade mark of the plaintiff with respect to TM119/2011 18/23 pharmaceutical preparation "NORKIN PLUS". The trade mark "NORKIN PLUS" created and used by the plaintiff cannot be said to be public juris so as to entitle the defendant to use the same. The issue is decided against the defendant.
Issue No. 3 : Whether the defendant is guilty of passing of its goods under the impugned trade mark "NORKEN PLUS" as the goods of the plaintiff under the plaintiff's trade mark in "NORKIN PLUS"? If yes, its effects. OPP
24. It has also been held while disposing off issue no. 1& 2 that the defendant has adopted not only the trade mark but also artistic packaging work of the plaintiff with respect to the medicine "NORKEN PLUS". It is clear that defendant has been passing off the goods under the trade name and artistic packaging of the plaintiff. The plaintiff being prior user, only has got right to use the same. In view of substantial resemblance in both the trade marks, the defendant has clearly passed off its goods under the trade mark of the plaintiff and has encashed upon the goodwill and reputation of the plaintiff in the market. The issue is answered accordingly.
TM119/2011 19/23
Issue No. 4: Whether the defendant is liable to render its accounts in respect of the sales made for its impugned product? OPP
25. The defendant company having passed off its goods under the trade mark and artistic packaging of the plaintiff, is liable to render the accounts in respect of its sales but the defendant has not brought any evidence on record to show as to since when goods are being sold by the defendant and what was the quantity so sold. I, therefore, find it appropriate and reasonable to grant some amount on account of damages to the plaintiff company payable by the defendant. In my opinion, an amount of Rs. 2.5 lakhs would be sufficient to compensate the plaintiff. Accordingly, defendant is directed to pay the amount of Rs. 2.5 lakhs to the plaintiff for passing off its goods under the trade mark of the plaintiff. The issue is answered accordingly.
Issue No. 5 : Whether the defendant is liable to deliver up impugned cartons, tablets, labels, dyes, bottles, boxes and any other infringing copies to the plaintiff for destruction? OPP TM119/2011 20/23
26. In view of my findings on issue no. 1, 2 & 3, the defendant is not entitled to use the trade mark "NORKEN PLUS". Therefore, defendant is liable to deliver up the impugned cartons, tablets, labels, dyes, bottles, boxes and any other infringing material to the plaintiff for destruction. As per the report of Local Commissioner appointed vide order dated 22.09.2005, the infringed material has already been in the custody of plaintiff. The plaintiff is permitted to destroy the said material. The issue is answered accordingly.
RELIEF
27. The suit of the plaintiff is accordingly decreed in the following manner:
i) That the defendant, its servants, retailer, stockists, distributors, representatives and agents are restrained from manufacturing, selling, offering for sale, stocking, advertising, directly or indirectly dealing in pharmaceutical preparations under carton Annexure B (Ex. PW2/118) to the plaint or any other artistic/literary work which is identical/colourable imitation of the plaintiff's artistic/literary work annexed as Annexure A (Ex. PW2/5) to the plaint, amounting to TM119/2011 21/23 infringement of the plaintiff's copyright;
ii) That the defendant, its servants, retailer, stockists, distributors, representatives and agents are restrained from manufacturing, selling, offering for sale, stocking, advertising, directly or indirectly dealing in pharmaceutical preparations under the impugned trade mark/artistic work "NORKEN PLUS" or any other trade mark/artistic work which are identical or deceptively similar to the plaintiff's mark/artistic work "NORKIN" amounting to passing off of the products and business of the defendant as the products and business of the plaintiff;
iii) That the defendant is directed to pay the amount of Rs. 2.5 lakhs to the plaintiff for passing off its goods in the trade name of the plaintiff on account of damages; and
iv) The plaintiff is permitted to destroy the infringed material impugned cartons, tablets, labels, dyes, bottles, boxes and any other infringing material, which are in the custody of plaintiff, as per the report of Local Commissioner. The defendant is further directed to handover the impugned cartons, tablets, labels, dyes, bottles, boxes and any other infringing material to the plaintiff within one month for destruction. TM119/2011 22/23
28. The suit is disposed off in aforesaid terms. Decree sheet be prepared on payment of court fees by the plaintiff on Rs. 2.5 Lakhs. File be consigned to record room.
Announced in open Court (ANJU BAJAJ CHANDNA)
on this 05.08.2014 Addl. Distt. Judge(Central)01,
Tis Hazari Courts, Delhi.
TM119/2011 23/23