Bombay High Court
Serum Institute Of India Limited vs Green Signal Bio Pharma Pvt.Ltd. And ... on 14 June, 2011
Author: S.J.Kathawalla
Bench: S.J.Kathawalla
1 NMS.2696.2010
mst
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
ORDINARY ORIGINAL CIVIL JURISDICTION
NOTICE OF MOTION NO.2696 OF 2010
IN
SUIT NO.2564 OF 2010
Serum Institute of India Limited Plaintiff
versus
Green Signal Bio Pharma Pvt.Ltd. and another Defendants
Mr.Himanshu Kane a/w Mr.Hiren Kamod, Mr.Ashutosh Kane for plaintiff.
Mr.S.Gowthaman a/w Mr.Rajiv Singh i/by Chitnis & Co. for defendant no.
1.
CORAM : S.J.KATHAWALLA, J.
DATE OF RESERVING THE JUDGMENT : 3rd March 2011
DATE OF PRONOUNCING THE JUDGMENT : 14th June 2011
JUDGMENT :
1. By this Notice of Motion the plaintiff has prayed for an order and injunction restraining the defendants from infringing the plaintiff's trade mark "ONCO BCG" bearing registration number 1481471 in class 05, by use of the impugned trade mark "BCG ONCO" with or without the addition of letters "BP" or any other trade mark deceptively similar to the plaintiff's registered trade mark "ONCO BCG" in respect of medicinal and pharmaceutical preparations or in any other manner whatsoever and to further restrain the defendants from passing off their medicinal and pharmaceutical preparations as those of the plaintiff.
2. The plaintiff is a company registered under the Companies Act, 1956 carrying on business inter alia as manufacturer of and trader in pharmaceutical and medicinal preparations. The defendant no.1 is a Private Limited company also carrying on the business as manufacturer of medicinal and pharmaceutical preparations. Defendant no.2 is a limited ::: Downloaded on - 09/06/2013 17:20:44 ::: 2 NMS.2696.2010 company registered under the Companies Act, 1956 and carries on the business inter alia of marketing and distributing the medicinal and pharmaceutical preparations for and on behalf of defendant no.1.
3. According to the plaintiff, in or about the year 2006 it conceived a trade mark "ONCO BCG" (the said "trade mark") for use, in respect of medicinal and pharmaceutical preparation containing the generic drug "BACILLUS CALMETTE GUENN" ("BCG" for short). On or about 24th August 2006 the plaintiff applied for and secured registration of the word mark "ONCO BCG" under the provisions of the Trade Marks Act, 1999 under number 1481471 in Class-5 i.e. in respect of medicinal and pharmaceutical preparations and substances. The said trade mark was advertised in Trade Marks Journal No.1377 (Regular) dated 1st October 2007. The registered trade mark is valid and subsisting. However, the registration of the said trade mark does not give right to the plaintiff to the exclusive use of the letters "BCG".
4. On or about 24th November 2006 the plaintiff obtained necessary permission from the Joint Commissioner (Pune Division) of Food and Drugs Administration, Maharashtra State to manufacture and market the aforesaid drug under the said trade mark. According to the plaintiff, since 2007 the plaintiff has been regularly, openly and extensively using the said trade mark in relation to the said goods. A copy of the certificate issued by the Chartered Accountant of the plaintiff certifying the sales figures of the plaintiff's drug SII-ONCO-BCG for the year 2006-2007 up to the year 2009-2010 is annexed as Exhibit-D to the plaint. From the said certificate it can be seen that the plaintiff for the year 2006-2007 sold the said drug worth Rs.5.80 lakhs which increased to Rs.176.44 lakhs in the year 2009-2010. The plaintiff has also annexed copies of sales bills relating to the plaintiff's said drug at Exhibits-E-1 to E-8 to the plaint. The first bill/invoice produced (Exhibit-E-1) is dated 8th August 2007. According to the plaintiff, the plaintiff has also taken efforts to popularize its said goods bearing the said trade mark. It has expended substantial sums of money ::: Downloaded on - 09/06/2013 17:20:44 ::: 3 NMS.2696.2010 on sales promotional efforts undertaken by it to make the said trade mark and the goods bearing the same, well known. The certificate issued by the Chartered Accountant of the plaintiff is annexed as Exhibit-F to the plaint which shows that an amount of Rs.7,08,575/- is spent by the plaintiff towards sales promotion, technical literature and advertisements during the period 2007 to 2010. According to the plaintiff by regular and extensive use of the trade mark ONCO BCG by the plaintiff, in relation to the said goods, and the efforts taken by it in popularizing the said goods as also by reason of high efficacy and superior quality of the medicinal preparations sold by the plaintiff under the trade mark "ONCO BCG", the plaintiff's said goods and the said trade mark "ONCO BCG" enjoyed wide and enviable reputation and goodwill amongst the doctors, chemists and the general public. The trade mark "ONCO BCG" has become distinctive of the plaintiff's goods and connote and denote to the members of the medical profession, trade and general public medicinal and pharmaceutical preparations of the plaintiff and of none other. The aforesaid persons identify and demand the plaintiff's said goods with reference to the said trade mark 'ONCO BCG" and the said product is fixed in their minds as indicating that the medicinal and pharmaceutical preparations bearing the said work, originate from the plaintiff.
5. According to the plaintiff, in or about April 2010 the plaintiff learnt that the defendant no.1 is manufacturing and/or selling and the defendant no.2 is marketing the medicinal and pharmaceutical preparation containing the same drug namely "BACILLUS CALMETTE GUENN"
under the deceptively similar trade mark "BCG ONCO" (the impugned trade mark) with the addition of non distinctive letters "B" and "P" at the end of the said mark and by the use of the impugned trade mark the defendants were causing confusion and deception in the market and were passing off their goods as and for those of the plaintiff. The plaintiff has annexed a copy of the invoice of a Chemist of Mumbai (Exhibit-J to the plaint) showing sale of the impugned goods in Mumbai. Interestingly in that bill the chemist has in the drug description column described the ::: Downloaded on - 09/06/2013 17:20:44 ::: 4 NMS.2696.2010 product as "ONCO-BCG BP (GRS)" though it is the plaintiff who is selling its said goods under the trade mark "ONCO-BCG" and the defendant is selling its product under the impugned mark "BCG-ONCO BP". The plaintiff by its Advocate's letter dated 20th April 2010 addressed to the defendants set out the aforesaid facts relating to its proprietary rights in the said trade mark "ONCO BCG" and called upon the defendants to inter alia cease and desist from the use of the impugned trade mark upon and in relation to their medicinal and pharmaceutical preparations. The defendant no.1 by his Advocate's letter dated 3rd May 2010 replied to the plaintiff's aforesaid notice and denied the statements and submissions made in the plaintiff's notice dated 20th April 2010. The defendant no.1 in his reply also contended that it's impugned trade mark is not similar to the plaintiff's trade mark and that no confusion and/or deception is being caused in the market by the use of its impugned trade mark. The defendant no.1 therefore refused to comply with the requisitions contained in the plaintiff's notice dated 20th April 2010. The defendant no.2 vide its separate reply dated 1st June 2010 inter alia contended that it is the marketing agent of defendant no.1's goods bearing the impugned trade mark and that the reply dated 3rd May 2010 of the defendant no.1, be also treated as a response/reply by defendant no.2. According to the plaintiff, the defendants have continued to manufacture and sell their medicinal and pharmaceutical preparations under the impugned trade mark 'BCG-ONCO" and hence the plaintiff is constrained to file the present suit. After filing of the above suit the plaintiff made an application for ad-interim reliefs which application was adjourned from time to time since the parties were exchanging their pleadings. Thereafter it was decided that the Notice of Motion shall be disposed of at the ad-interim stage. The Notice of Motion is therefore, by consent of the parties, heard finally.
6. The defendant no.1 has filed its affidavit-in-reply dated 21st October 2010. The stand of the defendant no.1 is summarized as follows :-
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(a) that the defendant no.1 has been in the pharmaceutical business since the year 2005. One of its products namely Bacillus Calmette Guerin is marketed in the name "BCG ONCO BP" for immuno therapy for cancer of the urinary bladder;
(b) that the sale of the product under the impugned mark "BCG ONCO BP" of the defendant no.1 in Maharashtra is negligible as compared to its total sales in the entire domestic market;
(c) that the Tax Invoice dated 30th November 2009 relied upon by the defendant no.1 is for sales effected in Mumbai. The said invoice shows that the sale is made to M/s.Ishita Pharma at Malad (East), Mumbai and the batch number of the impugned product supplied is shown as 409001. The second and third invoices are dated 29th June 2010 and 12th July 2010 showing the supplies made to their customers/dealers in Maharashtra;
(d) that there is no deceptive similarity at all as alleged by the plaintiff. The term "BCG ONCO" is a generic name and "BP" stands for British Pharmacopoeia. The visible differences between the product of the plaintiff and the defendant no.1 are, the different colour scheme, the different logo, the plaintiff's product having prefix "SII" whereas the defendant's product having a suffix "BP" etc;
(e) that though the registration of the trade mark by the plaintiff is "ONCO BCG", the product marketed by the plaintiff is in the name of "S II ONCO-BCG" which is phonetically different from the trade mark of the defendant no.1 i.e. "BCG ONCO BP".;
(f) that the word "ONCO" stands for the word Oncology-a branch of medicine and "BCG" stands for Bacillus Calmette Guerin i.e. the name of the chemical used in the vaccine. In the search made in the ::: Downloaded on - 09/06/2013 17:20:44 ::: 6 NMS.2696.2010 trade mark registry, it has been found that both are generic terms and are commonly used for vaccines which are specifically in use in medical institutions and hospitals. A copy of the results of the search in the trade mark registry with regard to the term ONCO is annexed as Exhibit-C to the affidavit-in-reply of the defendant no.1;
(g) that the trade mark registered by the plaintiff was a conditional one which does not give any exclusive right over the usage of "BCG". Hence, the plaintiff cannot claim any exclusive right over the same. However, the word "ONCO" represents the word Oncology which in medical terminology refers to the branch of medicine concerned with the study and treatment of tumors. Hence, by registering the trade mark with the word "ONCO" the plaintiff cannot claim any exclusive right over the same;
(h) that it is for this reason that the plaintiff was not given an unconditional usage of such words and the trade mark registered by the plaintiff was conditional, so that the plaintiff should not claim any exclusive right over the word "BCG". Similarly the trade mark registry search shows that the word "ONCO" has more than 100 registered users. The plaintiff having accepted the conditional registration and having not challenged the same, now cannot claim any exclusive right towards the said terms which are generic in nature;
(i) that the plaintiff's terms "ONCO BCG" being a descriptive term, cannot be said to be distinctive on the date of filing of the trade mark registration application by the plaintiff. Further, the said mark has not obtained any secondary meaning on the date of filing the trade mark application by the plaintiff as the plaintiff had used the said term only after applying for the registration of the said term;
(j) that since the trade mark used by the plaintiff and defendant no.1 are not deceptively similar as alleged, the question of conducting a ::: Downloaded on - 09/06/2013 17:20:44 ::: 7 NMS.2696.2010 search of the register of the trade marks by the defendant no.1, to use its own trade mark does not arise;
(k) that in case of vaccine products, the same are supplied to the institutions/hospitals directly and there is no question of confusion likely to be caused to chemists/customers/patients. The products are of the kind which are normally not sold to the public for consumption or for domestic use but are sold in specialized market consisting of persons who are well acquainted with the use of the drug;
(l) that the copy of the invoice of the chemist (Exhibit-J to the plaint) relied on by the plaintiff to prove that the product of the defendant no.1 is available and sold on commercial basis in Mumbai mentions the product description as "ONCO BCG BP (GRS)" which is not the product of the defendant no.1 and that the product of the defendant no.1 is marketed in the name of "BCG ONCO BP". The plaintiff has therefore not come to Court with clean hands and is trying to mislead the Court by annexing the invoice of a product of a different company and alleging the same to be that of the defendant no.1;
(m) that the plaintiff obtained Exhibit-J to the plaint from the stockist Ishita Pharma by changing the name of the product of defendant no.1 from "BCG ONCO BP" to "ONCO BCG BP";
(n) that the present suit is filed since the plaintiff had monopolized the vaccine field for a number of years and the defendant no.1 after entering the field has been giving stiff competition to the plaintiff;
(o) that the balance of convenience is not in favour of the plaintiff and if any injunction is granted in favour of the plaintiff, the defendant no.1 will be put to irreparable loss and injury;
(p) that the Notice of Motion, therefore, be dismissed.
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7. The learned advocate for the plaintiff has repeated the submissions made by the plaintiff in the plaint and recorded hereinabove. He has also pointed out that the plaintiff has filed a rejoinder to the affidavit-in-reply filed by the first defendant, wherein the plaintiff has refuted and dealt with the allegations advanced on behalf of the defendant no.1 in its affidavit-in- reply. The learned advocate for the plaintiff has submitted that the first defendant has neither disclosed the date of adoption or his use of the impugned trade mark nor has it produced any documentary evidence to show as to when it actually started using the impugned trade mark in respect of its goods. As regards the submission of the defendant no.1 that there is no deceptive similarity between the two marks, the plaintiff has submitted that merely interchanging the position of the words "ONCO" and "BCG" and addition of a non-distinctive suffix "BP" at the end of the impugned trade mark, does not make the impugned trade mark dis-similar to the plaintiff's trade mark "ONCO BCG". In support of this contention, the learned advocate for the plaintiff has relied on a decision of the Apex Court in the case of Ruston and Hornby Ltd. Vs. Zamindara Engineering Co. (AIR-1970-SC-1649) and a decision of this Court in case of Pidilite Industries Ltd. Vs. S.M.Associates and others 2004(28)-PTC-193 (Bom).
8. The learned advocate for the plaintiff has further submitted that the goods in respect of which the impugned trade mark is being used by the defendants are the same as those in respect of which the plaintiff has been using its trade mark since 2007, and in respect of which the said trade mark is not only registered but has acquired reputation and goodwill. It is submitted that the rival products will be demanded and referred to by the customers by the brand names "ONCO-BCG" and "BCG-ONCO"
respectively and not by the colour scheme, get up etc.. It is submitted that though the plaintiff has been using the expression "SII" to indicate the company name being M/s.Serum Institute of India Limited, the plaintiff's products are demanded and referred to in the market as "ONCO BCG"::: Downloaded on - 09/06/2013 17:20:44 :::
9 NMS.2696.2010 only. With regard to the allegations of defendant no.1 that the words "ONCO BCG" are generic terms and are commonly used in medical intitutions, and that the alleged search made in the trade marks register show that the said words are generic in nature, it is submitted that none of the other trade marks cited in the search report are in use and in any event the presence of the alleged trade marks on the register by itself does not prove their user much less widely or across the world. In support of this contention the plaintiff has relied on a decision of the Apex Court in the case of Corn Products Refining Co. Vs. Shangrila Food Products Ltd. (AIR-1960-SC-142) and also on the decision of this Court in the case of Pidilite Industries Ltd. Vs. S.M.Associates and others (supra) and the unreported decision of this Court in Miscellaneous Petition No.6 of 1988 in the case of The Anglo-French Drug Company (Eastern) Limited Vs. Ramanlal Ratanlal Karwa and another decided on 20th April 1992.
9. The learned Advocate for the plaintiff submitted that the plaintiff's registered trade mark contains a unique combination of two words "ONCO" and "BCG" and the same is inherently distinctive. Further the said coined trade mark "ONCO BCG" is exclusively associated with the plaintiff due to its open, continuous and exclusive use since 2007 and the plaintiff has a monopoly over the said trade mark as a whole. As regards the invoice/bill of Ishita Pharma (Exhibit-J to the plaint) it is submitted that Ishita Pharma is the stockist of the defendant no.1 for Mumbai and it is preposterous to even suggest that the plaintiff obtained the said invoice from the said stockist by changing the name of the product of defendant no.1 from "BCG ONCO BP" to "ONCO BCG BP". It is submitted that in fact it is a classic case of confusion. It is further submitted that the said bills in respect of the first defendant's product is supported by batch number stated in the invoice. It is submitted that the said bill/receipt is proof of the fact that due to the deceptive similarity between the two trade marks, the confusion has arisen and there is likelihood of the confusion not just amongst the general public but also amongst the chemists and ::: Downloaded on - 09/06/2013 17:20:44 ::: 10 NMS.2696.2010 traders who are well acquainted with the products. In support of this contention the learned advocate for the plaintiff has relied on the decision of a Division Bench of this Court in Medley Laboratories (P) Ltd. Vs. Alkem Laboratories Ltd. (2002[25]-PTC-592 {DB}).
10. The plaintiff has denied that the trade mark "ONCO BCG" was not distinctive on the date of filing the application or that the said trade mark has not obtained the distinctiveness or secondary meaning on the date of filing the trade mark application, as alleged. The advocate for the plaintiff submitted that the plaintiff has bona fidely invented the trade mark "ONCO BCG" and the said trade mark is inherently distinctive of the plaintiff's product. It is submitted that, in any event in the present case the relevant date is not the date of application for registration of the plaintiff's trade mark but the date of filing the present suit and as on the date of filing the present suit, the said trade mark "ONCO BCG" has acquired distinctiveness and connotes and denotes to the members of the trade and public the goods of the plaintiff. Relying on the decision of this Court in Hindustan Embroidery Mills Pvt. Ltd. Vs. K.Ravindra and Co.
(1967-The B.L.R.-Vol.LXXVI-146) and in case of Poddar Tyres Ltd. Vs. Bedrock Sales Corporation Ltd. and another (AIR-1993-BOM-237) it is submitted by the advocate for the plaintiff that it is repeatedly held by this Court that it is not the practice of this Court to consider the validity of registration of a trade mark on a Notice of Motion for interlocutory injunction taken out by a person who has got the mark registered in his name. While the mark remains on the register (even wrongly), it is not desirable that others should imitate it.
11. It is further submitted on behalf of the plaintiff that besides the institutions and the hospitals, the rival vaccines are also sold to retail chemists and directly to the customers. Therefore, the chances of an unwary purchaser of average intelligence and imperfect recollection purchasing the first defendant's product as that of the plaintiff cannot be ruled out. The plaintiff has therefore denied that it has not made out any ::: Downloaded on - 09/06/2013 17:20:44 ::: 11 NMS.2696.2010 prima facie case or that the first defendant would be put to loss much less irreparable loss, harm and injury if the injunction sought by the plaintiff is granted. It is also denied that if injunction is not granted, the plaintiff will not suffer any harm, loss or injury. It is submitted that on the contrary, if the plaintiff is not granted the injunction as prayed for, the plaintiff will suffer grave irreparable loss, harm and injury and it's business and reputation of the said trade mark will be seriously and prejudicially affected. It is denied that the balance of convenience is not in favour of the plaintiff or that the plaintiff is not entitled to any relief in the present Notice of Motion as alleged or otherwise. On the issue of balance of convenience the learned advocate for the plaintiff has relied on the decisions of this Court in the case of Poddar Tyres Ltd. (supra) and in case of Schering Corporation and others Vs. Kilitch Co. (Pharma) Pvt.Ltd. (1994-I-PLR-1).
12. The learned advocate for the plaintiff has therefore submitted that the defendants are guilty of infringement of the plaintiff's mark "ONCO BCG" and are also guilty of passing off their product under the impugned mark "BCG-ONCO BP" as that of the plaintiff. It is therefore submitted that the Notice of Motion be made absolute with costs.
13. The learned advocate appearing for the defendant no.1 has repeated his submissions made by the defendant no.1 in its affidavit-in- reply and set out hereinabove. He has tendered a compilation containing 22 case laws. However, at the time of arguments he has relied only on the following case laws viz. :-
(a) The Coca-Cola Co. of Canada Ltd. Vs. Pepsi-Cola Co. of Canada Ltd. (1942-Vol.LIX-Reports of Patent, Design and Trade mark Cases-127) :- In this case the plaintiff company was the owner of the registered trade mark `Coca Cola'. The defendant company used its registered trade mark `Pepsi Cola' in the same area and in respect of similar goods. It was alleged by the plaintiff that the defendant infringed ::: Downloaded on - 09/06/2013 17:20:44 ::: 12 NMS.2696.2010 their trade mark and the use of both the trade marks in the same area in association with the goods of the same kind would be likely to cause confusion in the minds of dealers and/or users of such goods. At the trial of the suit it was held that infringement was proved and there was likelihood of confusion arising from the use of two trade marks. In an appeal to the Supreme Court of Canada it was held that the marks were not so similar as were likely to cause confusion and that there was only similarity in the word "Cola" and the plaintiff could not claim monopoly in that word. There was no evidence that any one has been mislead and when the defendant's trade is of some standing, absence of confusion may show that interference is unnecessary. In an appeal to the Privy Council it was held that the fact be borne in mind that `Cola' is a word in common use in Canada in naming beverages. The distinctive feature in the hyphenated words `Coca Cola' and `Pepsi Cola' were the first words `Coca' and `Pepsi' and not `Cola'. It was held that the defendant's trade mark `Pepsi- Cola' was not similar to the plaintiff's trade mark `Coca-Cola' either as a word mark or as a design mark and that there was no infringement.
(b) "Rotorake" Trade mark (Registration BoT) (1968)- RPC-36:- This is an appeal to the Board of Trade from a decision of the Registrar of Trade Marks declining to register the trade mark `Rotorake' on the ground that the term Rotorake does not qualify as an invented word or as a word having no direct reference to the character or quality of the goods. The Board of Trade confirmed the decision of the Registrar of Trade Marks. It held that the word ROTORAKE is simply a compound word meaning a rotary rake which is a descriptive and not a distinctive term.
(c) Shelke Beverages Pvt.Ltd. Vs. R.M.Dhariwal and another in Appeal No.8 of 2010 in Notice of Motion No.3709 of 2009 in Suit No.2576 of 2009 decided on 29th March 2010 (Coram : J.N.Patel and A.P.Bhangale, JJ.) :- In this case both the rival trade marks were ::: Downloaded on - 09/06/2013 17:20:44 ::: 13 NMS.2696.2010 registered. The plaintiff no.1 adopted the mark `Oxyrich'. The defendants used and adopted the mark `Oxycool'. In fact, the defendant no.2 was using the mark `Manikchand Oxyrich' in respect of its packaged drinking water under a registered user agreement with the plaintiff no.1. The Division Bench of this Court held that both the trade marks when considered in their visual representation in style and phonetically, in juxtaposition to each other and compared with each other, they are prima facie not identical or deceptively similar so as to cause infringement of the registered trade mark of the plaintiffs. The Division Bench held that at the interlocutory stage it is not possible to hold that the defendants are using the identical trade mark as that of the plaintiffs. In view thereof, the injunction granted by the learned Single Judge restraining the defendants from using the mark `Oxycool' was set aside by the Appeal Court;
(d) Rhizome Distilleries Pvt.Ltd. Vs. Pernod Ricard S.A.France & others - 2010(42)PTC-806 (Del.) (DB) :- In this matter the rival trade marks Imperial Blue and Rhizome Imperial Gold were registered. The Division Bench therefore decided the allegation pertaining to passing off. The parties agreed to carry out substantial changes in the label/trade dress for removing any likelihood of any deception. The Court recorded that it may still be pleaded by the plaintiff that the defendants are guilty of passing off because of the adoption of the word "IMPERIAL". It was therefore clarified that neither party has any exclusive right for the use of the word "IMPERIAL". The Court also held that two labels i.e. Imperial Blue and Rhizome Imperial Gold are totally dissimilar and if a flat amber bottle is used by the Defendants/Appellants, no deception is likely to arise. It is also recorded that the word "IMPERIAL" is used by several other manufacturers of alcohol and that all the parties will have to co-exist in view of the wide spread use of the word "IMPERIAL" especially in the alcohol business. It was not possible to accept the contention of the plaintiff that the word "IMPERIAL" has attained a secondary meaning which would justify exclusivity. By way of an interim arrangement, the defendants/appellants were therefore allowed to market its product by ::: Downloaded on - 09/06/2013 17:20:44 ::: 14 NMS.2696.2010 using label `A' set out in the said order.
(e) S.B.L.Limited Vs. Himalaya Drug Co. (AIR-1998- Delhi-126) :- In this case the rival trade marks were `Liv.52` and `Liv.T`. In this decision the Court has observed that there are about 100 drugs in the market using the abbreviation `Liv' made out of the word Liver-an organ of the human body, as a constituent of names of medicinal/pharmaceutical preparations with some prefix or suffix. It is descriptive in nature and common in use. In view thereof nobody can claim exclusivity in respect of the word `Liv'. The customers dealing with the medicines would distinguish the names of medicines by ignoring the word `Liv' and by assigning weight to the prefix or suffix so as to associate the name with the manufacturer. The ex-parte order of injunction obtained by the plaintiff was therefore not continued.
(f) Marico Ltd. Vs. Agro Tech Foods Ltd. - 2010(43)-PTC-39 (Del). :- In this decision the learned Single Judge of the Delhi High Court has held that while deciding an interlocutory application, in view of the language used in Sections 28 and 124 of the Trade Marks Act, the Court is competent to take a prima facie view on the question of validity of the registration of the trade mark in favour of the either side. Merely because a trade mark is registered, an injunction will not automatically follow when validity of registration is in question in the written statement and pleadings.
14. I have gone through the pleadings of the rival parties and have also considered the submissions made before me and the case law cited by the respective advocates. Admittedly the plaintiff on 24th August 2006 applied for and secured registration of the word mark "ONCO-BCG" under the provisions of Trade Marks Act, 1999 under number 1481471 in respect of medicinal and pharmaceutical preparations and substances included in Class-5. The said trade mark was advertised in the Trade Marks Journal No.1377 (Regular) dated 1st October 2007. Since 2007 the plaintiff has ::: Downloaded on - 09/06/2013 17:20:44 ::: 15 NMS.2696.2010 been using the said trade mark in relation to medicinal preparations. The annual sales of the said goods have increased from Rs.5.80 lakhs for the year 2006-2007 to Rs.176.44 lakhs in 2009-2010. During this period the plaintiff has also spent a substantial amount towards sales promotion, advertisement etc.. From the carton of their product it can be seen that though the plaintiff is using the letters "SII" before the trade mark "ONCO BCG", the entire thrust is on the word "ONCO-BCG". The defendant no.1 admittedly is using the mark "BCG ONCO BP". What the defendant no.1 has therefore done is that they have only reversed the words used in the trade mark of the plaintiff and thereafter added a suffix "BP". From the carton of the product of defendant no.1 produced before the Court it is again clearly established that though the colour combination as well as the size of the letters are different than that of the plaintiff's carton, the emphasis is laid on the words "BCG ONCO BP". In view thereof, I am not in agreement with the submission of learned advocate for the defendant no.1 that their mark "BCG ONCO BP" is not deceptively similar to the plaintiff's mark "ONCO BCG". As submitted by the plaintiff, the factors such as suffix "BP", difference in the colour scheme used on the carton and other written material on the carton etc; would be of no consequence since the purchaser or the customer who would ask for the product "ONCO BCG" is not expected to study the colour scheme or the words additionally written on the carton etc.. The learned advocate for the plaintiff is also correct in his submission that the addition of the word "BP" as a suffix to the mark is no defence in an infringement action. The Apex Court in Ruston and Hornby Ltd. (supra) has held that "there is deceptive resemblance between the word "RUSTON" and the word "RUSTAM" and therefore the use of the bare word "RUSTAM" constituted infringement of the plaintiff's trademark "RUSTON" ...... If the respondent's trade mark is deceptively similar to that of the appellant the fact that the word "INDIA" is added to the respondent's trade mark is of no consequence and the appellant is entitled to succeed in its action for infringement of its trade mark." It is held by the Division Bench of this Court in Medley Laboratories (P) Ltd. Mumbai and another (supra) ::: Downloaded on - 09/06/2013 17:20:44 ::: 16 NMS.2696.2010 that once the plaintiffs' mark is registered, what was necessary for the plaintiffs to show was that the defendant has used a mark `deceptively similar' to that of the plaintiffs. The Division Bench also accepted the contention of the counsel for the appellants that the mark can be seen to be deceptively similar if such mark is likely to cause confusion. Once the mark is identical or deceptively similar, the other factors namely the packing being different, number of tablets contained in the competing package is not the same, prices are not identical and/or the goods being sold on doctor's prescription are altogether irrelevant and immaterial. In the same decision the Division Bench of this Court has referred to the decision of the Apex Court in case of S.K.Dyechem Ltd. Vs. Cadbury (I) Ltd. (AIR-2000-SC-2114) wherein setting aside the decisions of the Courts below, the Apex Court held that the test that dissimilarity in essential features is more important than similarity is not proper and correct. Referring to several English, American and Indian cases on the point, it was observed that the Court must be careful to make allowance for imperfect recollection and the effect of careless pronunciation and speech on the part of persons seeking to buy under the trade description, as also shop-keepers ministering to personal wants. The Division Bench further proceed to quote the following from the said decision of the Apex Court:-
"It is important that the marks must be compared as whole. It is not right to take a portion of the word and say that because that portion of the word differs from the corresponding portion of the word in the other case there is no sufficient similarity to cause confusion. The true test is whether the totality of the proposed trade mark is such that it is likely to cause deception or confusion or mistake in the minds of persons accustomed to the existing trade mark."
. It is contended on behalf of the defendant no.1 that in case of vaccine product, they are supplied to institutions and hospitals and there is no question of unwary purchasers. The products are of the kind which are not normally sold to the public at large for consumption of domestic use but are sold in specialized market consisting of persons who are well ::: Downloaded on - 09/06/2013 17:20:44 ::: 17 NMS.2696.2010 acquainted with the use of the product. As against this the plaintiff has contended that besides institutions and hospitals, the rival vaccines are also sold through retail chemists and directly to the customers. Therefore, the chances of unwary purchasers of average intelligence and imperfect recollection purchasing the defendant no.1's product as that of the plaintiff cannot be ruled out. The Apex Court in the case of Cadila Health Care Ltd. Vs. Cadila Pharmaceuticals Ltd. 2001-PTC-300 (SC) has inter alia held that "public interest would support lesser degree of proof showing confusing similarity in the case of trade mark in respect of medicinal products as against other non medicinal products .. .. .. .. .. .. Noting the frailty of human nature and the pressures placed by society on doctors, there should be as many clear indicators as possible to distinguish two medicinal products from each other. It is not uncommon that in hospitals, drugs can be requested verbally and/or under critical/ pressure situations.
Many patients may be elderly, infirm or illiterate. They may not be in a position to differentiate between the medicine prescribed and bought which is ultimately handed over to them... ...".
15. In the present case the defendants have incorporated the whole of the plaintiff's mark "ONCO BCG" in their impugned mark "BCG ONCO BP". What they have done is merely reversed the two words and added the letters "BP" as suffix to the infringing trade mark. Even if the plaintiff has used a prefix SII on its product before the mark "ONCO BCG" the essential feature of the mark are only the words "ONCO BCG". The defendants cannot be heard to say that the two marks are not identical or deceptively similar or are easily distinguishable from one another. In the present case the resemblance between the two marks is clear and obvious. A patient/ customer would not know what is the dictionary meaning of the word "ONCO" In fact, Exhibit-J to the plaint is an invoice issued by the dealer of the defendant no.1 and whilst issuing the invoice he has got confused and instead of writing "BCG ONCO BP" he has in the said bill/invoice written the name of the defendant's product as "ONCO BCG BP (GRS)." The plaintiff's registered trade mark is "ONCO BCG".
::: Downloaded on - 09/06/2013 17:20:44 :::18 NMS.2696.2010 This confusion did not stop here but the defendant no.1 also succumbed to the confusion and initially contended in its affidavit-in-reply that the said invoice/bill did not pertain to its product sold under its trade mark 'BCG ONCO BP" until it was pointed out by the plaintiff on the basis of the batch number of the product sold under the said bill/invoice that the product sold under the said bill was in fact that of defendant no.1, and that in view of the confusion faced by the chemist/dealer of the defendant no.1, the name of the product was shown as "ONCO BCG BP" instead of "BCG ONCO BP". The fact remains that the trade marks "ONCO BCG" and "BCG ONCO BP" are so similar that an unwary purchaser of average intelligence and imperfect recollection is likely to get confused between the two names making the doctrine of wonderment applicable. Judicial notice also needs to be taken of the fact that not only chemists are likely to make such mistakes but even doctors as well as their staff would commit such mistakes under critical and pressure situations. Therefore, even if a drug is a scheduled drug and/or required to be administered only by trained hands, the likelihood of confusion and mistake cannot be ruled out. After considering both the marks, I am convinced that there is every likelihood of confusion and deception. I have therefore no hesitation in coming to a prima facie conclusion that the plaintiff's registered trade mark "ONCO BCG" is infringed by the defendant no.1's trade mark "BCG ONCO BP" by use of deceptively similar trade mark, which product is likely to be sold as that of the plaintiff's product and the goods/product of the defendants is likely to be passed off as the goods/product of the plaintiff.
16. It is contended on behalf of the defendant no.1 that the trade mark registered by the plaintiff was a conditional one which does not give any exclusive right over the use of "Bacillus Calmette Guenn". Hence, the plaintiff cannot claim any exclusive right towards the same. Further, the term "ONCO" refers to the term "Oncology" which in medical terminology means a branch of medicine concerned with the study and treatment of tumors. Hence, by registering the trade mark with the term "ONCO", the ::: Downloaded on - 09/06/2013 17:20:44 ::: 19 NMS.2696.2010 plaintiff cannot claim any exclusive right over the same. This issue has been dealt with by the learned Single Judge of this Court in Pidilite Industries Limited (supra). In paragraphs 45, 46 and 47 the Court observed as follows :-
"45. On the question of infringement of the trade mark there remains a further aspect for consideration viz. the effect of the disclaimer of the word `Seal'. Dr.Shivade contended that while considering the question of infringement of trade mark, I must ignore the word `Seal' and then judge whether the first Defendants mark is deceptively similar to the residual part of the plaintiffs mark which would now only comprise of the letter `M'.
If the approach adopted by Dr.Shivade is correct, there is no infringement. I am however unable to accept this to be the correct approach while deciding the question of infringement in respect of the registered trade mark with a disclaimer.
46. Dr.Tulzapurkar invited my attention to the case of GRANADA Trade Mark, (1979) 13 RPC 303. At page 308 it was held :
"I do not think, therefore, that a disclaimer per se effects the question of whether or not confusion of the public is likely when that question is for determination under section 12(1), a context other than one that is concerned solely with the exclusive rights of a proprietor. As Lloyd-Jacob, J. put it in Ford- Werkes Application, (1955) 72 RPC 191 at 195 lines 30 to 38, a disclaimer does not affect the significance which a mark conveys to others when used in the course of trade.
Disclaimers do not go into the market place, and the public generally has no notice of them. In my opinion matter which is disclaimed is not necessarily disregarded when question of possible confusion or deception of the public, as distinct from the extent of a proprietors exclusive rights, are to be determined."
In making the comparison under section 12(1) therefore I consider that I must have regard to the whole of the opponents mark, including the disclaimed matter, and must ::: Downloaded on - 09/06/2013 17:20:44 :::
20 NMS.2696.2010 assume use of it in a normal and fair manner for, inter alia, the applicants goods. The applicants are very well known as manufacturers of motor cars. The opponents are registered as merchants of their goods. Although the opponents are not manufacturers of motor cars I do not think that this difference in the parties activities should lead me to make the required comparison on any basis other than that, so far as identical goods are concerned, the normal and fair manner of use of the marks would also be identical."
47. I am in respectful agreement that despite a disclaimer in respect of the word `Seal' I must have regard to the whole of the Plaintiffs mark including the disclaimed matter while deciding the question of infringement. A contrary view could lead to peculiar results. Take for instance where the disclaimed word is written in a distinctive style with embellishments within, on or around it, and the Opponents mark also consists of the disclaimed word written in the same distinctive manner. Were it open to the Opponent to contend that the disclaimed word ought to be ignored there would be nothing left to compare. Let me carry this illustration further - the modification that the embellishments in the two marks are different. If the deemed word is to be ignored all that would be left is the embellishments. This is how a person in the market would view the marks while purchasing a product. There could remain an equal degree of possibility of deception and confusion as the public being oblivious to the disclaimer would not analyze the marks as suggested by Dr.Shivade. In the circumstances, the disclaimer in the present case does not affect the plaintiffs right to obtain an injunction for infringement."
17. In my view, the above submission of the defendant no.1 is therefore totally incorrect. A trade mark has to be read as a whole. It can never be argued that just because the plaintiff is not allowed to claim exclusive right towards the simplicitor user of the word "B.C.G." i.e. Bacillus Calmette Guenn independent of any other words, the registered trademark which includes the words B.C.G. should be read without including the disclaimed portion.
18. The defendants have contended that there are series of marks registered or unregistered where the word "ONCO" has been used and in ::: Downloaded on - 09/06/2013 17:20:44 ::: 21 NMS.2696.2010 view thereof, the plaintiff cannot contend that they have an exclusive right qua the word "ONCO". However, the plaintiff has in its affidavit-in- rejoinder contended that no such marks are in use. Despite this, the defendant have not furnished any evidence of actual use or the extent of such use. Since the defendant has failed to furnish any evidence as required, the said argument would not be available to the defendant no.1. The Apex Court in the case of Corn Products Refining Co. Vs. Shangrila Food Products Ltd. (AIR-1960-SC-142) in paragraph 15 considered the question and held that mere presence of a mark in the register does not prove its user. The person relying on such marks having common elements is required to establish extensive use. Paragraph 15 is reproduced hereinbelow :-
"15. The series of marks containing the common element or elements therefore only assist the applicant when these marks are in extensive use in the market. The onus of proving such user is of course on the applicant, who wants to rely on those marks. Now in the present case the applicant, the respondent before us, led no evidence as to the user of marks with the common element. What had happened was that the Deputy Registrar looked into his register and found there a large number of marks which had either Gluco or Vita as prefix or suffix in it. Now of course the presence of a mark in the register does not prove its user at all. It is possible that the mark may have been registered but not used. It is not permissible to draw any inference as to their user from the presence of the marks on the register. If any authority on this question is considered necessary, reference may be made to Kerly p. 507 & Willesden Varnish Co. Ltd. V. Young & Marten Ltd; (1922) 39 RPC 285 at p.289. It also appears that the appellant itself stated in one of the affidavits used on its behalf that there were biscuits in the market bearing the marks Glucose Biscuits, Gluco biscuits and Glucoa Lactine biscuits. But these marks do not help the respondent in the present case. They are ordinary dictionary words in which no one has any right. They are really not marks with a common element or elements. We, therefore, think that the learned appellate judges were in error in deciding in favour of the respondent basing themselves on the series marks, having Gluco or Vita as a prefix or a suffix."::: Downloaded on - 09/06/2013 17:20:44 :::
22 NMS.2696.2010
19. The above decision is also relied upon by the learned Single Judge of this Court in Pidilite Industries Ltd. (supra). In paragraph 58 it is observed as follows :-
"58. ... ... ... The judgment in Corn Products requires the Defendant to prove that the marks must be not merely in use but in "extensive use". Thus, even in interim proceedings, it is not sufficient merely for the Defendant to show prima-facie that there is some user of the marks. There must be prima facie evidence to show extensive use. At the final hearing of the suit the level of proof required is higher - the matter requiring to be proved viz. "extensive or substantial use" remaining the same.
. For instance, in a given case, a defendant may well establish conclusively in interlocutory proceedings that there was actual use of the marks in the market. He would thus have fulfilled the first requirement viz. actual use. He may however candidly admit that the extent of use is minimal. The Defendant could not in such circumstances resist an injunction on the series argument contending that at the interim stage the extent of use is not material".
20. Similar view was taken in M/s.D.R.Cosmetics Pvt. Ltd. Vs. J.R.Industries (AIR-2008-BOM-122) in paragraph 21 which is reproduced hereunder :-
"21. The other contention of the Defendant is that there are other products in which a similar device has been used as part of a label mark. While dealing with this submission, the Plaintiffs have stated in their rejoinder that this plea of the Defendant is bald and no evidence has been adduced to support that there are actual sales of such products in the market. There is prima facie merit in the contention of the Plaintiffs that merely annexing some label is not enough. In the absence of cogent proof of the actual conduct of business involving such label mark in the market. The Plaintiffs have also submitted that it is not possible to monitor all such competing products when such sales are small and in far flung areas of the country. The existence of more than one imitation cannot justify what is wrong".
As set out hereinabove, the defendants have not shown an iota of ::: Downloaded on - 09/06/2013 17:20:44 ::: 23 NMS.2696.2010 evidence in support of their contention that the series of marks containing the word "ONCO" had acquired a reputation by user in the market. This argument is, therefore, not available to the defendant no.1. In view thereof, the decisions cited on behalf of defendant no.1 and set out in paragraphs 11(a), (c), (d) and (e) shall be of no assistance to the defendant no.1. Again in three of the said four cases, both the rival trade marks were registered.
21. The defendant no.1 has contended that the term "ONCO BCG"
being a descriptive term, is not distinctive on the date of filing the trade mark registration application by the plaintiff. Further the said trade mark has not obtained any secondary meaning on the date of filing the trade mark application by the plaintiff, as the plaintiff had used the said term only after applying for the registration of the said term and the usage of the said term itself would not confer any exclusive right over the said terminology. The defendant no.1 has in its affidavit-in-reply, not expressly contended that they are challenging the validity of grant of the trade mark "ONCO BCG" to the plaintiff. Even if the aforestated submission of the defendant no.1 is treated as his challenge to the validity of the grant of trade mark "ONCO BCG" to the plaintiff, the answer to this question is contained in the judgment of this Court in Hindustan Embroidery Mills Pvt. Ltd. (supra) wherein the learned Single Judge pointed out that it is not the practice of this Court to consider the validity of the registration of a trade mark on a motion for interlocutory injunction taken out by the person who has got the mark registered in his name. While the mark remains on the register (even wrongly), it is not desirable that others should imitate it. The decision in the case of Hindustan Embroidery Mills Pvt.Ltd. (supra) is followed by another Single Judge of this Court in Poddar Tyres Limited (supra) (paragraph 41). Even otherwise Section 32 of the Trade Marks Act, 1999 which provides that where a trade mark is registered in breach of Sub-Section 1 of Section 9, it shall not be declared invalid if, in consequence of the use which has been made of it, it has after ::: Downloaded on - 09/06/2013 17:20:44 ::: 24 NMS.2696.2010 registration and before commencement of any legal proceedings challenging the validity of such registration, acquired a distinctive character in relation to the goods or services for which it is registered.
The plaintiff has in paragraphs 5 and 6 of the plaint, set out how the plaintiff has been openly, regularly and extensively been using the said trade mark in relation to its goods. The plaintiff has, after giving figures of annual sales and the amounts expended on sales promotion, technical literature and advertisements as set out in paragraphs 6 and 7 of the plaint illustrated how the trade mark 'ONCO BCG" has become distinctive of the plaintiff's goods, and that the plaintiff has acquired statutory as well as common law rights in the said trade mark and is entitled to use the same in respect of medicinal and pharmaceutical preparations to the exclusion of other manufacturers and/or traders. The defendant no.1 in its affidavit-in-reply has not denied the contents of paragraphs 4 to 7 of the plaint. Instead, in paragraph 18 of the affidavit-in-reply, the defendant no. 1 has stated as follows :-
"18. With reference to para 4 to 7 of the plaint I say that I am not aware of the facts mentioned in the said para and therefore without admitting to any of the contents of the said para puts the Plaintiff to strict proof thereof."
. In my view the plaintiff at this interim stage has set out sufficient evidence in paragraph 5 of the plaint to support its case as set out in paragraphs 6 and 7 of the plaint. It is contended by the plaintiff that it has been in exclusive use of the trade mark "ONCO BCG" and that the trade mark "ONCO BCG" has become distinctive of the plaintiff's goods thereby the plaintiff has acquired statutory as well as common law rights in the said trade mark. It is further contended by the plaintiff that it is entitled to use the said trade mark in respect of medicinal and pharmaceutical preparations in exclusion of other traders and manufacturers. These contentions are not denied by the defendant no.1. In view thereof, the contention of the defendants that the words "ONCO BCG" is not distinctive but descriptive, on the date of filing of the application seeking registration of the trade mark of the plaintiff, thereby dis-entitling the ::: Downloaded on - 09/06/2013 17:20:45 ::: 25 NMS.2696.2010 plaintiff from using the said trade mark, cannot be accepted.
22. The learned advocate appearing for the plaintiff has contended that the balance of convenience is in favour of the plaintiff as against the advocate for the defendants who contend that the balance of convenience is in favour of the defendants. As set out hereinabove, the plaintiff has set out in paragraph 5 of the plaint the figures of annual sales etc. whereas the defendants have not made even a mention as to when the defendant no.1 started manufacturing the vaccines under the impugned trade mark. There is not even a whisper made by the defendants about the annual sales figures or the expenses incurred towards sales promotion, advertisement etc. by them. The only three invoices relied upon by the defendant no.1 to point out the sales of their product "BCO ONCO BP" in Maharashtra are annexed as Exhibits-A to C to the affidavit-in-reply of the defendants and are dated 30th November 2009, 29th June 2010 and 12th July 2010. Admittedly the notice issued by the plaintiff to the defendant no.1 calling upon the defendants to inter alia cease and desist from use of the impugned trade mark upon and in relation to medicinal and pharmaceutical preparations is dated 20th April 2010. The defendant no.1 has in its affidavit-in-reply contended that since the trade mark used by the plaintiff and the defendant no.1 are not at all deceptively similar, the question of conducting search of the register of the trade marks by the defendant no.1 to use the impugned trade mark does not arise. From the above it can be inferred that the defendants are subsequent adopter of the impugned mark and that the defendants adopted the mark with full knowledge of the plaintiff's mark. The defendants therefore cannot raise any plea in equity. This view gains support from the decision of the Division Bench of this Court in Bal Pharma Ltd. V/s. Centaur Laboratories Pvt. Ltd. reported in 2002 (24) PTC 226 (BOM) (DB). The relevant observations contained in paragraphs 9 and 11 of the said decision reads thus:-
"9. Then we turn to the question of delay and acquiescence. Mr. Tulzapurkar, Learned Counsel ::: Downloaded on - 09/06/2013 17:20:45 ::: 26 NMS.2696.2010 appearing for the Respondent cites a judgement of the Supreme Court in Power Control Appliances and others v/s Sumeet Machines Pvt. Ltd. 1994 2 SCC 448 wherein the Supreme Court approvingly referred to the judgment of the Appeal Court in England in Electrolux LD v/s Electirx and quoted a passage therefrom in Paragraph 34 of its judgement. Our attention was also drawn to the judgment in Electrolux itself. Reference to the judgement in Electrolux shows that there is no hard and fast rule that delay per se would defeat an application for interlocutory injunction. The judgement indicates that in a situation where the Defendant to an action has been using the mark, even if concurrently, even if making himself aware of the fact as to whether the same mark is the subject matter of registration and belongs to another person, the first person cannot be heard to complain for he has been using it negligently as much as he has not taken the elementary precaution of making himself aware by looking at the public record of the Registrar as to whether the mark in question is the property of another. If however, he had taken search and, knowing full well that the mark was the property of another person, continues to use the mark then he runs the risk of the registered proprietor challenging his action for infringement and merely because it is done at a subsequent stage, he cannot be heard to complain on the ground of delay. Further discussion in the judgement shows that in order to deny an interlocutory injunction, the delay must be such as to have induced the Defendant or atleast to have lulled him into a false sense of security to continue to use the trademark in the belief of he was the monarch of all he surveyed. In our judgement, such are not the circumstances here. We are not satisfied from the records that a search was taken of the Registry by the Appellant to assure itself that there was no other person who owned the mark MICRODINE. Assuming that the search was taken, and the Appellant has done it consciously, then the Appellant has to thank itself for having gambled by investing large amounts in a risky venture. Either way we do not think that the defense can succeed, at this stage atleast."
"11. Finally, that brings us to the question of balance of convenience. Even on balance of convenience, we are of the view that the Learned Single Judge is right. The damage caused to the goodwill of the proprietor of a trade mark may be intangible and not computable in terms of money, but has long term effect of devaluing the trade mark itself which is the property of the registered proprietor. Another person, who consciously and without taking the ::: Downloaded on - 09/06/2013 17:20:45 ::: 27 NMS.2696.2010 necessary steps to assure himself of existence of such mark, uses it and invest money therein, does not obviously have the balance of convenience in his favour. At any rate, at this stage at least we are satisfied that the Judgement of the Learned Single Judge can not be faulted on the ground of balance of convenience also............."
23. In the decision of Poddar Tyres Limited Vs. Bedrock Sales Corporation Limited and another (supra) the learned Single Judge of this Court has relied on the following observations of the Division Bench of this Court in Express Bottlers Services Pvt.Ltd. Vs. Pepsico Inc. (Appeal No.436 of 1989 in Notice of Motion No.1920 of 1988 in Suit No.2903 of 1986) decided on 8th February 1991 which reads thus :-
"Since, however, it was stated on behalf of the defendant that Kurdukar, J., was in error in declining to consider balance of convenience, we shall touch upon that aspect, though we must make it clear that, in our view, it is only in unusual circumstances that the balance of convenience should play a part in a matter where the plaintiff is the owner of a registered trade mark." (emphasis added) The learned Single Judge after referring to the above observations of the Division Bench held as follows :-
"It is obvious that, in the present case there are no such `unusual circumstances' which would impel the Court to go into the question of balance of convenience in the teeth of the fact that the plaintiffs are the registered proprietors of the trade mark."
24. A Division Bench of this Court in Schering Corporation & Others Vs. Kilitch Co. (Pharma) Pvt. Ltd. (1994-IPLR-1) has relied on the observations of the learned Single Judge of the Delhi High Court in M/s.Hindustan Pencils Pvt.Ltd. Vs. India Stationery Products Co. and another (AIR-1990-Delhi-19) paragraph 39 of which reads thus :
"39. ... ... ... Any infringer who uses or adopts some one else's mark must be aware of the consequences ::: Downloaded on - 09/06/2013 17:20:45 ::: 28 NMS.2696.2010 which may follow. The defendants run the risk in using a mark which belonged to some one else. It continued its business uninterruptedly for a number of years before any action was taken by the plaintiffs against it. Any growth after notice is at the risk and peril of the defendant. The defendant certainly had notice of application of the plaintiff having been filed against it in the year 1985 for cancellation of registration of the copyright. The defendant should have been warned at that stage, that the plaintiff is not likely to accept the user of its mark by the defendant. If the defendant continued to do business by using the impugned mark, it did so at its own peril. The continued user cannot be set up as a defence under these circumstances."
25. In my view, considering the facts in the present case and the aforestated decisions, there is no manner of doubt that the balance of convenience is in favour of the plaintiff and against the defendants.
26. In the above circumstances, the Notice of Motion is allowed in terms of prayer clauses (a) and (b). The defendants shall pay costs of the Notice of Motion to the plaintiff.
27. The learned advocate appearing for defendant no.1 prays for stay of the operation of this order. At his request, the effect and operation of this order is stayed for a period of four weeks from today.
(S.J.KATHAWALLA, J.) ::: Downloaded on - 09/06/2013 17:20:45 :::