Bombay High Court
Wyeth Holdings Corp. And Anr. vs Sun Pharmaceuticals Industries Ltd. on 30 September, 2003
Equivalent citations: 2004(28)PTC423(BOM)
Author: F.I. Rebello
Bench: F.I. Rebello
JUDGMENT F.I. Rebello, J.
1. Plaintiff No. 1 is the registered proprietor in India of the trade mark "Pacitane" bearing registration No. 144173 in respect of "Trihexylphenidyl, Anti Spasmodic Preparations" under Clause 45 of the schedule to the trade mark rules 1959 as on 27.6.1950. Prior to 3.4.2003 name of the first Plaintiff was American Cynamid Company. On 30.4.1986 Proper Registered User Agreement was entered into between the 1st Plaintiff and Cynamid India Limited. On 12.9.1997 name of Cynamid India Limited was changed to Wyeth Ledarie Limited. On 1.4.2003 name of American Cynamid Company was changed to Wyeth Holdings Corporation i.e. the second Plaintiff. Annual Sales for the year 1981-82 are set out in Paragraph 7 Exh. G to the plaint. Similarly annual promotional expenses for the years 1986-2000 are set out in Exh. H to the plaint. It is the contention of the Plaintiff's that in the year 2000 it was brought to the notice of the 2nd Plaintiff that the defendants had started manufacturing and marketing a pharmaceutical preparation under the trade mark "Parkitane" and gave notice to the defendants complaining about the use by the defendants of the mark "Parkitane". No reply was received. On 14.2.2002 Plaintiff No. 2 gave notice to which reply was received from advocates for defendant on 3.6.2002 adverting to earlier reply given on 2.3.2000 and contending the marks were not similar. In June, 2003 suit was filed for infringement and passing off. The Plaintiff's in the present motion have sought various reliefs to restrain defendants, their servants, agents, distributors and stockists from manufacturing, exporting, selling or distributing the goods under trade mark Parkitane or any other trade mark which is infringement or deceptively similar to registered trade mark Pacitane of the Plaintiff's. There are also other reliefs which need not be adverted to.
2. Plaintiff's in support of the motion have filed affidavit of Mr. C.R. Godse, Manager-Legal of Defendant No. 2. Reply has been filed on behalf of defendants by Ravi Krishnamurti opposing grant of ad-interim relief. It is contended that the Plaintiff's notice of Motion and suit suffers from gross delay, laches and acquiescence and on this count alone it will have to be dismissed. It is specifically set out that the Plaintiff's were aware of the use of the trade mark Parkitane by the defendants at least from February, 2000 in relation to the said medicine and pharmaceutical preparations used in the treatment of Parkinson. That the Plaintiff No. 2 addressed letter dated 11.2.2000 to the defendants where it was contended that the defendants mark Parkitane was deceptively similar to the Plaintiff's trade mark Pacitane and use thereof by the defendant was constituting infringement of Plaintiff's registered trade mark pacitane . It is also pointed out that the plaintiff had alleged that by using the trade mark Parkitane defendants were also passing off their goods as that of the Plaintiff's. Defendants had replied to the said letter dated 2.3.2000 denying any similarity between Plaintiff's trade mark and defendant's trade mark. It was further contended that the defendants preparation is a scheduled drug and they are required to be dispensed only on the advice of medical practitioner and therefore, question of confusion or deception would not arise. Plaintiff's, it is contended, did not take any action whatsoever against the Defendants. The Defendants continued the use of said trade mark Parkitane and gradually have increased and stepped up sales promotional activities to promote and boost the sales thereof. Reference is then made against to the letter dated 14.5.2002 from Plaintiff No. 2 and the reply filed by defendants by letter dated 6.6.2002. Defendants contend that they set out how they adopted their trade mark parkitane and further contended that the same was distinct and dissimilar to the Plaintiff's trade mark Pacitane. It was further contended that the trade mark Parkitane was adopted by the Defendants by taking the prefix from the disease Parkinson for the treatment of which the said preparation is used for and the said prefix was combined with the commonly used suffix TANE. It is also contended that the prefix PACI of the Plaintiff's mark was also being commonly used by several manufacturers who had either obtained registration or applied for the same. The rival prefixes were distinct and dissimilar and being commonly used and are easily identifiable and are well recognized as distinct prefixes. The details of the various trade marks of which the above said prefixes and/or suffixes were forming part were given by the Defendants in the said letter. As the Plaintiff's had not taken any action, the defendants continued with the promotion and sale of their said goods bearing the mark PARKITANE and have spent huge amount of money and efforts on the sales promotion of the said goods and have created a large market for its said goods bearing the mark PARKITANE. Plaintiff's it is contended have filed a suit after the period of three years containing the similar allegations and contentions and are seeking an ad-interim relief of injunction restraining the Defendants from using the trade mark PARKITANE. Contentions as raised in two letters are once again reiterated as defence in the reply filed. It is specifically set out that by virtue of extensive and exclusive use of mark Parkitane defendants acquired, proprietary rights thereof. The medical profession, trade and public excessively associate and identity the medicinal preparation bearing the trade mark PARKITANE as originating from the Defendants alone. It is further pointed out that the Plaintiff's and defendant's goods are meant for the treatment of Parkinson disease and no patient goes and buys the said goods over the counter without producing any prescription of a doctor. These medicines are not bought like other medicinal preparations. It is also pointed out that they are being bought only in a peculiar circumstances and are consumed only under medical supervision. The very nature and purpose of the product and the manner in which the purchases of the same are made also acts as a safeguard against any confusion and/or deception between the rival goods. For all these reasons, it is contended that no relief by way of ad-interim injunction should be granted in favour of the Plaintiff.
3. On behalf of the Plaintiff's their learned counsel submitted that they are registered proprietors of the trade mark PACITATE, the registration of which is valid and subsisting. The defendants mark PARKITANE is in respect of identical goods or for identical aliments. What the court has to consider it is contended, is whether the word mark Parkitane is deceptively similar to registered trade mark Pacitane so as to be likely to cause confusion and even deception. Reliance is placed on comparison of work mark in the Piunotist's case 23 RPC 774. It is set out that these principles are reiterated in Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., 2001 PTC 300 (SC). It is specifically set out that in case of Pharmaceutical products, the test is of possibility of confusion and not probability of confusion. Reliance is than made to the judgment of the Division Bench of this Court in Medley Laboratories (P) Ltd., Mumbai and Anr. v. Alkem Laboratories Limited, 2002 (25) PTC 592 where the ratio in Cadila's case has been applied. In answer to the contention that delay would disentitle the defendants to any reliefs, reliance is placed in the judgment in 7994 IPLR 1 and also some other judgments. Insofar as contention of acquiescence, it is contended that defendants always knew of the Plaintiff's mark. Hence, they did not make any mistake in adopting the mark. Therefore, they cannot urge acquiescence. Reliance is placed on Wilmott v. Barber, 15 Ch, D. 95 (1879). It is also contented that the Plaintiff have never encouraged the defendants in use of the impugned mark. To the contention that there are marks on the register containing the words PACI and TANE, it is pointed out that mere existence of marks on the Register is of no use. Defendants must show the extent of such user. Reliance is placed in Corn Products v. Shangrilla Products, . It is then contended that defendants having applied for registration are not entitled to plead that mark containing PACI or TANE cannot acquire distinctiveness. Reliance for the purpose is again placed in the case of Corn Products v. Shangrilla Products, and in the matter of an application by William Bailey (Birmingham) Ld. to Register a Trade mark, (1935) 52 RPC 136 as also in (1966) RPC 152. That the goods are available only on Doctor's prescription it is contended is no longer a determining criterion. Reliance is placed in the case of Cadila (supra). Even if there be delay, it is contended considering facts and circumstances, Plaintiff's are entitled to ad-interim relief. Reliance for that purpose is placed in the judgment of Anglo-French Drugs and Industries Ltd. v. Eisen Pharmaceutical Company Pvt. Ltd., 1998 PTC 692. Considering the test of balance of convenience as the Plaintiff's are in the field since 1950 it is in their favour as defendants are recent entrants. In order to prevent confusion it is therefore, contended that the Plaintiff's are entitled to the reliefs as prayed for.
4. On behalf of the Defendant their learned counsel contends that both the Plaintiff's and defendants are large Indian Pharmaceutical companies. The products of both Plaintiff and defendants are scheduled drugs in the treatment of Parkinson's disease. The composition of both products is also the same. They have been openly selling the scheduled drugs under the trade mark PARKITANE since October, 1999. As the Plaintiff's, are in the same field and the two drugs being for the treatment of the same ailment and of same active ingredient and composition, the Plaintiff's were aware of the same from the very inception and yet the Plaintiff's did take any steps. The defendant's business under the trade mark PARKITANE therefore, grew and has flourished and the trade mark has acquired increasing reputation, goodwill and popularity. The learned counsel has adverted to two notices served and reply filed. Inspite of that no steps were taken by the defendants. The learned counsel relies on the sales figures as and upto 2000-2002. For 1999-2000 the sales were Rs. 14.75 lacs for 2000-2001, these increased to Rs. 25.37 lacs. For the year 2002-2003 their sales increased to Rs. (sic) 2003, the total sales under the Defendant's mark exceed Rs. 87.77 lacs. As the Plaintiff's inspite of this took no steps, it is not open for the Plaintiff to ask for any ad-interim relief and shut down a business and goodwill which has been built up, to the Plaintiff's admitted knowledge over 4 years. It is contended that the Plaintiff's are not concerned with the defendants using trade mark PARKITANE but the fact that both treat the same disease/ailment and both have the same composition/active ingredient. The Plaintiff's conduct is not merely indicative of delay and laches, but is constitutes acquiescence. In answer to the contention of the Plaintiff that the took no action because of the decline in sales after the first notice and the second notice was addressed only when there was a spurtin sales, it is submitted that the explanation is both false and dishonest and the sales figures would show that there was no reduction in sales and on the contrary sales of the defendants have only increased.
5. It is then submitted that as interlocutory relief is equitable and discretionary. Delay would be ground to refuse to grant interlocutory relief and that different considerations should be applied to case where injunction is sought to prevent use and where an injunction is sought to discontinue an existing business which is already underway. Reliance is placed on Antox v. Wander and some other judgments. It is then submitted that in trade mark matters a person aggrieved needs to move with utmost dispatch while seeking interlocutory relief and the judgments relied upon by the Plaintiff's arc clearly distinguishable.
6. Pointing to the ratio of the case of Hindustan Pencils which ration has been followed by this Court in Schering Corporation (supra) it is contended that in those cases Plaintiff had immediately moved to assail the Defendant's user for cancellation of copyright. Only a suit for infringement was filed later. There was no inaction or encouragement as in the present case. The Schering Corporation (supra) was a case of interim relief and not for ad-interim relief. The delay alleged was one year and in that case, Plaintiff had enforced their right by filing a criminal complaint. Hence, it cannot be said in that case that there was inaction but a different legal remedy was employed to curb/check the infringement. The facts of the present case, it is submitted are clearly different and distinguishable. At the hearing reliance was also placed in the unreported judgment in the case of Bal Pharma Limited v. Wockhardt Limited and Ors., in Appeal No. 498 of 2002 in Notice of Motion No. 225 of 2002 in Suit No. 1305 of 2002 decided on 12.6.2002 to contend that a Division Bench of this Court has taken a view that in respect of similar pharmaceutical preparations judgment in Cadila would be inapplicable. For all these reasons, it is contended that this court should refuse to grant any ad-interim relief.
7. With the above, it will have to be considered whether on the facts pleaded that arguments advanced, Plaintiff's have made out a strong prima facie case warranting grant of ad-interim injunction and whether they have made out a case of irreparable loss and injury and shown that balance of convenience is in their favour. For the purpose of comparison of marks, gainful reliance can be placed in the judgment of Lord Parkar in Pianotist Co. Ltd's case in (1906) 23 RPC 774. It was a case of comparison of two words. This is how the law has been summed up:
"You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks. If considering all those circumstances, you come to the conclusion that there will be a confusion - that is to say not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods then you may refuse the registration, or rather you must refuse the registration in that case".
8. Applying these tests, the Plaintiff's mark is PACITANE whereas defendant's mark is PARKITANE. It is admitted position that the goods are similar and that both are medicinal preparations for treatment of Parkinson's disease. The customers who will be buying these goods are the same. In other words, the marks to which the goods are to be applied are the same and the customers are the same. The trade channels are the same. In the two marks one has the prefix PACI and other prefix PARKI. Suffix is the same. Comparing this, it will be difficult to hold that the word PARKITANE is not deceptively similar to the word PACITANE.
9. The Plaintiff's have sought relief of infringement of their registered mark. Insofar as registered mark is concerned if it is held that the same is identical, the other tests are altogether irrelevant and immaterial. However, the two marks are deceptively similar.
10. Once that be the case, the only other aspect that will have to be considered is whether on the ground of delay and laches Plaintiff's would not be entitled to the reliefs as prayed for.
11. Before dealing with this aspect, it will be necessary to refer to the two Judgment of the Division Benches of this Court in the case of Medley (supra) and the un-reported judgment in the case of Bal Pharma (supra). Insofar as Medley is concerned, mark of the Plaintiff/Appellant was SPOXIN and the mark of Defendant/Respondent was SUPAXIN. The Division Bench held that the mark SUPAXIN is deceptively similar to the Plaintiff's registered trade mark SPOXIN. In that case, the Single Judge has refused to grant ad-interim injunction for the various reasons are set out in Paragraph 14. They may be reproduced herein:
"(i) The two marks SPOXIN and SUPAXIN are not phonetically similar;
(ii) The packing of both the products is different;
(iii) They are not sold across the counter, but are prescribed drugs;
(iv) The explanation offered by the defendant for adoption of mark SUPAXIN is a plausible explanation;
(v) There is nothing on record to show that there was confusion on the part of the customers. On the contrary, from the affidavits of doctors and chemists, it is clear that both the medicines are different,
(vi) Both the parties entered the market almost simultaneously;
(vii) The suit was filed by the Plaintiff's as late as in July, 2001;
(viii) The sale of the defendant was over 60 lacs per month-much more than that of the Plaintiff's;
(ix) There is nothing on record to show that by administering the drug prescribed, if a wrong drug is given, there is likelihood of repercussion on health."
12. These are the same or similar defences which the defendants have raised herein. The Division Bench however, held that once the Plaintiff's mark is registered all that the Plaintiff had to show was that the defendant's mark was deceptively similar to that of the Plaintiff. Considering that Plaintiff's had registration in their favour, they had exclusive right to use of the mark and are entitled to prevent any other person from using the identical mark and or deceptively similar to the said mark. The Division Bench further reiterated the principles in Cadila, that in the case of medicinal preparations what the behalf of court has to consider is not the chances of the but chances of possibility.
13. The other contention on behalf of the defendant was that apart from the similarity, Plaintiff's must also establish dishonest adoption of the mark. It is contended that they have explained the circumstances under which the mark has been adopted. The Plaintiff's in reply through their learned counsel contends that the defendants have nowhere disclosed that they had taken search of the register before adopting the mark. To my mind at this prima facie stage, this will be an important consideration to hold that the defendants have been unable to establish that the adoption of the mark was honest. The Plaintiff's have been complaining right from March, 2000 onward, that defendants mark is similar to the mark of the Plaintiff. Coming to the judgment in the case of Bal Pharma, it is no doubt true that the learned Division Bench has taken a view that in the case of identical preparations the ratio in Cadila would not be applicable. It would have been necessary to advert to this judgment but for the fact that in that case, the Division Bench held that the two marks were not similar or deceptively similar by holding that the words "AZIWIN' and the word "AZIWOK" are not similar. In the instant case, the finding is that they are deceptively similar.
14. Let us now come to the aspect whether the delay in moving the court would disentitle the Plaintiff's to ad-interim relief or there has been any acquiescence on the part of the Plaintiff's. Insofar as acquiescence is concerned, merely because the Plaintiff did not choose to take legal proceedings against defendant, by itself can be no answer, Plaintiff's have been protesting to the defendants considering the use of the mark first in the year 2000 and thereafter in the year 2002. Inspite of protest, if the defendants have chosen to continue to sell the products, it cannot be said that the Plaintiff has so acquiescened. In fact in Schering (supra) the Division Bench of this court quoted with approval Paragraph 39 of the judgment in Hindustan Pencils Pvt. Ltd. v. India Stationery Products Co. and Anr., . It will be necessary to reproduce part of the said paragraph:
"... Any infringer who uses or adopts some one else's mark must be aware of the consequences which may follow. The defendants ran 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 Plaintiff's 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's 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..."
15. In the instant case, no doubt the defendants have applied for registration. That however, would not be to the knowledge of the Plaintiff in the absence of the same being published. The Plaintiff's had issued notices to the defendants complaining of infringement of their registered mark. In the matter of grant of relief at ad-interim stage, we may refer to the judgment of the learned Judge in the case of Anglo (supra) where in the case of grant of ad-Interim relief, a learned Single Judge of this Court was pleased to observes as under:
"There can be no dispute with the propositions of law. However now, sad it is, the reality is that notices of motion do not reach hearing for years. If therefore, at the ad-interim stage itself the Court is even prima facie satisfied that the marks are deceptively similar and that the adoption is dishonest, not to grant relief would amount to encouraging dishonest parties to use laws delays. If an injunction were to be refused defendants would continue to use the deceptively similar mark and the loss caused to Plaintiff's would be irreparable." The said observations have been approved by the Division Bench of this court in In-dchemie Health Specialities Pvt. Ltd. v. Naxpar Labs Pvt. Ltd. and Anr., 2002 (24) PTC 341.
16. Considering the above, as the Plaintiff's have been able to establish that the Defendant's mark is deceptively similar to their mark and the Defendants have been unable to show honest adoption, this will be a fit case where at an ad-interim stage itself, injunction will have to be granted considering that they are medial preparations. All the three relevant tests for grant of temporary injunction have been satisfied by the Plaintiff's. They have made out a strong prima facie case. Irreparable loss and injury would be caused to them and also balance of convenience is in their favour. In the light of that, following order:
17. There will be ad-interim relief in terms of Prayer Clause (a) except portion bracketed in red as also prayer Clause (b) except for the portion bracketed in red as also Prayer Clause (c).
18. On behalf of defendants, their learned counsel contends that considering that they are in the market for over four years, on the facts and circumstances, order be not given effect for the period of eight weeks. Considering the facts and circumstances, order not to give effect for the period of eight weeks from today.
19. All parties to act an ordinary copy of this order duly authenticated by P.A. C.C. expedited.