Bombay High Court
Indchemic Health Specialities Pvt. ... vs Naxpar Labs Pvt. Ltd. And Anr. on 5 June, 2002
Author: P.V. Kakade
Bench: P.V. Kakade
JUDGMENT P.V. Kakade, J.
1. This notice of motion is moved by the plaintiff in the suit filed against the defendants inter-alia seeking permanent injunction restraining the defendants from using to any medicinal or pharmaceutical preparations the impugned mark CHERISH and/or any other which is identical and/or deceptively similar Trade Mark so as to infringe the Trade Mark CHERI of the plaintiff registered under No. 472197 dated 14.5.1987 in Class-5 in respect of pharmaceutical preparations under the Trade Mark & Merchandise Marks Act, 1958 and also to restrain the defendants from passing off their goods as and for the plaintiffs goods and for damages as well as for appointment of the Court Receiver and for interim and ad-interim reliefs as prayed for in the plaint. The plaintiff has stated that, it carries on business of manufacturing and selling medicinal and pharmaceutical preparations. The 1st defendant also carries on business of medicinal and pharmaceutical preparations. The 2nd defendant also carries on business of manufacturing and selling medicinal and pharmaceutical preparations. In the present case, the 1st defendant is marketing a product under the Trade Mark CHERISH as a Licensee of the defendant No.2. The 2nd defendant claims to be the proprietor of the Trade Mark CHERISH and has allowed the 1st defendant to use the said Trade Mark CHERISH in respect of pharmaceutical preparations manufactured by the 1st defendant.
It is the case of the plaintiffs that, it is a registered proprietor of a Trade Mark CHERI which mark is registered as of 14th May, 1987 in respect of pharmaceutical preparations. The registration is valid and subsisting. The suit is filed against the defendants to restrain them jointly and severally from using the Trade Mark CHERISH in respect of medicinal and pharmaceutical preparations on the ground that, by using the Trade Mark CHERISH the defendants are infringing the plaintiffs Trade Mark CHERI and the defendants are also passing off their goods as and for the goods of the plaintiff. According to the plaintiff, they are using the Trade Mark CHERI from May, 1987, whereas the defendants started selling their products under the Trade Mark CHERISH in June, 2000. Therefore, the plaintiff gave cease and desist notice to the 1st defendant on 12th October, 2000 to which the 1st defendant replied on 17.11.2000 contending that the Trade Mark CHERISH was owned by the 2nd defendant and that the mark was different from the plaintiffs Trade Mark CHERI. The plaintiff carried on further correspondence with the defendants and ultimately filed the suit and has taken out the notice of motion.
This Court, on an application made by the plaintiff for ad-interim reliefs, passed an order on 30th August, 2001 holding that the two words were totally different and that, there was no possibility of any confusion and also there was a delay in making the application for injunction and hence the application for ad-interim reliefs came to be rejected.
Against the said order, on an appeal preferred by the plaintiffs, the Division Bench of this Court, by order dated 5th October, 2001 set aside the order of the learned Single Judge and came to the conclusion that it was not possible to sustain the order of the learned Single Judge and that the two words CHERISH and CHERI were structurally, visually and aurally similar and that the similarity gave rise to deception and confusion. The Division Bench also concluded that there was no delay so as to refuse grant of temporary injunction and, therefore, granted ad-interim injunction in terms of prayer clauses (a) & (b) of this notice of motion. The defendants were given four weeks time to dispose of the goods already manufactured by them subject to the defendants filing the stock statement with the Prothonotary & Sr. Master.
2. The Special Leave Petition preferred by the defendants to the Apex Court was dismissed with observation that the notice of motion be decided within three months from 5th November, 2001. Thereafter the defendants have filed the detailed affidavit dated 26.11.2001 in reply to the notice of motion. The plaintiffs have also filed their affidavit on 31.1.2002 in rejoinder and has also filed affidavits of doctors, chemists and consumers in support of the notice of motion. Similarly the defendants have also filed affidavits of consumers and doctors.
On the back ground of these facts, this notice of motion has come up for final hearing. I have heard Mr. Virag Tulzapurkar for the plaintiff at length as well as Mr. Shah for the defendants. the defendant No.1. I have also perused the entire documents on record alongwith the affidavits filed by the parties in support of their respective contentions. The documents annexed to the plaint vide Exhs. C, C-1 and C-2 show the cartons of the plaintiffs product CHERI which is in various forms i.e. syrup, capsules and chewable tablets, etc. Similarly, Exhs. F-1 to F-3 show the catalogues of plaintiffs products. As against this, the defendants products are annexed with Exhs. G & G-1. The learned counsel for both parties also invited my attention to the actual products of both companies so as to observe those to make necessary assessment.
3. The evidence on record, at this stage, shows that the plaintiff is the registered proprietor of the Trade Mark CHERI in respect of medicinal and pharmaceutical preparations and the registration is valid and subsisting. Therefore, by virtue of provisions of Sec. 28 of the Trade Marks Act, the plaintiff has the exclusive right to the use of the Trade Mark and also to obtain relief in respect of the infringement of the Trade Mark in the manner provided by the Act. By reason of the said registration, the plaintiff is entitled to prevent any person from using any identical Trade Mark or a Trade Mark which is deceptively similar to the plaintiffs registered Trade Mark in respect of pharmaceutical preparations. The defendants have Trade Mark CHERISH and the use of the said mark CHERISH definitely amounts to an infringement of the plaintiffs Trade Mark CHERI.
It is worthwhile to note that the impugned mark CHERISH of the defendants is deceptively similar to the plaintiffs registered Trade Mark CHERI under Sec. 2(d) of the Trade Marks Act which provides that the mark shall be deemed to be deceptively similar to another mark if it so nearly resembles that other mark as to be likely to deceive or cause confusion. For consideration whether the impugned mark is deceptively similar to the plaintiffs registered Trade Mark, the Court has to judge the visual, phonetic and structural similarity. The test that is applied by the Court is to ascertain whether the essential features of the registered mark are copied. In the instant case, the whole of the plaintiffs registered Trade Mark CHERI is incorporated by the defendants in their Trade Mark CHERISH. Therefore, in my view, all the essential features of the plaintiffs registered Trade Mark CHERI are no doubt copied by the defendants in their Trade Mark CHERISH. The learned counsel for the plaintiff sought to rely upon various rulings of the Apex Court as well as this Court. He also referred to the case of De Cordova & ors. v/s Vick Chemical Coy. 58 RPC 103. In that case, the proprietors of the word VapoRub filed a suit against the defendants, who were using the mark Karsote Vapour Rub. The Trial Court held that there was no infringement. The Court of Appeal also reversed the decision of the Trial Court. The defendants appealed to the Privy Council. The Privy Council held that the word VAPORUB was an essential feature of the plaintiffs Trade Mark and the words VAPOUR RUB closely resembled the plaintiffs registered Trade Mark as to be likely to deceive and held that there was an infringement. It was held that the likelihood of confusion or deception is not disproved by placing two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both marks clearly before him, for orders are not placed, or are often not placed, under such conditions. It is worthy to observe that, in most persons, the eye is not an accurate recorder of visual detail and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole. Therefore, the test to be applied is, whether an average purchaser with an average intelligence and imperfect recollection is likely to be in a statement of wonderment. In fact, there are several rulings of the various Courts on this point. However, the legal position is aptly crystalyzed in the recent ruling of the Supreme Court in the case of Cadila Health Care Ltd. v/s Cadila Pharmaceuticals Ltd., , wherein various factors are laid down which are required to be taken into consideration for deciding the question of deception and similarity. It is observed that following factors are required 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 of 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.
(g) Any other surrounding circumstances which may be relevant in the extent of dissimilarity between the competing marks.
The Supreme Court has further observed that, in India there is no single common language, large percentage of population is illiterate and a small fraction of people know English, then to apply the principles of English law regarding dissimilarity of the marks or the customer knowing about the characteristics of the plaintiffs case seems to overlook the ground realities in India. While examining such cases in India, what has to be kept in mind is the purchaser of such goods in India who may have absolutely no knowledge of English language or of the language in which the Trade Mark is written and to whom different words with slight difference in spellings may sound phonetically the same. In case of pharmaceutical preparations, the Court does not have to see as to whether there is probability of confusion. The Court has to consider whether there is a possibiliy of confusion and in respect of scheduled drugs, there is likelihood of confusion.
In view of this position, the defendants contention that there is no similarity in the mark because the ideas conveyed by the two marks are different cannot be held to be sustainable in law. In view of these aspects, I have no hesitation to hold that the mark of the defendants is deceptively similar to that of the plaintiffs and, therefore, strong prima facie case is made out by the plaintiffs.
4. The learned counsel for the defendants raised various contentions supported by various rulings which I have carefully gone through. It is pointed out on behalf of the defendants that the application for rectification made by them against the Trade Mark of the plaintiffs is pending and, therefore, no inter-locutory order by way of injunction may be passed or in the alternative suit may be stayed pending the application for rectification. It appears that this contention raised by the defendants has two aspects. Firstly, it is pointed out that, while considerating the application for interim relief, the Court is bound to take into consideration the pendency of the application for rectification. Secondly, in view of Sections 28 and 111 of the Trade Marks Act, the Court is not debarred from granting interim reliefs which necessarily mentions that the Court must take into consideration the merits of the defendants application for rectification and if the Court is prima facie satisfied that the plaintiffs registration of the Trade Mark is prima facie invalid, no injunction should be granted. I may note that, in this regard it is settled legal position so far as this Court is concerned to the effect that in an action for infringement, at an interim relief stage, the Court does not take into consideration the fact of pendency of the application for rectification. In support of this aspect, the learned counsel for the plaintiffs sought to rebutt the arguments for the defendants with the help of rulings of this Court in Hindustan Embroidery Mills Pvt. Ltd. v/s K. Ravindra & Co., reported in 76 B.L.R. 146 as well as Bedrocks case reported in 1993 IPLR 153, and Biochem case reported in 1998 PTC (18) wherein, on principle it is laid down that in an infringement action the Court does not go into the question of validity of the registered Trade Mark. In Biochem case, this Court has held that in a suit for infringment, at the inter-locutory stage, the Court is not concerned with the case of rectification of the application. Further it is apparent that the question is not what is the ground for rectification. The question is, whether the plaintiff can be refused injunction rejecting the reliefs merely because it has right to file a suit for infringement is challenged on the ground that its registration is challenged. In my considered view, the ground for rectification does not make any difference as to the principles laid down in the said above noted rulings of this Court that in a suit for infringement, at the interim stage, the Court is not concerned with the pendency of or the merits of the application for rectification and it is immaterial as to whether the registration is challenged on the ground that the proprietor of the Mark has no title or that the assignment in his favour is unsupported or that the Mark registered is not capable of being registered. In other words, the principle is that, once the Mark is registered, the registration of the Mark for all purposes is prima facie valid as per Sec.31(1) of the Trade Marks Act. Therefore, in my view, the submission advanced on behalf of defendants in this regard is devoid of any merits.
5. It was further urged on behalf of the defendants that the plaintiffs Mark being deceptive is not entitled to remain on the register and, therefore, no injunction should be granted at this stage. However, in my considered view, even after perusing the various rulings relied upon on behalf of the defendants, this submission is not tenable because this Court is not concerned with register of the plaintiffs mark and, therefore, the judgments cited on this point on behalf of the defendants are not relevant to the facts of the present case. In other words, this Court, in view of the provisions of Sec. 31 of the Trade Marks Act, is bound to presume as a matter of law, prima facie that the plaintiffs registration is valid. This Court is not considering the application for rectification and, therefore, I hold that the said submission on behalf of the defendants is also without any merits.
6. The learned counsel for the defendants further urged that there is no dishonesty in adopting their Mark CHERISH. In this regard, it must be noted that the plaintiff has challenged the submission that the defendants had taken official search. This statement is not denied by the defendants. The defendants, as it is clear from the record, have clearly suppressed the official search report if at all there was any and, therefore, it must be presumed that the defendants have adopted the mark CHERISH with the full knowledge of the plaintiffs registered trade mark CHERI and, therefore, adoption of the defendants of the impugned mark CHERISH cannot be said to be honest. In fact, the learned counsel for both defendants raised various objections at this stage with submission that no interim injunction can be granted in favour of the plaintiffs under the given situation. However, taking into account all the relevant aspects, I have no doubt whatsoever that the plaintiffs have proved its prima facie case in this regard. Moreover, the principle of balance of convenience also tilts in favour of the plaintiff. The defendants have adopted the trade mark and that too with the full knowledge of the plaintiffs trade mark. In infringement action the question of balance of convenience cannot outweigh the safeguards required to be provided by granting injunction to prevent confusion and deception. Under the circumstances, I hold that the plaintiff have proved its prima facie case and has established that the principle of balance of convenience tilts in its favour. It is also apparent from the record that, irreperable injury would be caused to the plaintiffs if the injunction is not granted at this stage.
7. Hence, the notice of motion is made absolute in terms of prayer clauses (a), (b) & (c). At this stage, the learned counsel for the defendants requested for stay of the order for two weeks. The plea stands rejected.
Notice of motion stands disposed of.