Delhi District Court
M/S. Wing Pharmaceuticals Pvt. Ltd. vs . M/S. Will Mark Pharmaceutical Pvt. ... on 9 April, 2014
M/s. Wing Pharmaceuticals Pvt. Ltd. vs. M/s. Will Mark Pharmaceutical Pvt. Ltd.
In the Court of Additional District Judge02, South District,
Room No. 602, Sixth Floor, Saket Courts Complex, New Delhi
In the matter of :
TM No. 75/2011
M/s. Wing Pharmaceuticals Pvt. Ltd.,
Registered Office : J13, Udyog Vihar,
Near Peeragarhi Chowk,
Main Rohtak Road, New Delhi110041.
Administrative Office :
61, Anand Lok, August Kranti Marg,
New Delhi110049.
...... Plaintiff
Versus
M/s. Will Mark Pharmaceutical Pvt. Ltd.,
Majitha Road,
Amritsar143004.
...... Defendant
Date of Institution :18.08.2010
Decision Reserved on :15.03.2014
Date of Decision :09.04.2014
TM No. 75/2011 Page 1 of 12
M/s. Wing Pharmaceuticals Pvt. Ltd. vs. M/s. Will Mark Pharmaceutical Pvt. Ltd.
JUDGMENT
{on Suit under sections 27(2), 28 & 29 r/w Sections 134 & 135 of the Trade Marks Act, 1999 & Sections 51 & 55 of the Copyright Act, 1957 for Permanent Injunction}
1. (Plaintiff's Case) - Plaintiff M/s. Wing Pharmaceuticals Co. is a company incorporated under the Indian Companies Act, 1956, having its registered office at J13, Udyog Vihar, near Peeragarhi Chowk, Delhi41 and its Administrative Office at 61, Anand Lok, August Kranti Marg, New Delhi49, its Certificate of Incorporation has been issued by the Registrar of Companies (its true copy is now Ex. PW1/2). Shri R.K. Arora, Director has been authorized by Resolution dated 01.10.2002 (now Ex. PW1/1) to sign, verify and institute the suit. The plaintiff has been in the business of manufacturing and marketing pharmaceuticals preparations for more than two decades, its website www.wingspharma.in is also maintained. The paragraphs 2 to 15 of the plaint, narrates about the history of the company its activities visavis as to how it has been developing its turnover and geographical area with regard to its products. In nutshell, the plaintiff has a manufacturing unit with well equipped state of art machines and sophisticated testing equipments and modern research and TM No. 75/2011 Page 2 of 12 M/s. Wing Pharmaceuticals Pvt. Ltd. vs. M/s. Will Mark Pharmaceutical Pvt. Ltd. development laboratories. In the year 1990, it adopted trademark DICLOWIN in respect of an antiinflammatory analgesic, the trademark DICLOWIN is an invented / coined name and in the year 1994, plaintiff added suffix PLUS to its trademark.
2. The plaintiff has been issued license by the office of Drug Controllers in respect of pharmaceutical preparations (now Ex.PW 1/3) being manufactured and marketed by the plaintiff. The trademarks of plaintiff and pharmaceutical preparations manufactured have been in use extensively and continuously throughout in India and it has acquired reputation of being extremely safe and reliable drug because of quality standard being maintained by the company. That is why the pharmaceutical preparations under the trade mark 'DICLOWIN' and 'DICLOWIN PLUS' have come to signify the products originating from the plaintiff company exclusively. Apart from common law rights vested by virtue of prior adoption and use the trade mark 'DICLOWIN' of the plaintiff is also a registered trademark in favour of plaintiff vide no.523705 in class V dated 31.1.1990 in the office of Registrar of Trade Mark, it has been also got renewed (now Ex.PW 1/4) and legal TM No. 75/2011 Page 3 of 12 M/s. Wing Pharmaceuticals Pvt. Ltd. vs. M/s. Will Mark Pharmaceutical Pvt. Ltd. proceedings certificate has also been issued in respect of registration in favour of plaintiff, as detailed in para 6 of the plaint, ( the same are now Ex.PW 1/5 collectively) In July, 2001 the plaintiff modified the blister pack incorporating three colour printing instead of one single colour as a distinctive logo of plaintiff company, the said packing of plaintiff also constitutes a trade mark of which plaintiff has sole and exclusive right of use under the common law and under the provisions of Trade Mark Act, 1999. The plaintiff also filed application for registration of distinctive green colour blister label with the Office of Registrar of Trade Mark on 19.10.2008 which has been accepted and the said trade mark is duly registered in the favour of plaintiff. In addition on 28.03.2004 the plaintiff also filed application in the office of Registrar of Copyrights, New Delhi, the blister label was registered as an artistic work on 28.4.2005 (the certificate is now Ex.PW 1/6). In November, 2000 the plaintiff first time introduced in the market a large dispenser pack having distinctive and eye catching features and also applied for registration of trademark of said dispenser pack as a label, which was duly registered. The plaintiff applied for registration of copyright in respect of dispenser pack on 28.3.2005 to the office of TM No. 75/2011 Page 4 of 12 M/s. Wing Pharmaceuticals Pvt. Ltd. vs. M/s. Will Mark Pharmaceutical Pvt. Ltd. Registrar of copyright, the same was registered on 27.4.2005. A sample copy of plaintiff's blister pack and certified copy is now Ex.PW 1/7. The plaintiff has been advertising its product under the said blister/dispenser pack and trademark 'DICLOWIN PLUS' in trade journals and other promotional literature including Satellite television and it has been spending more than Rs.6 crore in respect of popularizing the said pack. The plaintiff has earned reputation, goodwill and that is why there is huge turn over of its product, general public refers it ' hari panni wali goli'.
3. However, in second week of August, 2010 the plaintiff came to know that the defendant under a deceptive trademark 'DICLOWOL PLUS' and that too in green colour blister pack adopted the trademark of plaintiff with a view to trade upon the goodwill and reputation of plaintiff registered trademark 'DICLOWIN PLUS' and defendant has been carrying on such activities within the jurisdiction of this court by infringing mark clandestine manner without the issuance of any bill/cash memo, the samples (now Ex.PW 1/13) are product of defendants infringing trade mark blister mark. The defendant is TM No. 75/2011 Page 5 of 12 M/s. Wing Pharmaceuticals Pvt. Ltd. vs. M/s. Will Mark Pharmaceutical Pvt. Ltd. manufacturing and marketing identical pharmaceutical product bearing infringed trademark 'DICLOWOL PLUS ' of plaintiff to well reputed and renowned trademark 'DICLOWIN PLUS' . Moreover, the defendant has also deliberately adopted green colour blister pack which is deceptively similar as that of plaintiff and in fact defendant has kept the blister pack of plaintiff as a guide model while preparing its own blister pack, it amounts to fraudulent and malafide as defendant has adopted infringing the trade mark and blister packing in order to make unlawful gains and at the cost of good will and reputation of plaintiff. The adoption and use of trademark 'DICLOWOL PLUS' is visually, phonetically and deceptively similar to the well known trade mark 'DICLOWIN PLUS' and to the distinctive green colour packing of plaintiff pharmaceutical product. It is likely to create immense confusion and deception and create an impression that the defendant product is in the some way connected with product of the plaintiff. The defendant's representation is going to cause damage and injury to the plaintiffs business, goodwill and reputation. Similarly, there is infringing of copyright of plaintiff's artistic work, as the subsequent work of defendant is a copy of original work of the TM No. 75/2011 Page 6 of 12 M/s. Wing Pharmaceuticals Pvt. Ltd. vs. M/s. Will Mark Pharmaceutical Pvt. Ltd. plaintiff , on a visual comparison of both the competing works. The purchase of medicine by the buyers, particularly as 'painkillers' which are dispensed (by the chemist/drug stores) with Doctors prescription, an intending purchaser having an imperfect recollection is bound to deceive and mislead in buying the product of defendant because of high level of visual and phonetic resemblance that is why the suit for permanent injunction, restraining infringement of trade mark, passing off and rendition of accounts.
4. Whereas the defendants were served but for want of their appearance they were proceeded ex parte vide order dt.23.3.2011.
5. The plaintiff was given opportunity to lead evidence. Sh.R.K.Arora/PW1, author of the plaint, stepped into the witness box and concluded the evidence.
6. At the stage of final arguments Sh. Sidharth Bambha, advocate argued orally and also filed written submissions while reiterating the the case , the plaintiff fortifies its contention by the following case law: TM No. 75/2011 Page 7 of 12 M/s. Wing Pharmaceuticals Pvt. Ltd. vs. M/s. Will Mark Pharmaceutical Pvt. Ltd.
(i) Parle Products (P) Ltd. vs. J.P. & Co. Mysore PTC (Suppl) (1) 346 (SC) - while discussing about the infringement and deceptive similarity, it was held that whether one mark is deceptively similar to another, they should not be placed side by side to find out if there are any differences in the design and if so, whether they are of such character as to prevent one design from being mistaken for the other. In would be enough if the impugned mark bears such an overall similarity to the registered mark as would be likely to mislead a person usually dealing with one to accept the other if offered to him.
(ii) Amritdhara Pharmacy vs. Satyadeo Gupta AIR 1963 SC 449
- it was held that the standard of comparison to be adopted in judging the resemblance is from the point of view of man of average intelligence and imperfect recollection. It was further held that the two names as a whole should be considered for comparison and not merely the component words thereof separately.
(iii) Kaviraj Pandit Durga Dutt Sharma vs. Navaratna Pharmaceutical Laboratories PTC (Suppl) (2) 680 (SC) - while dealing with distinctive and longer user by a party exclusively in the market in the product concern, it was held that his trademark is to be protected. Further, while an action for passing off is a Common Law remedy being in substance an action for deceit, that is, a passing off by a person of his own goods as those of another, that is not the gist of an action for infringement. The action for infringement is a statutory remedy conferred on the registered proprietor of a registered trade mark for the vindication of the exclusive right to the use of the trade mark in relation to those goods.
(iv) J.P. Coats Ltd. vs. Gian and Co. 1983 PTC 127 - as regards the deceptive resemblance between the two trade marks, it is held that admittedly the two devices get up and colour scheme being similar, will give rise to confusion, deception and mistake in the minds of persons accustomed to trademark "CHAIN" and the accompanying device and the TM No. 75/2011 Page 8 of 12 M/s. Wing Pharmaceuticals Pvt. Ltd. vs. M/s. Will Mark Pharmaceutical Pvt. Ltd.
defendants having failed to give satisfactory explanation as to the adoption of the trade mark "CHHAN", it is held that the two trademarks including the words "CHAIN" and the "CHHAN", so nearly resemble that those are likely to cause confusion and accordingly, the defendants are restrained from using the trade mark "CHHAN" with the device of bangles.
7. The contentions of plaintiff are assessed in the light of statutory provisions of law, the testimony of PW 1 Sh. R.K. Arora alongwith the documentary record. The paragraphs 1 to 3 of this judgment are the facts, features and documents of the plaintiff's case and witness PW1 Sh.R.K.Arora has deposed on the lines of plaint and document filed in support of the law suit. The testimony of plaintiff's witness Sh.R.K.Arora remained unchallenged. To say, the plaintiff has succeeded to establish its suit that it is proprietor of registered trademarks which were got registered under clause 5 for trademark 'DICLOWIN PLUS' (label), ( vide registration nos. 735612 date 07.11.1996, 784111 date 30.12.1997, 978994 date 22.12.2000, 1053212 date 19.10.2001, 1208789 date 24.06.2003, 1208790 date 24.06.2003 and 1208791 date 24.6.2003 ) which has been proved by way of legal proceeding certificate Ex.PW 1/5 collectively. Similarly the plaintiff got registered its blister label in the office of Registrar of copyrights, New Delhi, it is TM No. 75/2011 Page 9 of 12 M/s. Wing Pharmaceuticals Pvt. Ltd. vs. M/s. Will Mark Pharmaceutical Pvt. Ltd. an artistic work, the plaintiff has proved application/certificate no. A70705/2005 (as Ex.PW 1/6). The plaintiffs blister pack of 'DICLOWIN PLUS' is Ex.PW 1/11 and defendants blister pack 'DICLOWOL PLUS' is Ex.PW 1/12, both are of same colour appearance and are similar in its appearance and identity visavis defendant product under the name DICLOWOL PLUS is copy of DICLOWIN PLUS which amounts to infringement of plaintiff's trademark, colour combination and copyrights as well as its artistic work. The plaintiff has proved the case of permanent injunction of infringement of trademark trademarks right and passing of on the basis of the evidence led by Sh.K.K.Arora, Director of plaintiff company. The plaintiff is entitled for a decree of permanent injunction as prayed.
8. Accordingly, plaintiff's suit for permanent injunction is allowed and defendant, its Director, representative, agents are restrained from manufacturing, selling, offering for sale, advertising or otherwise dealing directly or indirectly in pharmaceutical preparations under the infringing trademark DICLOWOL PLUS or any other trademark which is identical / colourable imitation of plaintiff's TM No. 75/2011 Page 10 of 12 M/s. Wing Pharmaceuticals Pvt. Ltd. vs. M/s. Will Mark Pharmaceutical Pvt. Ltd. trademark DICLOWIN with suffix PLUS ( which were registered as no. 735612 date 07.11.1996, 784111 date 30.12.1997, 978994 date 22.12.2000, 1053212 date 19.10.2001, 1208789 date 24.06.2003, 1208790 date 24.06.2003 and 1208791 date 24.6.2003) or under the words DICLOWOL or any other artistic work which is identical/colourable imitation of plaintiff's registered work DICLOWIN with suffix PLUS (registered under number A 70705/05) against the defendant.
Plaintiff's suit is further decreed for perpetual injunction restraining the defendant, its Director, representative, agents are restrained from manufacturing, selling , offering for sale, advertising or otherwise dealing directly or indirectly in pharmaceutical preparations under the impugned blister pack DICLOWOL or any other blister pack which contain any literary work which is identical/colourable imitation of plaintiff's work incorporated in blister pack DICLOWIN with suffix PLUS or any blister pack having distinctive green colour, get up, placement, design as that of plaintiff's copyright.
Whereas plaintiff's suit for mandatory injunction or seeking relief of destruction of rappers/blister pack/strips/labels/dies or rendition of account of profit is concerned the suit is dismissed for TM No. 75/2011 Page 11 of 12 M/s. Wing Pharmaceuticals Pvt. Ltd. vs. M/s. Will Mark Pharmaceutical Pvt. Ltd. want of proof of such facts.
Cost of the suit is also allowed in favour of plaintiff and against the defendant. Decree sheet be drawn accordingly.
File be consigned to record room.
Announced in Open Court (Inder Jeet Singh)
today on 19th Chaitra, Saka, 1936 Addl District Judge 02
South, Saket District
New Delhi
TM No. 75/2011 Page 12 of 12
M/s. Wing Pharmaceuticals Pvt. Ltd. vs. M/s. Will Mark Pharmaceutical Pvt. Ltd.
TM No. 75/2011
09.04.14
Present: Counsel for plaintiff.
Defendant is exparte (vide order dated 23.03.2011). Vide separate judgment announced today the plaintiff's suit is decreed as follows :
(a) plaintiff's suit for permanent injunction is allowed and defendant, its Director, representative, agents are restrained from manufacturing, selling, offering for sale, advertising or otherwise dealing directly or indirectly in pharmaceutical preparations under the infringing trademark DICLOWOL PLUS or any other trademark which is identical / colourable imitation of plaintiff's trademark DICLOWIN with suffix PLUS ( which were registered as no. 735612 date 07.11.1996, 784111 date 30.12.1997, 978994 date 22.12.2000, 1053212 date 19.10.2001, 1208789 date 24.06.2003, 1208790 date 24.06.2003 and 1208791 date 24.6.2003) or under the words DICLOWOL or any other artistic work which is identical/colourable imitation of plaintiff's registered work DICLOWIN with suffix PLUS (registered under number A 70705/05) against the defendant.
(b) Plaintiff's suit is further decreed for perpetual injunction restraining the defendant, its Director, representative, agents are restrained from manufacturing, selling , offering for sale, advertising or otherwise dealing directly or indirectly in pharmaceutical preparations TM No. 75/2011 Page 13 of 12 M/s. Wing Pharmaceuticals Pvt. Ltd. vs. M/s. Will Mark Pharmaceutical Pvt. Ltd. under the impugned blister pack DICLOWOL or any other blister pack which contain any literary work which is identical/colourable imitation of plaintiff's work incorporated in blister pack DICLOWIN with suffix PLUS or any blister pack having distinctive green colour, get up, placement, design as that of plaintiff's copyright.
(c) Whereas plaintiff's suit for mandatory injunction or seeking relief of destruction of rappers/blister pack/strips/labels/dies or rendition of account of profit is concerned the suit is dismissed for want of proof of such facts.
Cost of the suit is also allowed in favour of plaintiff and against the defendant. Decree sheet be drawn accordingly.
File be consigned to record room.
(Inder Jeet Singh) ADJ02, South, Saket District New Delhi / 09.04.2014 TM No. 75/2011 Page 14 of 12