Delhi District Court
Tulison Pharma vs Dr. Nise Pvt Ltd on 6 January, 2024
~1~
In the court of Sh. Umed Singh Grewal, District Judge-
Commercial Court-05, Central District
Tis Hazari, Delhi.
CS (Comm) No.: 1923/2021
In the matter of:
Tulison Pharma
118-H, East Moti Bagh,
Sarai Rohilla,
Delhi, 110007, .... Plaintiff
Vs.
Dr. Nise Pvt. Ltd.
G - 497 & 498, UPSIDC,
Industrial Area,
Mussoorie - 201001,
Ghaziabad, Uttar Pradesh .... Defendant
Date of Institution : 23.06.2021
Date on which arguments was concluded : 21.12.2023
Date of pronouncement of order : 06.01.2024
Present: Sh. Himanshu Chaudhary, counsel for plaintiff.
Sh. Vidyut Kayarkar, counsel for defendant.
JUDGMENT:-
1. This is a suit under sections 134, 135, 27 and 29 of Trademarks Act, 1999 and 51 and 55 of Copyrights Act, 1957 for CS (COMM) No.: 1923/21 Tulison Pharma Vs. Dr. Nise Pvt. Ltd. Page No. 1/33 ~2~ permanent injunction restraining infringement of trade mark and copyright, passing off, delivery up and rendition of account etc..
2. Plaintiff is in manufacturing and sale of Ayurvedic medicines and medicinal preparations. Its predecessor in interest and proprietor of the-then Ms Tulison Pharma, adopted the trade mark Kas Madhu on 01.04.1974 and used it openly, continuously, extensively and exclusively and to the exclusion of others till 20.06.1992 when all the rights in the trade mark were assigned to the plaintiff which is a partnership firm comprising of partners namely Ghanshyam Dass Agarwal and Sh. Ramesh Chand Budhiraja as per partnership deed dated 01.07.1992. Various formatives of trade mark 'Kas Madhu' were adopted during the course of trade and business and were got registered in 1974 and 1978 under class 05, 35 and 39. It is using the trade mark and labels on its goods continuously without any break by promoting them through marketing and marketing research spending enormous amount of money, effort and time on them. Those are advertised on radio, T.V., print media including leading newspapers, trade literatures, magazines and internet also due to which the trade mark has become distinctive and acquired secondary significance. The general public as well as industry believe that the medicinal products bearing the trademark of the plaintiff are of supreme quality and have their source to the plaintiff. These goods are now well-known, recognised, CS (COMM) No.: 1923/21 Tulison Pharma Vs. Dr. Nise Pvt. Ltd. Page No. 2/33 ~3~ demanded, sold and traded all over India continuously and so the trade marks have become well-known trade mark within the meaning of Section 2 (1) (zg) of the Trade Marks Act. The art of work involved in the trade mark is the original art work over which the plaintiff has exclusive right within the meaning of Section 14 of Copyright Act, 1957. In view of proprietary rights, the plaintiff has exclusive right to use its trade marks and nobody can be permitted to use the same or deceptively similar trade mark without its leave and license.
The defendant is also engaged in same kind of business i.e. manufacturing and sale of cough syrup, Ayurvedic medicine and medicinal preparations and it has adopted the trade mark and trade dress 'Khas Madhu' which is identical and/or deceptively similar to its trade mark. It is riding upon the huge reputation of plaintiff's products. It is passing off its products as the product of the plaintiff. Moreover, due to the use of deceptively similar trade mark, the general public is misled to believe that the defendant's products have been manufactured by the plaintiff.
3. The defendant came out with the case that this court does not have territorial jurisdiction to decide the case as no part of cause of action arose here. It never sold, traded networked or solicited the impugned goods in Delhi. The term 'Kasmadhu' is formed by combing two Sanskrit words 'Kas' or 'Kasa' and 'Madhu'. Kas means cough or act of coughing and 'Madhu' is CS (COMM) No.: 1923/21 Tulison Pharma Vs. Dr. Nise Pvt. Ltd. Page No. 3/33 ~4~ honey. Since yore, honey is used in Ayurveda as a remedy for cough, thirst, phlegm. The plaintiff's mark Kas Madhu is simply an Ayurvedic preparation for treatment of cough and is descriptive of the goods thereunder and it is not independent coinage of the plaintiff. Moreover, there are innumerable traders in the market who use and are proprietors of the term 'KAS', 'KASA' and 'MADHU' in respect of Ayurvedic preparation for treatment of cough. The combination of the words 'KAS' and 'MADHU' results in yet another descriptive word 'KASMADHU' which again is used in relation to treatment of cough and cough related ailments. Hence the plaintiff does not have exclusive proprietary right over the mark 'KASMADHU' as no one can claim monopoly over the Sanskrit words jointly or severally.
While accepting the trade mark application no. 349140 in class 05, the registry had put a disclaimer as "registration of this trade mark shall give no right to the exclusive use of the word 'KASMADHU' and cough syrup". The disclaimer shows that the plaintiff cannot have exclusive right on 'KASMADHU' and hence its unlawful to object to the business of the defendant. The trade dress/packaging used by the plaintiff in the combination of red and white is not exclusive to the plaintiff as there are several traders in the market who employ such trade dress in respect of their goods which are often Ayurvedic preparation for treatment of cough and cough related aliments.
CS (COMM) No.: 1923/21 Tulison Pharma Vs. Dr. Nise Pvt. Ltd. Page No. 4/33 ~5~ The plaintiff does not have registration for the trade dress and hence its case, at the best, can be of passing off. Defendant's use of impugned mark and trade dress was miniscule. It had purchased only about 5300 labels and 4106 cartons from M/s Packaging Trendz through invoice number 483 dated 11.12.2019 on which GST was paid. The labels and cartons were used to manufacture 1995 units of cough syrup, out of which, 999 were sold @ 12.05/- per unit to J. N. Pharmaceutials through invoice numbers 101 and 102 dated 23.12.2019 and 29.12.2019, 576 were sold to 'Win Trading Company' @ Rs. 12.05/- per unit through invoice number 109 dated 19.11.2020 and 420 were sold to 'Prince Medicose' vide invoice number 111 dated 25.11.2020 @ Rs. 11 per unit. So, the purchased cartons and labels were applied to the goods of only Rs. 23,598/-. 3305 labels and 2111 cartons were in the possession of the defendant after sale of 1995 units and those numbers are corroborated even by the report of the local commissioner.
It has been denied that predecessor in interest of the plaintiff adopted the trade mark 'KASMADHU' on 01.04.1974. It has also been denied that the plaintiff's mark had acquired secondary meaning due to supreme quality of its goods. It is next mentioned that no basis has been provided for estimating the damages of Rs. 3,10,000/-.
4. Following issues were framed on 08.07.2022 :-
CS (COMM) No.: 1923/21 Tulison Pharma Vs. Dr. Nise Pvt. Ltd. Page No. 5/33 ~6~ i. Whether this court has no territorial jurisdiction to try this suit ? OPD ii. Whether the plaintiff has no exclusive right to use the trademark in question ? OPD iii. Whether the plaintiff is entitled for relief of permanent injunction as prayed for ? OPP iv. Whether the plaintiff is entitled for order of delivery up, as prayed for ? OPP v. Whether the plaintiff is entitled for relief of rendition of account or in the alternative specific damages, as prayed for ? OPP vi. Relief.
5. In order to prove the case, the plaintiff examined Sh. Ghanshyam Dass Aggarwal as PW1 and who repeated the contents of plaint in his affidavit in evidence Ex. PW1/A and relied upon following documents :-
1. Ex. PW1/1 (colly) is Representation/ photographs of the plaintiff's trademark 'KASMADHU' Label/Trade dress.
2. Ex. PW1/2 (colly) is KHAS MADHU/label/ trade dress which is being used by the defendant.
3. Ex. PW1/3 (colly) are registration of the plaintiff's trade mark KAS MADHU (label) under application no. 771362 in respect of goods "Ayurvedic Medicines" in class - 05 alongwith status report dated 19.04.2021 and Trade Mark CS (COMM) No.: 1923/21 Tulison Pharma Vs. Dr. Nise Pvt. Ltd. Page No. 6/33 ~7~ Journal Mega - 1 dated 25.08.2003 along with registration certificate.
4. Ex. PW1/4 (colly) are registration of the plaintiff's trade mark KAS MADHU (label) under application no.
1534564 in respect of "Packaging of Ayurvedic Medicines" in class - 39 alongwith status report dated 19.04.2021 and Trade Mark Journal No. 1400 dated 16.09.2008 along with registration certificate.
5. Ex. PW1/5 (colly) are registration of the plaintiff's trade mark KAS MADHU (label) under application no. 349140 in respect of "Cough Syrups" being an Ayurvedic Preparations in class - 05 alongwith status report dated 19.04.2021 and Trade Mark Journal No. 781 dated 16.12.1981.
6. Ex. PW1/6 (colly) are registration of the plaintiff's trade mark KAS MADHU (label) under application no. 1347129 in respect of "Advertising, Distribution, Marketing, Wholesale and Retail Services relating to Ayurvedic Medicines" packing of Ayurvedic mediinces in class - 35 alongwith status report dated 19.04.2021 and Trade Mark Journal No. 1345, dated 01.06.2006 along with registration certificate.
7. Ex. PW1/7 (colly) is license to manufacture for sale of Ayurvedic drugs issued by Government of NCT of Delhi.
8. Ex. PW1/8 (colly) is ISO certificate no. 90012015.
CS (COMM) No.: 1923/21 Tulison Pharma Vs. Dr. Nise Pvt. Ltd. Page No. 7/33 ~8~
9. Ex. PW1/9 is receipt dated 09.06.2021.
10. Ex. PW1/10 is sales figures of the plaintiff under the trade mark KAS MADHU from the period 2017 - 18 to 2020 - 2021.
11. Ex. PW1/11 (colly) are sale bills of Tulison Pharma of the year 1992.
12. Ex. PW1/12 (colly) are sale bills of Tulison Pharma of the year 1993 along with postal receipts.
13. Ex. PW1/13 to Ex. PW1/15 (colly) are sale bills of Tulison Pharma of the year 1994, 1995 and 1996 respectively.
14. Ex. PW1/16 (colly) are sale bills of Tulison Pharma of the year 1997 along with advertisement bills.
15. Ex. PW1/17 to Ex. PW1/27 (colly) are sale bills of Tulison Pharma of the year 1998, 1999, 2000, 2001, 2002, 2003, 2004, 2005, 2006, 2007 and 2008 respectively.
16. Ex. PW1/28 (colly) are sale bills of Tulison Pharma of the year 2009 - 10.
17. Ex. PW1/29 (colly) are sale bills of Tulison Pharma of the year 2011 - 13.
18. Ex. PW1/30 (colly) are sale bills of Tulison Pharma of the year 2013.
19. Ex. PW1/31 to Ex. PW1/41 (colly) are sale bills of Tulison Pharma of the year 2020, 2019, 2018, 2017, 2013, 2014, 2015, 2017, 2018, 2019 and 2020 respectively.
CS (COMM) No.: 1923/21 Tulison Pharma Vs. Dr. Nise Pvt. Ltd. Page No. 8/33 ~9~
20. Ex. PW1/42 (colly) is voucher dated 30.11.1998 of plaintiff as regard to radio and television advertisement of M/s Arihant Video Communication along with their bills.
21. Ex. PW1/43 (colly) is voucher dated 20.03.1998 as regard to advertisement in newspaper, trade magazines in the name of M/s Poonam Advertising agency.
22. Ex. PW1/44 (colly) is advertisement bill no. 365 dated 27.02.1999 issued by M/s Poonam Advertising Agency in favour of plaintiff along with advertisement of the plaintiff's trade mark in the newspaper.
23. Ex. PW1/45 (colly) are advertisement of plaintiff's trademark in various newspapers from the year 1993- 1999.
24. Ex. PW1/46 (colly) are advertisement of the plaintiff's trademark in various news and magazines.
25. Ex. PW1/47 (colly) are advertisement of the plaintiff's trademark KASMADHU in newspaper Dainik Savera dated 22.10.2020 along with other newspapers of the year 2020.
26. Ex. PW1/48 (colly) are voucher dated 31.12.2020 of the plaintiff as regard to radio advertisement along with bill dated 31.12.2020.
27. Ex. PW1/49 (colly) is certificate of broadcasting on RED FM 93.5.
CS (COMM) No.: 1923/21 Tulison Pharma Vs. Dr. Nise Pvt. Ltd. Page No. 9/33 ~ 10 ~
28. Ex. PW1/50 (colly) are voucher dated 31.12.2020 of plaintiff's advertisement in newspaper and trade magazines along with advertisement bill in advertisement in newspaper.
29. Ex. PW1/51 (colly) are voucher dated 30.11.2020 of plaintiff along with bills and vouchers of the year 2020.
30. Ex. PW1/52 (colly) are voucher dated 28.02.2021 of plaintiff along with bill as regard to radio advertisement of the year 2021.
31. Ex. PW1/53 (colly) is certificate of Broadcasting of plaintiff's mark KASMADHU on RED FM 93.5.
32. Ex. PW1/54 (colly) are advertisement of the plaintiff's trade mark KASMADHU in the newspaper dated 30.12.2019 along with advertisement of the plaintiff's trade mark in various newspapers of the year 2019.
33. Ex. PW1/55 (colly) are voucher of the plaintiff dated 21.03.2020 along with advertisement of the plaintiff's trade mark in the year 2019.
34. Ex. PW1/56 and Ex. PW1/57 (colly) are advertisement of the plaintiff's trade mark in various newspapers for the year 2008 and 2009, respectively.
35. Ex. PW1/58 (colly) are advertisement of the plaintiff's trade mark in various trade magazines of the year 2009.
CS (COMM) No.: 1923/21 Tulison Pharma Vs. Dr. Nise Pvt. Ltd. Page No. 10/33 ~ 11 ~
36. Ex. PW1/59 to Ex. PW1/63 (colly) are advertisement of the plaintiff's trade mark in various newspapers for the years 2010, 2011, 2012, 2013 and 2019, respectively.
37. Ex. PW1/64 and Ex. PW1/65 (colly) are advertisement of the plaintiff's trade mark in various trade magazines of the year 2018 and 2016.
38. Ex. PW1/66 and Ex. PW1/67 (colly) are advertisement of the plaintiff's trade mark in various newspapers for the years 2019 and 2018, respectively.
39. Ex. PW1/68 (colly) are voucher and bills of plaintiff as regard to television advertisement with bills of the year 2019.
40. Ex. PW1/69 (colly) are voucher and bills of plaintiff for advertisement of the plaintiff's trademark in various newspapers and trade magazines of the year 2018.
41. Ex. PW1/70 (colly) are broadcast certificates of the plaintiff's trademark on ABP News and NDTV along with bills of ABP News and NDTV.
42. Ex. PW1/71 (colly) are advertisement of the plaintiff's trademark in various newspapers of the year 2017 - 2018.
43. Ex. PW1/72 (colly) are voucher of plaintiff of the year 2018 along with bills and advertisement in newspapers of the year 2018.
44. Ex. PW1/73 (colly) are order of Hon'ble High Court dated 05.02.2020 along with typed copy.
CS (COMM) No.: 1923/21 Tulison Pharma Vs. Dr. Nise Pvt. Ltd. Page No. 11/33 ~ 12 ~
45. Ex. PW1/74 (colly) are order of Hon'ble High Court dated 15.05.2003 along with memo of parties.
6. The defendant examined Sh. Nikhil Goel as DW1, and he repeated the contents of written statement in his affidavit in evidence Ex. DW1/A and relied upon following documents :-
1. Ex. DW1/1 is board resolution dated 20.01.2021 of the defendant.
2. Ex. DW1/2 (colly) are printouts of websites pertaining to the meaning/significance of KAS and MADHU.
3. Ex. DW1/3 is journal article titled 'Critical Review on Madhu W.S.R. to Honey' published in International Journal of Ayurveda and Pharma Research, in Septemeber, 2015, Vol. 3, Issue 9.
4. Ex. DW1/4 (colly) are printouts of trade websites showing use of 'KAS' as prefix or suffix.
5. Ex. DW1/5 (colly) are printouts of trade websites showing use of 'MADHU' as prefix or suffix.
6. Ex. DW1/6 (colly) are printouts of TM-search Report conducted on the website of Trade Marks Registry showing presence of trade marks containing 'KAS' and 'MADHU'.
7. Ex. DW1/7 (colly) are printouts of trade websites showing use of similar colour combination/ trade dress.
CS (COMM) No.: 1923/21 Tulison Pharma Vs. Dr. Nise Pvt. Ltd. Page No. 12/33 ~ 13 ~
8. Ex. DW1/8 is invoice no. 483 dated 11.12.2019 raised on the defendant by 'Packaging Trendz'.
9. Ex. DW1/9 to Ex. DW1/12 are invoices.
10. Ex. DW1/13 to Ex. DW1/17 are GST records.
11. Ex. DW1/18 is affidavit under Order XI rule 6 of Commercial Courts Act, 2015.
12. Ex. DW1/19 is certificate under Sections 65-A and 65-B of Indian Evidence Act.
Issue No. 17. Learned counsel for defendant argued that his client resides and works for gain in the area of Mussoorie, district Ghaziabad, U.P.. He is in the business of preparation of Ayurvedic medicinal products which are sold in that very area. Such preparation is not sold in the area of Delhi and hence this court has no jurisdiction to decide the case.
On the other hand, counsel for plaintiff argued that plaintiff is residing and working for gain in the area of Sarai Rohila, Delhi which is in the territorial jurisdiction of this court and hence this court is competent enough to decide the case as per Section 134 of Trade Marks Act, 1999.
8. All trade marks were registered in favour of the plaintiff on its address as H-118, East Moti Bagh, Sarai Rohila, Delhi. The Government of NCT of Delhi, Directorate of Ayush CS (COMM) No.: 1923/21 Tulison Pharma Vs. Dr. Nise Pvt. Ltd. Page No. 13/33 ~ 14 ~ granted license Ex. PW1/7 to plaintiff to manufacture Ayurvedic medicine at premises no. H - 118, Sarai Rohila, Delhi. All the invoices placed on record from 1993 to 2022 find the same address of the plaintiff. The documents show that plaintiff is doing business in the area of Sarai Rohila which is in the territorial jurisdiction of this court and hence with the help of Section 134 of Trade Marks Act, 1999, this court has jurisdiction to decide the case. This finding gains support from the following observations of Hon'ble Delhi High Court in "Bennet, Coleman & Company Limited Vs. E! Entertainment Television LLC.", CS (COMM) No. 253/2019, decided on 31.05.2023 :-
"28. Thus, in view of the law laid down by the Hon‟ble Supreme Court in Sanjay Dalia followed by this Court in Ultra Home (supra) Section 134 of the Trade Marks Act provides an additional forum for filing the suit where the plaintiff resides or carries out works for gain and in the case of a corporation it is the principal office of the corporation or its registered office which can be held to be the place where the corporation works.
In case the plaintiff chooses to institute the suit at a place where it does not have the principal office but subsidiary office, then as held in illustration (c) in Ultra Home, cause of action or part of cause of action should arise at the said place. Undoubtedly, the plaintiff, which is a company incorporated under the Company‟s Act, has its principal place of office i.e. the registered office at Mumbai and not at Delhi though stated in the plaint but sought to be amended and clarified by IA No. 8834/2019. Conscious of the fact that the plaintiff‟s principal CS (COMM) No.: 1923/21 Tulison Pharma Vs. Dr. Nise Pvt. Ltd. Page No. 14/33 ~ 15 ~ place of office/ work is not at Delhi but at Mumbai, the claim of the plaintiff is that in view of Section 134 of the TM Act and the law laid down in Sanjay Dalia and Ultra Home, because cause of action arises in Delhi and the plaintiff has its subsidiary offices in Delhi, this Court has jurisdiction to entertain the suit..."
Issue Nos. 2, 3 and 49. These issues are interconnected and hence are being taken up together.
10. Learned counsel for defendant argued that trade mark of the plaintiff is Kasmadhu whereas the mark used by defendant is Khasmadhu. As per him, 'Kas' or 'Kasa' mean cough and Madhu means honey. So, the meaning of the joint word 'Kasmadhu' is honey used for treatment of cough. In Ayurveda, honey is used for treatment of cough and hence all Ayurvedic medicines for treatment of cough are known as Kasmadhu. So, the word is descriptive and it has not been coined by the plaintiff as it is finding place in dictionary. The plaintiff cannot claim monopoly over that word and only due to that reason, when the registration was granted to plaintiff in 1978 for trade mark 'Kasmadhu', a disclaimer was placed by the trade mark Registrar that the plaintiff shall have no exclusive right to use of Kasmadhu and cough syrup.
CS (COMM) No.: 1923/21 Tulison Pharma Vs. Dr. Nise Pvt. Ltd. Page No. 15/33 ~ 16 ~ Next submission is that the trade marks of both the parties are different. They do not have any similarity. Moreover, the word mark Kasmadhu and label to that effect are being used by several manufactures of Ayurvedic medicines against whom the plaintiff never filed any suit of injunction.
11. The counsel for plaintiff argued that there is nothing on the file to suggest that all Ayurvedic medicines for treatment of cough are known by the name of Kasmadhu. There is nothing on the file to suggest that the meaning of Kas is cough. He further submitted that even if it is presumed that the words 'Kas' and 'Madhu' are descriptive and not coined by plaintiff, yet due to their long, continuous and uninterrupted use by the plaintiff since 1974, the defendant cannot adopt them jointly because with the passage of time, the joint word has acquired secondary meaning. The plaintiff has spent a lot of money in advertising that mark. He further submitted that though the word mark registered on application no. 349140 on 14.03.1979 had a disclaimer, but the said mark was again registered in 2005 in class 35 without any disclaimer.
12. The defendant has placed on record printout from the various websites as Ex. DW1/2 to Ex. DW1/7 regarding the meaning of the words 'Kas' or 'Kasa' and 'Madhu' and use of honey for preparing Ayurvedic medicine for treatment of cough.
CS (COMM) No.: 1923/21 Tulison Pharma Vs. Dr. Nise Pvt. Ltd. Page No. 16/33 ~ 17 ~ But those printouts are not more than the information flowing on internet. There is nothing on the record about the authenticity of that information or about the writer. So, no probative value can be attached to those printouts.
13. Ex. PW1/5 is the certificate issued by trademark registry to plaintiff on its application no. 349140 while registering the word mark 'Kasmadhu' in class 5. It is mentioned in that certificate that the plaintiff had claimed use of that trademark since 01.04.1974. While registering that trademark in favour of the plaintiff, the registrar added disclaimer that the registration shall not give right to the plaintiff to the exclusive use of the word 'Kasmadhu' and cough syrup. But while registering the same word mark in class 35 on application no. 1347129 on 28.03.2005, no such disclaimer was put by the registrar. It is mentioned in the certificate that the plaintiff had claimed use of that trademark since 01.04.1978. There is no disclaimer in the second registration certificate and so the defence of existence of disclaimer in class 5 is of no significance.
'Kasmadhu' label was first registered in favour of the plaintiff on its application no. 771362 in class 5 dated 03.10.1997 in which the plaintiff had claimed user since 01.04.1978. Another device was registered in its favour on 26.02.2007 in class 39 in which the use was claimed since 01.04.1978. So, the trademark certificates show that though the first registration in favour of the CS (COMM) No.: 1923/21 Tulison Pharma Vs. Dr. Nise Pvt. Ltd. Page No. 17/33 ~ 18 ~ plaintiff was in 1979 but it had claimed use of that mark since 01.04.1974.
There are innumerable bills placed on record by the plaintiff from 14.09.1992 to 2022 which show that plaintiff is selling the cough syrup by the name of Kasmadhu since 1992. So, use of that mark by the plaintiff is continuous and uninterrupted. On the other hand, the defendant placed on record only one invoice dated 11.12.2019 as per which it had purchased some cartons and labels by the name of 'Khasmadhu' from M/s Packaging Trendz. The only document on the record suggests that the defendant is using the trademark Khasmadhu since 11.12.2019. So, the plaintiff is prior user as well as registered proprietor of the word mark and label Kasmadhu.
Invoices from Ex. DW1/42 to Ex. DW1/72 dating from 30.11.1998 to 2018 suggest that the plaintiff had begun advertising its brand since 1990s and spent huge amount under that head. Sale figure Ex. PW1/10 shows that the sale of the plaintiff increased steadily from 2017 to 2019.
Above documents and discussion show that with the passage of time, the joint word 'Kasmadhu' had acquired secondary meaning to the effect that the medicinal preparation sold under that trademark were manufactured by none else than plaintiff.
CS (COMM) No.: 1923/21 Tulison Pharma Vs. Dr. Nise Pvt. Ltd. Page No. 18/33 ~ 19 ~
14. In "Globe Super Part Vs. Blue Super Flame", AIR 1986 Delhi 245 in which two words 'super' and 'flame' which are dictionary words, but wherein joined together, were declared as coined words and protection was granted.
In "J. L. Mehta Vs. Registrar of Trade Marks" the trade mark in question 'Sulekha' having the meaning of woman having "good writing" was though descriptive but since it was being used in connection with fountain pens, nibs etc. the court came to the conclusion that it was a valid trade mark and injuncted the infringer.
In "Laxmikant Vs. Pate. Vs. Chetnabhat Shah and Anr.", the trade mark of the plaintiff was Mukta Jeevan Colour Lab whereas the defendant adopted the mark QSS Mukta Jeevan. Apart from the plea that it had dictionary meaning, the other plea was that QSS was an abbreviation and accordingly an adjective prefixed to the name. Though the defendant was carrying on business in the name of QSS Mukta Jeevan Studio but at the time of filing of the suit, he was having the business in the name and style of Mukta Jeevan Colour Lab which was identical with the business of the plaintiff. The plea of the counsel for the plaintiff that QSS was an abbreviation and was merely an adjective pre- fixed to the name was accepted and it was held that it is the word 'Mukta Jeevan' which makes distinctive the business name of the plaintiff and it was the continuous user by the plaintiff which had CS (COMM) No.: 1923/21 Tulison Pharma Vs. Dr. Nise Pvt. Ltd. Page No. 19/33 ~ 20 ~ created a property therein linked with the plaintiff. The defendant was injuncted from using the said trade name.
15. In "Living Media India Limited Vs. Jain and Anr", 98 (2002) DLT 430, following was held by Hon'ble Delhi High Court :-
"28. The word "AAJ" and "TAK" may be individually descriptive and dictionary word and may not be monopolised by any person but their combination does provide a protection as a trademark if it has been in long, prior and continuous user in relation to particular goods manufactured, sold by a particular person and by virtue of such user the mark gets identified with that person. It is so irrespective of the fact whether such a combination is descriptive in nature and has even a dictionary meaning. In such a case any other person may choose any of the two words viz. either "AAJ" or "TAK" as its trade name or mark but it has to prohibited from using the combination of these words as such a user not only creates confusion as to its source or origin but also bares the design or motive of its subsequent adopter.
29. Any kind of prefix or suffix would not make any difference so far as the tradename or for that purpose the domain name "AAJ TAK" is concerned. It is immaterial whether the defendant has no clientele or publication in Delhi. Channel "AAJ TAK" is a National Channel. It has widespread reputation and goodwill. Adoption of similar or deceptively similar mark amounts to passing off even if CS (COMM) No.: 1923/21 Tulison Pharma Vs. Dr. Nise Pvt. Ltd. Page No. 20/33 ~ 21 ~ it has no local physical market, goodwill or reputation of a product or person is all pervasive. It is not confined in the four walls or to a particular territory. It has to be protected wherever it is threatened or is sought to be eroded or exploited. Merely because the product or mark adopted by a rival has no circulation or sale in the territory of the plaintiff's mark or product is no defense against protection of the mark. Protection of mark is in actuality protection of reputation and goodwill. At every cost the reputation has to be protected and preserved. "
16. Following observation of Hon'ble Apex court in "Godfrey Philips India Ltd. Vs. Girnar Food and Beverages Pvt. Ltd.", (2004) 5 SCC 257 are also relevant :-
"4. Without going into the question whether the conclusion arrived at by the Division bench that the trade mark is descriptive is correct or not, it appears to us, and as is conceded by both parties before us, that the enunciation of principle of law with regard to the protection availabel even in respect of the descriptive trade mark was wrong. A descriptive trade mark may be entitled to protection if it has assumed a secondary meaning which identifies it with a particular product or as being from a particular source. We, therefore, remand the matter back to the Division Bench of the High Court so that it may address its mind to this question without disturbing the other conclusions arrived at this stage... "
CS (COMM) No.: 1923/21 Tulison Pharma Vs. Dr. Nise Pvt. Ltd. Page No. 21/33 ~ 22 ~ Above principal of law has been reiterated by Bombay High Court in "Sky Enterprise Private Ltd. Vs. Abaad Masala & Co.", 2020 (5) ABR 500 with following observation :-
"8 .... All that is alleged in support of such plea in the present case is that the marks consist of descriptive words. In the first place, it is not in any and every case, where the words forming part of a trademark are descriptive, that the applicant for registration is not entitled to it. Individual words in a given case may be descriptive, but their peculiar combination may yet create a unique appearance or identity. Secondly, by virtue of a long history of trading, it is quite possible that the mark, though it contains descriptive words, may have come to acquire a distinctive reputation and association with the plaintiff's product along and with no others. In all these cases, it is perfectly legitimate to obtain a registration and preven use of identical or deceptively similar marks by others, in spite of the descriptive words forming part of the plaintiff's trademark. Indeed, as the Supreme Court has observe in Godfrey Philips India Ltd. Vs. Girnar Food and Beverages Pvt. Ltd. Manu/SC/0541/2004, a descriptive trademark may well be entitled to protection, if it has come to assume a secondary meaning, which identifies a particular product or products as coming from a particular source."
Same was the following view of Hon'ble Delhi High Court in "Natures Essence Private Limited Vs. Protogreen CS (COMM) No.: 1923/21 Tulison Pharma Vs. Dr. Nise Pvt. Ltd. Page No. 22/33 ~ 23 ~ Retail Solutions Private Limited and Ors." 2021 (86) PTC 225 (Del) :-
"46.8 The contention, of Mr. Sharma, that the plaintiff cannot claim any trademark rights over the word "Nature", as it is descriptive in nature, is neither here nor there. In the first place, the plaintiff's trademark, of which it alleges infringement, is not "NATURE" per se, but "NATURE'S INC." or "NATURE'S ESSENCE". As I have already held hereinbefore, the defendant's mark is, visually and phonetically, deceptively similar to the plaintiff's "NATURE'S INC." mark, and conveys a deceptively similar idea to that conveyed by "NATURE'S ESSENCE", as has the potential of confusing a customer of average intelligence and imperfect recollection. Whether an intellectual property monopoly can be claimed in respect of the word "NATURE" is, therefore, really off the mark. It would be totally antithetical to all canons of trademark jurisprudence to question the validity of the or marks because "Nature" is a descriptive word. Once "Nature's" is used in conjunction with "Inc.", or "Essence", it assumes a definite and distinct - as well as distinctive - connotation and meaning, which is totally different from "Nature" per se. Even if "Inc." were to be treated as an acronym for "Incorporated", the mark has a distinctive identity all its own, immediately apparent to the naked eye. Once, therefore, deceptive similarity is established, violation of the proprietorial right, of the plaintiff, over the or trademark, stands made out. Infringement being in the nature of a violation of the CS (COMM) No.: 1923/21 Tulison Pharma Vs. Dr. Nise Pvt. Ltd. Page No. 23/33 ~ 24 ~ proprietorial right of the owner of a registered trade mark, a case of infringement stands, thereby, prima facie established."
17. In "Mother Sparsh Baby Care Pvt. Ltd. Vs. Aayush Gupta & Ors" CS (COMM) 129/2022 decided by hon'ble Delhi High Court on 22.03.2022, the question was whether the plaintiff was entitled to injunction relief as the defendant was using the trademark 'PLANT POWERED' which was a descriptive as well as dictionary meaning word and following was held by Hon'ble Delhi High Court :-
"13. The words 'PLANT' and 'POWER' by themselves, when considered as standalone words, may be descriptive. However, when used in conjunction with each other for identical products, there is likely to be confusion between the plaintiff's products and defendant's products, as is clear from the invoices which are placed on record by the learned counsel for the defendant even today "
18. In the case in hand, the trademark was registered in favour of plaintiff in 1979 and the plaintiff is using it since 1974. It is spending huge amount on endorsing the brand on T.V. , Radio and print media like newspaper and magazine. On the other hand, the defendant started using similar trademark only in 2019. The use of that trademark by the plaintiff is continuous and uninterrupted since 1974 till the filing of the suit. Though, the words 'Kas' or 'Kasa' and 'Madhu' may be descriptive and CS (COMM) No.: 1923/21 Tulison Pharma Vs. Dr. Nise Pvt. Ltd. Page No. 24/33 ~ 25 ~ having dictionary meaning but when used in conjunction with each other, they have acquired a secondary meaning as the same is being used by the plaintiff since 1974. By the word 'Kasmadhu' general public is reasonable to believe that the Ayurvedic medicinal preparations under that trademark, have been manufactured by plaintiff only.
The defendant is using the mark 'Khasmadhu'. The only difference between both word marks is of alphabet 'H'. But phonetically, structurally and visually, both are similar to such an extent that it can be said that the mark used by the defendant is identical to the mark of the plaintiff.
19. Following are the wrappers used by plaintiff and defendant :-
Plaintiff's Product Defendant's Product CS (COMM) No.: 1923/21 Tulison Pharma Vs. Dr. Nise Pvt. Ltd. Page No. 25/33 ~ 26 ~ The wrappers show that the words Kasmadhu and Khasmadhu in Hindi have been written in only one line but in English, they have been written in two lines. The ink used in both wrappers is red.
The background colour in both wrappers is somewhat green. In both wrappers, the words "right choice" are mentioned between two parallel lines. In the wrapper of plaintiff, the word "herbal" is written in a leaf of green colour. The said word is written in the wrapper of the defendant in the elliptic shape. So, the packaging of medicinal preparation of both parties is almost identical. As observed earlier, the plaintiff and defendant are in the same business i.e. in the preparation of Ayurvedic medicines and in Ayurvedic medicines also, they are preparing the medicine for the same relief i.e. for cough. In this background, the general public is sure to believe that the cough syrup by the name of Khasmadhu prepared by defendant has actually been manufactured by plaintiff only.
20. The defendant placed on record computer generated trademark search report as Ex. DW1/6 as per which some trademarks beginning with the word 'KAS' were registered in favour of third parties. But in the case in hand, we are not concerned with the word 'Kas' but a composite word 'Kasmadhu'. Regarding that word, not a single document has been placed on record.
CS (COMM) No.: 1923/21 Tulison Pharma Vs. Dr. Nise Pvt. Ltd. Page No. 26/33 ~ 27 ~ Though it has been argued by the defendant that several other persons are also using the words 'Kasmadhu' on their Ayurvedic preparation meant for treatment of cough, but the defendant did not file any document regarding their sale and account statement to prove whether they were marginal or major players. The plaintiff is not expected to sue all small type infringers who may not be affecting its business. The Hon'ble Apex Court in "National Ball Vs. Metal Goods", AIR 1971 SC 898, held that the proprietor of a trademark need not take action against an infringer who does not cause prejudice to its distinctiveness. Following was held in "Express Bottler Services Private Limited Vs. Pepsi Inc. and Others", 1989 (7) PTC 14 :-
" ... To establish the plea of common use, the use by other persons should be shown to be substantial. In the present case, there is no evidence regarding the extent of the trade carried on by the alleged infringers or their respective position in the trade. If the proprietor of the mark is expected to pursue each and every insignificant infringer to save his mark, the business will come to a standstill. Because there may be occasion when the malicious persons, just to harass the proprietor may use his mark by way of pinpricks ... The mere use of the name is irrelevant because a registered proprietor is not expected to go on filing suits or proceedings against infringers who are of no consequence .... Mere delay in taking action against the infringers is not sufficient to hold that the registered proprietor has lost the mark CS (COMM) No.: 1923/21 Tulison Pharma Vs. Dr. Nise Pvt. Ltd. Page No. 27/33 ~ 28 ~ intentionally unless it is positively proved that delay was due to intentional abandonment of the right over the registered mark. This court is inclined to accept the submissions of the respondent no. 1 on this point .... The respondent no. 1 did not lose its mark by not proceeding against insignificant infringers ... "
In "Dr. Reddy Laboratories Vs. Reddy Pharmaceuticals", 2004 (29) PTC 435, the Hon'ble Delhi High Court held as under :-
"..., the owners of trade marks or copy rights are not expected to run after every infringer and thereby remain involved in litigation at the cost of their business time. If the impugned infringment is too trivial or insignificant and is not capable of harming their business interests, they may overlook and ignore petty violations till they assume alarming proportions. If a road side Dhaba puts up a board of "Taj Hotel", the owners of Taj Group are not exptect to swing into action and raise objections forthwith. They can wait till the time the user of their name starts harming their business interest and starts misleading and confusing their customers."
The Delhi High Court held, with following observation, in "Colgate Palmolive Company and Anr. Vs. Anchor health and Beauty Care Pvt. Ltd." 2003 SCC OnLine Delhi 1005 that colour in a trade dress can be so significant that CS (COMM) No.: 1923/21 Tulison Pharma Vs. Dr. Nise Pvt. Ltd. Page No. 28/33 ~ 29 ~ in some cases, even single colour can be taken to be a trademark to be protected in passing off action :-
"60. In the case of passing off and for that purpose infringement of trade mark which are already in existence, the second or for that purpose the subsequent comer has certain obligation to avoid unfair competition and become unjustly rich by encashing on the goodwill or reputation of the prior comer. They have to establish and bank upon on their own trade dress or distinctive features so as to establish their own merit and reputation and attract the attention of the purchasing public and if there are no substantial dissimilarities of marks, colour combination, get up or lay out on the container or packing or covering of the goods of the prior comer these are likely to create confusion in the minds of customers between his goods and the goods of the prior comer in the market as underlying and hidden intention of the second comer is to encash upon the successful rival.
62. Significance of trade dress and colour combination is so immense that in some cases even single colour has been taken to be a trde mark to be protected from passing off action. Colour combination is a trade mark within the definition of the TMM Act as there is no exclusion in the definition. Even a single colour has been held to be a trade mark. There may be exception also. Exception is that where the colour cannot be protected as the blue colour is for the Ink and red colour is for the lipstick. Red and white has nothing to do with the pink. Teeth as white CS (COMM) No.: 1923/21 Tulison Pharma Vs. Dr. Nise Pvt. Ltd. Page No. 29/33 ~ 30 ~ line and Gum as Pink colour alone at least sometimes can meet the basic requirements as a trade mark. Colour depletion theory is unpursuasive only in cases where a blanket prohibition is being sought. "
In "M/s Tulison Pharma Vs. M/s Kumar Drug Pharmaceuticals Pvt. Ltd.", Suit No. 1928/2000, decided by Delhi High Court on 15.05.2003, the plea of the defendant was that the plaintiff was using the trademark Kasmadhu and it was using the trademark Kaskamadhu. The defendant had filed a rectification petition against the plaintiff before the concerned authority. Moreover, the Kaskamadhu trademark was adopted by defendant in 1997 and despite it, permanent injunction was granted against it.
21. In view of the above discussion, it is held that the plaintiff has exclusive right to use the trademark 'Kasmadhu' and so, is entitled to decree of permanent injunction and delivery up against the defendant. All these issues are decided in favour of plaintiff and against defendant.
Issue No. 522. Learned counsel for plaintiff argued that the defendant had started using trademark 'Khasmadhu' in 2019 and thereafter, CS (COMM) No.: 1923/21 Tulison Pharma Vs. Dr. Nise Pvt. Ltd. Page No. 30/33 ~ 31 ~ the plaintiff's sale declined and so, exemplary damages be granted.
Learned counsel for defendant replied that no basis of claim of damages to the tune of Rs. 3,10,000/- has been mentioned in plaint as well as in affidavit in evidence. He submitted that his client is a small time Ayurvedic medicine manufacturer. In 2019, he had purchased 5300 labels and 4106 packaging cartons for packing the preparation by the name of Khasmadhu. These labels and cartons were used to prepare 1995 units of Khasmadhu, out of which 999 units were sold to Jain Pharmaceuticals @ Rs. 12.05 per unit, 576 were sold to M/s Win Trading Company @ Rs. 12.05 per unit and 420 were sold to Prince Medicos @ Rs. 11 per unit. The defendant had used those labels and cartons to manufacture Khasmadhu of the value of only Rs. 23,598/-. So, if the court comes to the conclusion that the plaintiff is entitled to damages, only nominal damages be granted.
23. PW1 admitted in cross-examination that he did not place on record any document to show how and in what manner the plaintiff was entitled to damages to the tune of Rs. 3,10,000/-.
On the other hand, the defendant has filed invoice Ex. DW1/8 dated 11.12.2019 vide which it had purchased some packing material from M/s Packaging Trendz. It is mentioned in the invoice that 4106 cartons and 5300 labels were purchased.
CS (COMM) No.: 1923/21 Tulison Pharma Vs. Dr. Nise Pvt. Ltd. Page No. 31/33 ~ 32 ~ The purchased quantity is huge. The less number of purchased cartons than the label, show that the defendant might have purchased either in past or in recent future, some more cartons to make their number at least equal to the number of labels i.e. 5300. But the defendant did not file other invoices to that effect. Also, it did not file balance-sheet and sale trend etc. to prove its sale. As per figures appearing on Ex. PW1/10, the plaintiff had achieved the sale of Kasmadhu to the tune of Rs. 1,75,71,975/- in 2019 - 20 but it declined to Rs. 1,60,71,334/- in the next year. It is pertinent to mention that the defendant had adopted the trademark Khasmadhu in 2019. So, after adoption of that trademark by the defendant, the plaintiff suffered decline of sale of Rs. 15 lacs and the same is definitely attributable to the defendant. Taking into account this fact, only the exemplary damages to the tune of Rs. 3 lacs in favour of plaintiff and against defendant, would do the justice. So, damages to the tune of Rs. 3 lacs are allowed in favour of plaintiff.
Issue No. 624. In view of decision on above issues, following is held:-
1. Defendant, its directors/ proprietors/ partners, associates, assigns, heirs, successors, distributors, dealers, whole sellers, stockists, agents and all other acting for and on its behalf are permanently restrained from using the CS (COMM) No.: 1923/21 Tulison Pharma Vs. Dr. Nise Pvt. Ltd. Page No. 32/33 ~ 33 ~ trademark "KHASMADHU" and or its formative marks or any other trade marks/labels/logos deceptively similar to the registered trademark/logo of the plaintiff.
2. The defendant is permanently injuncted from passing off its goods as the goods of the plaintiff.
3. Plaintiff is entitled to delivery up all of finished/unfinished goods/material bearing the infringing and violating of its trademark, for the purpose of destruction.
4. The plaintiff, to whom superdari of the impugned goods were given, is directed to destroy the same within 15 days from today.
5. The plaintiff is entitled to damages to the tune of ₹ 3 lakhs from the defendant.
25. Plaintiff is entitled to cost also. Decree sheet be prepared.
File be consigned to record room after due compliance.
Digitally signed by Announced in open court on 06th day of January, 2024 UMED UMED SINGH Date:
SINGH 2024.01.06
14:42:32
(UMED SINGH GREWAL) +0530
District Judge-Commercial Court-5
Central District, Delhi.
CS (COMM) No.: 1923/21
Tulison Pharma Vs. Dr. Nise Pvt. Ltd. Page No. 33/33