Delhi District Court
M/S Marion Biotech vs Lark Laboratories on 23 April, 2018
M/s Marion Biotech vs Lark Laboratories
IN THE COURT OF MS. JYOTI KLER, ADDL. DISTRICT JUDGE-05,
ROOM NO. 605, SOUTH DISTRICT, SAKET COURTS, NEW DELHI
In the matter of
T.M. No. 33/16
Case ID No. DLST01-000260-2010
M/s Marion Biotech Pvt. Ltd.
1497, 1st Floor, Bhardwaj Bhawan
Bhishm Pitamah Marg
New Delhi - 110003
.............Plaintiff
Versus
M/s Lark Laboratories (I) Ltd.
A-105/2, Okhla Industrial Area,
New Delhi - 110020
..............Defendant
Date of Institution : 17.09.2010
Date of Reserving the Judgment : 16.03.2018
Date of Pronouncement : 23.04.2018
Decision : Dismissed
JUDGMENT IN THE SUIT FOR PERMANENT INJUNCTION
RESTRAINING THE INFRINGMENT OF TRADEMARK,
COPYRIGHT, DELIVERY UP, RENDITION OF ACCOUNTS ETC.
1. This judgment shall dispose off the Suit for permanent
injunction restraining the infringement of trade mark, copyright, delivery up,
TM No.33/16 Page 1 of 31
M/s Marion Biotech vs Lark Laboratories
and rendition of accounts filed by M/s Marion Biotech Pvt. Ltd. (hereinafter
referred as 'the plaintiff') against M/s Lark Laboratories (I) Ltd. (hereinafter
referred as 'the defendant').
Case of the Plaintiff
2. Plaintiff is a private limited company carrying old and established
business of manufacturing and trading of medicinal and pharmaceutical
preparations. It conceived and coined the trademark "NOLGRIPP" in the
year 2003 and started using it in respect of medicinal goods since May 2003.
The said trademark was registered under number 1392656 dated 19.10.2005
before Registrar of Trademark. The lable/packaging of "NOLGRIPP" is also
having unique colour combination, font, layout, design etc. which is an
original artwork protected under copyright laws. The literary material on the
label/packaging is original too, protected under copyright laws. The unique
and distinctive form of label/packaging with material protected under
copyright and word mark "NOLGRIPP", makes the entire trade dress of
products of the plaintiff protectable. The goods under this trademark and
trade dress are being marketed in 15 countries by M/s Quramax Ltd. The
quality of drug being sold by the plaintiff is very good due to which
trademark of the plaintiff has acquired recognition, reputation and goodwill.
This trademark is exclusively associated with the plaintiff so as to denote
medicines originating from the plaintiff. The plaintiff has advertised its mark
TM No.33/16 Page 2 of 31
M/s Marion Biotech vs Lark Laboratories
well. Therefore, the trademark has gained good publicity since 2003 and has
acquired the status of a well known trademark.
3. The defendant was noticed using work mark "STOPGRIPP" in
August 2010, in packaging similar in colour combination, layout & design
as that of plaintiff, with similar literary work having phonetic, structural and
visual similarity. The drug of the defendant is not very effective. Defendant
is making illegal profit on the goodwill of plaintiff and is passing off its
goods as that of plaintiff, thereby infringing the registered trademark of the
plaintiff.
4. Following prayers have been made by the plaintiff:-
"i) Decree of perpetual injunction restraining the
defendant, its agents, servants, dealers, representatives
and all other persons acting on their behalf from
manufacturing and/or selling and/or exporting and/or
dealing in any other manner the medicine and/or any
other goods under the mark STOPGRIPP or any other
trade mark deceptively similar to the Plaintiff's
registered trade mark NOLGRIPP amounting to
infringement of the Plaintiff's trade mark NOLGRIPP
registered under no. 1392656 and
ii) Decree of perpetual injunction restraining the
Defendant, its agents, servants, dealers, representatives
and all other persons acting on their behalf from
reproducing, publishing and / or visual representation in
TM No.33/16 Page 3 of 31
M/s Marion Biotech vs Lark Laboratories
any manner of the packaging STOPGRIPP or any other
packaging similar to the Plaintiff's packaging
NOLGRIPP amounting to infringement of the Plaintiff's
copyright in artistic packagings/label NOLGRIPP and
infringement of the Plaintiff's copyright in literary
matters mentioned on the packaging NOLGRIPP and
iii) an order against the Defendant for delivery of all
the materials including blister packings, packagings,
printedmaterials, stationery, blocks, dies bearing the
Impugned mark NOLGRIP unto the plaintiff for the
purpose of destruction/erasure and
iv) an order thereby direct the Defendants to render
its account of profits earned on account of the sales of
medicines under the impugned mark NOLGRIP from
date of first sale till injunction order is passed and
further order for payment of the said profit to the
plaintiff; and
v) An order of cost of these proceedings or
vi) For any other relief which this Hon'ble Court
deems fit and proper in the facts and circumstances of
the case, may also be granted in favour of the plaintiff
and against the defendants, in the interest of justice."
Case of the Defendant
5. Defendant averred that the suit was filed by the plaintiff due to
business rivalry. Plaintiff relied upon forged and fabricated documents as
one of the invoice is dated 18.05.2002 though the plaintiff is claiming user
TM No.33/16 Page 4 of 31
M/s Marion Biotech vs Lark Laboratories
from since May, 2003. Similarly, the drug licence obtained by the plaintiff
for drug "NOLGRIPP" is of the year 2000, which is not possible because
according to the plaintiff the term "NOLGRIPP" was coined in 2003.
Defendant further averred that this court has no jurisdiction to entertain and
try the present suit because the drug "NOLGRIPP" is not being sold in India
and is meant for export only. Since there are no invoices of sale in India,
there is no question of goodwill/reputation in India and hence no question of
any confusion. The representation of word mark "STOPGRIPP" and colour
combination on the packaging of the defendant is completely different. The
word "GRIPP" is descriptive as it means flu/fever in French and the prefix
"NOL" and "STOP" are distinctive features in each of the two marks.
Defendant is also a reputed company having global presence. The
registration of trademark "NOLGRIPP" was wrongly obtained by the
plaintiff.
Rejoinder
6. In the replication, plaintiff states that the trademark "NOLGRIPP"
was actually adopted in 2002 but the plaint says 2003 because user of the
trademark was claimed from May, 2003 in the trademark application. It is
averred that plaintiff would not gain any benefit by claiming user at a later
date; that no licence for drug "NOLGRIPP" was obtained in the year 2000;
that the licence obtained in 2000 was renewed in 2011; and that the renewed
TM No.33/16 Page 5 of 31
M/s Marion Biotech vs Lark Laboratories
licence mentions about drug "NOLGRIPP". It is further stated that drug
"NOLGRIPP" is being manufactured in, and exported from, India. The
trademark of defendant is deceptively similarly to the trademark of plaintiff,
the word "GRIPP" is not descriptive and therefore prefix "NOL" and
"STOP" cannot be the distinctive features.
Issues
7. On the basis of pleadings, following issues were framed vide order
dated 29.09.2011:-
1) Whether Shri A.K. Jhamb is competent and authorized
to sign, verify the plaint and suit has been properly
instituted? OPP
2(a) Whether the present Court lacks jurisdiction to try
the suit? OPD
2(b) Whether the composite suit filed for relief under the
Copy Rights Act, 1957 and under the provisions of Trade
Mark Act, 1999, is maintainable? If not, its consequences
- whether it is to be treated exclusively under Copyrights
Act or exclusively under Trade Mark Act or else? OPP
2(c) Whether the suit for infringement of trademark lies
within the territorial jurisdiction of City Civil Court /
Court of Additional District Judge, South Delhi under
section 134(1)(a) & (b) of Trade Marks Act, 1999, since
plaintiff has Office at Bishamh Pitamah Marg, New
Delhi? OPP
3. Whether the plaintiff came to the Court without
TM No.33/16 Page 6 of 31
M/s Marion Biotech vs Lark Laboratories
clean hands, by suppressing the facts willfully, if so, its
consequences? OPD
4. Whether the suit is without cause of action? OPD
5. Whether the plaintiff is entitled for decree of
perpetual injunction against the defendant, as per prayer
clause 22(i) of plaint? OPP
6. Whether the plaintiff is entitled for decree of the
perpetual injunction against the defendant as per prayer
clause 22(ii) of plaint? OPP
7. Whether the plaintiff is entitled for decree, in the
form of mandatory injunction against the defendant, as
per prayer clause 22(iii) of plaint? OPP
8. Whether the plaintiff is entitled for directions
against the defendant, to render accounts of profit, as per
prayer clause 22(iv) of plaint? OPP
9. Relief.
Plaintiff's Evidence
8. Plaintiff examined one witness, namely, Sh. Lalit Kalra as PW1 by
way of evidence affidavit Ex.PW1/A and additional evidence affidavit
Ex.PW1/B. PW-1 relied upon the following documents in support of the
contents of his evidence affidavit: -
TM No.33/16 Page 7 of 31
M/s Marion Biotech vs Lark Laboratories
S.No. Particulars of documents Exhibit number
1. Extracts of Board Resolution dated Ex.PW1/1
25.11.2013 appointing Sh. Lalit Kalra as
AR of the plaintiff.
2. Board Resolution dated 13.09.2010 Ex.PW1/2
appointing Sh. A.K. Jhamb as AR of the
plaintiff.
3. Copy of drug license dated 28.06.2001 Mark 'A'.
reflecting that tablet NOLGRIPP was
approved for export.
4. Copy of renewal certificate of the drug Ex.PW1/4
license, dated 07.08.2007.
5. Copy of additional representation dated Mark 'B' & Ex.PW1/6
19.10.2005 before the trademarks
registry and registration certificate of
trademark NOLGRIPP under number
1392656 dated 19.10.2005
6. Catch Cover Packaging, blister Ex.PW1/7 to Ex.PW1/9
packaging and outer packaging of
Plaintiff's trademark 'NOLGRIPP'.
7. Copy of sales invoices and packing list Ex.PW1/10 to
from the year 2002 till 2010. Ex.PW1/25.
8. Catch cover packaging, blister Ex.PW1/26 to
packaging and outer packaging of Ex.PW1/28.
defendant's trademark 'STOPGRIPP'.
9. Registration certificate of copyright Ex.PW1/29
over the packaging of trademark
'NOLGRIPP'.
TM No.33/16 Page 8 of 31
M/s Marion Biotech vs Lark Laboratories
9. During cross examination PW1 deposed that he was working with the
plaintiff since 2005. He first deposed that the trade mark 'NOLGRIPP' was
being used by the plaintiff since 2000 and then said that it was being used
since 2002 but it was inadvertently reflected in the plaint that the mark was
adopted in 2003. He denied that word Gripp in trademark 'NOLGRIPP' was
descriptive as it meant flu / fever in French language. He admitted that
plaintiff was exporting medicines under the trademark 'NOLGRIPP' and had
no sales in India. He denied that the trademark of plaintiff was phonetically,
structurally and visually different from the trademark of defendant. He
expressed unawareness if the word gripp was also being used by other firms
in pharmaceutical industry. He deposed that as per his information defendant
was using trademark 'STOPGRIPP' since 2010 but expressed his inability to
answer if there was any effect on the sales of the plaintiff after the year
2010.
Defendant's Evidence
10. Defendant also examined one witness i.e. Sh. V.K. Gupta by way of
evidence affidavit Ex.DW1/A. DW1 relied upon the following documents in
support of the contents of his affidavit:-
TM No.33/16 Page 9 of 31
M/s Marion Biotech vs Lark Laboratories
S.No. Particulars of documents Exhibit number
1. Board Resolution dated 26.10.2010 Ex.DW1/1
appointing Sh. V.K. Gupta as AR of the
defendant.
2. Permission to manufacture drug Ex. DW1/2 & DW1/3
'STOPGRIPP' granted to the defendant
by Govt. of Rajasthan.
3. Packaging of defendant. Ex.DW1/4
4. Printout showing results of google Mark 'A'.
search for word grippe.
5. Printout of trademark Vrakgripp which Mark 'B'.
is being used for flu tablets.
6. Invoice & packing lists regarding export Mark 'C'.
of STOPGRIPP tablets from 2009-2010.
11. DW1 denied during his cross examination that he was not authorized
on behalf of the defendant to file written statement and evidence affidavit.
He deposed that he was director of the defendant company since 1979 but
was not aware when the defendant started using the trademark
'STOPGRIPP'. He denied that before adopting the trademark 'STOPGRIPP'
defendant saw the Trademark of plaintiff and was concious of the goodwill
this mark was carrying. He deposed that defendant did not carry out any
trademark search before adopting the trade mark 'STOPGRIPP'. He admitted
that defendant was selling its medicine under the trademark 'STOPGRIPP' in
TM No.33/16 Page 10 of 31
M/s Marion Biotech vs Lark Laboratories
CIS countries. He also deposed that he did not remember if the defendant
company was exporting its goods merely by mentioning bar code and
neutral code without mentioning the name of the defendant company.
Final Arguments
12. Ld. Counsel for the plaintiff argued that plaintiff has been able to
prove its case on preponderance of probabilities because defendant failed to
prove that the suffix word 'GRIPP' was a descriptive word which meant
flu/fever in French language. It was further argued that defendant did not
disclose date of user thereby leading to presumption that defendant was
using the trademark dishonestly for passing off the goods of the plaintiff as
that of defendant. He contended that trademarks 'NOLGRIPP' and
'STOPGRIPP', if seen as a whole, were deceptively similar and defendant
thereby infringed the registered trademark of the plaintiff. It was also
contended that defendant copied the tradedress of plaintiff as a whole which
has led to loss of reputation to the plaintiff because goods of the defendant
are of inferior quality. Ld. Counsel for the plaintiff has relied upon following
judgments in support of his contentions" -
i) Amritdhara Pharmacy Vs. Satya Deo
Gupta : AIR 1963 SC 449 (V 50 C 63) :
Trademarks 'Lakshmandhara' and 'Amritdhara' held
to be deceptively similar.
ii) Himalaya Drug Company Vs. S.B.L. Limited
TM No.33/16 Page 11 of 31
M/s Marion Biotech vs Lark Laboratories
: 2013 (53) PTC 1 (Del.) (DB): Trademark 'Liv-T'
and 'Liv.52' held to be deceptively similar.
iii) Cadila Healthcare Ltd. Vs. Aureate
Healthcare Pvt. Ltd. & Anr. : 2012 (51) PTC 585
(Del.) : 'PANTODACT' and 'PANTOCLOC' held to
be deceptively similar.
iv) Win - Medicare Pvt. Ltd. Vs. Galpha
Laboratories Ltd. & Ors. : 2016 (65) PTC 506
(Del.) : 'BETADINE' and 'BECTODINE' held to be
deceptively similar.
v) Pankaj Goel Vs. Dabur India Ltd.: 2008 (38)
PTC 49 (Del.) (DB) : 'RASMOLA' and
'HAJMOLA' held to be deceptively similar.
vi) Frito - Lay India & Ors. Vs. Radesh Foods
& Anr. : 2009 (40) PTC 37 (Del.) : Packaging of
trademarks 'LAYS' and 'LEO' held to be deceptively
similar.
vii) RSPL Health Private Ltd. Vs. Deep
Industry : 2015 (61) PTC 438 (Del) : Packaging of
trademark POSH and XPERT held to be deceptively
similar.
viii) Amrit Soap Company Vs. New Punjab Soap
Factory : 1989(2) Arb. LR 242:Identical trademark
BILLY used by defendant in similar packaging.
Injunction was granted.
ix) Coca - Cola Company Vs. Bisleri
International Pvt. Ltd. & Ors. : 2009 (41) PTC 460
(Del.).
x) Dhodha House & Patel Field Marshal
Industries Vs. S.K. Maingi & P.M. Diesel Ltd. :
2006 (32) PTC 1 (SC).
TM No.33/16 Page 12 of 31
M/s Marion Biotech vs Lark Laboratories
13. Ld. Counsel for defendant argued that the word 'Gripp' means
flu/fever in French language as can be easily traced on Google. The words
'STOP' and 'NOL' are phonetically different and constitute a distinctive
feature in the trademark of defendant and plaintiff respectively. It was
contended that the word 'Gripp' being descriptive in nature, cannot be
considered for comparing and concluding if trademark of plaintiff is
deceptively similar to the trademark of defendant. It was further argued that
medicinal products are being sold under the trademarks 'NOLGRIPP' and
'STOPGRIPP' which are not available in open market but are prescribed by
experts like doctors who are literate enough to distinguish between the two
products. It was moreover argued that no infringement of trademark of
plaintiff occurred and therefore suit should be dismissed. Ld. Counsel for
defendant relied upon the following judgments in support of his contentions:
-
i) M/s Gufic Ltd. & Another Vs. Clinique Laboratories, LLC & Anr. : FAO (OS) 222/2009 delivered by Hon'ble High Court of Delhi on 09.07.2010 : Trademark 'Clinique' and 'Skincliniq' held to be not deceptively similar.
ii) Kewal Krishan Kumar Vs. Kaushal Roller Flour Mills Pvt. Ltd. : PTC (Suppl) (1) 217 (Del) :
Trademarks' 'Shaktibhog' & 'Shaktibrand' held to be not deceptively similar.
iii) J.R. Kapoor Vs. Micronix India : 1994-PTC-
260 (SC) : Trademark 'Micronix' and 'Microtel' TM No.33/16 Page 13 of 31 M/s Marion Biotech vs Lark Laboratories held to be not deceptively similar.
iv) Nutrine Confectionery Co. Ltd. Vs. Icon Household Products Pvt. Ltd. & Anr. : 2010 (42) PTC 41 (Mad.) : Held, 'Lacto' is a common word found in dictionary. So no infringement if this word is used by the defendant.
v) Sant Kumar Mehra Vs. Ram Lakhan : 1999 PTC (19) 307 : Held, the trademark "Matkewala' is descriptive and thus no injunction can be granted.
Appreciation of Evidence
14. The admitted position culled out from the testimony of plaintiff and defendant is that both parties are in pharmaceutical business. Plaintiff is selling the drug for influenza under the tradename 'NOLGRIPP' and defendant is selling the drug for same illness under the tradename 'STOPGRIPP'. It is also admitted position that both the parties do not have permission to sell their respective product in India and they are exporting these to the Commonwealth of Independent States (CIS) countries.
Findings
15. I have considered the rival contentions raised before me and perused the record. My issue wise findings, based upon factual & legal matrix, are as under: -
Issue no.1: Whether Shri A.K. Jhamb is competent and authorized TM No.33/16 Page 14 of 31 M/s Marion Biotech vs Lark Laboratories to sign, verify the plaint and suit has been properly instituted? OPP
16. Onus to prove this issue was upon the plaintiff. PW-1 proved the board resolution Ex.PW1/2 reflecting that Sh. A.K. Jhamb was duly authorized by the plaintiff company to sign and verify the plaint and to institute the present suit. No cross examination of PW1 was conducted by the defendant on this aspect. No suggestion was given regarding the genuinity of Ex.PW1/2. The board resolution Ex.PW1/2 in favour of Sh. A.K. Jhamb thus stands proved. It is accordingly held that Sh. A.K. Jhamb was competent and authorized to sign and verify the plaint, and to institute the present suit.
17. Issue no. 1 is accordingly decided in favour of the plaintiff and against the defendant.
Issue no. 2(a): Whether the present Court lacks jurisdiction to try the suit? OPD
18. Onus to prove issue no. 2(a) was upon the defendant. It is the case of the defendant that this Court has no territorial jurisdiction to entertain and try the present suit because both the parties are admittedly having no sale in India and are exporting the goods under their respective trademarks.
TM No.33/16 Page 15 of 31M/s Marion Biotech vs Lark Laboratories
19. Ld. Counsel for the plaintiff relied upon the judgment of Hon'ble High Court of Delhi in [Coca Cola Company Vs. Bisleri International Pvt. Ltd. & Ors.: 2009 (41) PTC 460 (Del.)] wherein Hon'ble High Court of Delhi held as under: -
"40. It is well settled law that exporting of goods from a country is to be considered as sale within the country from where the goods are exported and the same amounts to infringement of trade mark. In Souza Cruz Vs. N.K. Jain & Ors., PTC (Suppl) (2) 892 (Del) the plaintiff was situated in Brazil and admittedly carried out no sale in India and neither did the defendant No.1. The principal issue in that case was that the plaintiff has no cause of action in India. The court relied upon Section 55 of the Trade marks Act and observed that the court within the jurisdiction of which the defendant No.1 resides will have jurisdiction to try the suit through the cause of action arises outside India. The likely wrong ought to be nipped in the bud and territorial jurisdiction would lie not only where the defendant No.1 is but also where the infringing activity is taking place."
20. This decision is a direct answer to the contention of the defendant. Cause of action in respect of infringement of a trademark shall lie even at places where infringing activity is happening though the parties have no sale of their product in the said jurisdiction. The office of defendant in this case is located at Okhla and the drug sold under trademark 'STOPGRIPP' is TM No.33/16 Page 16 of 31 M/s Marion Biotech vs Lark Laboratories being manufactured in and exported from India. Merely because parties have no sale in India is not sufficient to oust the plaintiff from this Court. Export of a product also amounts to sale and therefore plaintiff is well within its rights to file the present suit before this Court. It is held accordingly that this Court has jurisdiction to entertain and try the present suit.
21. Issue no. 2(a) is accordingly decided in favour of the plaintiff and against the defendant.
Issue no. 2(b): Whether the composite suit filed for relief under the Copy Rights Act, 1957 and under the provisions of Trade Mark Act, 1999, is maintainable? If not, its consequences - whether it is to be treated exclusively under Copyrights Act or exclusively under Trade Mark Act or else? OPP
22. Onus to prove this issue was upon the plaintiff. Ld counsel for the plaintiff at the stage of arguments relied upon the decision of Hon'ble Apex Court in Dhoda House and Patel Field Marshal Industries Vs. S.K. Maingi & P.M. Diesel Ltd.:2006 (32) PTC 1 (SC) to contend that composite suit is not barred. Ld. Counsel referred to the observations of Hon'ble Apex Court in para no. 23 and 24 of the aforesaid decision which read as under:
TM No.33/16 Page 17 of 31M/s Marion Biotech vs Lark Laboratories
" 23. We are not concerned in this case with the maintainability of a composite suit both under the 1957 Act and the 1958 Act. Indisputably, if such a situation arises, the same would be permissible;.......
24. Order II Rule 3 of the Code provides that the plaintiff may unite in the same suit several causes of action against the same defendant, or the same defendants jointly. The said order contemplates uniting of several causes of action in the same suit. By necessary implication, a cause of action for infringement of Copyright and a cause of action for infringement of Trade Mark or a cause of action of passing off would be different. Even if one cause of action has no nexus with another, indisputably Order II Rule 3 may apply......"
23. The above decision of Hon'ble Apex Court is a direct answer to issue no. 2(b). It is clear that a composite suit for infringement of trademark and copyright is maintainable. The observations made by the Hon'ble Apex Court in above decision were obiter though, it is the settled law that even obiter of Hon'ble Apex Court is binding upon this Court unless there is a contrary ratio in subsequent decisions. The present issue is squarely covered by the decision relied upon by Ld. Counsel for the plaintiff. It is accordingly held that a composite suit for infringement of trademark and copy right is maintainable. Issue no. 2 (b) is accordingly decided in favour of plaintiff and against the defendant.
TM No.33/16 Page 18 of 31M/s Marion Biotech vs Lark Laboratories Issue no. 2(c): Whether the suit for infringement of trademark lies within the territorial jurisdiction of City Civil Court / Court of Additional District Judge, South Delhi under section 134(1)
(a) & (b) of Trade Marks Act, 1999, since plaintiff has Office at Bishamh Pitamah Marg, New Delhi? OPP
24. Onus to prove this issue was upon the plaintiff. It is the case of the defendant that this Court has no jurisdiction to entertain and try the present suit in view of Section 134 of the Trademark Act, 1999 because plaintiff is having office at Bhishm Pitamah Marg, New Delhi. The relevant Section reads as under:-
"134. Suit for infringement, etc., to be instituted before District Court. - (1) No suit -
(a) for the infringement of a registered trade mark; or
(b) relating to any right in a registered trade mark;
(c) for passing off arising out of the use by the defendant of any trade mark which is identical with or deceptively similar to the plaintiff's trade mark, whether registered or unregistered.
shall be instituted in any court inferior to a District Court having jurisdiction to try the suit.
(2) For the purpose of clauses (a) and (b) of sub-section (1), a "District Court having jurisdiction" shall, notwithstanding anything contained in the Code of Civil Procedure, 1908 (5 of 1908) or any other law for the time being in force, include a District Court within the TM No.33/16 Page 19 of 31 M/s Marion Biotech vs Lark Laboratories local limits of whose jurisdiction, at the time of the institution of the suit or other proceeding, the person instituting the suit or proceeding, or, where there are more than one such persons any of them, actually and voluntarily resides or carries on business or personally works for gain."
25. It is now the settled law that place of jurisdiction provided under Section 134 of the Trademark Act, 1999 is in addition, and not in derogation, to Section 20 of the Code of Civil Procedure [(Ref.) Indian Performing Rights Society Ltd. Vs. Sanjay Dalia & Ors. : (2015) 10 SCC 161]. A suit for infringement of trademark thus would lie even at the place where cause of action partly or wholly arose or where defendant is ordinarily residing, carrying on business or working for gain. The office of defendant is located at Okhla which area fell within the territorial jurisdiction of this Court when the present suit was instituted in the year 2010. Therefore, this Court has territorial jurisdiction to entertain and try the present suit.
26. Issue no. 2(c) is accordingly decided in favour of the plaintiff and against the defendant.
Issue no. 3: Whether the plaintiff came to the Court without clean hands, by suppressing the facts willfully, if so, its consequences? OPD TM No.33/16 Page 20 of 31 M/s Marion Biotech vs Lark Laboratories
27. Onus to prove issue no. 3 was upon the defendant. It is the case of the defendant that plaintiff has suppressed material facts from this Court and approached this Court without clean hands. This objection has been raised by the defendant in para no. 3 of his written statement. However, there is no reference to any such material facts that were suppressed by the plaintiff from this Court. The objection raised in para no. 3 of the written statement is therefore a bald averment without any substance. No specific evidence was further laid by the defendant to prove suppression of material facts. For said reasons, issue no. 3 is decided against the defendant and in favour of the plaintiff.
Issue no.4: Whether the suit is without cause of action? OPD
28. Onus to prove issue no. 4 was upon the defendant. Plaintiff has alleged infringement of its trademark 'NOLGRIPP' by the defendant. The defendant is admittedly using the trademark 'STOPGRIPP' with respect to same drug that is being sold by the plaintiff. Plaintiff having believed that the trademark of the defendant is deceptively similar to its trademark, has approached the Court for adjudication. It cannot thus be said that the suit has been filed without any cause of action. Issue no. 4 is accordingly decided against the defendant and in favour of the plaintiff.
TM No.33/16 Page 21 of 31M/s Marion Biotech vs Lark Laboratories Issue no. 5: Whether the plaintiff is entitled for decree of perpetual injunction against the defendant, as per prayer clause 22(i) of plaint? OPP Issue No. 6: Whether the plaintiff is entitled for decree of perpetual injunction against the defendant, as per prayer clause 22(ii) of plaint? OPP Issue No. 7: Whether the plaintiff is entitled for decree, in the form of mandatory injunction against the defendant, as per prayer clause 22(iii) of plaint? OPP and Issue No. 8: Whether the plaintiff is entitled for directions against the defendant, to render accounts of profit, as per prayer clause 22(iv) of plaint? OPP
29. All these issues are being taken together because these are interconnected. These issues pertain to the prayer clause of the plaint and grant of relief sought in the said clause. Determination of these issues is dependant on the finding if trademark of plaintiff is deceptively similar to that of defendant.
30. It is case of the plaintiff that defendant is using word mark 'STOPGRIPP' which is similar to its registered trademark 'NOLGRIPP'. The defendant has copied original literary work on the packaging of the TM No.33/16 Page 22 of 31 M/s Marion Biotech vs Lark Laboratories product of plaintiff. The defendant has further copied the colour combination and thus the entire tradedress including word mark. The defendant has thus infringed the trademark including tradedress of the plaintiff.
31. It is case of the defendant that mark 'STOPGRIPP' used by it is not deceptively similar to the trademark and trade dress of the plaintiff. It is averred that the word mark including colour combination and style of writing the mark are completely different in the two cases.
32. The term 'infringement' of a registered trademark has been described in Section 29 of the Trade Marks Act, 1999 that reads as under: -
"Infringement of registered trademarks.-- (1) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to, the trade mark in relation to goods or services in respect to which the trade is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark. (2) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which because of -TM No.33/16 Page 23 of 31
M/s Marion Biotech vs Lark Laboratories
(a) its identity with the registered trade mark and the similarity of the goods or services covered by such registered trade mark; or
(b) its similarity to the registered trade mark and the identity or similarity of the goods or services covered by such registered trade mark; or
(c) its identity with the registered trade mark and the identity of the googs or services covered by such registered trade mark, is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trade mark.
(3) In any cases falling under clause (c) of sub- section (2), the court shall presume that it is likely to cause confusion on the part of public.
(4) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which -
(a) is identical with or similar to the registered trade mark; and
(b) is used in relation to goods or services which are not similar to those for which the trade mark is registered; and
(c) the registered trade mark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trade mark.
(5) A registered trade mark is infringed by a person if he uses such registered trade mark, as his trade name or part of his trade name, or name of his TM No.33/16 Page 24 of 31 M/s Marion Biotech vs Lark Laboratories business concern or part of the name, of his business concern dealing in goods or services in respect of which the trade mark is registered.
(6) For the purpose of this section, a person uses a registered mark, if, in particular, he -
(a) affixes it to goods or the packaging thereof;
(b) offers or exposes goods for sale, puts them on the market, or stocks them for those purposes under the registered trade mark,or offers or supplies services under the registered trade mark;
(c) imports or exports goods under the mark;
or
(d) uses the registered trade mark on business papers, or in advertising.
(7) A registered trade mark is infringed by a person who applies such registered trade mark to a material intended to be used for labelling or packaging goods, as a business paper, or for advertising goods or services, provided such person, which he applied the makr, knew or had reason to believe that the application of the mark was not duly authorized by the proprietor or a licensee.
(8) A registered trade mark is infringed by any advertising of that trade mark if such advertising -
(a) takes unfair advantage of and is contrary to honest practices in industrial or commercial matters; or
(b) is detrimental to its distinctive character; or
(c) is against the reputation of the trade mark. (9) Where the distinctive elements of a registered trade mark consist of or include words, the TM No.33/16 Page 25 of 31 M/s Marion Biotech vs Lark Laboratories trademarkmay beinfringedby the spoken use of those words as well as by their visual representation and reference in this section to the use of a mark shall be construed accordingly."
33. While noting down the principles to be followed by the Courts for deciding if the trademark is deceptively similar, Hon'ble High Court of Delhi in M/s Gufic Ltd. & Anr. Vs. Clinique Laboratories, LLC & Anr. :
FAO(OS) 222/2009 delivered on 09.07.2010, held as below in para no. 22:-
"1. The test of deceptive similarity in the case of infringement is the same as in a passing off action, where the marks are not identical;
2. The question has to be approached from the point of view of a man with average intelligence and imperfect recollection;
3. In comparing the marks, it is the overrall structural and phonetic similarity of the two marks that is to be seen and not by splitting them into their component parts and to consider the etymological meaning thereof;
4. The trademark is the whole thing - the whole word has to be considered; and
5. In comparing the two marks, it is also to be seen whether they both convey the same idea - (test of commonness of the idea between the two marks)."
34. Hon'ble High Court also observed that the above principles shall TM No.33/16 Page 26 of 31 M/s Marion Biotech vs Lark Laboratories apply in cases where the question to be determined is if the trademark of the plaintiff is deceptively similar to the trademark of the defendant. These principle shall have no applicability where trademarks were identical.
35. In the present case, the trademarks admittedly are not identical. Plaintiff has averred that the trademarks are deceptively similar. Now, to determine if the trademarks are deceptively similar, court has to make a comparison from the point of view of a man with average intelligence and imperfect recollection. The trademarks are to be seen as a whole and not by separating into different components.
36. Trademark and tradedress of the plaintiff is Ex.PW1/7 to Ex.PW1/9. The alleged infringing trademark and tradedress is Ex.PW1/26 to Ex.PW1/28 and Ex.DW1/4. While packaging of the plaintiff is in grey, dark blue and yellow colour combination, packaging of the defendant is in violet, sky blue, red, yellow and golden colour combination. The scheme of colours used by the plaintiff is thus quite different from the scheme of colours used by the defendant. Plaintiff as well as defendant have listed names of the diseases on which medicine works, over their respective packaging, with word mark 'NOLGRIPP' and 'STOPGRIPP' respectively. These names are not written in any artistic form but in a simple manner without any creative work. Names of the diseases are common words used by public and plaintiff TM No.33/16 Page 27 of 31 M/s Marion Biotech vs Lark Laboratories cannot claim to have exclusive right to use these names. There is no originality in the names of the disease written by the plaintiff and therefore plaintiff cannot claim to have copyright in this literary work over the packaging.
37. The structural representation of trademark of the plaintiff is quite different from the trademark of defendant. While the plaintiff has written the word 'NOL' prominently in grey colour inside a blue circle, defendant has written the word 'STOP' prominently in red colour. The word 'GRIPP' has been written by the plaintiff with word 'NOL', outside the circle in same font as the word 'NOL'. Defendant however has written the word 'GRIPP' in a similar font than the word 'STOP'. The defendant has also used the image of a lady, holding her head with both hands, on its packaging. Name of marketing company of the defendant is reflected prominently too, on its packaging. Similar is the case with the packaging of plaintiff where name of its marketing company is prominently reflected.
38. The only similarity in the trademark and tradedress of plaintiff and defendant is use of suffix 'GRIPP' with prefix 'NOL' and 'STOP'. There is no visual or structural similarity however. It is the case of defendant that the word 'GRIPP' is a descriptive French word which means influenza in English. PW1 during his cross examination was suggested that the word TM No.33/16 Page 28 of 31 M/s Marion Biotech vs Lark Laboratories 'GRIPP' is a French Word which means flu / fever in English language, which he denied. It was however observed by my Ld. Predecessor in interim order dated 29.09.2011, and a search on Google further reveals the same, that the word 'GRIPPE' is a french word which means influenza. While so observing, my Ld. Predecessor took external aid of New Shorter Oxford English Dictionary Volume I-A to M, Edition 1993, at page no. 1146, where the word 'GRIPPE' has been defined as 'influenza'. The word "GRIPP' has been written as 'ГРИПП' in Russian Language on both the packagings i.e. Ex. PW1/7 to Ex. PW1/9, Ex.PW1/26 to Ex.PW1/28 and Ex.DW1/4. This word 'ГРИПП' in Russian language means 'influenza'.
39. It is admitted case of the parties that the product under the trademarks in question are being exported to CIS Countries. It is a matter of common knowledge that CIS countries are alliance of former Soviet Republic formed in December, 1991 and the predominant language of these countries is Russian. The word 'GRIPPE' translated in Russian language means influenza which is a descriptive word. The distinct words in both trademarks are thus 'NOL' and 'STOP' which are phonetically different.
40. It is the settled law that while comparing the trademarks from the perspective of a man with average intelligence, Court also has to take note of the category of ultimate consumers who are likely to be deceived. The TM No.33/16 Page 29 of 31 M/s Marion Biotech vs Lark Laboratories goods under trademark in question are being exported from India. Hence, both the parties are dealing with their dealers in India and not with ultimate consumer. The dealers of course would be more concerned with the company with which they are dealing, rather than the brand name. Names of the marketing companies of the plaintiff and defendant are prominently reflected on their packaging Ex.PW1/9 & Ex.DW1/4. The ultimate consumers are in CIS Countries. The suffix of both the trademarks is a descriptive word in Russian language. Consumer shall thus identify the product with prefix which are structurally, phonetically and visually different. It may also be noted here that products sold under the two trademarks in question are drugs to be prescribed by the experts i.e. doctors who shall be concerned with the company marketing the product and salt of the tablet rather then brand names.
41. In view thereof, I am of the considered opinion that the trademark in question i.e. 'NOLGRIPP' and 'STOPGRIPP' are not deceptively similar. Hence question of infringement does not arise and plaintiff is thus not entitled for any relief. Issues no. 5, 6, 7 & 8 are accordingly decided against the plaintiff and in favour of the defendant.
Relief
42. In view of the findings with respect to issue no. 5, 6, 7 & 8, the suit is TM No.33/16 Page 30 of 31 M/s Marion Biotech vs Lark Laboratories dismissed. No order as to costs.
43. Decree sheet be prepared accordingly.
44. File be consigned to record room.
Announced in the open (JYOTI KLER)
Court on 23.04.2018 ADJ-05 (SOUTH DISTRICT)
(Judgment contains 31 pages) SAKET COURTS, NEW DELHI
TM No.33/16 Page 31 of 31