Madras High Court
M/S.Apex Laboratories Pvt. Ltd vs M/S. Knoll Healthcare Pvt Ltd on 19 June, 2025
Author: Senthilkumar Ramamoorthy
Bench: Senthilkumar Ramamoorthy
2025:MHC:1441
C.S. No.355 of 2020
IN THE HIGH COURT OF JUDICATURE AT MADRAS
Judgment Reserved on 15.04.2025
Judgment Pronounced on 19.06.2025
CORAM
THE HONOURABLE MR.JUSTICE SENTHILKUMAR RAMAMOORTHY
C.S No.355 of 2020 &
O.P.(TM) Nos.1 & 2 of 2023
C.S.No.355 of 2020
M/s.Apex Laboratories Pvt. Ltd.
29, III Floor, SIDCO Garment Complex,
Guindy, Chennai 600 032,
rep. by its Authorised Signatory,
D.Jude F.L.S.Durai Pandian ... Plaintiff
vs.
M/s. Knoll Healthcare Pvt Ltd
M-17, Pharma Tower, Badli Industrial Area,
New Delhi-110 042. ... Defendant
O.P.(TM) No.1 of 2023
M/s. Knoll Healthcare Pvt Ltd
M-17, Pharma Tower, Badli Industrial Area,
New Delhi-110 042. ... Petitioner
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C.S. No.355 of 2020
vs.
1. M/s.Apex Laboratories Private Limited,
29, III Floor, SIDCO Garment Complex,
Guindy, Chennai-600 032.
2. The Registrar of Trade Marks,
Office of the Trade Marks Registry,
Intellectual Property Rights Building,
Industrial Estate, SIDCO RMD,
Godown Area, G.S.T. Road, Guindy,
Chennai-600 032. ... Respondents
O.P.(TM) No.2 of 2023
M/s.Apex Laboratories Pvt. Ltd.
29, III Floor, SIDCO Garment Complex,
Guindy, Chennai-600 032,
rep. by its Authorised Signatory
D.Jude F.L.S.Durai Pandian. ... Petitioner
vs.
1. M/s. Knoll Healthcare Pvt Ltd
M-17, Pharma Tower, Badli Industrial Area,
New Delhi-110 042.
2. The Registrar of Trademarks,
Office of the Trademarks Registry,
Boudhik Sampada Bhawan,
Plot No.32, Sector 14, Dwarka,
New Delhi-110 078. ... Respondents
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C.S. No.355 of 2020
PRAYER in C.S.(COMM.DIV) No.355 of 2020: Plaint filed under
Order VII Rule 1 CPC and Order IV Rule 1 of the Original Side Rules
read with Sections 27, 28, 29, 134, 135 of the Trade Marks Act, 1999
and Sections 51, 55, 62 of the Copyrights Act, 1957, prays to grant a
judgment and decree on the following terms:
(a) a permanent injunction restraining the Defendant, by itself,
its partners, men, servants, agents, distributors, stockiest,
representatives or any one claiming through or under them from in
any manner infringing the plaintiff's registered trademark
ZINCOVIT under No.487453 in Class 5 and other registered
trademarks by using trademark ZINOLVITA or any other trademark
deceptively similar to the plaintiff's registered trademark or in any
other manner whatsoever;
(b) a permanent injunction restraining the Defendant, by itself,
its partners, men, servants, agents, distributors, stockiest,
representatives or any one claiming through or under them from in
any manner committing acts of copyright infringement by using, in
the course of trade, labels/artistic works which are a substantial
reproduction of Plaintiffs' registered copyright under Nos.A-
54243/1997 & A-112789/2017 and other registered copyrights in
colour scheme, get up and layout for their ZINOLVITA for any
tables, syrup, drops etc., or in any other manner whatsoever;
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(c) a permanent injunction restraining the Defendant, by itself,
its partners, men, servants, agents, distributors, stockiest,
representatives or any one claiming through or under them from iun
any manner passing off and/ or enabling others to pass off the
Defendant's products under the trademark ZINCOVITA as and for
the plaintiffs' products by manufacturing, selling, or offering to sell,
distributing, displaying, printing, stocking, using, advertising their
products with a trademark and/or label or artistic work that is
identical in colour scheme get up and layout with that of the
plaintiff's ZINCOVIT trademark or artistic work or in any other
manner whatsoever;
(d) the Defendant be ordered to surrender to Plaintiffs for
destruction of all products, labels, cartons, dyes, blocks, moulds,
screen prints, packing materials and other materials bearing the
trademark ZINOLVITA label or any mark deceptively similar to
plaintiffs' trademark and artistic work ZINCOVIT label;
(e) a preliminary decree be passed in favour of the Plaintiff
directing the Defendant to render account of profits made by use of
trademark and copyrights in the artistic work ZINOLVITA label and
a final decree be passed in favour of the Plaintiff for the amount of
profits thus found to have been made by the Defendant after the
latter have rendered accounts;and
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C.S. No.355 of 2020
(e) for costs of the suit.
PRAYER in O. P.(TM) No.1 of 2023: Original Petition (Trademark)
filed under Sections 47 & 57 of the Trademarks Act, 1999, prays that
this Court be pleased to rectify/cancel the Registration of Trade mark
impugned Trade Mark “ZINCOVIT” under No.487453 dated
16.03.1988 in class 05 by imposing a condition or limitation regarding
exclusive right to the word ZINC as APEX LABORATORIES LTD. V.
ZUVENTUS HEALTH CARE LTD., reported in
MANU/TN/9346/20006.
PRAYER in O. P.(TM) No.2 of 2023: Original Petition (Trademark)
filed under Sections 57 & 125 of the Trademarks Act, 1999, prays that
this Court be pleased to remove/expunge/rectify the entry relating
to registration no.2795619 in class 5 and award costs in favour of the
applicant.
For Petitioner/Plaintiff /
1st Respondent : Mr. R.Sathish Kumar
in OP(TM) No.2 of 2023 Ms. Meha Varshini M.R.
in C.S.(CommDiv) No.355 of 2020
in OP(TM) No.1 of 2023
For Petitioner/Defendant/
1st Respondent : Ms. Gladys Daniel
in OP(TM) No.1 of 2023 for M/s. C. Daniel
in C.S.(CommDiv) No.355 of 2020
in OP(TM) No.2 of 2023 : Mr. C. Samivel, SPC
in both OPs
**********
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C.S. No.355 of 2020
COMMON JUDGMENT
The civil suit was filed in November, 2020 seeking relief in respect of alleged trade mark infringement, copyright infringement and passing off. By order dated 09.07.2021 in A.Nos. 415 and 416 of 2021, this Court granted leave to the plaintiff to file a rectification petition to be heard along with the suit. On that basis, the plaintiff also filed a petition, OP(TM) No.2 of 2023, to rectify the register by removing the entry relating to Trade Mark No.2795619 for the trade mark 'ZINOLVITA' from the Register of Trade Marks. Similarly, vide order dated 30.11.2021, the defendant was granted leave to file a rectification petition to be adjudicated along with the suit. Pursuant thereto, the defendant filed a petition, OP(TM).No.1 of 2023, to rectify the register by imposing a condition or limitation regarding exclusive right to the word 'zinc' in Trade Mark No.487453 for the trade mark 'ZINCOVIT'. The suit and the two rectification petitions are being disposed of by this common judgment.
6 https://www.mhc.tn.gov.in/judis ( Uploaded on: 24/06/2025 04:28:11 pm ) C.S. No.355 of 2020 Pleadings and issues in suit and rectification petitions
2. In the plaint, the plaintiff asserts that it carries on business relating to pharmaceutical and nutraceutical products. It is further stated that the plaintiff adopted the trade mark ZINCOVIT in the year 1988 and used the trade mark since 1990. Pursuant to an application for registration of the said trade mark under TM A.No.487453 in Class 5, it is stated that the registration was granted with effect from 16.03.1988 and that such registration is valid until the year 2029. According to the plaintiff, the unique label adopted for products was registered as an artistic work in the Register of Copyrights under No.A-54243/1997 for ZINCOVIT syrup. The plaintiff also asserts that it has obtained registrations for the artistic work in the 7 colour strip labels, which are used for ZINCOVIT syrup, ZINCOVIT drops and ZINCOVIT tablets, as depicted at paragraph 7 of the plaint. By setting out the sales turnover from sale of products bearing the trade mark ZINCOVIT from the financial 7 https://www.mhc.tn.gov.in/judis ( Uploaded on: 24/06/2025 04:28:11 pm ) C.S. No.355 of 2020 year 1990-91 to 2020-21, the plaintiff asserts that the turnover is substantial.
3. In paragraph 14 of the plaint, the plaintiff further states that it became aware of the sale of the defendant's products bearing the impugned trade mark ZINOLVITA in November, 2020. It is further stated that the plaintiff discovered on enquiry that the defendant manufactures and markets its products using a label similar to the 7 colour label of the plaintiff. According to the plaintiff, the defendant's trade mark and packaging is phonetically and visually identical to that of the plaintiff. The suit was filed in these facts and circumstances.
4. In the written statement, the defendant states that it manufactures and markets pharmaceutical products. In course of business, it is stated that the defendant adopted the trade mark ZINOLVITA, and has used the trade mark without any interruption. 8 https://www.mhc.tn.gov.in/judis ( Uploaded on: 24/06/2025 04:28:11 pm ) C.S. No.355 of 2020 It is further stated that the defendant changed the carton/label for tablets and syrups under the trade mark ZINOLVITA. Upon making such change, it is stated that there is no visual similarity between the rival products. By way of preliminary objection, the defendant contends that the suit for infringement is not maintainable on account of Section 28(3) and 30(2)(e) of the Trade Marks Act, 1999 (the TM Act). The defendant further states that the plaintiff's trade mark ZINCOVIT is a portmanteau of the words 'zinc' and 'vitamin'. Therefore, it is stated that the plaintiff is not entitled to prevent others from using the word 'zinc', which is common to the trade/publici juris. In paragraph 13 of the written statement, the defendant has set out a list of registered or pending trade mark applications containing the element 'zinc' in the name.
5. Based on the above pleadings, on 24.02.2023, the following issues were framed:
“i. Whether the plaintiff is entitled for a permanent injunction to restrain the defendant 9 https://www.mhc.tn.gov.in/judis ( Uploaded on: 24/06/2025 04:28:11 pm ) C.S. No.355 of 2020 from using its registered Trade Mark ZINOLVITA vide TM.No.2795619 in Class 5 on the strength of the plaintiff registered Trade Mark ZINCOVIT vide TM.No.487453 in Class 5?; ii. Whether the use of the trade mark ZINOLVITA together with the altered trade dress would amount to passing off?;
iii. Whether the plaintiff and the defendant are entitled to plead invalidity of the registrations of the respective trade mark ZINCOVIT vide TM.No.487453 and ZINOLVITA vide TM.No.2795619 in Class 5.”
6. As stated earlier, the defendant filed OP (TM) No.1 of 2023 to rectify the register of trade marks by imposing a condition or limitation with regard to the element 'zinc' in the plaintiff's trade mark. In the petition, the defendant reiterates that ZINCOVIT is a portmanteau of the words 'zinc' and 'vitamin'. Consequently, it is stated that Section 13 of the TM Act is violated if exclusivity is claimed over the names of chemical elements or international non- 10 https://www.mhc.tn.gov.in/judis ( Uploaded on: 24/06/2025 04:28:11 pm ) C.S. No.355 of 2020 proprietary names such as zinc. The defendant also relies upon the judgment of the Division Bench in Apex Laboratories Ltd. v. Zuventus Health Care Ltd., MANU/TN/9346/2006 ('Apex Laboratories'), to contend that zinc is publici juris. After referring to a list of registered trade marks containing the element zinc and the packaging of other products containing the element zinc as part of the brand, the petitioner has requested that a condition or limitation be imposed by rectifying the register relating to the entry of Trade Mark No.487453.
7. In the counter statement, the plaintiff reiterates the contents of the plaint with regard to the adoption of the trade mark ZINCOVIT and the creation of artistic works containing the word ZINCOVIT. Thereafter, the plaintiff has set out the defendant's tablet and syrup cartons before contending that the rectification petition of the defendant is a counter blast to the suit and the rectification petition of the plaintiff. The plaintiff further states that Section 13 of the TM Act does not prohibit the registration of a trade mark 11 https://www.mhc.tn.gov.in/judis ( Uploaded on: 24/06/2025 04:28:11 pm ) C.S. No.355 of 2020 containing a combination of several elements, including a chemical compound. After further asserting that the trade mark ZINCOVIT is not publici juris, the plaintiff has prayed for dismissal of the rectification petition of the defendant. The defendant filed a reply statement refuting the allegations in the counter statement and reiterating those in the rectification petition.
8. On the basis of these pleadings, on 14.12.2023, the following issues were framed:
“1. Whether the trade mark ZINCOVIT is either inherently distinctive or has acquired distinctiveness?
2. Whether the first respondent is entitled to the exclusive use of the words ZINC and VIT by virtue of the trade mark ZINCOVIT under Trade Mark No.487453?
3. Whether the registration under Trade mark No.487453 in Class 5 for the trade mark ZINCOVIT is liable to be rectified by imposing a condition or limitation regarding exclusive right 12 https://www.mhc.tn.gov.in/judis ( Uploaded on: 24/06/2025 04:28:11 pm ) C.S. No.355 of 2020 to the use of the elements ZINC and VIT in the trade mark ZINCOVIT?
4. Whether the petitioner is entitled to the relief claimed?
5. Whether the parties are entitled to any other relief?”
9. In its rectification petition, after reiterating the assertions in the plaint, the plaintiff states that the impugned trade mark was used by the defendant only from the year 2010. Since the petitioner is both the prior user and prior registrant of the trade mark ZINCOVIT, the petitioner states that the entry relating to the deceptively similar trade mark ZINOLVITA was made without sufficient cause. After further asserting that the rival marks are used in relation to identical products, the plaintiff states that such use is likely to cause confusion and deception among consumers.
10. In the counter statement, the defendant asserts that its trade mark ZINOLVITA is unique and is not a dictionary word. It is 13 https://www.mhc.tn.gov.in/judis ( Uploaded on: 24/06/2025 04:28:11 pm ) C.S. No.355 of 2020 further stated that its mark is both visually and phonetically dissimilar to the plaintiff's trade mark. After further asserting that ZINCOVIT consists of the elements 'zinc' and 'vit', the defendant states that the plaintiff cannot claim any monopoly.
11. On the basis of these pleadings, the following issues were framed on 14.12.2023:
1. Whether the trade marks ZINCOVIT and ZINOLVITA are deceptively similar?
2. Whether the use of the trade mark ZINOLVITA is likely to cause confusion among the public?
3. Whether the entry relating to the trade mark ZINOLVITA under Trade Mark No.27955619 in Class 5 was made without sufficient cause or is otherwise liable to be removed from the register?
4. Whether the petitioner is entitled to the relief claimed?
5. Whether the parties are entitled to any other relief?14
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12. Evidence was recorded in common in both the rectification petitions and the suit. The plaintiff examined Mr. D. Jude F.L.S. Durai Pandian as PW1. In course of the examination-in-chief of PW1, 17 documents were exhibited as Exs.P1 to P17. PW1 was cross- examined by learned counsel for the defendant. The defendant examined Mr.Nishanth Gupta as DW1. In course of the examination- in-chief of DW1, 6 documents were exhibited as Exs.D1 to D6. DW1 was cross-examined by learned counsel for the plaintiff. Counsel and their contentions:
13. Mr. R.Sathish Kumar, learned counsel, advanced arguments on behalf of the plaintiff. Ms. Gladys Daniel, learned counsel, advanced arguments on behalf of the defendant. Both parties also filed written arguments.
14. The first submission of learned counsel for the plaintiff was that the mark ZINCOVIT was adopted by the plaintiff in March, 1988 15 https://www.mhc.tn.gov.in/judis ( Uploaded on: 24/06/2025 04:28:11 pm ) C.S. No.355 of 2020 and an application for registration was filed on 'proposed-to-be- used' basis in respect of Trade Mark No.487453 on 16.03.1988 for the word mark ZINCOVIT in class 5 relating to pharmaceutical medicinal preparations. By referring to Ex.P2, which is the legal use certificate, learned counsel submitted that the history relating to the proprietorship of the plaintiff is set out in such certificate. With regard to use of the trade mark, learned counsel referred to and relied upon Ex.P11 containing gate passes and invoices. He pointed out that the earliest invoice is dated 04.08.1990. He also submitted that the plaintiff advertised its products by referring to Ex.P12 (media clipping and promotional material). By referring to Exs.P6 to P9, learned counsel contended that copyright registrations were obtained in respect of artistic works/labels relating to the sale of syrup, drops and tablets containing the word ZINCOVIT and the 7 colour strip as also the fruits and vegetables device.
15. Learned counsel next contended that Section 13 of the TM Act only applies to a single chemical element or single chemical 16 https://www.mhc.tn.gov.in/judis ( Uploaded on: 24/06/2025 04:28:11 pm ) C.S. No.355 of 2020 compound and not to a combination. Even assuming without admitting that the plaintiff's trade mark is not inherently distinctive, learned counsel submitted that the trade mark acquired distinctiveness through long use after registration in the year 1988. In support of this contention, he relied upon Section 32 of the TM Act. The next contention of learned counsel for the plaintiff was that the defendant's adoption of the trade mark ZINOLVITA and the labels relating thereto was not honest. By comparing the plaintiff's label with that of the defendant at the time of institution of the suit, learned counsel submitted that the defendant evidently copied not only the word mark but also the plaintiff's label. In this connection, learned counsel referred to and relied upon the answers of DW1 to questions 11 to 23 and pointed out that DW1 was unable to explain the reason for adoption of the trade mark ZINOLVITA. With specific reference to answer 33, learned counsel submitted that DW1 could not remember the date from which the trade mark was used in spite of stating that he finalised the trade mark.
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16. Learned counsel proceeded to submit that the search report (Ex.D4) does not constitute evidence of use of trade marks containing the element zinc. By referring to questions 51 to 67 and the answers thereto, learned counsel submitted that DW1 was unable to substantiate the answer that more than 50 products from and out of Ex.D4 are available in the market. In fact, he pointed out that DW1 admitted that cartons, invoices, etc. relating to such products were not filed by the defendant. In support of the contention that the adoption by the defendant was dishonest, with reference to question 68, learned counsel pointed out that DW1 merely stated that it was the defendant's wish to use two different cartons for the syrup in Ex.P16 and the tablets in Ex.P15.
17. In support of these contentions, learned counsel referred to and relied upon the following judgments:
(i) Corn Products Refining Company v. Shangrila Food Products 18 https://www.mhc.tn.gov.in/judis ( Uploaded on: 24/06/2025 04:28:11 pm ) C.S. No.355 of 2020 Ltd, AIR 1960 SC 142 ('Corn Products'), particularly paragraph 13 thereof.
(ii) F. Hoffman-La Roche and Co. Ltd. v. Geoffery Manners ad Co.
Private Limited, AIR 1970 SC 2062 ('Hoffman-La Roche'), particularly paragraphs 16 and 17 thereof.
(iii) Shyam Investments v. Masti Health and Beauty Pvt. Ltd., 2020 SCC Online Mad 2326, particularly paragraph 36 and 68 thereof.
(iv) P.M. Palani Mudaliar and Co. v. M/s.Jansons Exports, M/s.Asher & Company, 2017 SCC OnLine Mad 1090, particularly paragraph 20 thereof. ('Palani Mudaliar').
(v) Sun Pharmaceutical Industries Limited v. Kivi Labs Ltd., 2024-I- MLL-476.
(vi) Godfrey Philips India Ltd. v. Girnar Food & Beverages P Ltd., (2004) 5 SCC 257, particularly paragraph 4 thereof.
(vii)S.Syed Mohideen v. Sulochana Bai, MANU/SC//0576/2015, particularly paragraph 22 thereof.
(viii) Dr.Reddy's Laboratories Limited v. Smart Laboratories Pvt. 19 https://www.mhc.tn.gov.in/judis ( Uploaded on: 24/06/2025 04:28:11 pm ) C.S. No.355 of 2020 Ltd., 2023 DHC 8214.
(ix) Ticona Polymers, Inc v. Registrar of Trademarks, 2023 SCC OnLine Del 1234, particularly paragraphs 11-18 thereof.
(x) Sun Pharma Laboratories Ltd. v Lupin Ltd. & another, 2018 SCC Online Del 7310, particularly paragraph 28 thereof.
18. Ms. Gladys Daniel vehemently resisted these contentions. Her first submission was that the changed label of the defendant is clearly distinguishable from the plaintiff's label. As regards the rationale for adoption of the trade mark ZINOLVITA, she submitted that it is derived from the elements zinc and vitamin in combination with Knoll, which is the name of the defendant company. Her next contention is that ZINCOVIT is a weak mark because it is derived from the names of the ingredients, zinc and vitamin. Consequently, she contended that even minor differences can defeat an infringement action. After pointing out that the defendant's trade mark ZINOLVITA was registered on 01.10.2017, learned counsel 20 https://www.mhc.tn.gov.in/judis ( Uploaded on: 24/06/2025 04:28:11 pm ) C.S. No.355 of 2020 submitted that the impugned trade mark has been used for a considerable period of time. By referring to the judgment of the Hon'ble Supreme Court in Hoffman-La Roche, learned counsel contended that it was held that vit is a common abbreviation for vitamin. By referring to the judgment of the Division Bench of this Court in Apex Laboratories, learned counsel submitted that it was held that zinc is common to the trade and that, therefore, ZINCOVIT and ZINCONIA are not deceptively similar. She next relied upon the order in O.A.Nos.618 to 620 of 2018 in C.S.No.433 of 2018 to contend that ZINCOACT was held to be dissimilar to ZINCOVIT. By relying on Section 144 of the TM Act, learned counsel contended that trade usage, such as the practice of deriving trade marks from the ingredients, the names of target diseases and the like, should also be taken into consideration while deciding these matters.
19. Learned counsel next contended that the plaintiff only filed the registration certificate (O2 certificate) while instituting the suit. 21 https://www.mhc.tn.gov.in/judis ( Uploaded on: 24/06/2025 04:28:11 pm ) C.S. No.355 of 2020 Later, without obtaining leave of this Court, the legal use certificates (Ex.P2 to P5) were substituted for the registration certificates. On this issue, learned counsel referred to and relied upon the answers of PW1 to questions 3 to 18 and 21 to 25. By also referring to the answers of PW1 to questions 28 and 29, learned counsel submitted that PW1 admitted that the changed label of the defendant does not resemble the plaintiff's label. By referring to questions 33, 34 and 40 and the answers of PW1, learned counsel submitted that PW1 admitted that the products of the plaintiff and defendant contain 'zinc' and 'vitamin'. With regard to use by the defendant, learned counsel referred to the invoices in the additional typed set in OP(TM) No.1 of 2023 to contend that the defendant has used the trade mark from the year 2014. In support of these contentions, learned counsel referred to and relied upon the following judgments:
(1) USV Limited v. Systopic Laboratories Limited and Others, MANU/TN/0001/2004 (2) Astrazeneca UK Ltd. and others v. Orchid Chemicals and 22 https://www.mhc.tn.gov.in/judis ( Uploaded on: 24/06/2025 04:28:11 pm ) C.S. No.355 of 2020 Pharmaceuticals Ltd. MANU/DE/8684/2006 (3) McCain International Limited v. Country Fair Foods Limited and Another, [1981] R.P.C.69.
(4) Nestle's Products (India) Ltd. v. P.Thankaraja and another, AIR 1978 MAD 336.
20. In view of the change of label and the admission of PW1 that the changed label does not resemble the plaintiff's label, learned counsel submitted that the action for copyright infringement is liable to be dismissed. She also submitted in this regard that the passing off action is liable to be rejected on account of added material. With regard to post registration distinctiveness as per Section 32 of the TM Act, learned counsel submitted that there are many other registered marks containing the element 'zinc'. By further submitting that the plaintiff did not take any steps to prevent dilution, she submitted that the plaintiff cannot make any claim to acquired distinctiveness. She concluded her submissions by stating that the sale of products 23 https://www.mhc.tn.gov.in/judis ( Uploaded on: 24/06/2025 04:28:11 pm ) C.S. No.355 of 2020 bearing the impugned mark was not restrained pending suit and that the defendant has used the mark for about 11 years.
21. By way of rejoinder, learned counsel for the plaintiff made the following submissions:
(1) ZINCOVIT is an invented word, which is not found in dictionaries.
(2) The trade mark is applied to nutritional supplements which are consumed upon being prescribed by medical doctors.
(3) Even assuming that the trade mark was not inherently distinctive, it has acquired distinctiveness.
(4) The change in label does not come to the aid of the defendant with regard to the deceptive similarity of the rival trade marks.
(5) Legal use certificates are not different documents. In any case, the plaintiff had filed the legal use certificate at the time of institution of the suit and only the renewal certificate was filed later.24
https://www.mhc.tn.gov.in/judis ( Uploaded on: 24/06/2025 04:28:11 pm ) C.S. No.355 of 2020 (6) The search report is insufficient to establish use and no evidence of use of the trade marks mentioned in the search report was placed on record by the defendant.
22.Learned counsel referred to and relied upon the following judgments:
(i) Blue Hill Logistics Private Ltd. v. Ashok Leyland Limited and Dilip Chhabria Design Private Limited, 2011 (4) CTC 417.
(ii) Bata India Limited v. Chawla Boot House and Another, (2019) 78 PTC 505
(iii) Cipla Limited v. Sun Pharmaceutical Industries Limited, 2022 (91) PTC 352
(iv) Heinz Italia v. Dabur, 2007(6) SCC 1.
Discussion, Analysis and Conclusion:
23. As is evident from the above narration, issues were framed separately in the suit and in each rectification petition, but evidence 25 https://www.mhc.tn.gov.in/judis ( Uploaded on: 24/06/2025 04:28:11 pm ) C.S. No.355 of 2020 was recorded in common. The issues in the suit and in the rectification petition of the plaintiff are connected and interdependent. Therefore, connected issues are combined and answered.
Issue No.1 in OP(TM) No. 1 of 2023
24. This issue relates to whether the trade mark ZINCOVIT is either inherently distinctive or has acquired distinctiveness. Along with this issue, the defences raised by the defendants on grounds of publici juris and acquiescence are also considered. The TM Act defines a trade mark in Section 2(1)(zb) as under:
“(zb) 'Trademark' means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combinations of colours...“ From the above definition, it is evident that distinctiveness is an essential requirement for a trade mark inasmuch as the mark should be capable of distinguishing the goods or services of the person 26 https://www.mhc.tn.gov.in/judis ( Uploaded on: 24/06/2025 04:28:11 pm ) C.S. No.355 of 2020 claiming proprietorship from those of others. Put differently, if a mark does not satisfy this requirement, it will not qualify as a trade mark for purposes of the TM Act. As a consequence, the proprietor of such mark would not be entitled to the benefits of registration under Sections 28 and 29 thereof. Hence, the determination as to whether the plaintiff's mark is distinctive is central to the adjudication of this dispute.
25. The plaintiff contended that the mark ZINCOVIT was adopted in March, 1988 and that the plaintiff applied for registration on 'proposed to be used' basis on 16.03.1988 in Class 5 relating to pharmaceutical and medicinal preparations. Learned counsel for the defendant advanced the contention that only the O2 certificate was filed at the time of institution. The record discloses, however, that the legal use certificate was filed and that only the renewal thereof was filed in course of trial. In any event, on this tenuous ground, it cannot be concluded that the plaintiff is not the registered proprietor of the 27 https://www.mhc.tn.gov.in/judis ( Uploaded on: 24/06/2025 04:28:11 pm ) C.S. No.355 of 2020 trade mark ZINCOVIT. The admitted position is that the mark is applied to pharmaceutical preparations containing both zinc and vitamin. Shortly after applying for registration, the plaintiff states that the mark was applied to pharmaceutical preparations. As evidence of such assertion, the plaintiff relied on Ex.P11, which contains gate passes and invoices collectively. The earliest invoice in Ex.P11 is dated 04.08.1990. Invoices from 1990 to 2023 have been placed on record by the plaintiff. These invoices relate to tablets, capsules and syrups under the trade mark ZINCOVIT.
26. Learned counsel for the defendant contended that the plaintiff's trade mark falls within the scope of Section 13 of the TM Act. Section 13 of the TM Act is as under:
“13. Prohibition of registration of names of chemical elements or international non- proprietary names.-No word-
(a) which is the commonly used and accepted name of any single chemical element or any single chemical compound (as distinguished 28 https://www.mhc.tn.gov.in/judis ( Uploaded on: 24/06/2025 04:28:11 pm ) C.S. No.355 of 2020 from a mixture) in respect of a chemical substance or preparation, or
(b) which is declared by the World Health Organisation and notified in the prescribed manner by the Registrar from time to time, as an international non-proprietary name or which is deceptively similar to such name, shall be registered as a trade mark any such registration shall be deemed for the purpose of section 57 to be an entry made in the register without sufficient cause or an entry wrongly remaining on the register, as the circumstances may require.” Clause (a) of Section 13 deals with commonly used and accepted names of any single chemical element or any single chemical compound in respect of chemical substance or preparation. The pharmaceutical preparation of the plaintiff consists of not only the chemical element zinc, but also vitamins. Since it is neither the name of a single chemical element nor of a single chemical compound, the trade mark ZINCOVIT does not fall within the scope of Section 13.29
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27. The question as to whether the trade mark ZINCOVIT is either inherently distinctive or has acquired distinctiveness falls for consideration next. Trade marks are classified into about five categories: invented, arbitrary, suggestive, descriptive, and generic. A trade mark is said to be inventive, when it uses words or other elements which are not found in the dictionary and which are not otherwise in use. If the word exists but has no relation whatsoever to the goods or services in respect of which it is used, such trade mark is considered arbitrary. If the trade mark suggests but does not describe the qualities, characteristics or nature of the goods, it is considered suggestive. If the trade mark describes the nature, quality or characteristic of the goods or services, it is considered descriptive. If the trade mark describes a product or service category, it is considered generic. Descriptive and generic marks are not permitted to be registered as per Section 9 of the TM Act unless such mark had acquired distinctiveness on the date of application. Invented, 30 https://www.mhc.tn.gov.in/judis ( Uploaded on: 24/06/2025 04:28:11 pm ) C.S. No.355 of 2020 arbitrary or suggestive marks are considered as inherently distinctive and are entitled to registration.
28. Because the plaintiff's trade mark is derived from the elements zinc and vitamin, the trade mark ZINCOVIT, which merely adds the vowel 'o' by placing it between zinc and vit, which is an abbreviation of vitamin, cannot be considered as inherently distinctive. In this regard, learned counsel for the plaintiff contended that even proceeding on the assumption that it is not inherently distinctive, it has acquired distinctiveness. This aspect is dealt with next.
29. Section 32 of the TM Act, which deals with acquired distinctiveness, is as under:
“32. Protection of registration on ground of distinctiveness in certain cases.- Where a trade mark is registered in breach of sub- section(1) of section 9, it shall not be declared 31 https://www.mhc.tn.gov.in/judis ( Uploaded on: 24/06/2025 04:28:11 pm ) C.S. No.355 of 2020 invalid if, in consequence of the use which has been made of it, it has after registration and before commencement of any legal proceedings challenging the validity of such registration, acquired a distinctive character in relation to the goods or services for which it is registered. “ Even if a trade mark were to be registered in breach of sub-section (1) of Section 9, Section 32 prescribes that it shall not be declared invalid if the trade mark had acquired a distinctive character in relation to the goods or services for which it is registered, after registration but before the commencement of legal proceedings challenging the validity of such registration. As noticed earlier, the plaintiff's registration of the word mark ZINCOVIT is with effect from 16.03.1988. The challenge to the registration, albeit limited in scope, is by way of OP(TM) No.1 of 2023, which was filed on 05.07.2023.
Therefore, it becomes necessary to consider whether the plaintiff's trade mark has acquired distinctiveness between 16.03.1998 and 05.07.2023.
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30. As discussed earlier, as evidence of use, the plaintiff exhibited invoices collectively as Ex.P11. While the earliest invoice is dated 04.08.1990, the latest invoice on record is dated 31.03.2023. Effectively, invoices evidencing sale of products bearing the trade mark ZINCOVIT for a period of about 33 years have been placed on record. In addition, the plaintiff has placed on record media clippings and other promotional materials bearing the trade mark ZINCOVIT as Ex.P12. At paragraph 9 of the plaint, the annual sales turnover of products bearing the trade mark ZINCOVIT for financial years 1991- 92 to 2020-21 have been set out. The said details are also set out at paragraph 12 of the proof affidavit of Mr.D.Jude F.L.S.Durai Pandian, who was examined as PW1. It should be noticed that the plaintiff did not file a certificate from a chartered accountant to establish the sales turnover. The oral evidence in the proof affidavit was, however, not questioned in course of cross-examination. Hence, it is concluded that the evidence relating to turnover stands proved. Such evidence discloses that the turnover was Rs.89,56,556/- in financial year 1990- 33 https://www.mhc.tn.gov.in/judis ( Uploaded on: 24/06/2025 04:28:11 pm ) C.S. No.355 of 2020 91 and that the sales turnover increased thereafter. In financial year 2022-23, PW1 states that the turnover was in excess of Rs.255 crore. On the basis of the evidence adduced by the plaintiff, I conclude that the plaintiff's trade mark has acquired distinctiveness through use over a period of about 33 years.
31. Learned counsel for the defendant, however, contended that there are several pharmaceutical products in the market containing the element zinc. In support of this contention, the defendant relied upon a search report dated 01.08.2021 (Ex.D4). By relying upon the judgment of the Hon'ble Supreme Court in Corn Products, learned counsel for the plaintiff submitted that the production of the search report is insufficient to establish that the trade mark has become publicis juris. By relying on the judgment of the Division Bench of this Court in Palani Mudaliar, he further submitted that use by others should exceed use by the registered proprietor to establish the defence of publicis juris. On perusal of the search report, it appears 34 https://www.mhc.tn.gov.in/judis ( Uploaded on: 24/06/2025 04:28:11 pm ) C.S. No.355 of 2020 that the report contains a list of marks with the status thereof. The status varies from 'registered', 'abandoned', 'removed' or 'opposed'.
32. Undoubtedly, the marks bearing the status 'abandoned' or 'removed' should be completely disregarded. As regards the marks showing the status as 'registered', it was necessary for the defendant to adduce further evidence that such marks are being used. DW1 was questioned about the search report. The relevant questions and answers are set out below:
“Q58: Approximately, how many trademarks are there in Ex.D4?
A: Approximately 300.
Q59: Are you telling that all the 300 trademarks are available in the market?
A: No. Most of them.
Q60: Approximately what is the number of such products available in the market?
A: I think it will be more than 50.
Q61: Have you produced any document to show that such products around 50 are available in the 35 https://www.mhc.tn.gov.in/judis ( Uploaded on: 24/06/2025 04:28:11 pm ) C.S. No.355 of 2020 market?
A:No.” As is evident from the answers to questions 60 and 61, DW1 stated that more than 50 products mentioned in Ex.D4 are available in the market, but admitted that the defendant had not produced any documents to show that such products are indeed available in the market. In these circumstances, the defendant cannot sustain the defence of the plaintiff's trade mark being common to the trade or publicis juris merely by relying on Ex.D4.
33. The defendant also pleaded that the plaintiff acquiesced in the use of the impugned trade mark by the defendant. This contention is raised on the basis that the defendant has used the impugned mark continuously for a long period. In response, the plaintiff pleads that it became aware of the sale of products bearing the impugned mark in November 2020 and that the plaintiff filed the suit in the same month. In order to sustain the defence of acquiescence under Section 33 of the TM Act, the defendant should 36 https://www.mhc.tn.gov.in/judis ( Uploaded on: 24/06/2025 04:28:11 pm ) C.S. No.355 of 2020 establish that the plaintiff stood by for a continuous period of at least five years after being aware of the defendant's use. In the absence of any evidence to that effect, this defence cannot be sustained. Issue Nos.2 and 3 in OP(TM) No.1 of 2023
34. Issue No.2 relates to whether the plaintiff is entitled to the exclusive use of the words zinc and vitamin by virtue of the trade mark ZINCOVIT under trade mark No.487453. Issue No.3 relates to whether Trade Mark No.487453 is liable to be rectified by imposing a condition or limitation regarding exclusive right to use the elements 'zinc' and 'vit' in trade mark 'ZINCOVIT'. While answering the issue relating to distinctiveness, it was concluded that the trademark ZINCOVIT has acquired distinctiveness in the post registration period. As a consequence, the plaintiff is entitled to protect its registration against any marks identical or deceptively similar thereto. Without doubt, the plaintiff cannot assert any exclusivity with regard to the words zinc or vitamin or even the abbreviation of 37 https://www.mhc.tn.gov.in/judis ( Uploaded on: 24/06/2025 04:28:11 pm ) C.S. No.355 of 2020 vitamin i.e. 'vit'. Learned counsel for the defendant relied on the judgment of the Hon'ble Supreme Court in Hoffman-La Roche to contend that 'vit' is a common abbreviation of vitamin. This contention is liable to be accepted. The plaintiff, however, does not assert the exclusive right to use 'Vit' or 'Zinc'. Instead, the plaintiff asserts that ZINCOVIT is distinctive and that no other person is entitled to use any mark deceptively similar thereto.
35. Section 17 of the TM Act provides that the registration of a mark confers on the proprietor the exclusive right to the use of the trade mark as a whole. In the specific context of the trade mark ZINCOVIT, by virtue of Section 17(1) of the TM Act, the plaintiff can only assert exclusive right to the trade mark 'ZINCOVIT' and not to either 'zinc' or 'vit' separately. The exception is if the elements of a trade mark are separately registered, which is not the case here. Such elements, in any case, being the name of a chemical element and the abbreviation of vitamin cannot be separately registered. 38 https://www.mhc.tn.gov.in/judis ( Uploaded on: 24/06/2025 04:28:11 pm ) C.S. No.355 of 2020 Therefore, the condition or limitation sought to be incorporated by the defendant in the plaintiff's registration is unnecessary because the statute prescribes the said condition or limitation. Issue Nos.2 and 3 in OP(TM) No. 1 of 2013 are disposed of as above.
Issue Nos.1 and 2 in OP (TM) No.2 of 2023
36. Issue Nos.1 and 2 in the plaintiff's rectification petition is whether the trade mark 'ZINCOVIT' and 'ZINOLVITA' are deceptively similar and whether the use of the trade mark 'ZINOLVITA' is likely to cause confusion among the public. These issues are at the core of this dispute and the answer thereto will determine the result of the litigation. Learned counsel for the defendant relied on the judgment of the Division Bench of this Court in Apex Laboratories to contend that the Division Bench held that 'ZINCOVIT' and 'ZINOLVITA' are not deceptively similar. She also relied upon the order in O.A.Nos.618 to 620 of 2018 in C.S.No.433 of 2018 to contend that this Court held ZINCOACT was not similar to 39 https://www.mhc.tn.gov.in/judis ( Uploaded on: 24/06/2025 04:28:11 pm ) C.S. No.355 of 2020 ZINCOVIT. She further submitted that trade usage is a relevant factor as per Section 144 of the TM Act. After pointing out that the trade marks in the pharmaceutical industry are commonly derived from the names of ingredients or target diseases, she submitted that the defendant's trade mark is distinguishable and is not likely to result in confusion or deception.
37. Learned counsel for the plaintiff, on the other hand, contended that Apex Laboratories was a decision in an interlocutory application, and that the dispute was settled out of Court by the parties. The contention that it is common practice in the pharmaceutical industry to derive the names of the trade mark from the names of active pharmaceutical ingredients or from the names of the target diseases is a matter of common general knowledge and judicial notice may be taken thereof. As a consequence, trade marks derived in the manner above-mentioned are relatively weaker. When a suit for infringement is founded on such marks, unless the 40 https://www.mhc.tn.gov.in/judis ( Uploaded on: 24/06/2025 04:28:11 pm ) C.S. No.355 of 2020 defendant's trade mark closely resembles that of the plaintiff, the plaintiff may not be entitled to relief.
38. The plaintiff instituted the suit upon noticing the defendant's label in the market. At that juncture, the plaintiff's syrup carton was as under:
41
https://www.mhc.tn.gov.in/judis ( Uploaded on: 24/06/2025 04:28:11 pm ) C.S. No.355 of 2020 The defendant's syrup carton was as under:
As is self-evident from the above depictions, the plaintiff was using the trade mark 'ZINCOVIT' along with the device of fruits and vegetables. The defendant was using the trade mark 'ZINOLVITA' along with a nearly identical device of fruits and vegetables.
Therefore, this Court granted an interim injunction to the plaintiff.42
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39. Thereafter, the defendant modified the label and adopted the label set out below for the syrup:
In effect, the word mark ZINOLVITA was retained, but the devices on the label were changed.
40. The above discussion leads to the conclusion that the adoption of the label by the defendant in the first instance was not honest and appears to be with a view to capitalize on the reputation 43 https://www.mhc.tn.gov.in/judis ( Uploaded on: 24/06/2025 04:28:11 pm ) C.S. No.355 of 2020 of the plaintiff. After being restrained from using such label by this Court, the plaintiff agreed to change the label, but did not discontinue use of the word mark.
41. The question whether there is deceptive similarity should be examined from the perspective of a person of average intelligence and imperfect collection. If such person is likely to be deceived or confused including by way of trade connection by the use of the mark ZINOLVITA, an injunction should follow. Learned counsel for the defendant submitted that the defendant's mark, if pronounced correctly, consists of three syllables Zy-Nol-Vita. Therefore, she submitted that the marks are not phonetically, visually or structurally similar. This contention is misconceived because correct pronunciation by the consumer of average intelligence and imperfect recollection cannot be the basis for adjudicating deceptive similarity. It is quite likely that a large section of the relevant public would de- emphasise 'Zy' and pronounce the defendant's mark as ZYNOL- VITA.
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42. The plaintiff is undoubtedly the prior user and prior registrant since the registration was in the year 1988 and evidence of use is available from year 1990. By comparison, the defendant's registration was in the year 2014 and use followed. In my view, when viewed as a whole, the similarities between the marks is likely to lead to deception or confusion. This conclusion is reinforced by the fact that both the marks are used in respect of identical products. As discussed earlier, the manner of original adoption by the defendant also plays a role in arriving at this conclusion. Issue Nos. 1 and 2 in OP(TM) No.2 of 2023 is disposed of on these terms. Issue No.3 in OP(TM) No.2 of 2023 and Issue No.1 in the suit
43. Issue No.3 in OP(TM) No.2 of 2023 is whether the entry relating to the defendant's trade mark ZINOLVITA under TM No.2795619 was made without sufficient use or is otherwise liable to be removed from the register. Issue No.1 in the suit relates to whether the plaintiff is entitled to a permanent injunction to restrain 45 https://www.mhc.tn.gov.in/judis ( Uploaded on: 24/06/2025 04:28:11 pm ) C.S. No.355 of 2020 the defendant from using the impugned trade mark ZINOLVITA. Since these issues are interrelated, they are considered and disposed of jointly.
44. While determining Issue No.1 in OP(TM) No.2 of 2023, it was earlier concluded herein that the trade marks 'ZINCOVIT' and 'ZINOLVITA' are deceptively similar and that the use of the impugned mark 'ZINOLVITA' is likely to cause confusion among the public. In view of such deceptive similarity, the Registrar of Trade Marks ought to have declined the request for registration under Section 11 of the TM Act. Because the registration was granted in the teeth of Section 11 of the TM Act, the entry relating to TM No.2795619 was made without sufficient cause. Consequently, a case is made out to rectify the register by removing the entry relating to the impugned mark.
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45. Once the registration is held to be invalid and liable to be rectified, the defences under Section 28(3) and 30(2)(e) fall apart. As a corollary, the plaintiff is entitled to a permanent injunction. The defendant has been using the impugned mark for several years and it is possible that there is a ready-to-sell inventory in the pipeline. As regards such inventory, a carve-out is necessary for about four months to enable liquidation thereof.
Additional Issue relating to copyright
46. Although no issue was framed, the plaintiff has prayed for a permanent injunction in relation to registered copyright Nos.A- 54243/1997 and A-112787/2017 and other registered labels. The registration certificates in respect of the above mentioned registrations have been exhibited as Exs.P6 and P9 respectively. Such registrations are in respect of the following registered artistic works: 47
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47. Out of the above labels, the plaintiff has discontinued use of the label depicted in Ex.P9. As noticed earlier, the defendant had adopted a label containing the device of fruits and vegetables and later discontinued use of such label. The label currently in use by the defendant was exhibited as Ex.D3. This label cannot be construed as a copy of the plaintiff's label. Nonetheless, in view of the earlier label of the defendant, which was a copy of the plaintiff's label, it is necessary to restrain the defendant from copying the labels presently used by the plaintiff and forming a part of Exs.P6 to P9, including by resuming use of the label depicted in Ex.P16.
Issue No.2 in the suit:
48. Issue No.2 in the suit relates to whether the use of the mark ZINOLVITA with the altered trade dress would amount to passing off. As noticed earlier, the defendant changed the label after an order of interim injunction was issued. The defendant, however, retained the word mark ZINOLVITA. Such mark was earlier held herein to be 50 https://www.mhc.tn.gov.in/judis ( Uploaded on: 24/06/2025 04:28:11 pm ) C.S. No.355 of 2020 deceptively similar to the plaintiff's trade mark ZINCOVIT. The plaintiff has placed on record evidence of use for about 33 years. The oral evidence with regard to the sales turnover is set out in the proof affidavit of PW1. The turnover was Rs.89,56,556/- in the first year of use i.e. 1990-91. The defendant adopted the impugned trade mark in the year 2014. By the year of adoption of the defendant's trade mark, the plaintiff's sales turnover was Rs.145,61,20,502/-. The plaintiff had also manufactured and marketed the goods bearing the trade mark ZINCOVIT for about 25 years by then. The evidence on record leads to the conclusion that the plaintiff had acquired significant reputation and goodwill. The use of a deceptively similar trade mark constitutes a misrepresentation to the public. By the use of such trade mark, the plaintiff alleges that it incurred losses and has prayed for rendition of accounts and a decree for profits. Thus, all elements to establish the claim of passing off stand proved by the plaintiff. 51 https://www.mhc.tn.gov.in/judis ( Uploaded on: 24/06/2025 04:28:11 pm ) C.S. No.355 of 2020 Issue Nos.4 and 5 in OP(TM) Nos.1 and 2 of 2023 and Issue No. 3 in the suit
49. Issue Nos.4 and 5 in OP(TM) No.1 and 2 of 2023 and Issue No. 3 in the suit relate to the relief to be granted to the parties. The plaintiff has established that it is entitled to the reliefs claimed in clauses (a) to (e) of the plaint. The plaintiff has also established that it is entitled to the relief of rectification in OP(TM) No.2 of 2023. The relief requested in OP (TM) No.1 of 2023 is declined, as stated earlier, by holding that the defendant's concern is effectively allayed by Section 17 of the TM Act. As the successful party, the plaintiff is entitled to costs. The defendant shall pay an aggregate sum of Rs.4,00,000/- as costs to the plaintiff towards court fees, lawyer's fee and other expenses.
50. In the result:
(i) The suit is decreed in terms of prayers (a) to (e) of paragraph 35 of the plaint subject to the qualification that the defendant is 52 https://www.mhc.tn.gov.in/judis ( Uploaded on: 24/06/2025 04:28:11 pm ) C.S. No.355 of 2020 permitted to liquidate the existing inventory of ready-to-sell products bearing the impugned mark, whether directly or through its distributors, wholesalers and retailers, within four months from the date the web copy of this judgment is uploaded. This exception is subject to the condition that the defendant files an affidavit in the registry of this Court under copy to the plaintiff within two weeks from the date the web copy of this judgment is uploaded providing details of such ready-to-sell inventory. In addition, the defendant is directed to pay a sum of Rs.4,00,000/- as costs to the plaintiff.
(ii) OP(TM) No.1 of 2023 is disposed of by holding that Section 17 of the Trade Marks Act, 1999 imposes conditions relating to a trade mark consisting of more than one element and that no further condition or limitation is necessary.
(iii) OP(TM) No.2 of 2023 is allowed by directing the removal of the entry relating to TM No.2795619 in Class 5 from the Register of 53 https://www.mhc.tn.gov.in/judis ( Uploaded on: 24/06/2025 04:28:11 pm ) C.S. No.355 of 2020 Trade Marks. This exercise shall be completed within one month from the date of receipt of a copy of this judgment.
19 .06.2025
Index : Yes /No
Internet : Yes /No
Speaking/
Non-Speaking order : Yes/ No
Neutral Citation : Yes/ No
kal
54
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C.S. No.355 of 2020
Plaintiff's witness:
Mr.Jude F.L.S.Durai Pandian - P.W.1
Defendant's witness:
Mr.Nishant Gupta - D.W.1
Documents exhibited by the plaintiff:
Exhibits Documents
Ex.P1 The original board resolution dated 19.07.2023.
(The counsel for the defendant has objected that the deponent is not authorised to give evidence) Ex.P2 The legal use certificate of the trademark registration certificate of the plaintiff under No.487453 in class 5 for ZINCOVIT. (The counsel for the defendant objects on the ground that the O2 certificate had been filed along with the plaint. The O2 certificate is not for use in legal proceedings. The plaintiff cannot mark a totally different certificate at the time of evidence without proper leave of the court. Objection on contents of the document. Unrelated document which has been filed) Ex.P3 The photocopy of the letter from the Director of drugs control to the plaintiff dated 26.04.2012. (original is produced, compared and returned to the plaintiff's counsel) (marked subject to proof and relevancy) Ex.P4 The legal use certificate of the trademark registration certificate of the plaintiff under No.2158593. (The counsel for the defendant objects 55 https://www.mhc.tn.gov.in/judis ( Uploaded on: 24/06/2025 04:28:11 pm ) C.S. No.355 of 2020 Exhibits Documents on the ground that the O2 certificate had been filed along with the plaint. The O2 certificate is not for use in legal proceedings. The plaintiff cannot mark a totally different certificate at the time of evidence without proper leave of the court. Objection on contents of the document. Unrelated document which has been filed.) Ex.P5 The legal use certificate of the trademark registration certificate of the plaintiff under No.2158594. (The counsel for the defendant objects on the ground that the O2 certificate had been filed along with the plaint. The O2 certificate is not for use in legal proceedings. The plaintiff cannot mark a totally different certificate at the time of evidence without proper leave of the court. Objection on contents of the document. Unrelated document which has been filed.) Ex.P6 The photocopy of the copyright registration certificate under no.A-112788/2014. (original is produced, compared and returned to the plaintiff's counsel) Ex.P7 The photocopy of the copyright registration under no.A-115854/2014. (original produced, compared and returned to the plaintiff's counsel) Ex.P8 The photocopy of the copyright registration certificate in favour of the plaintiff under No.A- 112789/2014 for the artistic work ZINCOVIT syrup. (The counsel for the defendant objects on the ground that the document is a photocopy. No reason has been stated in the proof affidavit why the original has not been filed and the photocopy is 56 https://www.mhc.tn.gov.in/judis ( Uploaded on: 24/06/2025 04:28:11 pm ) C.S. No.355 of 2020 Exhibits Documents sought to be marked. Objection on mode of proof and contents of document.) Ex.P9 The photocopy of the copyright registration certificate in favour of the plaintiff under No.A- 54243/1997 for the artistic work ZINCOVIT syrup. (The counsel for the defendant objects on the ground that the document is a photocopy. No reason has been stated in the proof affidavit why the original has not been filed and the photocopy is sought to be marked. Objection on mode of proof and contents of document.) Ex.P10 The photocopy of the food license obtained by the plaintiff for ZINCOVIT. (The counsel for the defendant objects on the ground that the document is a photocopy. No reason has been stated in the proof affidavit why the original has not been filed and the photocopy is sought to be marked.
Objection on mode of proof and contents of document.) Ex.P11 The photocopy of the sample invoices for the sale of ZINCOVIT syrup, drops, tablet by the plaintiff. (The counsel for the defendant objects on the ground that the document is a photocopy. No acceptable reason has been stated in the proof affidavit why the original has not been filed and the photocopy is sought to be marked. Objection on mode of proof and contents of document.) Ex.P12 The photocopy of the media clippings and other promotional material using the trademark ZINCOVIT. (Original is produced, compared and returned to the plaintiff's counsel.) 57 https://www.mhc.tn.gov.in/judis ( Uploaded on: 24/06/2025 04:28:11 pm ) C.S. No.355 of 2020 Exhibits Documents Ex.P13 The photocopy of the plaintiff's ZINCOVIT syrup carton with the 7 coloured label. (The counsel for the defendant objects on the ground that the document is a photocopy. No reason has been stated in the proof affidavit why the original has not been filed and the photocopy is sought to be marked. Objection on mode of proof and contents of document.) Ex.P14 The photocopy of the defendant's trademark registration for ZINOLVITA. (The counsel for the defendant objects on the ground that the document is a photocopy. No reason has been stated in the proof affidavit why the original has not been filed and the photocopy is sought to be marked.
Objection on mode of proof.) Ex.P15 The photocopy of the defendant ZINOLVITA tablet carton with 7 colour label. (The counsel for the defendant objects on the ground that the document is a photocopy. No reason has been stated in the proof affidavit why the original has not been filed and the photocopy is sought to be marked.
Objection on mode of proof.) Ex.P16 The photocopy of the photograph of the defendant ZINOLVITA syrup carton with fruits and vegetables label. (The counsel for the defendant objects on the ground that the document is a photocopy. No reason has been stated in the proof affidavit why the original has not been filed and the photocopy is sought to be marked. Objection on mode of proof.) Ex.P17 The original bill for purchase of the defendant 58 https://www.mhc.tn.gov.in/judis ( Uploaded on: 24/06/2025 04:28:11 pm ) C.S. No.355 of 2020 Exhibits Documents ZINOLVITA in Chennai Documents exhibited by the defendant:
Exhibits Documents
Ex.D1 The served copy of the affidavit dated 20.032024.
Ex.D2 The judgment delivered by the Hon'ble Division
Bench of the High Court of Madras on 26.04.2006 in the appeal between Apex Laboratories Limited and Zuventus Health Care Limited as reported in MANU/TN/9346/2006.
Ex.D3 The new label of the defendant.
Ex.D4 The search report dated 01.08.2021.
Ex.D5 The certified copy of the order in OA Nos.618 to
620 of 2018 in C.S.No.433 of 2018 passed by Hon'ble High Court of Madras.
Ex.D6 The original authorization letter.
Section 65B affidavit is filed along with Ex.D4.
19.06.2025 kal 59 https://www.mhc.tn.gov.in/judis ( Uploaded on: 24/06/2025 04:28:11 pm ) C.S. No.355 of 2020 SENTHILKUMAR RAMAMOORTHY J.
kal To
1. The Registrar of Trade Marks, Office of the Trade Marks Registry, Intellectual Property Rights Building, Industrial Estate, SIDCO RMD, Godown Area, G.S.T. Road, Guindy, Chennai-600 032.
2. The Registrar of Trademarks, Office of the Trademarks Registry, Boudhik Sampada Bhawan, Plot No.32, Sector 14, Dwarka, New Delhi-110 078.
Pre-delivery common judgment made in C.S. No.355 of 2020 & O.P.(TM) Nos.1 & 2 of 2023 19.06.2025 60 https://www.mhc.tn.gov.in/judis ( Uploaded on: 24/06/2025 04:28:11 pm )