Delhi District Court
M/S Brawn Laboratories Limited vs M/S Abyss Pharma Private Limited on 6 September, 2007
1
IN THE COURT OF SHRI D.C. ANAND:
ADDL. DISTRICT JUDGE: DELHI.
Suit No.134/06
M/s Brawn Laboratories Limited
4/4B, Asaf Ali Road,
Stock Exchange Building
New Delhi - 110002 ....Plaintiff
versus
M/s ABYSS Pharma Private Limited
B-121, Phase-1, Mayapuri
New Delhi - 110064. ....Defendant
SUIT FOR PASSING OFF, RENDITION OF
ACCOUNTS AND PERPETUAL INJUNCTION
U/S 105 & 106 OF THE TRADE AND
MERCHANDISE MARKS ACT, 1958
Date of Institution: 16-1-2001.
Judgment reserved on: 22.8.2007
Judgment delivered on: 6-9-07.
JUDGMENT
1. The plaintiff tersely pleaded in the plaint that 2 plaintiff is a company incorporated under the Companies Act, 1956 and Sh. A.K. Jain is the authorized representative of the company by virtue of a resolution of the Board of Directors who is competent to sign and verify the suit.
2. The plaintiff company is carrying on business of medicinal and pharmaceutical preparations and also a leading and renowned manufacturer of Tablets, Injections, Tonic and Ointments. The plaintiff introduced several medicines including liquid syrup in the market and one of the most popular syrup sold in the market is under the trademark LYCYP since June 1992. The syrup sold under the trademark has become very popular in the medical line of which cartoon is also placed on record by the plaintiff.
3. The liquid syrup medicine under the trademark 3 LYCYP has become distinctive of the medicines on which it is used and has acquired wide reputation with the trade and public and is identified by the purchasers and intending purchasers as and for the goods of the plaintiff throughout the Republic of India and abroad.
4. The liquid syrup under the aforesaid trademark has attained a large scale and have acquired a valuable goodwill and reputation in the Indian market as well as in the global market because of the effectiveness and relief providing ability. The plaintiff has spent a lot of money on the staff for appraising the doctors about its use and has given wide publicity to the liquid syrup under the trademark LYCYP through various mass media including the pamphlets and medical representatives. The liquid syrup under the 4 trademark was introduced in June, 1992 and have sold medicines worth several lakhs which was also approved for manufacture by the State Drug Controller, Director General Health Service, Haryana, Chandigarh in the list of approved drugs.
5. The plaintiff has also filed an application for registration of the trademark LYCYP with Registrar of Trade Marks which was allotted an official number by the Trademark Registry, New Delhi 673120 dated 13.7.1995 which has also overcome the official objections and was proceeded for advertisement in the Trade Mark Journal published by the Govt. of India, Trademark Registry, Central Office, Mumbai of which intimation was given to the plaintiff vide letter dated 6.11.2000.
6. Recently in the end of December 2000, the 5 plaintiff came to know that the defendant has started an illegal adoption of trademark LYCYP by a phonetically similar word LYSIP. The plaintiff also came across the liquid syrup of the defendant manufactured under the impugned trademark LYSIP vide Batch of July 2000, expiry date June, 2002 in some of the medicine stores where the liquid syrup of the plaintiff under the trademark LYCYP is extensively sold and hence the present suit filed for restraining the defendant from using in any manner the trademark LYCYP or any other deceptively similar trademark LYSIP, rendition of accounts, profits made by the defendant from the sale of medicines under the deceptively similar trademark LYSIP since its adoption and pay the same to the plaintiff, handing over to the plaintiff on affidavit the medicines, blocks, mould, dies etc 6 etc bearing the deceptively similar trademark i.e LYSIP for the purpose of destruction or obliteration as the case may be as the plaintiff is the proprietor and prior user and owner of the trademark LYCYP which the plaintiff is using continuously, openly and extensively since June, 1992 and it is unlawful for any other company to use the trademark LYCYP or any other deceptively similar trademark.
7. Further, the defendant is guilty of passing off and the goods of the defendants are likely to be passed off as the goods of the plaintiff because of use of identical and phonetically similar trademark LYSIP in respect of the same goods namely syrup. Also the act of the defendant amounts to an unlawful appropriation of the plaintiff's right. The plaintiff also alleged wrongful intention of the defendant to take advantage of the goodwill and 7 reputation of the trademark as the defendants were fully aware that plaintiff is proprietor of the trademark LYCYP of which adoption by the defendant is dishonest and a misrepresentation to the ordinary customers and doctors as that of the goods manufactured and marketed by the plaintiff. The defendant is also gaining wrongful profits and also likely to gain more profits because of use of deceptively similar trademark.
8. The defendant contested the suit with the plea that plaint is not signed and verified by a competent and authorized person. On merits, it was stated that plaintiff has failed to provide as to where, when and from whom it secured the product of the defendant under the impugned trademark alleged to be of the plaintiff. However, the defendant pleaded its bonafides as apparent from 8 the fact that before adopting the impugned trademark LYSIP it has got a research done in order to ascertain that the said trademark may not be already in use by someone else. However, no information with respect to the plaintiff's trademark LYCYP was discovered in the search as well.
9. The defendant further alleged that in August 1997 the defendant had also applied for name and permission to manufacture the drugs before Delhi Drug Authority and no objection was received from the Authority with respect to the name, and the permission was granted. There is no such comprehensive list as maintained by the Drug Authorities whereby the defendant could have come to know of the existence of the plaintiff's drug name. In the background of this information, the 9 defendant is not liable for any damages since its intentions from the very beginning were clear and bonafide.
10. It is further alleged that without prejudice to the defendant's rights, the defendant has already stopped the manufacture of the said syrup/product under the trade name LYSIP and are now selling the same under a new trademark GANE. The carton of the defendant's product under the new mark GANE is annexed as Annexure D.1. All other allegations as made in the plaint were denied by the defendant.
11. The plea regarding amount of expenditure on publicity or advertisement is also not taken by the plaintiff. The defendant also denied that public can very easily associate with the name of the plaintiff as public cannot be expected to have the knowledge 10 relating to the line of medicine or pharmacy. It was also stated by the defendant that the product under consideration is one which is mostly sold only in the Chemist's shop by the people who were well versed with the knowledge of medicine so as to make out difference between the products of any number of manufacturers, even if the names of the same are deceptively or confusingly similar or identical and the possibility of confusion to the general public as such ruled out.
12. The defendant also stated that the term LYCYP as being used by the plaintiff to denote its product/ syrup has been derived from the terms LYSINE and CYPROHEPTADINE which are the constituents of this syrup. Nobody can appropriate to itself the use of such words since it is common in the field of medicine/pharmacy to denote a 11 particular product by using the suffixes or prefixes in conjunction with each other or in conjunction with any other term. The defendant has also derived the term LYSIP by using the prefix LYSI from the term LYSINE which is one of the constituent of the said product in combination to the words "P". Therefore, the plaintiff cannot stop the defendant from using the respective term since the same is only a derivative of one of the element forming the said syrup. The defendant as such submitted that no confusion between the two syrups is likely since the same are to be prescribed by the doctors and are provided by people who are much aware of such difference between the two.
13. Also the product is one which is only available at the Chemists' shop, can be sold on the prescription of a doctor only and are sold only by 12 professional people, having the knowledge with respect to the same and ones who are able to distinguish the product of the plaintiff from that of the defendant's, and thus the chances of confusion or deception are ruled out. Further, the carton of the two products i.e of the defendant's and of the plaintiff's is totally different from each other so as not to cause any confusion to the buyer and to the seller as well. The information and publicity of these products is also provided by people who are specially engaged for this purpose, having full knowledge of these products and the advertisement of the same is also done in pamphlets and in magazines providing the knowledge in the same field and also to those who shall be dealing with the same. It is not a product of everyday use or so common that anybody shall have the awareness 13 and access about the same. Thus the case for passing off action against the defendant is not made out in the present case. The defendant as such denied cause of action in favour of the plaintiff and against the defendant and prayed for dismissal of the suit.
14. On the pleadings of the parties following issues were framed on 10.3.2003:
(i) Whether the suit is properly
signed and verified? (OPP)
(ii) Whether the user of the name
LYSIP was bonafide on the part of the
defendant? (OPD)
(iii) Whether the plaintiffs Trade
Mark LYCYP has acquired
distinctiveness? (OPP)
(iv) Whether the Trademark LYSIP
is not deceptively similar to LYCYP?
(OPD)
(v) Whether the Trade Mark LYCYP
is only a derivative word and not an
14
inventive ward? (OPD)
(vi) Whether the plaintiff is entitle
for the reliefs claimed? (OPP)
(vii) Relief.
15. The plaintiff examined Sh. A.K. Jain while the defendant examined Dr. Vimal Gupta whose affidavits were also placed on record in evidence under Order 18 R 4 CPC.
16. I have heard Ld. counsel for the plaintiff but could not avail the opportunity to hear the defendant as none appeared for the defendant when the case was fixed for final arguments on 22.8.2007. My findings on the issues are as under:
ISSUE NO.1
17. The onus to prove this issue was on the plaintiff.
The plaintiff proved on record the resolution of the Board of Directors of the plaintiff company as Ex. PW 1/1 which authorise the plaintiff to file, sign, 15 verify and institute the suit. Passing of the resolution is not at all challenged by the defendant during cross examination of the witness as the challenge was only to the fact that no minutes were passed for passing of resolution in favour of the deponent which suggestion was denied by the plaintiff witness. The plaintiff witness however, stated that plaintiff is maintaining regular minute book. In view of the evidence, as discussed, the issue is decided in favour of the plaintiff and against the defendant holding thereby that the suit is filed by the plaintiff under the signatures of the deponent who was competent to file the same. ISSUE NO.2 & 4
18. These issues are taken up together for decision. The defendant on one hand pleaded that he has already stopped manufacture of said syrup/ product 16 under the trade name LYSIP and are selling the same under a new trademark GANE but deposed on other hand that user of name LYSIP was bonafide on the part of the defendant. The bonafide is deposed because the defendant had done due diligence as well as taken reasonable precautions to ascertain that the said brand name was not be in use by any other person/firm and also no objection was received from Delhi Drug Authority and hence there was no mal intention on the part of the defendant. By taking such stand in contradiction especially when the plaintiff proved advertisement materials Ex. PW 1/3 as well as invoices Ex. PW 1/4 and approval of the State Drug Controller Ex. PW 1/5 and the trade mark application Ex. PW
1./6 dated 13.7.1995 and the letter of Registrar of Trade Marks dated 6.11.2000 as Ex. PW 1/7, it 17 cannot be said that intention of the defendant was bonafide or without any mal intention when he manufactured the drug with the brand name LYSIP subject to the grant of permission by the Drug Authorities. The defendant has not given any date so as to counter the documents as proved by the plaintiff on record to judge the intention and bonafide of the defendant in the matter of manufacture of drugs under the trademark LYSIP and hence issue no.2 is decided in favour of the plaintiff and against the defendant.
19. The very fact that defendant himself immediately upon coming to know about the branded name LYCYP being used by the plaintiff, moved an application to the Drug Authority for change of name and started marketing its product under the brand name GANE and also proved 18 certificate from the licensing authority of the Drug Controller in that regard as Ex. DW 1/1, goes to prove that the trademark LYSIP was deceptively similar to LYCYP. Had it not been so, there was no need for the defendant to go for exercise of change of name and to obtain certificate as Ex. DW 1/1 from the Drug Controller Department. The trademark of the defendant is otherwise phonetically similar so as to cause unwary customers confusion while purchasing the drug of the defendant as that of plaintiff as the same is similar in approach and speech without any distinction in word as well spoken by an ordinary person who has to deal with such drugs for consumption and use in business and transaction by the traders as well. Accordingly, I hold that trademark LYSIP is deceptively similar to the 19 trademark of the plaintiff LYCYP. The cartons of the drug proved as Ex. PW 1/2 by the plaintiff used by the plaintiff under the trademark LYCYP may not need to be deceptively similar to the carton of the drug Ex. PW 1/8 used by the defendant in the given facts and circumstances as the goods are purchased not keeping in view the carton but they are purchased in the name of the goods by the unwary purchaser. The issue is accordingly decided in favour of the plaintiff and against the defendant.
ISSUE NO.3
20. The deposition of the plaintiff and the documents proved are sufficient evidence on record so as to say that plaintiff's trademark LYCYP has acquired distinctiveness as also admitted manifestly if not impliedly by the defendant when 20 he himself stopped production of the drug under the trademark LYSIP else there was no reason for stopage of such product under the trademark had it not been acquired distinctiveness under the trademark of plaintiff i.e LYCYP. Besides the deposition by the plaintiff that by virtue of large and extensive sale of medicine under the trade mark LYCYP, the trade mark has become distinctive of the medicines on which it is used by the plaintiff which has acquired vide reputation with the trade and public because of effectiveness and relief providing ability in itself proved that trade mark LYCYP has acquired distinctiveness. The distinctiveness of the trade mark of the plaintiff LYCYP is also manifestly clear from the advertising material Ex. PW 1/3/ invoices for the sale of liquid syrup under the trade mark Ex. PW 21 1/4 and approval of the State Drug Controller, Director General Health Service, Haryana, Chandigarh vide Ex. PW 1/5 and application for registration of the trade mark Ex. PW 1/6 and proceedings for advertisement in the Trade Mark Journal published by the Trademark Registry, Government of India as per intimation to the plaintiff vide Ex. PW 1/7 further proved the distinctive character of the trade mark of the plaintiff LYCYP used by the plaintiff since 1992 after introduction of the liquid syrup under the said trade mark. The challenge to copies Ex. PW 1/3, Ex. PW 1/5, Ex. PW 1/6 and Ex. PW 1/7 being copies is of no avail to the defendant as nothing more submitted about the copies as a proof by the plaintiff. There is no challenge during cross examination of the witness to the deposition by the 22 defendant. Also nothing contrary has been deposed or proved by the defendant in their evidence to that of the plaintiff's evidence on record. Accordingly, I hold that plaintiff's trade mark LYCYP has acquired distinctiveness in itself in respect of the syrup marketed by the plaintiff. The issue is decided accordingly in favour of the plaintiff and against the defendant.
ISSUE NO.5.
21. The onus to prove this issue was on the defendant which they failed to prove that trade mark LYCYP is only a derivative word and not an inventive word. The defendant's witness only deposed that they obtained requisite permission from the concerned department for engagement in the business of manufacturing of drugs and formulations. The drug with the brand name 23 LYSIP by the defendant also received no objection from the Delhi Drug Authority and accordingly, it was manufactured under the brand name LYSIP but defendant himself made application to the drug authority for change of name of the drug on coming to know about the brand name LYCYP being used by the plaintiff and obtained the certificate Ex. PW 1/1. It being so, the deposition in the affidavit that:
"the brand name " LYCYP" as used by the plaintiff is a derivative of the basic components of the said formulations and as such the said derivative words which are common in the field of medicine and pharmacy, by using suffixes or prefixes in conjunction with other words thereto cannot be the domain of any particular person or firm etc."
is of no avail to the defendant as the word LYCYP 24 was in use by the plaintiff since 1992 and was popular also in the medical line as proprietor of the trade mark LYCYP and as such, it can easily be said that the word was inventive and not a derivative word as was deposed by the defendant. No elaborate explanation deposed by the defendant also as to how the trade mark LYCYP is only derivative and not an inventive word. Admittedly, trade mark of the defendant was introduced in the market somewhere in 1999 developed from two drug names i.e Lysin and Cyprohepatidne. In fact, such development can lead to the name of trade mark of the plaintiff i.e LYCYP and not the trade mark of the defendant LYSIP even from the two drugs namely Lysin and Cyprohepatidne from which the drug was produced and marketed by the plaintiff. The defendant as such failed to prove the 25 issue while admitted that plaintiff's trade mark LYCYP and defendant's trade mark LYSIP are phonetically similar. Even the defendant's witness was not aware as to whether the salt used in both the drugs are similar or not and was also not aware of salt of the plaintiff's drug. He was also not aware if the drugs manufactured by the parties to the suit is used for the ailment of the same disease. This further goes to prove that development of the name LYSIP by the defendant from the two drugs i.e Lysin and Cyprohepatidne was not inventive word. The issue is accordingly decided in favour of the plaintiff and against the defendant. ISSUES NO.6 AND 7.
22. In view of my findings on the issues as above and admission by the defendant's witness himself that phonetically, the two trade marks used by the 26 parties to the suit are similar and the trade marks are used for commercial transactions of the drug by word marks as well as by label marks which are deceptively similar which may lead to pass over of the drug of the defendant as that of the plaintiff to an unwary customer despite degree of care likely to be exercised by such unwary customer/ purchaser to use of the goods from the market, I hold that plaintiff is entitled to the relief as prayed for in the suit.
23. The plaintiff is accordingly granted perpetual injunction in his favour and against the defendant from using in any manner the trade mark LYCYP in any form including the trade mark deceptively used by the defendant i.e LYSIP. The defendant shall also submit accounts of the profits made by the defendant from the sale of the medicines under 27 the deceptively similar trade mark LYSIP since its adoption within a month and shall also hand over to plaintiff the medicines, blocks, mould, dies, advertisement material bearing the deceptively similar trade mark LYSIP for the purpose of destruction or obliteration by the plaintiff.
24. The suit of the plaintiff is accordingly decreed with costs. Decree sheet be prepared accordingly. File be consigned to Record Room.
Announced in open Court.
Dated: 6-9-07 (D.C. ANAND) ADDL. DISTRICT JUDGE:
DELHI.