Delhi High Court
Merck Kgaa & Anr vs Abhinav And Ashok Trading As ... on 27 March, 2014
Author: Rajiv Sahai Endlaw
Bench: Rajiv Sahai Endlaw
*IN THE HIGH COURT OF DELHI AT NEW DELHI % Date of decision: 27th March, 2014. + CS (OS) 1547/2009 & I.A. No.10713/2009 (u/O 39 R-1&2 CPC) MERCK KGAA & ANR ..... Plaintiffs. Through: Mr. Arvind Nayar, Ms. Suryajyoti Singh Paul and Mr. Sushant K. Thakur, Advs. Versus ABHINAV AND ASHOK TRADING AS PHARMAFFILIATES HEALTH CARE ..... Defendant. Through: None. CORAM :- HON'BLE MR. JUSTICE RAJIV SAHAI ENDLAW 1. The suit has been instituted by the plaintiffs for permanent injunction restraining the defendant from manufacturing and selling or dealing in medicines for human purposes under the trademark CARBOPHAR or any other trademark identical or deceptively similar to the trademark CARBOPHAGE of the plaintiffs, and for ancillary reliefs of delivery-up, rendition of accounts and damages, pleading: (i) that the Plaintiff No. 1 is a company existing under the laws of Germany; (ii) that the Plaintiff No. 2 Merck Limited is a subsidiary of the plaintiff no. 1 having its registered office at Mumbai and also CS(OS) No.1547/2009 Page 1 of 10 at L-2, J.R. Complex, Gate No. 4, Village Mandoli, New Delhi - 110093; (iii) that the Plaintiff No. 1 sells its products under its various trademarks directly or through Plaintiff No. 2, its Indian subsidiary; (iv) that the Plaintiff No. 1 is an old, well known, reputed and established company since the past 150 years, engaged in the manufacture of a wide range of pharmaceutical and medicinal preparations; (v) that the Plaintiff No. 1 is a registered proprietor of the trademark CARBOPHAGE duly registered in India under registration no. 872238 dated August 1999, in Class 5 under the Trade Marks Act, 1999 in respect of pharmaceutical preparations for the treatment of the cardiovascular systems; (vi) that sometime towards in April, 2009 it first came to the knowledge of Plaintiff No. 1 by virtue of advertisement in the Trade marks Journal no. 1408 dated January 16, 2009 at page no. 576 that the Defendant has adopted the trademark CS(OS) No.1547/2009 Page 2 of 10 CARBOPHAR with respect to its medicines for human purpose preparation; (vii) that the Plaintiff No. 1 has duly filed an opposition to the trademark application no. 1593912 of the Defendant at the trade Marks Registry; (viii) that the Defendant has adopted the trademark CARBOPHAR in relation to medicines for human purpose which is confusingly and deceptively similar to the registered trademark CARBOPHAGE of the Plaintiff; (ix) that the Defendant has deliberately adopted the trademark CARBOPHAR which is structurally identical to the Plaintiffs‟ trademark so as to create confusion in the trade and purchasing public and pass off its preparations as those of the Plaintiffs. 2. Summons of the suit and notice of the application for interim relief were issued but no interim relief has been granted as yet. 3. The defendant filed written statement defending the suit on the following grounds: (i) denying that the plaintiff no. 1 is the registered proprietor of the trademark "CARBOPHAGE" and pleading that the alleged CS(OS) No.1547/2009 Page 3 of 10 copy of the certificate of registration of the mark "CARBOPHAGE" filed by the plaintiffs along with the plaint is not in the name of the plaintiffs; (ii) that the trademark, get-up, placement, design, prices, packaging, purpose of such medicine, salt combination etc, of the two competing trademarks is completely different and one can by no stretch of imagination be confused that both the competing trademarks are visually, phonetically and structurally similar and the products sold there-under are distinctly packed with altogether different packaging, font, colour combination, name and address of manufacturer; (iii) that while the medicine of the defendant is used as a vitamin and mineral substitute, the tablets of the plaintiff is used by the Diabetes patients; (iv) that the defendant has named its product „CARBOPHAR‟ by combining „CARBO‟ taken from one of its ingredients „Carbonyl Iron‟ and „PHAR‟ from the initial four words of name of the firm i.e. „Pharmaffiliates Healthcare‟; CS(OS) No.1547/2009 Page 4 of 10 (v) that the two medicines when compared as a whole are completely different and distinct and for this reason only the plaintiffs, at the time of filing for an ex-parte ad interim injunction, deliberately did not place on record the two competing products; (vi) that the defendant is now placing on record the sample packaging of the plaintiffs and the defendants products for scrutiny which would clearly show that the defendant did not attempt to copy the product of the plaintiffs; (vii) that the defendant has been granted a licence for the manufacturing and marketing of the pharmaceutical product „CARBOPHAR‟ by the office of the Drug Controller under the provisions of the Drugs and Cosmetics Act, 1940. 4. Needless to state that the plaintiff filed replication denying the contents of the written statement of the Defendant and reiterating the case in the plaint but need is not felt to advert thereto. 5. The following issues were framed in the suit on 15th October, 2012: "(i). Whether the plaintiff no. 1 is the proprietor of the trademark „CARBOPHAGE‟ duly registered in India under the registration No. 872238, dated August, 1999 CS(OS) No.1547/2009 Page 5 of 10 in class 5 in respect of pharmaceutical preparations for the treatment of the cardiovascular systems ? OPP (ii) Whether defendant has infringed the trademark „CARBOPHAGE‟ of the plaintiffs? OPP (iii) Whether the plaintiffs are entitled to a decree of permanent injunction restraining the defendant from using the trademark „CARBOPHAR‟ or any other mark deceptively or confusingly similar to „CARBOPHAGE‟? OPP (iv) Whether the plaintiffs are entitled to a decree of mandatory injunction directing the defendant to deliver all the impugned goods and dyes for destruction having the mark „CARBOPHAR‟? OPP (v) Whether the plaintiffs are entitled to a decree of rendition of accounts directing the defendant to render accounts of the profits made by it using the trademark „CARBOPHAR‟? OPP (vi) Whether the plaintiffs are entitled to the award of damages and compensation, as prayed for? OPP (vii) Whether this court has no territorial jurisdiction to entertain the suit? OPD (viii) To what relief, if any, are the plaintiffs entitled? OPP " 6. The defendant thereafter stopped appearing and was finally proceeded against ex-parte on 30th August, 2013 and remains ex parte. The plaintiffs, in their ex parte evidence have filed the affidavits by way of examination-in-chief of Mr. Vikas Gupta, Head- Legal & General Counsel of Merck Limited, Vijay Kumar Verma, Medical Representative of Merck CS(OS) No.1547/2009 Page 6 of 10 Limited and Mr. Vishal Kath, Area Sales Manager of Merck Limited and tendered, inter-alia, the following documents in evidence: (I) Original Legal Certificate of the said trademark, exhibited as PW1/6; (II) Copy of the trademark license/registered user agreement dated 20.03.2008, exhibited as PW 1/7; (III) Original invoices for the trademark CARBOPHAGE is exhibited as PW 1/8; (IV) Original packaging for the medicine for the trademark CARBOPHAGE is exhibited as PW 1/9; (V) Copy of the cutting of the Journal of Advertisement of the defendant‟s trademark Application No. 1593912 is exhibited as PW 1/10; (VI) True copy of the Opposition filed by the Plaintiff No. 1 dated 13.04.2009 is exhibited as PW1/11. 7. The defendant along with its written statement filed a copy of the receipt of application for registration of the trademark „CARBOPHAR‟ and coloured photocopies of packaging material and product of the plaintiff and the defendant. CS(OS) No.1547/2009 Page 7 of 10 8. On the basis of the ex parte evidence led and after examining the two products as filed by the defendant and considering that the defendant appears to be no more interested, I am satisfied that the plaintiff has become entitled to the relief sought of injunction. 9. The Supreme Court in Cadila Health Care Ltd. Vs. Cadila Pharmaceuticals Ltd. (2001) 5 SCC 73 has laid down the tests which are to be applied while dealing with an action for infringement or passing off, especially in cases relating to medicinal products. The Supreme Court held that the real question to be decided in such cases is to see how a purchaser, who must be looked upon as an average man of ordinary intelligence, would react to a particular trademark, what association he would form by looking at the trademark, and in what respect he would connect the trademark with the goods which he would be purchasing. It was further held that a critical comparison of the two names may disclose some points of difference but an unwary purchaser of average intelligence and imperfect recollection would be deceived by the overall similarity of the two names having regard to the nature of medicine he is looking for with a somewhat vague recollection that he had purchased a similar medicine on a previous occasion with a similar name. The Supreme Court held that:- CS(OS) No.1547/2009 Page 8 of 10 32. Public interest would support lesser degree of proof showing confusing similarity in the case of trade mark in respect of medicinal product as against other non-medicinal products. Drugs are poisons, not sweets. Confusion between medicinal products may, therefore, be life threatening, not merely inconvenient. Noting the frailty of human nature and the pressures placed by society on doctors, there should be as many clear indicators as possible to distinguish two medicinal products from each other. It is not uncommon that in hospitals, drugs can be requested verbally and/or under critical/pressure situations. Many patients may be elderly, infirm or illiterate. They may not be in a position to differentiate between the medicine prescribed and bought which is ultimately handed over to them. This view finds support from McCarthy on Trade Marks, 3rd Edition, para 23.12 of which reads as under: "The tests of confusing similarity are modified when the goods involved are medicinal products. Confusion of source or product between medicinal products may produce physically harmful results to purchasers and greater protection is required than in the ordinary case. If the goods involved are medicinal products each with different effects and designed for even subtly different uses, confusion among the products caused by similar marks could have disastrous effects. For these reasons, it is proper to require a lesser quantum of proof of confusing similarity for drugs and medicinal preparations. The same standard has been applied to medical products such as surgical sutures and clavicle splints." 10. Applying the said test even though there are differences in the packaging of the plaintiffs and the defendant‟s products, I find that the plaintiffs have made out a case for grant of permanent injunction restraining the defendant from manufacturing and selling or dealing in CS(OS) No.1547/2009 Page 9 of 10 medicines for human purposes under the trademark CARBOPHAR or any other trademark identical or deceptively similar to the trademark CARBOPHAGE. However, neither have the plaintiffs led any evidence as to the loss if any suffered nor, in the facts, is a case for award of damages made out. 11. The suit is thus decreed in terms of prayers (a) & (b) in the plaint. The defendant having given up the contest to the suit, no costs. Decree Sheet be drawn up. RAJIV SAHAI ENDLAW, J.
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