Bombay High Court
Procter And Gamble India Ltd. And ... vs Endolabs Limited And Others on 16 December, 1999
Equivalent citations: 2000(3)BOMCR136, (2000)1BOMLR938
Author: R. M. Lodha
Bench: R. M. Lodha
ORDER R. M. Lodha, J.
1. This action is at the instance of Procter & Gamble (India) Ltd. and Richardson-Vicks Inc. (1st & 2nd plaintiffs respectively) against Endolabs Limited (1st defendants) and Shree Mangesh Medical Stores (2nd defendants) praying for perpetual injunction against the defendants from manufacturing, selling, advertising or offering to sell any products under the Cartons and Strips, samples whereof are annexed at Exhibit 1 to the plaint and/or bearing the mark ACTION or under any other mark cartons or strips or packaging material resembling the plaintiff's, cartons and strips of ACTION 500, samples whereof are annexed at Exhibits E and F to the plaint or the mark ACTION 500 and from using in relation to any products the cartons and strips, samples of which are at Exhibit I and/or the mark ACTION or any other cartons/strips or packing materials or mark resembling the plaintiffs ACTION 500 cartons and strips and the mark ACTION, in any way so as to pass off or enable others to pass off the defendants' goods as those of plaintiffs' goods and also for restraining the defendants from in any manner infringing plaintiffs' copyright in the artistic work reproduced at Exhibit E annexed to the plaint. The plaintiffs have also claimed damages in the sum of Rs. 10 lacs and for other ancillary reliefs.
2. The plaintiffs have averred that 1st plaintiff is a renowned Indian listed company and is a subsidiary of 2nd plaintiff. The 2nd plaintiff in turn is a wholly owned subsidiary of The Procter & Gamble Company being one of the most reputed and largest U.S. multinational. The 1st defendant is a company registered under the Companies Act and 2nd defendant is a firm of chemists and druggists selling the products of 1st defendant. It is stated that 1st plaintiff has been established since 1966 and is engaged in several businesses including consumer products, cosmetics, detergents and pharmaceutical products. The 2nd plaintiff is the proprietor of the internationally well known and famous mark VICKS. Vicks is a household mark in respect of products providing relief from cold and various Vicks products sub-branded amongst others as Vaporub, ACTION-500, Vicks Cough drops and Vicks Senex are sold in most countries of the world internationally by Procter & Gamble group of companies, their affiliates and licensees. It is the case of the plaintiffs that sales turnover figures of the Vicks products sold internationally and its promotional expenditure figures exceeds several million dollars per year. The 2nd plaintiffs owns several Indian trade mark registrations for the mark Vicks include registration bearing No. 328355 in Class 5. Vicks products have been manufactured and marketed in India extensively by the 1st plaintiff under licence from the 2nd plaintiff at least since 1966. For the period from 1988 till 1998, the plaintiffs have given details of sales turnover of the Vicks products sold by the 1st plaintiff which runs in crores of rupees every year. Vicks pharmaceutical products sub-branded as ACTION 500 has been continuously manufactured and marketed in Indian extensively by the 1st plaintiff since 1975. For the period from 1988 till 1998 the sales turnover by the 1st plaintiff of ACTION 500 has been given in Exhibit B annexed with-the plaint which from Rs. 8 crores in the year 1988-89 has increased to Rs. 53 crores in the year 1997-98. The 1st plaintiffs incur expenditure in advertising and marketing for its various Vicks products and details of expenditure from the year 1993 till 1998 have been given in Exhibit C to the plaint which also runs in millions of rupees. The promotional and advertisement expenditure in respect of ACTION 500 incurred by the 1st plaintiff has been set out in Exhibit D to the plaint from the year 1993 till 1998 which is also in millions of rupees. The case set up by the plaintiffs is that in or about October 1998, the 1st plaintiffs' ACTION 500 pharmaceutical product also bearing housemark VICKS was re-launched in the market under cartons and strips having a distinctive get up and colour scheme. The sample of distinc-
live carton is annexed by the plaintiffs as Exhibit E to the plaint and the sample of strips containing tablets is annexed at Exhibit F to the plaint.
3. 2nd plaintiff claims to be the copyright owner of the artistic work represented on the DISTINCTIVE ACTION 500 CARTONS. The plaintiffs have averred that the 1st plaintiff incurred in marketing expenditure of approximately Rs. 20 lacs in preparation of re-lanching Action 500 product under Distinctive Action 500 cartons/strips prior to October, 1998. The sales turnover of Action 500 sold under the new Distinctive Action 500 cartons/strips since its re-launch in October 1998 to January, 1999 is about Rs. 24 crores and the plaintiffs have spent about Rs. 265 lacs on advertisement, promotion and marketing of the said product. It is stated that the 1st plaintiff has been selling Action 500 by Distinctive Action 500 strips and Distinctive Action cartons extensively on all India basis and the said brand Action 500/ Distinctive Action cartons/Distinctive Action 500 strips containing the Distinctive colour scheme, get up and lay out are associated by the traders and the members of the public and consumers exclusively with the plaintiffs and the plaintiff alone are entitled to use the mark Action 500/Distinctive Action 500 cartons/ Distinctive Action 500 strips in respect of pharmaceutical products. It is the case of the plaintiffs that recently they came across counterfeit sub-branded as Action containing the same basic ingredients and seeking to have the same therapeutic effect as those of the plaintiffs ACTION 500 products and manufactured/sold/marketed in cartons and strips which are a colourable imitation of and in appearance deceptively similar and/or a reproduction and/or a substantial reproduction containing the features of Distinctive Action 500 cartons and Distiction Action 500 strips of the plaintiffs. The samples of the products of the defendants and cartons and strips are annexed at Exhibit I to the plaint. It is alleged by the plaintiffs that the defendants are misrepresenting their goods as those of the plaintiffs and causing damage to the goodwill and reputation of the plaintiffs businesses and is also diluting the distinctiveness of the plaintiffs' mark, get up and colour scheme comprised in the Distinctive. Cartons/Strips and the mark Action 500. The plaintiffs have stated that the defendants have copied their products, cartons and strips from the plaintiffs' copyright work and thus they have infringed and are infringing the plaintiffs' copyright work as shown in Exhibit E. It is the plaintiffs' case that they have suffered irreparable harm and injury and money compensation would not sufficient to redress the continuing harm resulting from the tort of passing off the defendants' goods as the goods of the plaintiffs and from infringing the plaintiffs' copyright. The plaintiffs have quantified the loss and damage occurred to them by the acts of defendants in the sum of Rs. 10 lacs and have claimed damages to that effect. In the background of these facts averred in the plaint, the plaintiffs have taken out Notice of Motion praying for interim reliefs during the pendency of the suit. The prayers made in the Notice of Motion read thus:-
"(a) That pending the hearing and final disposal of the suit, the defendants, its Directors, proprietors, partners, owners, servants, subordinates, representatives, stockists, dealers, agents and all other persons claiming under them be restrained by an order and injunction of this Hon'ble Court from manufacturing, selling, advertising or offering to sell any products under the Counterfeit Cartons and/or Counterfeit Strips (sam-
ples whereof are annexed at Exhibit I to the plaint) and/or bearing the mark ACTION or under any other mark, cartons or strips or packaging material resembling the DISTINCTIVE ACTION 500 CARTONS/STRIPS (samples whereof are annexed at Exhibit E and F to the plaint) or the mark ACTION 500 and from using in relation to any products the Counterfeit Cartons and/or Counterfeit Strips (samples whereof are annexed at Exhibit I to the plaint) and/or the mark ACTION or any other cartons/strips or packaging materials or mark resembling the DISTINCTIVE ACTION 500 CARTONS/DISTINCTIVE ACTION 500 STRIPS/the mark ACTION 500 in any manner, so as to pass off or enable others to pass off the defendants' goods as those of the plaintiffs' goods.
(b) The pending the hearing and final disposal of the suit, the defendants, its Directors, proprietors, partners, owners, servants, subordinates, representatives, stockists, dealers, agents and all other persons claiming under them be restrained by an order and injunction of this Hon'ble Court from infringing in any manner the plaintiffs' copyright in the artistic work reproduced at Exhibit E hereto and from reproducing/ copying the said artistic work or a substantial part of the said artistic work on Counterfeit Cartons and Strips (sample annexed at Exhibit I to the plaint) or any packs, cartons, strips or packaging materials or advertising material, literature or any other substance and from manufacturing and selling or offering for sale products upon or in relation to which the said artistic work has been reproduced or substantially reproduced or by issuing copies of such work to the public;
(c) That pending the hearing and final disposal of the suit, the defendants, its directors, stockists, servants, subordinates, representatives, dealers, retailers and agents and all persons claiming under it be ordered and decreed to deliver upto the plaintiffs for destruction all of defendants, goods, dies, articles, packets, foils, liners, cartons, strips, packaging material, plates, ink, product literature, advertising material, paper and all other things used in connection with the manufacture or marketing of goods under the impugned mark ACTION or bearing the impugned mark ACTION or under Counterfeit Cartons or Counterfeit Strips;
(d) The pending the hearing and final disposal of the suit the Court Receiver, High Court, Bombay or such other fit and proper person as this Hon'ble Court thinks fit, be appointed Receiver with all powers under Order XI, Rule 1 and Order XXXIX, Rule 7 of the Code of Civil Procedure, 1988 to attend and search the premises, shops, offices, factories, godowns of the defendants, their stockists, dealers and retailers and other premises where the Counterfeit Products bearing the mark ACTION/ any mark deceptively similar to the mark ACTION 500/Counterfeit Cartons/Counterfeit Strips/any packaging material resembling the DISTINCTIVE ACTION 500 CARTONS/STRIPS may be stocked or are lying and to make an inventory, seize and take possession/custody thereof and also of all labels, production registers, invoices, printing and packaging material pertaining thereto and the defendants, its officers, directors, proprietors, owners, employees, representatives, agents retailers, stockists, retailers and distributors be ordered and directed to deliver up all of the aforesaid to the Court Receiver or to such other fit and proper person as this Hon'ble Court thinks fit;
(e) That ad-interim reliefs in terms of prayers (a) to (d) be granted;
(f) For costs;
(g) For such other and further reliefs as the nature and circumstances of the case may require;"
4. By way of ad interim order, without notice to the defendants, on 19-2-1999 this Court granted prayers in terms of aforesaid Clauses (a), (b) and (e).
5. The defendants have put in their appearance thereafter and have filed Affidavit in Reply for contesting the prayers made in the Notice of Motion and for vacation of ad interim order. Besides the plea of jurisdiction raised in the Affidavit in Reply filed by Ramesh Kumar Lulla, Managing Director of 1st defendant Company, the 1st defendant Company has denied the plaintiffs' allegations that the 1st defendant Company is passing off their goods and products as the products of the plaintiffs. In affidavit in Reply it is stated by the 1st defendant Company that the 2nd plaintiff made an application on 24th June 1976 for registration of Trade Marks "Vicks Action 500". The said mark was advertised and subsequently registered subject to an express disclaimer by the 2nd plaintiff that they do not claim any right to the exclusive use of the words and numeral "Action" and "500". The 1st defendant therefore has stated that the plaintiffs are not the registered proprietors of any mark word "Label" other than the word "Vicks" and that they have misled the Court by claiming exclusive rights to the sole mark "Vicks Action 500". The 1st defendant Company claims to be well established and highly reputed pharmaceutical company manufacturing about 150 pharmaceutical products and its products "ENDO ACTION tablets is one of such products. It is stated by the 1st defendant company that their 23 products have prefix 'ENDO' and the word ENDO is associated in the public mind with the 1st defendants company and indicates the products of the 1st defendant company. The 1st defendant company has obtained licence from the concerned Authorities since 1977 and its present sales turnover is about Rs. 6.50 crores every year. The 1st defendant company claims to be selling its products throughout the country having wide distribution network. It is stated in the affidavit in Reply filed by the 1st defendant company that production of the product ENDO ACTION tablets was started in the year 1991 by its predecessor having the formula "Paracetamol I.P 300 mg. Chloropheniramine Maleate I.P. 1.5 mg., Phynyle Phrine Hydochloride I.P. 2.5 mg. Caffin Anhudrous I.P. 16. mg. and the said formula continues even today. Earlier the said tablets were packed in a rexin bag cartons and plastic container. In May 1997 the 1st defendant company had new cartons with a distinctive colour combination, get up and layout bearing the words "Endo Action" prepared for marketing the said products. The said Endo Action tablets cartons contain a caution "IT IS DANGEROUS TO TAKE PREPARATION EXCEPT UNDER MEDICAL SUPERVISION". As regard the plaintiffs product "Vicks Action 500", the 1st defendant Company in the Affidavit in Reply has stated that plaintiffs product have always been under the mark "Vicks" which is registered trade mark. The plaintiffs have not and never had exclusive rights to the word and numeral and sign "Action", "500" or "1". Prior to 1998, the plaintiffs' products "Vicks Action 500" was marketed under cartons and strips having materially different get up and colour scheme. The 1st defendant demanded from the plaintiffs to disclose the cartons and strips earlier used by them before adopting the new cartons in October 1998, but the same has not been disclosed. The 1st defendant Company has given details as to when and how their product ENDO Action was launched for marketing in the new carton bearing Distinc-
tive colour scheme, get up and lay out in or about May 1997. It is thus the defence of the 1st defendant Company that ENDO Action tablets are manufactured and marketed in the strips and cartons as per Exhibit I annexed to the plaint long prior to the adoption of new cartons adopted by the plaintiffs in October 1988. The 1st defendant has therefore taken a clear stand that its cartons in the present form, get up and colour scheme are since May 1997 and, therefore, the plaintiffs allegation that the 1st defendant Company is copying the products marketed by the plaintiffs under the get up and colour scheme of the plaintiffs is wholly misconceived. The 1st defendant Company has also stated that the plaintiffs' objection to the use of word "Action" or the numeral "500" is equally baseless and unfounded and cannot have a monopoly over the use of the word "Action". The word "Action" apart from being a common dictionary word is common in all the pharmaceutical industry and many pharmaceutical firms and company use this word for their pharmaceutical products and illustrative list for that has been furnished by the 1st defendant along with Affidavit. The 1st defendant Company has also stated that the print type on plaintiffs' cartons and strips is very small and the caution printed thereon is unreadable. It is also stated that the 1st defendant's product is antihistamine and whereas the plaintiff's Vicks Action 500 does not have antihistamine as an ingredient. The 1st defendant's production is "Endo Action" while the plaintiffs production is "Action 500, Vicks Action 500 and Vicks Action 500". The letters and type of the two are different and the ingredients are also different. The 1st defendant has thus denied that their cartons or strips contain reproduction or substantial reproduction of plaintiffs artistic copyright comprising Vicks Action 500 as alleged. The 1st defendant company therefore prayed for dismissal of Notice of Motion and vacation of ad interim order.
6. The plaintiffs have filed Affidavit in Rejoinder through Deepak Acharya, its Constituted Attorney. It is set out in affidavit in Rejoinder that plaintiffs' claim is based on passing of and the reputation and goodwill acquired in their mark and in the colour scheme and get up of the cartons and strips of their ACTION 500 products and, therefore, disclaimer in respect of ACTION 500 products is wholly irrelevant. The plaintiffs claim to have acquired rights in the mark ACTION 500 and the colour scheme and get up of their cartons and strips through extensive use.
7. In Affidavit in Rejoinder, the plaintiffs have denied the 1st defendants claim that their production of new cartons and strips was introduced in May 1997 as stated. In this Affidavit in Rejoinder, the plaintiffs averred that the distinctive triangle has been a feature of the various pharmaceutical products, sample whereof has been annexed as Exhibit F annexed with this Affidavit in Rejoinder. Originally, the distinctive triangular device contained sharp edges and over a period of time the triangular device was developed and the sharp edges have been rounded since 1994. In the Affidavit in Rejoinder it was thus pleaded that the carton of the defendants contain a triangular device which has the look and feel similar to the one used by the plaintiffs which, at the relevant time, was featuring in TV commercial the story board annexed as Exhibit E to this Affidavit in Rejoinder. The distinctive triangular device has featured since several years prior to October 1998, at least since 1994 in pharmaceutical products of the plaintiffs and the attempt to copy the triangular device is clear evidence that it is the defendants who have copied the plaintiffs packaging material and they have sought to fabricate documentary evidence to the effect that they have introduced the impugned packaging material in May 1997. In the Affidavit in Rejoinder, the plaintiffs have criticised the various Affidavits annexed by the defendants and have challenged their correctness and the stand set up by the 1st defendant company that the defendants are selling their products in the cartons and strips annexed at Exhibit I with the plaint since May, 1997. Along with the affidavit in Rejoinder, the plaintiffs filed 11 affidavits as well.
8. The 1st defendant Company has filed Sur Rejoinder in response to the Affidavit in Rejoinder filed by the plaintiffs and reiterated their case set up in the Affidavit in 1st defendant company in Affidavit in Sur Rejoinder has stated that they wanted inspection of permission granted to the plaintiffs by the Drug Authorities to manufacture Vicks Action 500 tablets, but the said inspection was not given. The plaintiffs have also not produced and given inspection of original cartons after 1975 and before October 1998 showing colour scheme, get up, lay out then adopted by the plaintiffs. The 1st defendant reiterated that its products "Endo Action" is an independent and a genuine production having no resemblance or similarity with the plaintiffs' products and that suit is an attempt on the part of the plaintiffs being the multinational company to stifle the growth of the small company and on that count have misstated the facts. The 1st defendant has claimed to be the original owner of the copyright and design created by them. It is also stated in the affidavit in Sur Rejoinder by the 1st defendant that the figure described as triangle which the plaintiffs have referred to several times has no definite shape and from time to time they are changing the said triangular figure to their convenience.
9. The plaintiffs have also filed an Affidavit on 28th September 1999 along with its Questionnaire Exhibit 1 collectively dealing with the margin of profits of pharmaceutical companies. Two Affidavits have also been filed by the 1st defendant on 1st October 1999 and 6th October 1999. During the course of arguments, the defendants sought to rely upon further documents viz. comprising manufacturing record tablets and Certificate of Analysis for Batch No. 3797, manufacturing record tablets and certificate of analysis for Batch No. 8097, manufacturing record tablets and Certificate of Analysis for Batch No. 10097 and extract duly certified by Excise Department. An Affidavit opposing the consideration of said documents was filed on behalf of the plaintiffs. By the separate order, I rejected the 1st defendant's prayer in considering the documents viz. comprising manufacturing record tablets and Certificate of Analysis for Batch No. 3797, manufacturing record tablets and Certificate of Analysis for Batch No. 8097, manufacturing record tablets and Certificate of Analysis for Batch No. 10097 and ordered that extract of the form RG.-l maintained by the Company duly certified by Excise Department may be considering since it has been referred to in affidavit in Sur Rejoinder. The affidavit therefore filed by the plaintiffs opposing the consideration of these documents is only restricted to the portion meeting the document viz., extract of form RG-1.
10. The plaintiffs, in support of their case, are relying upon various documents annexed with the plaint namely, sales turnover of Vicks products sold by plaintiff No. 1 (Exh. A), sales turnover of plaintiff No. 1's Action 500 Vicks Pharmaceutical Products (Exh B), Promotional marketing and advertising expenditure in respect of plaintiff No. 1's various Vicks products (Exh. C), plaintiff No. 1's promotional marketing and advertising in respect of its Action 500 Vicks Pharmaceutical products (Exh. D). Distinctive Action 500 cartons (Exh. E), Distinctive Action 500 Strips (Exh. F), Display poster of relaunch sent to several retailers depicting old carton and new carton of Vicks Action 500, (Exh. G), a sample of the story board of the TV commercial (Exh. H), sample of cartons and strips of defendants (Exh. I), the invoice whereby the defendants' "ENDO ACTION" was sold (Exh. J), reports made by the Court Receiver, pursuant to the ad interim order passed by this Court annexed with the Affidavit in Rejoinder (Exhs. A & B), a colour zerox of COLDARIN products of Johnson & Johnson (Exh. C), colour zerox of 1st defendants' products COLDRIN (Exh. D), colour zerox of the story board (Exh. E), sample of Vicks Pharmaceutical products depicting Distrinctive triangular (Exh. F), Affidavits of Mr. Homi Khusrokhan, Mr. A. Anjeneyan, Mr. K.A. Narayan, Mr. Kasim K. Master, Mr. S.R. Keshwani, Mr. R.R. Kotecha, Mr. Manish Patni, Mr. Mahesg Mandwani, Mr. Pradeep Tare, Mr. Pravin Nagar and Mr. Zohar Ali, the Questionnaire collectively Exh. 1 etc.
11. On the other hand, in defence, the 1st defendant company in opposition to plaintiffs case has relied upon various documents namely photocopy of carton of plaintiffs' products Vicks Action 500 (Exh 1). photocopy of publication in the Journal of Trade Marks showing no exclusive rights of the plaintiffs in respect of the words "Action and 500" (Exh. 2), List of products of the 1st defendant company having 23 products with prefix "ENDO" (Exh. 3), Schedule of sales turnover and advertisement expenses incurred by 1st defendant Company for promotion of its products (Exh. 4), statement of sales turn over in respect of ENDO ACTION tablets (Exh. 5), Certificate issued by World Health Organisation in respect of 1st defendant company (Exh. 6), Registration certificate issued by Ministry of Defence, Government of India (Exh. 7), copy of certificate issued by M.P. Laghu Udyog (Exh. 8), zerox copy of old carton of 1st defendant (Exh. 9), the statement setting out particulars of the payments made by the 1st defendant company to various persons such as Printer, fabricator, designer and payments received from several purchasers (Exh. 10), the statement of dates of invoices, cheques/D.D. and the names of the Bank (Exhs. 11 to 11-K), zerox copy of the letter dated 15th May 1997 and attached photo copy thereto (Exh. 12), copy of search report to find out the use of word 'ACTION' as prefix (Exh. 13), copy of letter addressed by 1st defendant's Advocate to the Advocate for the plaintiffs on 7-4-1999 (Ex. 14). (All these documents have been annexed along with affidavit in Reply and copy of letter dated 11th May 1999 (Exh. 1), copy of letter dated 13th July 1999 (Exh. 2), copy of Trade Mark Journal wherein the particulars of registration is published (Exh. 3), award of appreciation to 1st defendant Company from the Government of India (Exhs. 4-A to 4-B), colour scheme, get up, lay out and design of plaintiffs carton (Exh. 5), copies of strips and cartons of other manufacturers using the word "Action" (Exh. 6), copy of certificate of Chartered Accountant dated 19-7-1999 (Exh. 7), copies of certificates of Chartered Accountant and Sales of ENDO Action from 1991 (Exh. 8-A & 8-B), a copy of carton and strip of other products of plaintiffs (Exh. 9), copy of various vouchers and products depicing triangle (Exh. 10 and Exh. 11), copy of letter of Excise Department and reply sent by 1st defendants (Exhibits 12 & 13) (These annexures have been annexed with affidavit in Sur Rejoinder by 1st defendant), Affidavit of Mahesh Mandvani (Exh. 1), copy of invoice dated 12th August, 1999 (Exh. 2), copy of letter dated 17-9-1999 by Nagar Chemists (Exh. 3), photocpy of 1st defendant's letter dated 16-9-99 (Exh. 4), photocopy of letter dated 17-9-1999 (Exh. 5), photocopy of Affidavit of Shri Agarwal (Exh. 6) (These documents have been annexed with the Affidavit of Rameshkumar Lulla dated 1-10-99), the statement of different in selling price and maximum retail price of some pharmaceutical companies (Exh. 1), invoice of the chemists in respect of some of the products of other pharmaceutical companies (Exhibits 2 to 12) and copy of RG-1 forms by Custom and Excise Department duly certified by Custom Authorities (These documents have been annexed with the Affidavit dated 6th October 1999 by the 1st defendant.).
The principles in relation to passing off action are well known and hardly need to be elaborately reiterated. In order to come to the conclusion whether one mark or device is deceptively similar to another, the broad and essential features of the two are to be considered. It is not necessary not should they be placed side by side to find out if there hare any differences in the design and if so, whether they are of such character as to prevent one design from being mistaken for the other. In the eye of law, it would be enough if the incriminating mark bears such an overall similarity to the distinctive mark as would be likely to mislead a person usually dealing with one to accept the other if offered to him. It is of no use to note on how many points there is similarity and on how many others, there was absence of it. In passing off action, one is not to look to minor details but must take into consideration the essential features. An action for passing off is common law remedy being in substance an action for deceit, that is, a passing off action by a person of his own goods as those of another. Karly's Law of Trade Marks and Trade Names (9th Edition paragraph 838) says:
"Two marks, when placed side by side by side, may exhibit many and various differences, yet the main idea left on the mind by both may be the same. A person acquainted with one mark, and not having the two side by for comparison might well be deceived, if the goods were allowed to be impressed with the second mark, into a belief that he was dealing with goods which bore the same mark as that with which he was acquainted. Thus, for example, a mark may represent a game of football; another mark may show players in a different dress, and in very different positions, and yet the idea conveyed by each might be simply a game of football. It would be too much to expect that persons dealing with trade marked goods, and relying, as they frequently do, upon marks, should be able to remember the exact details of the marks upon the goods with which they are in the habit of dealing. Marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole. Moreover, variations in detail might well be supposed by customers to have been made by the owners of the trade mark they are already acquainted with for reasons of their own."
The real question is as to how a purchaser who must be looked upon as an average man of ordinary intelligence, would react with particular trade mark, what association he would form by looking at the trade mark, and in what respect he would connect the trade mark with the goods which he would be purchasing.
13. Adverting to the plaintiffs DISTINCTIVE ACTION 500 cartons and the incriminating 1st defendant's ENDO ACTION cartons which are annexed as Exhibits E and I respectively with the plaint, the average man of ordinary intelligence with imperfect recollection would form first impression that there is broad similarity in the two cartons. Both cartons have dark blue base and similar lay out. The Distinctive carton has green triangle with rounded edges and so also the incriminating carton has green triangle with round edges though in opposite direction. The triangle in both the cartons have red rectangle band. In Distinctive carton in the red rectangle band, ACTION 500 is printed, while in the incriminating carton the word "ACTION" is printed. The green triangles in both the cartons namely, Distinctive carton as well as the incriminating carton have shaded colour inasmuch as the outer part is lighter green while inner part is of dark green shade. The size of the printed words is also broadly similar. The two cartons namely Distinctive cartons and the 1st defendant's cartons are so strikingly similar that it may be difficult to distinguish the two cartons by an average man in his first optical and mental impression. The Distinctive carton has perforation at the bottom on one side for taking out strips therefrom which the offending carton too, has. Though, in the Distinctive carton the words "VICKS ACTION 500", are printed while on the offending carton, the words "ENDO ACTION" are printed, the said dissimilarity pales into insignificance in view of its broad similarity in essential features of two cartons. The overall similarity therefore in the two cartons, namely, Distinctive cartons and the offending cartons cannot be doubted. Similarly, the Distinctive strips and the incriminating strips have broad similarity in essential features inasmuch as both these strips has silver background having green triangles with red rectangle bands. The upper portion has green base in both these strips and the colour of tablet contained therein is yellowish. The triangle and the red band therein with the word mark ENDO ACTION in offending strips are prominent and bold while the green triangle with red band having "Vicks Action 500" printed thereon in distinctive strips are small in size. But despite this dissimilarity, there is broad similarity in essential features in the Distinctive strips and the incriminating strips. Prima fade, therefore, broad similarities in Distinctive Cartons and Strips and the incriminating strips and cartons cannot be doubted. Having prima facie held so, the question arises whether the plaintiffs have been able to make out a case for temporary injunction against the defendants as pleaded in the plaint or the defendants have been able to prima facie establish that the offending cartons and the strips are marketed and sold by the 1st defendant company much before the launching of the products VICKS ACTION 500 by the plaintiffs in the Distinctive Cartons and the Strips upon which the entire action is based.
14. The plaintiffs have come out with the specific case in the plaint that in or about October 1998 the 1st plaintiffs' ACTION 500 pharmaceutical product bearing housemark VICKS was relaunched in the market under cartons and strips having the Distinctive get up and colour scheme. A sample of distinctive carton having a distinctive get up and colour scheme has been annexed by the plaintiffs as Exhibit E. Thus, as regards the distinctive carton, the plaintiffs' specific case pleaded in the plaint is in respect of the distinctive get up and the colour scheme which is shown in the sample Exhibit E, which the plaintiffs first started marketing in October 1998. Similarly, the case of the plaintiffs as regards the distinctive strips having a distinctive get up and colour scheme is based on the sample annexed in the plaint as Exhibit F. The 2nd plaintiff claims to be copyright owner in respect of artistic work represented on distinctive ACTION 500 carton Exhibit E. The plaintiffs' cause of action is based on imitation of these distinctive cartons and strips in get up, colour scheme and mark ACTION 500, Exhibit E and F by the defendants by offending cartons and strips Exhibit I. In paras 11 & 12 of the plaint the plaintiffs have averred that they were shocked and surprised to recently come across products sub-branded as ACTION containing the same basic ingredients and seeking to have the same therapeutic effect as those of the plaintiffs Action 500 manufactured, sold/marketed in cartons and strips which are colourable imitation of plaintiffs distinctive cartons, strips and the mark ACTION 500 and by doing that the defendants are causing damage to the reputation and goodwill of the plaintiffs. The plaintiffs pleading is that by selling their products in the cartons, strips and use of impugned mark 'ACTION' similar to the plaintiffs' cartons, strips and 'ACTION 500' the defendants are representing their goods as those of plaintiffs. The plaintiffs' case in the plaint, therefore, is clearly based on the distinctive cartons and strips marked Exhibit E and F which they started marketing by way of relaunch in the month of October 1998.
15. The defence of the 1st defendant is that they are selling their products ENDO ACTION under the cartons and the strips Exhibits I since May 1997. In this connection, the 1st defendant company has placed on record the affidavit of Shri Satyanarayan Panchal, Commercial Artist and Designer, who designed artwork of carton of ENDO ACTION, Exhibit I in June 1996. The 1st defendant has also placed material to show that the cartons were got printed by 1st defendant company from M/s Flexible Packaging on 23-1-1997. The printer of the carton is Shri Kamal Wadhwani, who printed the cartons of ENDO ACTION on 11-1-1997. RG forms, the various bills by which the product ENDO ACTION was sold in the offending cartons and the strips in the year 1997 have also been placed on record. Though, these documents have been vehemently criticised and challenged by Mr. Virag Tulzapurkar, the learned Counsel for plaintiffs, prima facie, I find no justifiable reason to reject the documents tendered by the 1st defendant company to show that the offending cartons and the strips came into existence in the month of May 1997. There is corroborative material on record for believing the bills produced by the 1st defendant proving sale of product of ENDO ACTION in alleged offending cartons and strips in the year 1997. From RG-1 (Register) for a period from 10-6-1997 to 31-1-1997 in respect of ENDO ACTION product, the bills annexed with the 1st defendant along with its Affidavit in Reply are prima facie verifiable. To demonstrate, it would be seen from the bill No. 490-C dated 3-7-1997 annexed with the affidavit of Subhash Chandra Anand (Exh. 11(e)) annexed with the Affidavit in Reply that 100 ENDO ACTION tablet strips having Batch No. 3797 was sold by the 1st defendant Company to Anand Pharma. This fact is corroborated from form RG-1 which is kept by the 1st defendant company under statutory obligations duly verified by Central Excise Department of Indore. At page 70 of the Affidavit in Reply filed by the 1st defendant, the zerox copy of the carton bearing Batch No. 3797 having manufacturing date May 1997 has been annexed which is the alleged offending carton. The learned Counsel for plaintiffs tried to urge that ENDO ACTION might have been sold vide Bill No 490-C on 3-7-1997 to Anand Pharma, copy of which is annexed at page 69, but the said ENDO ACTION strips tablets having Batch No. 3797 were not sold in the offending carton and the strip and now the evidence has been fabricated by putting a false seal giving Batch No. 3797 and manufacturing date May 1997 on the carton. The contention of the learned Counsel for the plaintiffs cannot be accepted prima facie for the simple reason that the 1st defendant company is a licensee under the Drugs and Cosmetics Rules, 1945 and the conditions of licence in Form 25 and Form 25-F have to be fully complied with by the 1st defendant. Under the conditions of licence in Form 25 and Form 25-F, the licensee (1st defendant) is required to keep record of the details of manufacture as per particulars given in Schedule U of each batch of the drugs manufactured by him and such records have to be retained for a period of five years. Schedule U which is part of rules provides that the licensee shall retain the specimen of label/strip, carton with batch coding information like Batch Number, date of manufacture, date of expiry retail applicable, stamped thereon and inserts used therein. Prima facie, therefore, the correctness of the specimen at page 70 of Affidavit in Reply cannot be doubted. The material on record placed by the 1st defendant therefore prima facie establishes that the alleged offending cartons and the strips of ENDO ACTION manufactured by the 1st defendant company came into scene in May 1997 much before plaintiffs' distinctive cartons and strips.
16. Mr. Virag Tulzapurkar, the learned Counsel for plaintiffs, with his usual forensic skill and persuasion tried to make out a new case during the course of arguments based on distinctive triangle which according to him as an essential feature of plaintiffs distinctive cartons and the strips as being in existence for decades. He strenuously urged that the 1st defendant company has copied the said essential feature i.e. triangle on their cartons and strips and, therefore, even if it be held that the incriminating cartons and strips came into existence in the year 1997, the 1st defendant company is guilty of wrong by passing off their goods as the goods of plaintiffs. He urged that it is for the Court to find out what is essential feature of the device even if it is not pleaded by the suitor. In this connection he relied upon judgment of the learned Single Judge of this Court in Hindustan Lever Limited v. Nirma Private Limited, . I have given my anxious consideration to this contention of Mr. Tulzapurkar. It is true that in affidavit in Rejoinder the plaintiffs have tried to base their case on Distinctive triangle as an essential feature of plaintiffs' pharmaceutical products. In Affidavit in Rejoinder, particularly in paragraph 16, the plaintiffs have stated thus:-
(i) The colour scheme, get up and lay out of packaging material in respect of VICKS pharmaceutical products sub branded as ACTION 500 as sold prior to October, 1998 is revealed in Exhibit "G" to the plaint as old packaging material. Prior to the packaging material shown as old pack-
aging material in Exhibit "G", the packaging material under which VlCKS pharmaceutical products sub branded as ACTION 500 was marketed by the plaintiff is shown in the story board of the TV commercial which were aired during the relevant time. A colour xerox of the said story board in respect thereof is annexed hereto as Exhibit "E". Accordingly VICKS pharmaceutical products sub branded as ACTION 500 was sold in packaging material shown in the story board of the TV commercial which is annexed as Exhibit "E" hereto. Thereafter after some alterations the same was sold in packaging material which is referenced as old packaging material in Exhibit "G" to the plaint and from October, 1998 they have been sold under packaging material in Exhibit "G" to the plaint and samples whereof have been annexed to the plaint. The art work for the cartons and strips/blister packs exhibited in Exhibit "E" & "F" to the plaint and shown as new cartons/strips in Exhibit "G" was designed and created by Madison DMB & B (a world renewed advertising agency) upon them being commissioned to do so by plaintiff No. 1.
(ii) I say and submit that the distinctive triangle has been a feature of the plaintiffs' various VICKS pharmaceutical products, samples whereof are annexed as Exhibit "F" hereto. This distinctive triangle features not only in the VICKS pharmaceutical products manufactured and sold in India by the plaintiffs but also in VICKS pharmaceutical products manufactured by the plaintiffs group of companies internationally. The plaintiffs crave leave to refer to and rely upon the samples of such VICKS pharmaceutical products marketed internationally by the plaintiffs group of companies comprising such distinctive triangles. In fact, the shape of the VICKS cough drops itself is of a distinctive triangle which is similar to the one which is used on the packaging material of ACTION 500. Accordingly, the distinct triangular device is exclusively associated with the VICKS pharmaceutical products and/or the plaintiffs.
(iii) With the aforesaid background, it is significant to note the following:
Originally, the distinctive triangle device of the plaintiffs contained sharp edges as is revealed in the story board annexed as Exhibit "E" hereto. Thereafter over a period of time the plaintiffs have further developed its triangular device so that such sharp edges have been rounded since at least 1994. It is the defendants' claim that since 1991 they have been selling ENDO ACTION products sub branded as ACTION in cartons which is annexed as Exhibit "9" to the said affidavit. It appears that the carton of the defendants contains a triangular device which has the 'look & feel' similar to the one used by the plaintiffs at the relevant time as featuring in TV commercial the story board of which is annexed at Exhibit "E" hereto. It appears that at this time the defendants were - endeavouring to ride upon the reputation and goodwill generated by the plaintiffs VICKS pharmaceutical products sub branded as ACTION 500 and marketed in packaging material which is revealed in the story board by imitating the word ACTION and also sharp edged triangular device of the plaintiffs. After the plaintiffs changed their packaging material, obviously the defendants have once again changed its packaging material which also has rounded triangles so as to pass off its goods as those of the plaintiffs.
(iv) It may be noted that the distinctive triangular device has featured since several years prior to October 1998 (atleast since 1994) in VICKS pharmaceutical products of the plaintiffs. The attempt to copy the triangular device by the defendants is clear evidence that it is the defendants who have copied the plaintiffs' packaging material which is the subject matter of the suit and they have sought to fabricate documentary evidence to the effect that they have introduced the impugned packaging material in May, 1997."
17. What is stated above in Affidavit in Rejoinder is not the pleading at all in the plaint. By an Affidavit in Rejoinder, the plaintiffs cannot be permitted to materially improve their case. Affidavit at best is a prima facie evidence which can be used in support of a pleading, but cannot substitute the plead-ing itself. The case of the plaintiffs pleaded in the plaint which is spelt out clearly from paragraphs 7, 11, 12 & 13 of the plaint read thus:
"7. In or about October, 1998, plaintiff No. 1's ACTION 500 pharmaceutical product also bearing the housemark Vicks was re-launched in the market under cartons and strips having a distinctive get up and colour-scheme. A sample of the said distinctive carton is annexed hereto at Exhibit "E" and samples of the said strips also containing the tablets is annexed hereto as Exhibit "F". The plaintiff No. 1's cartons having a distinctive get up and colour scheme a samples whereof is annexed at Exhibit "F" is hereinafter referred to as DISTINCTIVE ACTION 500 CARTONS and plaintiff No. 1's strips having a distinctive get up and colour scheme samples whereof are annexed at Exhibit "p" is hereinafter referred to as DISTINCTIVE ACTION 500 STRIPS. Plaintiff No. 2 is the copyright owner in respect of the artistic work represented on the DISTINCTIVE ACTION 500 CARTONS.
11. The plaintiffs were shocked and surprised to recently come across counterfeit pharmaceutical products sub-branded as ACTION containing the same basic ingredients and seeking to have the same therapeutic effect as those of the plaintiffs' ACTION 500 products and manufactured/sold/marketed by the defendants in cartons and strips which are a colourable imitation of and in appearance deceptively similar and/or a reproduction and/or a substantial reproduction of and/or contain the features of the DISTINCTIVE ACTION 500 CARTONS/DISTINCTIVE ACTION 500 STRIPS of the plaintiffs. However, the plaintiffs apprehend that the counterfeit products of the defendants is not made under the same quality control requirements as that of the plaintiffs and is not of the same superior quality as that of the plaintiffs ACTION 500 products sold under the DISTINCTIVE ACTION 500 CARTONS/ DISTINCTIVE ACTION 500 STRIPS. Hereto annexed and marked at Exhibit "I" are samples of the counterfeit products of the defendants and the counterfeit cartons and counterfeit strips. The said counterfeit products/cartons/strips of the defendants samples whereof are annexed at Exhibit "I" are hereinafter referred to as "Counterfeit Products/Cartons/Strips. The counterfeit products/cartons/strips are being manufactured and marketed by defendant No. 1. Defendant No. 2 is a retail chemists also selling Counterfeit Products/Cartons/Strips of defendant No. 1. Hereto annexed and marked Exhibit "J" is an invoice for the said products sold by defendant No. 2.
12. Vicks Pharmaceutical products manufactured and marketed by the plaintiffs branded as ACTION 500 and sold under the Distinctive Action 500 Cartons/Distinctive Action 500 strips has acquired valuable countrywide reputation and goodwill in the circumstances explained above. By manufacturing and selling Counterfeit Products /Car tons/ Strips (samples whereof are annexed at Exhibit "I" hereto) which resembles or closely resemble the DISTINCTIVE ACTION 500 CARTONS/ DISTINCTIVE ACTION 500 STRIPS of the plaintiffs and by the use of the mark ACTION which is deceptively similar to the plaintiffs mark ACTION 500, the defendants are misrepresenting their goods as those of the plaintiffs and/or are misrepresenting that their goods have some connection with the goods of the plaintiffs causing damage to the plaintiffs and to the goodwill and reputation of the plaintiffs' business and is also diluting the distinctiveness of the plaintiffs' mark, get up and colour scheme comprised in the DISTINCTIVE CARTONS/STRIPS and the mark ACTION 500. Such misrepresentation has been deliberately done so as to trade upon the reputation and goodwill of the plaintiffs. The plaintiffs submit that by such misrepresentation the defendants are passing off or attempting to pass off their goods as those of the plaintiffs. The plaintiffs further say and submit that the resemblance of the Counterfeit Products/Cartons/Strips with that of the plaintiffs products and DISTINCTIVE ACTION 500/STRIPS and of the impugned mark Action with the plaintiffs mark ACTION 500 is clear evidence of the dishonest and fraudulent intentions of the defendants to deceive and confuse the public, consumer and traders. The plaintiff say and submit that such illegal or wrongful actions of the defendants amounts to the tort of passing off and/or unfair competition and is actionable as a civil wrong.
13. The plaintiffs say and submit that the counterfeit cartons of the defendants (sample whereof are annexed at Exhibits "I" hereto) contains a reproduction and/or a substantial reproduction of the plaintiffs' artistic copyright work comprised in DISTINCTIVE ACTION 500 CARTONS (Exhibit E hereto) and the same has been copied by the defendants from the plaintiffs copyright works. In the circumstances the defendants have infringed/is infringing the plaintiffs' copyright work reproduced at Exhibit "E" hereto."
18. The aforesaid pleading in the plaint would clearly show that what is stated in the affidavit in Rejoinder as quoted above is not the case set up by the plaintiffs in the plaint. The plaintiffs case is solely based on the distinctive cartons, strips having get up, colour scheme and mark ACTION 500 annexed as Exhibits E and F with the plaint which admittedly came into existence in the month of October 1998. In the entire plaint, the plaintiffs have not disclosed that green triangle or the triangle is the essential feature of the distinctive mark. The distinctiveness is pleaded in get up, colour scheme of Exhs. E and F and mark ACTION 500. After all passing off action is based on misrepresentation by defendant from selling his goods as the goods of plaintiffs. Misrepresentation, therefore, in the passing off action has to be pleaded in any of the case of the misrepresentation. A party basing its claim on misrepresentation of the defendant has to specifically plead the details of misrepresentation and cannot leave upon the Court to find out what the misrepresentation is. Order VI Rule 4 of Civil Produce Code provides that in all cases in which the party pleading relies on any misrepresentation, particulars thereof with dates and items shall be stated in the pleading. There is no pleading worth the name in the entire plaint that the essential feature of the distinctiveness is in the triangle which the learned Counsel for the plaintiffs urged on the basis on Affidavit in Rejoinder to be an essential feature of plaintiffs' distinctive cartons and the strips. The prima facie case has to be established by the plaintiffs on the basis of pleadings. When the plaintiffs have solely come out with the case alleging that defendants are passing off their goods as the goods of the plaintiffs in incriminating cartons and the strips as described in Exhibit I which is deceptively similar to distinctive cartons and strips Exhibits E and F, case has to be tested on the basis of that pleading and that pleading alone and since the plaintiffs case is that the distinctive cartons and the strips came into existence in the month of October 1998 and the 1st defendant has been able to show that the alleged incriminating or the offending cartons and strips came on scene in the month of May 1997 much before the plaintiffs' distinctive cartons and the strips came into existence, prima facie, the plaintiffs have failed in making out their case as set out in the plaint. The plaintiffs' case of passing off is based on overall similarity in get up, colour scheme of distinctive cartons/strips and mark ACTION 500 and not on triangle as an essential feature of the distinctiveness. For the self same reasons, the plaintiffs must be held to have failed in proving, prima facie, that defendants are infringing the plaintiffs' copyright work produced in Exhibit E annexed with the plaint. So far as use of mark 'ACTION' by the 1st defendant is concerned, again it may be observed that plaintiffs claim is not based on infringement of trade mark but based on defendants committing tort by passing off their goods as the goods of plaintiffs by use of distinctive get up and colour scheme as per Exh. E and F. The use of word ACTION by itself cannot be said to be essential feature of plaintiffs distinctiveness. In view of my aforesaid discussion, the various judgements cited by the learned Counsel for the plaintiffs viz. Godfrey Phillips India Ltd. v. Gimar Food & Beverages Pvt. Ltd., , Astra-IDL Limited v. Pharma Limited, , Richardson-Vicks Inc. & another v. Medico Laboratories, 1985 P.T.C. 167. Registrar of Trade Marks v. Ashok Chandra Rakhit Ltd., , Parte Products (P) Ltd. v. J.P. & Co., Mysore, . James Chandwick & Brothers Ltd. v. The National Sewing Thread Co. Ltd., . Burroughs Wellcome (India) Ltd. v. Uni-Sole Pvt. Ltd. another, , Hindustan Lever Limited v. Nirma Private Limited, , (M/s. Hiralal Parbhudas v. M/s. Ganesh Trading Company and others, Ruston and Homby Ltd. v. Zamindara Engineering Co., need not be dealt with separately since in many of these cases the general principles governing passing off action have been laid down based on the facts and in circumstances of the case obtaining therein. In all cases which have been cited by the learned Counsel for the plaintiffs and which have been referred above, the plaintiffs have disclosed essential features and cause of action based thereon.
19. It may be observed that though in distinctive strip "F" the triangle with band is small and in the alleged incriminating strip "I" triangle with band is large, after the ad interim order was passed and during the pendency of notice of motion, the plaintiffs in their strips have enlarged triangle and band, almost of the size of defendants in the annexure "I".
20. Since I have held that plaintiffs have failed to make out prima facie case of passing off as pleaded and infringement of copyright, there is no need to go into the question of irreparable loss and balance of convenience.
21. For all these reasons, Notice of Motion has to be dismissed and is dismissed. The ad interim order passed by this Court on 19-2-1999 is vacated.
22. Mr. Tulzapurkar, learned Counsel for the plaintiffs submits that the 'plaintiffs intend to file an appeal challenging this order and, therefore for a period of 6 weeks from today, the ad interim order passed by this Court may be allowed of remain operative.
23. Since the ad interim order is operative for last about 10 months, the prayer made by the learned Counsel for plaintiffs is fair and reasonable and for a period of 6 weeks, the ad interim order passed by this Court on 19-2-1999 shall remain operative.
24. The parties may be provided with ordinary copy of this order duly authenticated by the Court Associated on payment of usual copyright charges.
Notice of Motion dismissed.