Bangalore District Court
Smt.Rajeshwari vs Dr.Nandalaxmi Hegde on 4 August, 2021
IN THE COURT OF XVIII ADDL.CITY CIVIL JUDGE, AT
BANGALORE CITY. [CCH.NO.10]
Dated this the 4th day of August 2021
PRESENT
Sri.SADANANDA NAGAPPA NAIK, B.A.L., LL.B.
XVIII Addl.City Civil Judge.
O.S.No.7234/2015
Plaintiff Smt.Rajeshwari
W/o Pramod Hegde,
Aged about 35 years,
Proprietrix, M/s. Meditek India,
At Thirumala,
Opp: Bejai Church Hall,
Mangalore - 575 004.
Reptd by her GPA holder
Mr.Pramod Hegde.
(Rep. by Sri Harikrishna S
Holla, Advocate)
/VS/
Defendant: Dr.Nandalaxmi Hegde,
Major,
Father's name not known,
Trading as M/s. Medilab India,
No.37, G-Floor, Service Road,
Domlur Road, Bangalore - 71.
(By Sri.K.S.C., Advocate)
Date of institution of 20.08.2015
suit
Nature of the (suit or Permanent injunction, render
pronote, suit for accounts, surrender unused
2 O.S.No.7234/2015
declaration and stocks and for damages.
possession suit for
injunction,) etc.
Date of the 28.5.2018
commencement of
recording of the
evidence.
Date on which the 04.08.2021
Judgment was
pronounced.
Year/s Month/s day/s
Total duration: 05 11 15
(SADANANDA NAGAPPA NAIK)
XVIII Addl.City Civil Judge,
Bangalore.
JU DG MEN T
The present suit is filed by the plaintiff for
permanent injunction for passing off of plaintiff's
trademark with damages and for costs.
2. The brief facts of the plaintiff's case as
pleaded in the plaint is as follows:
The Plaintiff is engaged in manufacturing of
medicinal and pharmaceutical products since 2000.
During the course of their business they have adopted
the trademark 'TRP' in the year 2004 and they have
made application for registration in trademark under
3 O.S.No.7234/2015
class 5 vide application No.1797823 on 20.3.2009. On
account of long and continuous use, goodwill, quality
salesmanship and advertisement of the trademark, TRP
the same has become distinctive with the plaintiff. It is
further contended that the plaintiff was supplying
medicines to the defendant who was a distributor for the
trademark TRP since from 2007. It is further contended
that the defendant who is also engaged in manufacturing
and sale of medicines have deliberately adopted
trademark 'TMR' with fraudulent intention of deceiving
the general public. Since both drugs are with same
molecule used as balm for pain relief, the confusion is
bound to occur. The differences between the drugs are
'M' and 'P' and therefore, the sale of drugs by the
defendants under the trademark TMR amounts to
passing off. Recently, the defendant has applied for
registration of the trademark TMR. The defendant is not
authorised by the plaintiff to adopt a similar trademark.
The adoption of similar trademark will give an
impression to the general public that they are the
branch/sister concern of the plaintiff. It is further
contended that earlier plaintiff has filed the suit in
OS.No.9073/2013 against one Pramod Hegde ie.,
husband of defendant and after coming to know the
mistake, plaintiff has withdrawn the said suit. Since the
4 O.S.No.7234/2015
defendant continuously passing off the plaintiff's
trademark she has filed the present suit for grant of
permanent injunction restraining the defendants, their
servants, agents or any one claiming through them in
any manner from passing off the goods under the
trademark 'TMR' by using offending mark as and for
plaintiff's trademark 'TRP' used for dealing with
medicinal and pharmaceutical products, to surrender
the stock of unused offending bills, negatives, positives,
transpencies, block for destruction to the Plaintiff, to
render true accounts of the profits, to order for damages
of Rs.25000/- per month and cost.
3. The defendant appeared through her counsel
and filed a written statement denying the plaint
averments and further contended that the suit is not
maintainable as the plaintiff has filed a suit on the same
cause of action of earlier suit and the same is verbatim
of OS.No.9073/2013 which was dismissed on
01.08.2014. The plaintiff is not the owner of the
trademark TRP till now. The said trademark is not
registered in the name of plaintiff or her husband. The
TRP trademark is deceptively similar to 144 trademarks
of various products enlisted in trademark registry. The
plaintiff has been marketing 3 products of different
5 O.S.No.7234/2015
combinations in the same name TRP. Under the drug
rules, same trade name should not be given to different
combinations which will cause confusion and deception
in the minds of public. The TRP tradename is under
dispute and it is opposed by Modi Mundi Pharma Pvt.
Ltd. The plaintiff is not the absolute owner of the
trademark TRP. It is further contended that the TMR is
exclusive brand of the defendant. TMR Gel is the
unopposed trademark available in the trademark registry
and the defendant has applied for registration. TMR is
the exclusive product available in the market. The
present opposition to the trademark TMR by the plaintiff
shows the height of trade jealousy.
It is further contended that Medilab India
commenced during 1996. The plaintiff came into
existence on 21.06.2002. The very alleged trademark of
the plaintiff is phonetically, visually, deceptively and
structurally similar/identical to the 144 trademarks.
The plaintiff has started Meditek India with high hope of
snatching the market by copying the trademark of the
defendant. The trademark TMR has nothing to do with
TRP trademark.
It is further contended that the plaintiff has filed
the above suit by suppressing the material facts. No
6 O.S.No.7234/2015
documents were produced by the plaintiff to show that
the medicinal products under TRP trademark is
prepared and manufactured with required qualification
by the plaintiff. Drug license is not granted in favour of
the plaintiff The defendant had questioned the locus
standi of husband of plaintiff in O.S.No.9073/2013. The
said suit was dismissed as withdrawn without giving
liberty to file fresh suit. The TMR gel which is marketed
by the defendants is manufactured by Central Drugs
and Pharmaceuticals. There are several types of gel for
external application under different trademarks to
relieve the pain, in which TMR is one among them.
Therefore, plaintiff cannot contend that the defendant
has violated the trademark of the plaintiff. TMR is the
exclusive brand of the defendant. On the above grounds
prayed to dismiss the suit of the plaintiff and has sought
counter claim for the relief of permanent injunction
restraining the plaintiff, her men, agents, stockiests, C &
F, representatives, power of attorney etc., acting for and
on her behalf in promoting the sale of the medical
products of the plaintiff under trademark TRP contrary
to the Act and Rules of Drugs and Cosmetics Act
pending registration of the trademark TRP on settling the
dispute with M/s.Modi Mundi Pharma, to direct the
plaintiff to take back the entire supply of medical goods
7 O.S.No.7234/2015
supplied to the stockiests and medical stores at various
places under the trademark TRP till it is registered and
for costs.
4. The plaintiff has filed written statement to the
counter claim of the defendant denying the written
statement averments of the defendant. It is further
contended that the defendant has no locus standi to file
the counter claim against the plaintiff, since it is the
subsequent user of the trademark which is deceptively
similar to the plaintiff's trademark. The counter claim of
the defendant is not maintainable and barred under
Sec.9 of CPC. The Drugs and Cosmetics Act, 1940 is self
contained code which provides for reliefs for any
violations and therefore, the defendant can address his
grievances only under the said Act and not by filing
counter claim. The same is barred under the said Act.
On the above grounds, prayed for dismissal of the
counter claim sought by the defendant.
5. On the basis of the above pleadings my
predecessor in office has framed the following issues
1. Whether the plaintiff proves that they have
been using the trade mark TRP for
pharmaceutical preparations since the year
2004?
8 O.S.No.7234/2015
2. Whether the use of trade mark TMR by
defendant amounts to passing off action?
3. Whether the plaintiff proves that defendant
had deliberately adopted the offending trade
mark TMR though aware of plaintiff trade
mark since 2007 as contended?
4. Whether the defendant proves that suit of the
plaintiff is not maintainable as barred by law
and in view of the withdrawing of
OS.No.9073/2013 as contended?
5. Whether the plaintiff is entitled for permanent
injunction restraining defendant from using
the trade mark TMR?
6. Whether the defendant proves that she is
entitled to the relief of permanent injunction as
prayed for?
7. Whether the defendant proves that she is
entitle to the relief of direction to take back the
stockiest of medical goods supplied as prayed
for?
8. What order or decree?
6. The Plaintiff in order to substantiate her
contention got examined her GPA holder as PW1, got
marked the documents at Ex.P1 to 59. On the other
hand the defendant is examined as DW1, got marked
the documents at Ex.D1 to D12 and M.O.1 to 11 and
closed her side.
9 O.S.No.7234/2015
7. I have heard the learned counsel for the
Plaintiff and Defendant. The counsel for the defendant
also filed their written arguments.
8. The learned counsel for the Plaintiff has cited
plethora of cases:
1. (1996) 5 SCC 714 - N.R.Dongre & Ors. Vs.
Whirlpool Corp.& Ors.
2. MANU/SC/0160/2005 - Dhariwal Industries
Ltd. & Ors. Vs. M.S.S. Food Products.
3. MANU/KA/0047/1993 - Sushil Vasudev Vs.
Kwality Frozen Foods Pvt. Ltd.
4. MANU/SC/0763/2001 - Laxmikant V.Patel
Vs. Chetanbhat Shah & Ors.
5. MANU/DE/3789/2006 - FMI Limited Vs.
Ashok Jain & Ors.
6. MANU/SC/0327/1997 - Bengal Waterproof
Ltd. Vs. Bombay Waterproof Manufacturing
Company & Ors.
7. MANU/DE/0526/1992 - Prakash Roadline
Ltd. Vs. Prakash Parcel Services (P) Ltd.
8. MANU/DE/1706/2011 - Mahashian Di Hatti
Ltd. Vs. Raj Niwas
9. MANU/DE/0767/1998 - MRF Ltd. Vs.
NR.Faridabad Rubbers & Ors.
10 O.S.No.7234/2015
9. The learned counsel for the Defendant has
cited the following cases:
1. ILR 1995 KAR 1683 - Dasappa Vs. Seetharam
2. 2004(1) KCCR 662 - K.Gopalareddy (deceased
by Lrs.,) Vs. Suryanarayana & Ors.
3. 2003(8) SCC 740 - Kashi Nath (Dead) Through
Lrs. Vs. Jaganath
4. 2004(11) SCC 364 - Commissioner of Customs
Kandla Vs. Essar Oil Ltd & Ors.
5. 2019(6) SCC 621 - Pramod Kumar Vs.Zalak
Singh
6. (2017) 5 SCC 63 - V.Rajendran & Anr. Vs.
Annaswamy Pandiyan, rep by Lrs
7. (2017) 14 SCC 634 - Himachal Pradesh
Financial Corporation Vs. Anil Garg & Others.
8. AIR 2018 SCC 3334 - Prakash Vanijya Pvt.Ltd.
Vs. Baroma Agro Product & Others.
9. AIR 1970 SCC 2062 F.Hoffmann - La Roche &
Co. Ltd. vs. Geoffrey Manners & Co.Pvt.Ltd.
10. Judgment of Hon'ble High Court of Madras in
OSA.No.170-2020 between ITC Ltd. Vs. Nestle
India Ltd.
In fact the law pronounced on these judgments have
become axiomatic and the same has been applied by me
in the appreciation of the relevant material on record.
11 O.S.No.7234/2015
10. I answer the above issues are as follows:
Issue No.1: In partly affirmative
Issue No.2: In the negative
Issue No.3: In the negative
Issue No.4: In the negative
Issue No.5: In the negative
Issue No.6: In the negative
Issue No.7: In the negative
Issue No.8: As per final order,
for the following:
REA S ON S
11. Issue No.1 to 4: It is the contention of the
plaintiff that the Plaintiff is engaged in manufacturing of
medicinal and pharmaceutical products since 2000.
During the course of their business they have adopted
the trademark 'TRP' in the year 2004 and they have made
application for registration of trademark under class 5
vide application No.1797823 on 20.3.2009. On account
of long and continuous use, goodwill, quality
salesmanship and advertisement of the trademark, TRP
the same has become distinctive with the plaintiff. It is
further contended that the plaintiff was supplying
medicines to the defendant who was a distributor for the
trademark TRP since from 2007. It is further contended
that the defendant who is also engaged in manufacturing
and sale of medicines have deliberately adopted
trademark 'TMR' with fraudulent intention of deceiving
the general public. Since both drugs are with same
12 O.S.No.7234/2015
molecule used as balm for pain relief, the confusion is
bound to occur. The differences between the drugs are 'M'
and 'P' and therefore, the sale of drugs by the defendants
under the trademark TMR amounts to passing off.
Recently, the defendant has applied for registration of the
trademark TMR. The defendant is not authorised by the
plaintiff to adopt a similar trademark. The adoption of
similar trademark will give an impression to the general
public that they are the branch/sister concern of the
plaintiff. It is further contended that earlier plaintiff has
filed the suit in OS.No.9073/2013 against one Pramod
Hegde ie., husband of defendant and after coming to
know the mistake, plaintiff has withdrawn the said suit.
Since the defendant continuously passing off the
plaintiff's trademark, she filed present suit for the above
reliefs.
12. On the other hand the defendant has
contended that the suit is not maintainable as the
plaintiff has filed a suit on the same cause of action of
earlier suit and the same is verbatim of
OS.No.9073/2013 which was dismissed on 01.08.2014.
The plaintiff is not the owner of the trademark TRP till
now. The said trademark is not registered in the name of
plaintiff or her husband. The TRP trademark is
13 O.S.No.7234/2015
deceptively similar to 144 trademarks of various products
enlisted in trademark registry. The plaintiff has been
marketing 3 products of different combinations in the
same name TRP. Under the drug rules, same trade name
should not be given to different combinations which will
cause confusion and deception in the minds of public.
The TRP tradename is under dispute and it is opposed by
Modi Mundi Pharma Pvt. Ltd. The plaintiff is not the
absolute owner of the trademark TRP. It is further
contended that the TMR is exclusive brand of the
defendant. TMR Gel is the unopposed trademark
available in the trademark registry and the defendant has
applied for registration. TMR is the exclusive product
available in the market. The present opposition to the
trademark TMR by the plaintiff shows the height of trade
jealousy.
It is further contended that Medilab India
commenced during 1996. The plaintiff came into
existence on 21.06.2002. The very alleged trademark of
the plaintiff is phonetically, visually, deceptively and
structurally similar/identical to the 144 trademarks.
The plaintiff has started Mediteck India with high hope
of snatching the market by copying the trademark of the
14 O.S.No.7234/2015
defendant. The trademark TMR has nothing to do with
TRP trademark.
It is further contended that the plaintiff has filed
the above suit by suppressing the material facts. No
documents were produced by the plaintiff to show that
the medicinal products under TRP trademark is
prepared and manufactured with required qualification
by the plaintiff. Drug license is not granted in favour of
the plaintiff The defendant had questioned the locus
standi of husband of plaintiff in O.S.No.9073/2013 the
said suit was dismissed as withdrawn without giving
liberty to file fresh suit. The TMR gel which is marketed
by the defendants is manufactured by Central Drugs
and Pharmaceuticals. There are several types of gel for
external application under different trademarks to
relieve the pain, in which TMR is one among them.
Therefore, plaintiff cannot contend that the defendant
has violated the trademark of the plaintiff. TMR is the
exclusive brand of the defendant. On the above grounds
prayed to dismiss the suit of the plaintiff and has sought
counter claim for the relief of permanent injunction
restraining the plaintiff, her men, agents, stockiests, C &
F, representatives, power of attorney etc., acting for and
on her behalf in promoting the sale of the medical
15 O.S.No.7234/2015
products of the plaintiff under trademark TRP contrary
to the Act and Rules of Drugs and Cosmetics Act
pending registration of the trademark TRP on settling the
dispute with M/s.Modi Mundi Pharma, to direct the
plaintiff to take back the entire supply of medical goods
supplied to the stockiests and medical stores at various
places under the trademark TRP till it is registered.
13. The plaintiff in her written statement to the
counter claim of the defendant contended that the
defendant has no locus standi to file the counter claim
against the plaintiff, since it is the subsequent user of the
trademark which is deceptively similar to the plaintiff's
trademark. The counter claim of the defendant is not
maintainable and barred under Sec.9 of CPC. The Drugs
and Cosmetics Act, 1940 is self contained code which
provides for reliefs for any violations and therefore, the
defendant can address his grievances only under the said
Act and not by filing counter claim. The same is barred
under the said Act. On the above grounds, prayed for
dismissal of the counter claim sought by the defendant.
14. Learned counsel Sri. Harikrishna S Holla,
appearing on behalf of the plaintiff argued that the
present suit is filed for passing off action. The plaintiff
has adopted the TRP mark in the year 2004. The TRP
16 O.S.No.7234/2015
denotes 'Total Relief Pain'. Defendant was the sole
distributor of the plaintiff since 2007. As there was a
dispute between the plaintiff and the defendant as to the
outstanding amount, the defendant left the plaintiff in
the year 2013 and obtained a new trademark. It is
further argued that the plaintiff's husband had filed a
suit in OS.NO.9070/2013 and the same was withdrawn
on 01.08.2014 and the present suit is filed. It is further
argued that as the present suit is for an injunction, it is a
continuing cause of action, hence the present suit is
maintainable. The defendant has clearly admitted that
she was the sole distributor for the plaintiff. Plaintiff is a
prior user. As the TRP was not registered, the suit for
passing off is filed. It is further argued that defendant in
his evidence has clearly admitted that the trademark
TRP & TMR are identical. It is further argued that
defendant is selling the product with lower price and the
people are opting the product with lower price. The
defendant is trying to piggyback upon the goodwill and
reputation of the plaintiff. As the defendant was the
distributor of the plaintiff, it is causing confusion among
the public that the defendant is the sister concern of the
plaintiff. It is further argued that the suit by
unregistered trademark owner against the registered
trademark owner is maintainable. Withdrawal of the
17 O.S.No.7234/2015
previous suit does not bar for filing the fresh suit on the
continuous cause of action. On these grounds, prayed to
decree the suit.
15. On the other hand, the counsel for the
defendant Sri.K.S.C., has argued that the trademark TRP
and TMR are not identical. Plaintiff's husband had filed a
suit earlier against the defendant on the same cause of
action. In that suit, the plaintiff's husband has sought a
liberty to file a fresh suit in the withdrawal memo.
However, no liberty was granted. The plaintiff has made
a stray sentence in her plaint. It is further argued that
this court had granted interim order against the
defendant and the same was vacated after appearance of
the defendant. The plaintiff had filed an MFA before
Hon'ble High Court and the same was withdrawn by the
plaintiff. The plaintiff has not produced earlier plaint
before this court. The cause of action mentioned in the
earlier suit and present suit are one and the same. It is
further argued that the sole purpose of filing the present
suit was making the defendant to come to the plaintiff's
terms. The plaintiff cannot approbate and reprobate.
Both the trademarks are different. The TRP is a Total
Relief from Pain. Defendants mark is Topical Muscle
Relaxation. Both are not phonetically and deceptively
18 O.S.No.7234/2015
similar. It is further argued that there are more than 144
trademarks which are deceptively similar to the plaintiff's
trademark. Plaintiff has not taken any action against
them. The plaintiff is also not a prior user. There are
many marks registered with TRP even prior to the
adoption of the mark by the plaintiff. Even under a
breath test also the trademarks TRP & TMR are different.
The plaintiff's trademark phonetically, visually and
structurally not similar to the defendant's mark TMR. It
is further argued that the logo of the TMR & TRP are
different. The plaintiff has adopted the logo of Manipal
Group. The rulings relied by the plaintiff are not
applicable to the present case. It is further argued that
the defendant as per Ex.P59(a) has admitted that the
plaintiff's and defendant's mark are similar product and
not admitted as the same product. The package colour of
the plaintiff's and defendant's products are different. It is
further argued that the plaintiff has not produced any
documents as to sale of TRP Gel in the year 2004. As per
their own records, plaintiff has adopted TRP tablets in
2006 and TRP gel in 2009. The plaintiff has not produced
the invoice as to sale TRP gel in 2004. It is further
argued that the plaintiff has no locus standi to file the
present suit as the plaintiff has contended in Ex.P1 GPA
that she has assigned the TRP to her husband. It is
19 O.S.No.7234/2015
further argued that under Sec.6(e) of Transfer of Property
Act, a mere right to sue cannot be transferred. It is
further argued that once the trademark is assigned, the
plaintiff has no right to prosecute the suit. There is no
fresh cause of action for filing the present suit. It is
further argued that the plaintiff has indulged in
malpractice. The plaintiff has adopted the trademarks of
several registered trademark owners and selling the
products. The products of the plaintiff are not in
conformity of the rules and regulations of Drug Control
Authority. On these grounds, prays to dismiss the suit
and decree the counter claim.
16. In order to substantiate her contention, the
plaintiff has got examined her GPA holder/ husband as
P.W.1. In his examination in chief he has reiterated the
plaint averments. In his cross examination PW1 has
deposed that plaintiff is his wife and proprietrix of
plaintiff concern. M/s. Mediteck India commenced its
business in the year 2002. Prior to the present suit he
had filed a suit in OS.No.9073/2013 for the same relief
under the same cause of action. He has admitted that in
the said suit, he has been shown as proprietor of M/s.
Mediteck India. He has volunteered that it has been
mistakenly shown as proprietor. He has further admitted
20 O.S.No.7234/2015
that in the said suit, the memo came to be allowed
permitting him to withdraw the suit and prayer to file
fresh suit came to be rejected. He has further admitted
that Ex.P2 to P42 pertains to the year 2007 onwards and
he has not produced the balance sheet of M/s. Mediteck
India. He has further admitted that he had filed a suit
against the defendant in OS.No.78/2015 before Senior
Civil Judge, Mangalore for recovery of money. He has
further admitted that the Mediteck India commenced its
production under the trademark TRP in the year 2006.
He has further deposed that TRP was coined from the
word 'Total Relief from Pain'. He has admitted that there
are nearly 144 trademarks which are similar to the
trademark TRP as per the trademark search report. He
has further admitted that TRP is not the registered
trademark of the plaintiff and further admitted that TMR
is the registered trademark of the defendant. He has
further admitted that the trade mark TRP for registration
was applied by Medmanor Organics Pvt. Ltd., even prior
to the application of the plaintiff. He has further admitted
that the defendant was a distributor of the plaintiff's
product since 2007 in Bangalore and Davanagere. He has
further admitted that there is no contact between the
plaintiff and defendant forbidding the defendant from
production and marketing of pharma products. He has
21 O.S.No.7234/2015
admitted that TRP Gel is a pain killer. He has further
denied most of the suggestion of the defendant.
17. Percontra, the defendant got examined herself
as DW1. In his affidavit filed for examination in chief, she
has reiterated the written statement averments. In her
cross examination, she had deposed that she knows the
plaintiff since 2004. She commenced her business in the
year 1996. Prior to 2007, they were dealing with surgical
products. Thereafter, they started doing business in
pharmaceutical products. She has further deposed that
she knows about the goodwill and reputation of TRP, as
she was started TRP business in the year 2007. She was
dealing these products in Davanagere and Bangalore.
She has further deposed that plaintiff has terminated the
contract with defendant in November 2013. She has
further deposed that TMR is the identical pain killer as
that of the plaintiff. She has further deposed that she has
kept the price at Rs.62/- and the plaintiff has kept the
price at Rs.117/-. She has denied the suggestion that
she has deliberately kept the lower price in order to
attract the plaintiff's customers. She has further
admitted that her husband in his evidence in
OS.No.78/2015 has admitted that TRP and TMR are
identical. She has further admitted that plaintiff had
22 O.S.No.7234/2015
adopted the TRP in the form of tablet in the year 2007.
The defendant has adopted the TMR in the form of Gel
since 2014. She has further admitted that while she was
distributor with plaintiff, she was supplying the drugs to
many of the plaintiff's customer and till today she is
supplying to some of them.
18. On perusal of entire materials on record, it is
specifically pleaded in the plaint that plaintiff is
represented by her GPA holder and her husband
Sri.Promod Hegde. The plaintiff has produced the Ex.P1
GPA dtd.9.6.2014. On perusal of the GPA, it shows that
the plaintiff has given power to GPA holder to represent
her before the court and trademark registry. It is further
recited in the GPA that she has been manufacturing
various medicinal and pharmaceutical products under
different trade names including the trade name TRP
which trademark has been assigned in the name of her
husband. However, no assignment deed is produced by
the plaintiff and the plaintiff has also not shown once the
trademark is assigned how the assignor can still
maintain a suit against the defendant. Even if
considering that the present suit is maintainable and
filed by a proper persons, the plaintiff has specifically
contended in the plaint that the plaintiff has adopted the
23 O.S.No.7234/2015
trademark TRP in the year 2004. The plaintiff has relied
on Ex.P2 to 42 the Tax invoices for the period 2007-08 to
2013-14. On perusal of Ex.P2 to P42, it shows that the
invoices are for the years 2007 to 2014. It further
discloses the sale of TRP tablets,TRP liniments, TRP Gel
and TRP Oil to the defendant. Ex.P43 is the attested
copy of the balance sheet of plaintiff for the year 2004 to
2013. Ex.P44 is the list of brand name reminders of
plaintiff shows that the plaintiff is selling more than 24
products under the name MediTeck India. Ex.P45 is the
list of brand name reminders of defendant shows that
defendant is selling 12 products under the name MediLab
India. Ex.P46 it reveals that Office of the Drug Control of
State of Karnataka has issued a licence to one
M/s.Embiotic Labs (P) Ltd., Bangalore for manufacturing
of tramodol and paracetamol tablets TRP for Mediteck
India, Mangalore on P2P basis vide No.DCD/CR-
120/MFG/06-07. Ex.47 & 58 reveals that Office of the
Drug Control of State of Karnataka has issued a licence
to one M/s.Embiotic Labs (P) Ltd., Bangalore for
manufacturing of Linseed Oil, Diclofenac, Methyl,
Salicylate and Menthol Gel (TRP Gel) for Mediteck India,
Mangalore vide No.DCD/MFG/CR-727/09-10. Ex.P48 &
54 are the seven Invoices for the sale of products to
defendant. Ex.P55 is the Computer downloaded copy of
24 O.S.No.7234/2015
plaintiff's updated website. Ex.P56 is the representation.
It shows that the GPA Holder of the plaintiff issued a
representation to the trademark registry on 20.3.2009,
the name and address of the applicant is mentioned as
Mr.Promod Hegde trading as Mediteck India. Ex.P57 is
the Computer downloaded copy of Additional
Representation under TMR shows that the defendant has
made additional representation for the trademark TMR
under class 5 on 22.11.2013 and the period of usage is
mentioned as proposed to be used. Ex.P59 is the
certified copy of the deposition of Mr.Jyothi Prasad Hegde
husband of defendant in OS.No.78/2015 and Ex.P59(a)
is relevant portion.
19.On perusal of the documents produced on behalf
of the defendant, Ex.D1 is the General Circular
dtd.24.2.2016 issued by Government of India National
Pharmaceuticals Pricing Authority, it shows that under
Sl.No.6 scheduled formulation /brand name Diclofenac
+ Linseed oil + Methyl salicylate + Menthol Gel is priced
at Rs.2.11 per one gram as the retail price exclusive of
local taxes. Ex.D2 is the downloaded copy of
representation given by M/s. Modi Mundi Pharma
dtd.5.11.2014. It shows that they have filed opposition
for the registration of trademark application No.1797823
25 O.S.No.7234/2015
for TRP in class 5 in the name of Mr. Pramod Hegde
trading as Mediteck India vide Opposition No.808119.
M/s. Modi Mundi Pharma in its affidavit / evidence in
reply has contended that the plaintiff has deceptively
adopted the mark of them which is simple imitation from
the series of well known trademarks of them consisting of
the trade mark TRD. Ex.D4 is the downloaded copy of
extract of trademark registry displaying 144 deceptively
similar TM, it shows that the application of the plaintiff
vide application No.1797823 dtd.20.3.2009 under class
5 showing proprietor as Pramod Hegde. It shows the
status as opposed. Ex.D5 is the downloaded copy of
extract of TM registry displaying deceptively similar
trademarks including TRIB, TR.Phyllin, TRF, TRAP and
the plaintiff's mark TRP under class 5 by Pramod Hegde
shows as opposed. Ex.D6 is the Legal use trademark
certificate of the defendant shows that the defendant is
the registered owner of the wordmark TMR under class 5
vide registration dtd. 22.11.2013 user date shown as
proposed to be used. Ex.D7 is the downloaded copy of
email of Mr.Pramod Hegde with two attachments. It
shows that the husband of plaintiff has addressed a
letter to the husband of defendant with regard to the pain
and agony with reference to his last visit to defendant's
office on 12.9.2013 and also requested Medilab to clear
26 O.S.No.7234/2015
all old payments within three days and thereby
terminated the contract with defendant. Ex.D8 is the
downloaded copy of Form TM-33 dtd.27.11.2014
submitted by plaintiff to the Deputy Registrar of
Trademarks, Chennai stating that due to over sight
instead of her name, her husband name has entered as
proprietor of M/s. Mediteck India. Ex.D9 is the
downloaded copy of TM search report, it shows that one
M/s. Med Manor Organics Pvt. Ltd. Hyderabad had
applied for the TRP mark under class 5 on 30.7.2008 and
same is withdrawn. It also shows that one TRPLUS
registered in the name of M/s. Med Manor Organics Pvt.
Ltd.,vide trademark no.1817077 dtd.12.5.2009. Further,
it shows that one TRP with Totaram Pansari is registered
under class 5 by one Mr. Amit Kumar. Ex.D10 is the cash
bill issued by Balaji Medicals and wholesale in No.2006
dated 11.7.2018 for TRP Bolus Mari Tablets. Ex.D11 is
the news paper publication dtd.21.10.2006 in Times of
India, Ex.D12 is the Internet Copy of Udayavani Kannada
daily newspaper dtd.21.1.2016, it shows that Manipal
University has issued a caution notice to the general
public stating that the logo of plaintiff shall not be
confused with the logo of Manipal Group and Mediteck
has no connection whatsoever with Manipal Group.
27 O.S.No.7234/2015
20. The plaintiff and defendant have produced the
the material objection ie., M.O.1 is the carton Box of
plaintiff along with product, M.O.2 is the Carton box of
defendant with product, M.O.3 is the Strip of TRP Tablet
of plaintiff product. M.O.4 is the TRP Gel, M.O.5 is the
TRL Liniment (Small Bottle), M.O.6 is the TMR Gel, M.O.7
is the Volini Gel, M.O.8 is the Moov Advance Gel, M.O.9
is the Omnigel, M.O.10 is the T.P.M. Gel and M.O.11 is
the TRP Bolus of M/s.Sanofi Company. These material
objects were not disputed by both parties.
21. In the above circumstances, whether the
plaintiff is able to establish that subsequent suit on the
same cause of action is maintainable and the defendant
mark is deceptively similar to that of the plaintiff, we
may refer to the relevant case laws on the subject. The
relevant case laws are extracted hereunder:
In the decision reported in (1996) 5 SCC 714 -
N.R.Dongre & Ors. Vs. Whirlpool Corp.& Ors, wherein it
is held:
Injunction is a relief in equity and is
based on equitable principles. On the above
concurrent findings, the weight of equity at
this stage is in favour of the plaintiffs and
against the defendants. It has also to be borne
in mind that a mark in the form of a word
which is not a derivative of the product, points
to the source of the product. The mark/name
28 O.S.No.7234/2015
'WHIRLPOOL' is associated for long, much
prior to the defendants' application in 1986
with the Whirlpool Corporation - plaintiff No.
1. In view of the prior user of the mark by
plaintiff No. 1 and its trans-border reputation
extending to India, the trade mark
'WHIRLPOOL' gives an indication of the origin
of the goods as emanating from or relating to
the Whirlpool Corporation - plaintiff No. 1. The
High Court has recorded its satisfaction that
use of the 'WHIRLPOOL' mark by the
defendants indicates prima facie an intention
to pass-off defendants' washing machines as
those of plaintiffs' or atleast the likelihood of
the buyers being confused or misled into that
belief. The fact that the cost of defendants'
washing machine is l/3rd of the cost of the
plaintiffs' washing machine as stated by Shri
Sibal, itself supports the plaintiffs' plea that
the defendants' washing machines are not of
the same engineering standard and are inferior
in quality to the washing machines of the
plaintiffs'. In addition, it has been rightly held
that the grant of interlocutory injunction
would cause no significant injury to the
defendants who can sell their washing
machines merely by removing the. small
metallic strip bearing the offensive trade
mark/name which includes 'WHIRLPOOL'. On
the other hand, refusal of the interlocutory
injunction would cause irreparable injury to
the plaintiffs' reputation and goodwill since the
trade mark/name 'WHIRLPOOL' is associated
for long because of prior user and even
otherwise with the plaintiff No. 1 - Whirlpool
Corporation. These factors which have been
relied on for grant of the interlocutory
injunction by the trial court indicate that the
29 O.S.No.7234/2015
exercise of discretion was in accordance with
the settled principles of law relating to the
grant of interlocutory injunctions in a passing-
off action. The affirmance of the trial court's
order by the Division Bench on an appeal
reinforces the trial court's view,
In the decision reported in MANU/SC/0160/2005 -
Dhariwal Industries Ltd. & Ors. Vs. M.S.S. Food
Products wherein it is held:.
Para 8. The principles governing the grant
of interim injunction are well settled and do
not require to be repeated. The interim
injunction has been granted in favour of the
plaintiff in this case mainly on the finding that
there was prior user of the mark "Malikchand",
if not by the plaintiff, by his assignors and the
use of the mark "Manikchand" by the
defendants in respect of Pan Masala and
Gutakha and Supari commenced only at a
later point of time. This prima facie finding of
prior user was arrived at by the trial court
relying on the deeds of assignments produced
by the plaintiff and some documents and
affidavits produced in support of its claim.
Some inconsistencies in the claim of the
defendants were also referred to. The High
Court, in appeal, appreciated that the main
contention on behalf of the defendants
regarding prior user claimed by the plaintiff
was based on a challenge to the assignments
relied on by the plaintiff and the documents
filed in support. The High Court noticed that
the plea was that the entire series of
documents were forged or manufactured for
30 O.S.No.7234/2015
the purpose of litigation and hence were not
reliable. The High Court felt that a wholesale
condemnation of the documents produced by
the plaintiff as forged or got up, could not be
made at this interlocutory stage and this
question seriously raised on behalf of the
defendants has to be decided only at the trial.
In other words, the High Court took the view
that at this stage there was no reason for it to
discard the various documents relied on by the
plaintiff to establish prior user, first by its
predecessors and then by itself, on the ground
that they were not genuine.
Para 11. Prima facie, it appears to us that
the mark "Malikchand" was being used,
though not much publicized by the original
user, leading to the alleged acquisition of the
right to use the mark by the plaintiff. The
defendants appear to have started the use of
the mark "Manikchand" in a large scale at a
subsequent point of time. As noticed by the
High Court, both sides had used their
respective marks for some time. The litigation
arose when the defendants herein approached
the High Court of Bombay seeking to prevent
the use of the mark "Malikchand" by suing
what they thought was the proprietor of the
business. It was then that the present plaintiff
came forward with the suit seeking an
injunction against the user of the mark
"Manikchand" by the defendants. To some
extent it may be possible to conceive that the
present suit by the plaintiff was a counter-
blast to the suit filed by the defendants in the
High Court of Bombay; but at the same time,
the point made by the High Court that the
plaintiff probably was apprehensive of its mark
31 O.S.No.7234/2015
being annihilated, had approached the trial
court for relief based on its prior user of the
mark. It was in this context that the High
Court took the view that the application for
interim injunction could not be rejected on the
ground of delay and latches. We also feel, that
we cannot completely brush aside the
argument of counsel for the plaintiff, that the
case of delay and latches has not been
properly projected on behalf of the defendants
in their pleadings either in the trial court or in
the appellate court, though no doubt that
aspect has been projected seriously before us
by learned counsel for the defendants and to
some extent is covered by the pleadings in the
written statement.
In the decision reported in MANU/KA/0047/1993 -
Sushil Vasudev Vs. Kwality Frozen Foods Pvt. Ltd.,
wherein it is held:
Para 14. It is well-settled that where the
plaintiff's trade mark is not registered at the
relevant point of time of user, it is the prior
use which would determine the rights claimed
by contesting parties. Thus, the plaintiff has
to show (prima facie establish for grant of
interim injunction) user of the mark prior in
point of time to the impugned user by the
defendant. The registration of the said mark
or similar mark prior in point of time to use by
the plaintiff is irrelevant, in an action for
passing off and the mere presence of the mark
in the register maintained by the Trade Mark
Registry does not prove its user by the person
in whose name the mark is registered and is
32 O.S.No.7234/2015
relevant for the purpose of deciding the
application for injunction.
Para 20. Now, I come to the question of
balance of convenience. It is true that trade
mark is a property right, an invasion of which
would be protected and the balance of
convenience would obviously be in favour of
the plaintiff who is the first user of the mark
vis-a-vis the defendant. In the passing off
case, the actual chain of action is that of
passing off of defendant's goods as the goods
of the plaintiff which injuries the right of
property in the plaintiff, that right of property
being his right to the goodwill of his business.
This right is to be protected and the balance of
convenience is in favour of the person who
has established a prima facie right to
property. It is a well laid principle of law, that
where the plaintiff has an established
business which is or may be under threat and
the defendants have only just started to trade
in competition, the balance of convenience
would favour protection of the relatively ling
established against the new unterloper.
In the decision reported in MANU/SC/0763/2001 -
Laxmikant V.Patel Vs. Chetanbhat Shah & Ors., wherein
it is held:
Para 14....The intention of the defendant
to make use of business name of the plaintiff
so as to divert his business or customers to
himself is apparent. It is not the case of the
defendant that he was not aware of the word
Muktajivan being the property of the plaintiff
or the plaintiff running his business in that
33 O.S.No.7234/2015
name though such a plea could only have
indicated the innocence of the defendant and
yet no difference would have resulted in the
matter of grant of relief to the plaintiff because
the likelihood of injury to the plaintiff was writ
large.
In the decision reported in MANU/DE/3789/2006 -
FMI Limited Vs. Ashok Jain & Ors., wherein it is held:
Para 15. Before comparing the two
trademarks for any similarities in the present
case, one has to keep in mind the background
in which the defendant adopted the trademark
in respect of its product. It is not disputed that
M/s. Sudesh Hardware Pvt. Ltd. (defendant
No. 3), of which Mr.Ashok Jain (defendant No.
1) was a henchman, was the distributor of the
plaintiff for over 25 years. As distributor, they
were selling the goods of the plaintiff with
trademark FREEMANS. Mr.Ashok Jain has
now started the firm FREEDOM MEASURES
(defendant No. 2) and under banner he has
started manufacturing the same product,
namely measuring tapes, and has adopted the
trademark FREEDOM. Case of the plaintiff is
that, as distributor of the plaintiff's product for
25 years, Mr. Ashok Jain came to be
recognized in the market as FREEDOM
FITEWALLA and with such a reputation
acquired while working as distributor for the
plaintiff, adoption of the trademark
FREEDOM, after starting its own business and
producing the same product, would obviously
not be bona fide. It is clear that the defendants
wanted to encash upon the goodwill of the
plaintiff's product in which they had
34 O.S.No.7234/2015
themselves trader for quarter of a century.
When the two words FREEDOM and
FREEMANS are compared in the aforesaid
backdrop, and the person who was up to now
selling the goods of FREEMANS and comes out
with the goods with the trademark FREEDOM,
with same customers, it is bound to cause
confusion in the minds of the customers. The
two words may not be exactly same, but
adoption of the word FREEDOM, which
resembles closely with the trademark
FREEMANS of the plaintiff, with same
clientele, may lead to confusion. It is the word
FREE appearing in the plaintiff's trademark
which has been tried to be exploited by
adopting the word FREEDOM. Had there not
been any association of the defendants with
the plaintiff and they had not represented the
plaintiff as its distributors for a long period of
25 years by selling their goods and
establishing their own reputation as
FREEDOM FITEWALLA, things could have
been different. The customers who had been
buying the goods of the plaintiff from the
defendants earlier with prominence of FREE in
their mind are likely to be confused that these
are the same goods sold by the defendants
and, therefore, are of the same quality and
reputation. The fact that when the defendants
were selling the goods of the plaintiff with the
trademark FREEMANS and came to be known
as FREEDOM FITEWALLA, it would show that
the consumers did not perceive any difference
between the words FREEMAN and FREEDOM.
It is the word FREE appearing in the plaintiff's
trademark FREEMANS which strikes in the
mind of the users of the goods of the plaintiff
for more than 50 years. Therefore, this case
35 O.S.No.7234/2015
would almost be same as the case of Atlas
Cycle Industries (supra) where the defendant,
who had adopted the trademark ROYAL STAR,
was injuncted as it was found that the
plaintiff's trademark EASTERN STAR had
acquired a reputation and came to be known
to the public as STAR cycles or TARA BRAND
CYCLES.
Para 16. In view of the above attempt on
the part of the defendants to show that the
manner and style in which the two trademarks
are written is different and, therefore, it would
not lead to confusion would be of no avail.
Thus, certain distinctions sought to be
projected by the defendants would not be able
to remove the confusion which is likely to arise
in the minds of the customers. It is stated at
the cost of repetition that the adoption of the
trademark FREEDOM by the defendants is
utterly malafide. When the Page 3799
defendants had been the distributors of the
plaintiff's products and sold those products
with the trademark FREEMANS for a long
period and wanted their own production of the
same product, why the word FREEDOM only
came in the minds of the defendants to be
adopted as trademark, which bears close
resemblance to the plaintiff's trademark
FREEMANS, is one thing which is not
explained by the defendants at all. It is a clever
device opted by the defendants to adopt the
trademark FREEDOM and, thereafter, in the
cartons, etc. put some distinguishing features
so as to press the same as defense when the
plaintiff takes legal action, as the present one,
against the defendants. The attempt is to
confuse the customers by adopting the same
36 O.S.No.7234/2015
name and features and to confuse the Court by
trying to show the alleged dissimilarities. Such
an attempt has to fail.
In the decision reported in MANU/SC/0327/1997 -
Bengal Waterproof Ltd. Vs. Bombay Waterproof
Manufacturing Company & Ors., wherein it is held:
Para 12. The aforesaid averments in the
plaint clearly show that the present suit is not
based on the some cause of action on which
the earlier suit was based. The cause of action
for filling this present second suit is the
continuous and recurring infringement of
plaintiff's trade mark by the defendants
continuously till the filing of the present
second suit. We asked the learned counsel for
the defendants as to whether pending the suit
and at present also the defendants are trading
in the offending goods, namely, bearing the
mark `DACK BACK' and he informed us that
defendants even at present are carrying on this
business. Therefore, pending the second suit
all throughout and during the pendency of
these proceedings the defendants have carried
on the business of trading in the commodity
waterproof raincoats `DACK BACK'. It is
obvious that thus the alleged infringement of
plaintiff's trade mark `DUCK BACK' and the
alleged passing off action on the part of the
defendants in selling their goods by passing off
their goods as if they were plaintiff's goods has
continued all throughout uninterrupted and in
a recurring manner. It is obvious that such
infringement of a registered trade mark carried
on from time to time would give a recurring
37 O.S.No.7234/2015
cause of action to the holder of the trade mark
to make a grievance about the same and
similarly such impugned passing off actions
also would give a recurring cause of action to
the plaintiff to make a grievance about the
same and to seek appropriate relief from the
court. It is now well settled that an action foe
passing off is a common law remedy being an
action in substance of deceit under the Law of
Torts. Wherever and whenever fresh deceitful
act is committed the person deceived would
naturally have a fresh cause of action in his
favour. Thus every time when a person passes
off his goods as those of another he commits
the act of such deceit. Similarly whenever and
wherever a person commits breach of a
registered trade mark of another he commits a
recurring act of breach of infringement of such
trade mark giving a recurring and fresh cause
of action at each time of such infringement to
the party aggrieved. It is difficult to agree how
in such a case when in historical past earlier
suit was disposed of as technically not
maintainable in absence of proper reliers, for
all times to come in future defendant of such a
suit should be armed with a licence to go on
committing fresh acts of infringement and
passing off with impunity without being
subjected to any legal action against such
future acts. We posed a question to the learned
counsel for the defendants as to whether after
the disposal of the earlier suit if the defendants
had suspended their business activities and
after a few years had resumed the same and
had started selling their goods under the trade
mark `DACK BACK' passing them off, the
plaintiff could have been prohibited and
prevented by the bar of Order 2 Rule 2 sub-
38 O.S.No.7234/2015
rule (3) from filing a fresh suit in future when
such future infringement or passing off took
place. He rightly and fairly stated that such a
suit would not be barred. But his only
grievance was that whatever was the
infringement or passing off alleged against the
defendants in 1980 had, according to the
plaintiff, continued uninterrupted and,
therefor, in substance the cause of action in
both the suits was identical. It is difficult to
agree. In cases of continuous causes of action
or recurring causes of action bar of Order 2
Rule 2 sub-rule (3) cannot be invoked. In this
connection it is profitable to have a lock at
Section 22 of the Limitation Act, 1963. It lays
down that `in the case of a continuing tort, a
fresh period of limitation begins to run at every
moment of the time during which the beach or
the tort, as the case may be, continues'. As act
of passing off is an act of deceit and tort every
time when such tortious act or deceit is
committed by the defendant the plaintiff gets a
fresh cause of action to some to the court by
appropriate proceedings. Similarly
infringement of a registered trade mark would
also be a continuing wrong so long as
infringement continues. Therefore, whether the
earlier infringement has continuer or a new
infringement has taken place cause of action
for filing a fresh suit would obviously arise in
favour of the plaintiff who is aggrieved by such
fresh infringements of trade mark or fresh
passing off actions alleged against the
defendant. Consequently, in our view even on
merits the learned Trial Judge as well as the
learned Single Judge were obviously in error in
taking the view that the second suit of the
39 O.S.No.7234/2015
plaintiff in the present case was barred by
Order 2 Rule 2 sub-rule (3), CPC.
In the decision reported in MANU/DE/0526/1992 -
Prakash Roadline Ltd. Vs. Prakash Parcel Services (P)
Ltd., wherein it is held:
Para (32) This brings me to the fourth
contention of the defendant. The defendant
has referred to certain pages from the
telephone directory to show that under the
category of transporters there are other
concerns mentioned therein who use the word
'Prakash' with their names. On this basis, it is
submitted that the plaintiff can not be allowed
to pick on the defendant alone and restrain the
defendant from doing its business. This
argument to my mind has no force. Merely
because no action is taken against certain
other parties, it does not mean that the
plaintiff is not entitled to take action against
the defendant. The other parties may not be
affecting the business of the plaintiff. They
may be small-time operators who really do not
matter to the plaintiff. Therefore, the plaintiff
may not chose to take any action against
them. On the contrary the plaintiff feels danger
from defendant in view of the fact that the
defendant's promoters are the ex
Directors/employees of the plaintiff who are
fully in the know of the business secrets of the
plaintiff. Therefore, the mere fact that the
plaintiff has not chosen to take any action
against such other parties cannot disentitle
the plaintiff from taking the present action.
40 O.S.No.7234/2015
This contention is, therefore, prima-facie
without any merit and is rejected.
In the decision reported in MANU/DE/1706/2011 -
Mahashian Di Hatti Ltd. Vs. Raj Niwas, wherein it is
held:
Para 12. It is thus settled proposition of
law that in order to constitute infringement the
impugned trademark need not necessarily be
absolutely identical to the registered
trademark of the plaintiff and it would be
sufficient if the plaintiff is able to show that
the mark being used by the defendant
resembles his mark to such an extent that it is
likely to deceive or cause confusion and that
the user of the impugned trademark is in
relation to the goods in respect of which the
plaintiff has obtained registration in his favour.
It will be sufficient if the plaintiff is able to
show that the trademark adopted by the
defendant resembles its trademark in a
substantial degree, on account of extensive use
of the main features found in his trademark. In
fact, any intelligent person, seeking to encash
upon the goodwill and reputation of a well-
established trademark, would make some
minor changes here and there so as to claim in
the event of a suit or other proceeding, being
initiated against him that the trademark being
used by him, does not constitute infringement
of the trademark, ownership of which vests in
some other person. But, such rather minor
variations or distinguishing features would not
deprive the plaintiff of injunction in case
41 O.S.No.7234/2015
resemblance in the two trademarks is found to
be substantial, to the extent that the impugned
trademark is found to be similar to the
registered trademark of the plaintiff. No person
can be allowed to sell goods either using the
mark of another person or its imitation, so as
to cause injury to that person and thereby
enrich himself at the cost of a person who has
spent considerable time, effort and money in
building the brand reputation, which no
amount of promotion or advertising can create
unless the quality of the goods being sold
under that brand is also found to be good and
acceptable to the consumer. In a case based on
infringement of a registered trademark, the
plaintiff need not prove anything more than
the use of its registered trademark by the
defendant. In such a case, even if the
defendant is able to show that on account of
use of other words by him in conjunction with
the registered word/mark of the plaintiff, there
would be no confusion in the mind of the
customer when he come across the product of
the defendant and/or that on account of the
packaging, get up and the manner of writing
trademark on the packaging, it is possible for
the consumer to distinguish his product from
that of the plaintiff, he would still be liable for
infringement of the registered trademark.
Para 13. The logo "MDH" in three
hexagons written in white colour on red colour
background is an integral part of the registered
mark/cartons of the plaintiff company in
respect of various spices and condiments. The
plaintiff is an established and well-reputed
manufacturer and marketer of spices being
sold using the aforesaid logo. It is settled
42 O.S.No.7234/2015
proposition of law that in order to ascertain
whether the impugned trademark constitutes
infringement mark of the plaintiff or not, the
two marks are not to be placed side by side.
The person coming across the product of the
defendant, bearing the impugned trademark
may not necessarily be having the product of
the plaintiff bearing his registered trademark
with him when he comes across the product of
the defendant with the mark „MHS‟ logo. This
is more so in the case of an average Indian
citizen who may not necessarily be well-
educated. This proposition of law would apply
with a greater force in case of products like
spices which normally are purchased by
housewives and domestic helps, who may not
care to notice the features which distinguish
the trademark of the defendant from that of
the plaintiff. Therefore, if on coming across the
product of the defendant bearing the impugned
trademark, he forms an impression that this
could be the product of the plaintiff, it may
induce, on account of overall similarity of the
two trademarks, him to believe that the
product which he has come across was, in
fact, the product of the plaintiff or had some
kind of an association or connection with the
plaintiff.
Para 15. Admittedly, both the parties are
engaged in the similar business as both of
them are manufacturing and selling spices.
Therefore, the defendant, in my view, has
infringed the registered trademark of the
plaintiff by using the aforesaid logo "MHS". The
adoption and use of the letters "MHS" in the
manners stated above appears to be deceptive
intended to confuse the consumer and encash
43 O.S.No.7234/2015
upon the goodwill which plaintiff ‟s trademark
"MDH" enjoys in the market.
Para 17. It is also in the interest of the
consumer that a well-established brand such
as "MDH" or its colourable imitation, as is
made out from the manner in which the logo
"MHS" has been used by the defendant, should
not be allowed to be used by another person in
such a deceptive manner. The consumer, on
account of the confusion created in his mind,
from use of the logo "MHS" in the manner it
has been used by the defendant may end up
purchasing the product of the defendant
believing the same to be that of the plaintiff. If
the quality of the product of the defendant is
found to be inferior to that of the products of
the plaintiff that would result not only in
diminishing the brand value which plaintiff ‟s
trademark "MDH" enjoys in the market, but
would also be detrimental to the interest of the
consumer. Considering the manner in which
the trademark "MHS" has been used by the
defendant, the defendant will be able to pass
off his case as those of the plaintiff. Therefore,
the act of the defendant constitutes not only
infringement, but also the passing off.
Para 18. Though the defendant has
claimed that there was no protest from the
plaintiff when he applied for registration of the
trademark "MHS", this is found to be incorrect
since the plaintiff did file Notice of Opposition,
a copy of which has been filed by it. Hence, it
cannot be said that the plaintiff has
acquiesced in the use of the trademark "MHS"
by the defendant or has otherwise condoned
the use in any manner. As regards use of a
pretty girl by the defendant for advertising its
44 O.S.No.7234/2015
products as against Mr Mahashyaji himself
appearing in the advertisement of the plaintiff,
I am of the view that it would be of no
consequence considering the similarities in the
two trademarks used on their respective
cartons.
During the course of arguments, the learned
counsel for the plaintiff pressed not only for
injunction, but also for grant of punitive
damages though no other relief was pressed by
her.
Para 22. For the reasons given in the
preceding paragraphs, the defendant is hereby
restrained from manufacturing, selling or
marketing any spices or condiments using the
impugned logo "MHS" or any other trademark
which is identical or deceptively similar to the
registered logo trademark "MDH" of the
plaintiff. The plaintiff is also awarded punitive
damages amounting to Rs 1 lakh against the
defendant.
In the decision reported in MANU/DE/0767/1998 -
MRF Ltd. Vs. NR.Faridabad Rubbers & Ors., wherein it
is held:
Para 9....In a passing off action, which is
meant not only to protect commercial goodwill
but is also to ensure that the purchasers are
not exploited and dishonest trading is
prevented, the plaintiff has to establish: (i) the
user of the trade mark prior in point of time
than the impugned user by the defendant and
(ii) that his business or goods have acquired
reputation he is claiming - by showing that his
trade mark has become distinctive in his goods
45 O.S.No.7234/2015
and the purchasing public at large associates
the plaintiff's name with them.
In the decision reported in AIR 1970 SCC 2062
F.Hoffmann - La Roche & Co. Ltd. vs. Geoffrey Manners
& Co.Pvt.Ltd., it was held as under:
The first question to be considered in this
appeal is whether the word "DROPOVIT" is
deceptively similar to the word "PROTOVIT"
and offends the provision of sec.12(1) of the
Act. In other words the question is whether the
respondent's mark so nearly resembles the
registered mark as to be "likely to deceive or
cause confusion." It is not necessary that it
should be intended to deceive or intended to
cause' confusion. It is its probable effect on the
ordinary kind of customers that one has to
consider.
In Parker-Knoll Ltd, v. Knoll International Ltd,
reported in 1962 RPC 265 - (1) Lord Denning explained
the words "to deceive,' and the phrase "to cause
confusion" as follows 1:
. "Secondly, 'to deceive' is one thing. To 'Cause
confusion' is another. The difference is this:
When you deceive a man, you tell him a lie. You
make a false representation to him and thereby
cause him to believe a thing to be true. which is
false. You may not do it knowingly, or
intentionally, but still you do it, and so you
deceive him. But you may cause confusion
without telling him 'a lie at all, and without
making any false representation to him. You may
indeed tell him the truth, the whole truth and
46 O.S.No.7234/2015
nothing but the truth, but still you may cause
confusion in his mind, not by any ,fault of yours,
but because he has not the knowledge or ability
to. distinguish it from the other pieces of truth
known to him. or because he may not even take
the trouble to do so."
In Pionotist Co., Ltd's case reported in 23 RPC 774
The tests for comparison of the two word marks were
formulated by Lord Parker as follows
"You must take the two words. You must judge of
them, both by their look and by their sound. You
must consider the goods to which they are to be
applied. You must consider the nature and kind
of customer who would be likely to buy those
goods. In fact, you must' consider all the
surrounding circumstances; and' you must
further consider what is likely to happen if each
of those trade marks is used in a normal way as
a trade mark for the goods of the respective
owners of the marks. If, considering all those
circumstances, you come to the conclusion that
there will be a confusion--that is to say, not
necessarily that one man will be injured and the
other will gain illicit benefit, but that there will be
'a confusion in the mind of the public which will
lead 'to confusion in the goods--then you may
refuse the registration, or rather you must refuse
the registration 'in that case."
22. On perusal of the above said case laws, it
emerges that prior user of the trademark can injunct the
subsequent user even if the subsequent user trademark
is registered under the Trademarks Act. Prior knowledge
47 O.S.No.7234/2015
and association with the plaintiff about the product may
bound to cause deception among the customers of the
plaintiff if the defendant adopted the deceptively similar
trademark. When there is a recurring and continuous
infringement of a trademark, the subsequent suit is not
barred. Merely because no action is taken against
certain other parties, it does not mean that plaintiff is
not entitled to take action against the defendant. It is
also settled principle of law that former servant who has
left his employer cannot set up similar business and
advertise his previous connection in the business for any
contract to the contrary, he is not supposed to make any
representation amounting to suggestion that he is still
with the former firm or he is their successor. In order to
decide as to deceptive similarity the marks must be
compared as a whole. It is not right to take a portion of
the word and say that because that portion of the word
differs from corresponding portion of the word.
23. Keeping these principles in mind, examining
the present case on the touch stone of evidence led by
the parties, in the present case, it is not in dispute that
plaintiff commenced its business in the year 2004 and
defendant commenced his business in the year 1996. It
is also not in dispute that the defendant was a
48 O.S.No.7234/2015
distributor of plaintiff from 2007 to 2013. However, her
distributorship was cancelled by the plaintiff. The
plaintiff had also filed a money recovery suit before
Mangalore Court against the defendant. Thereafter, the
plaintiff had filed the suit for passing of the trademark
against the defendant through her husband and the
same was withdrawn and present suit was filed in her
name.
24. It is the contention of the defendant that as the
plaintiff had filed a memo to withdraw the suit with a
liberty to file fresh suit, the court has not granted liberty
to file the fresh suit. The present suit is based on the
same cause of action as pleaded in the said suit.
Therefore, the present suit is not maintainable. Further,
the plaintiff has also in his evidence has admitted that
her husband had filed a memo for withdrawal of the suit
with a liberty to file the fresh suit and the suit was
dismissed as withdrawn. It is settled principle of law that
when the plaintiff files an application for withdrawal of
suit with liberty to file fresh suit, the court either needs
to allow the application or dismiss the same. It cannot
split the same and pass orders. It is also settled
principles of law that in a suit for permanent injunction,
if the plaintiff pleads the fresh cause of action, the same
will lead to filing a fresh suit and the same is not hit by
49 O.S.No.7234/2015
principles of resjudicata. As the suit for injunction is a
recurring cause of action, the plaintiff can maintain a
fresh suit. In the present suit, it is specifically pleaded
in the plaint that the defendant is continuously passing
off the trademark of the plaintiff. There is also no
dispute by the defendant that they are still marketing
and selling their products under the trademark TMR.
Further, Hon'ble Supreme Court in the decision reported
in Bengal Water Proof Ltd case as supra, has held that
when the cause of action for filing the 2 nd suit is
continuous and recurring infringement of plaintiff's
trademark, the subsequent suit is maintainable.
Therefore, this court is of the view that the present suit
is maintainable as the plaintiff has specifically pleaded
the continuing cause of action. Hence contention of the
defendant that the plaintiff had taken the similar
contention in the previous suit is not tenable.
25. It is the contention of the defendant that the
plaintiff is involved in several malpractices. Plaintiff is
blatantly copied the trademark of other pharmaceutical
companies and marketing the product. The plaintiff is
also selling the TRP products for higher price, although
pricing authority of India has fixed a price to the
products. On these grounds, the defendant has sought
50 O.S.No.7234/2015
for dismissal of the suit and to allow their counter claim.
Whether the plaintiff has blatantly copied the trademark
of other pharmaceutical companies, whether the
plaintiff is selling the products for higher prices above
the rate fixed by the pricing authority of India, it is for
the particular pharmaceutical companies and concerned
authority to take necessary action against the plaintiff.
The defendant has not shown how she is aggrieved by
the actions of the plaintiff, when there is no right to sue
accrues in favour of the defendant, the defendant has no
locus standi to question the illegalities of the plaintiff. If
the defendant had any grievance against the plaintiff in
respect of violation of the provisions of Drug and
Cosmetics Act, can approach the proper forum for the
redressal as stipulated under the said Act The defendant
cannot seek injunction against the plaintiff in respect of
the trademark TRP. Therefore, the defendant has not
made out any ground for grant of permanent injunction
against the plaintiff as the defendant has not shown how
the use of the trademark of the plaintiff has affected the
business of the defendant.
26. It is the contention of the plaintiff that they are
the prior user of the products and they are entitled for
the relief of permanent injunction against the defendant.
51 O.S.No.7234/2015
It is a settled principle of law that merely because the
plaintiff has started the business prior to the business of
the defendant does not entitle plaintiff to injunct the
defendant unless both the trademarks are deceptively
similar. The question of prior user depends on the
deceptive similarity of the both products. If the name of
the products are one and the same or deceptively
similar, it is the prior user who is entitled for injunction
against the subsequent user. In the present case, there
is no dispute that the plaintiff commenced its business
in the year 2004 and defendant commenced its business
in 1996. Further there is no dispute that plaintiff started
to market its TRP gel in the year 2007, and the
defendant started to market its TMR gel in the year
2013. On meticulous perusal of both the products, the
trademark letters 'TRP' and 'TMR' are in different fonts
and colour. Even background of the plaintiff and
defendant products are also different. If the plaintiff has
adopted the blue background, the defendant has
adopted the white background with lines. Further, the
logo denoting 'M' is prominent in the plaintiff's product
and there is no such logo found in the product of the
defendant. Even Manipal Group has issued a public
cause notice that public are not bound to get confused
with the logo of the plaintiff as the Manipal Group has
52 O.S.No.7234/2015
no connection what so ever with the business of the
plaintiff. The public notice of Manipal Group is not
challenged by the plaintiff. The same amounts to
admission on the part of the plaintiff that the logo of the
plaintiff is similar to that of logo of Manipal Group.
Further on perusal of both the trademarks of the
plaintiff and defendant, even a common man with
imperfect collection can also differentiate between both
the products as it does not cause any confusion. If at all
the plaintiff's trademark was TMR and the defendant
adopted the same trademark, there would have been
good ground to injunct the defendant from using the
trademark of the plaintiff as the plaintiff is the prior
user. In the present case, the plaintiff's trademark TRP
and defendant's trademark TMR are completely different.
It is phonetically, visually and structurally different.
There is no deceptive similarity between both products.
Just because the defendant's husband has admitted in
OS.No.78/2015 that both the marks are identical, it
does not dispense with the proof as to the deceptive
similarity unless the materials produced before the court
are so evident that these are deceptively similar. Further,
the plaintiff has not shown, because of the adoption of
the trademark by the defendant, the same has led to
decrease in the sales turn over of the plaintiff. Further,
53 O.S.No.7234/2015
the plaintiff has not made out a clear right to sue. If
some records reveals that the hsuband of the plaintiff is
the proprietor of M/s.Mediteck India, other records
reveals that the the plaintiff is the proprietrix of
M/s.Mediteck India. If at all the Mediteck India was a
partnership firm, the plaintiff would have filed the suit in
the name of the firm. Further, the GPA produced by the
plaintiff shows that plaintiff has already assigned the
TRP trademark to her husband. The plaintiff has not
provided any clarification in this regard. It appears that
the plaintiff's husband Pramod Hegde is aggrieved by the
actions of the defendant, that when he visited the
defendant's office on 12.9.2013, the defendant was
unavailable, he was made to wait for long hours and he
found that the samples were found expired at defendant
office which could have been used as sample to increase
the sales and the defendant was not properly marketing
the products of the plaintiff. Hence, he has cancelled the
distributorship to the defendant and asked them to clear
all dues. This has lead to the several litigations between
the parties. Further, the plaintiff has not produced any
records or lead an oral evidence by the persons, who
have got confused with both the marks. Admittedly,
plaintiff's and defendant's products are pain killers, used
for external use. It is one of the product among several
54 O.S.No.7234/2015
pain killer products available in the market. People are
able to differentiate between both the products. If the
defendant is selling the product under the lower price
the same would be beneficial to the customers.
27. Evidence has to be weighed and not counted.
When both the parties have led the evidence the
question of onus fades into oblivion and the entire
evidence has been appreciated as a whole. While
appreciating the evidence, it is the duty of the Court to
sift the grain from the chaff. The court has to appreciate
the evidence in its total gist and not to pick one some
scattered sentences, else one may miss the wood for the
trees. The final picture has to emerge on the basis of the
entire chain of evidence upon considering the pleadings
of the parties and the evidence of PW1 and DW1 on this
touchstone the scheme of facts which emerges that the
plaintiff has failed to prove that defendant's mark is
deceptively similar to that the plaintiff's trademark.
Further defendant has not made out any ground for
grant of relief against the plaintiff. Hence, I hold issue
No.1 in partly affirmative and issue Nos. 2 to 4 are in the
negative.
28. Issue No.5 to 7 : Inview of findings on issue
No.1 to 4 the plaintiff is not entitled for the relief as
55 O.S.No.7234/2015
sought for. Further, the defendant are also not entitled to
the relief of permanent injunction and mandatory
injunction sought against the plaintiff. Hence, I answer
the above issues in the negative.
29. Issue No.8: Hence, I proceed to pass the
following:
ORD ER
The suit of the plaintiff is hereby
dismissed.
The counter claim sought by the
defendant is hereby dismissed.
No order as to costs.
Draw decree accordingly.
[Dictated to the Judgment Writer directly on computer,
computerised, and print out taken by him, corrected and then
pronounced by me in open court, this the 4th August 2021].
(SADANANDA NAGAPPA NAIK)
XVIII ADDL. CITY CIVIL AND
SESSIONS JUDGE, BANGALORE
AN N E XU RE
List of witnesses examined on behalf of Plaintiff:
PW1 : Pramod Hegde
List of documents marked on behalf of Plaintiff:
Ex.P1: GPA
Ex.P2 to 42 : Tax invoices for the period 2007-08
to 2013-14
56 O.S.No.7234/2015
Ex.P43: Attested copy of the balance sheet of
plaintiff for the year 2004 to 2013
Ex.P44: List of brand name reminders of plaintiff
Ex.P45: List of brand name reminders of defendant
Ex.P46 & 47: Original license dtd.24.6.2006 & 31.3.2010
Ex.P48 & 54: 7 Invoices
Ex.P55 : Computer downloaded copy of plaintiff's updated
website
Ex.P56 : Representation
Ex.P57 : Computer downloaded copy of additional
representation under TMR
Ex.P58 : Drug License Issued by Drug Control Dept.
Ex.P59,59(a) : CC of deposition of Mr.Jyothi Prasad Hegde
in OS.No.78/2015 and relevant portion
List of witnesses examined on behalf of Defendant:
DW1 : Nandalaxmi Hegde
List of documents marked on behalf of Defendant:
Ex.D1 : General Circular dtd.24.2.2016 issued by Govt.
Ex.D2 : Downloaded copy of representation given by
M/s. Modi Mundi Pharma
Ex.D3 : Downloaded copy of statement given by
Mr.Meditek India with covering letter
Ex.D4 : Downloaded copy of extract of trademark
registry displaying 144 deceptively similar TM
Ex.D5 : Downloaded copy of extract of TM registry
displaying deceptively similar TM
Ex.D6 : Legal use trademark certificate
Ex.D7 : Downloaded copy of email of Mr.Pramod Hegde
with two attachments
Ex.D8 : Downloaded copy of Form TM-33 submitted
by plaintiff
Ex.D9 : Downloaded copy of TM search reported
Ex.D10:Cash bill issued by Balaji Medicals and wholesale
in No.2006
57 O.S.No.7234/2015
Ex.D11: News paper publication dtd.21.10.2006 in
Times of India
Ex.D12: Internet Copy of Udayavni Kannada daily
newspaper dtd.21.1.2016
List of Material Objects marked in the above case:
M.O.1 : Carton Box of plaintiff alongwith product
M.O.2 : Carton box of defendants with product
M.O.3 : Strip of TRP Tablet
M.O.4 : TRP Gel
M.O.5 : TRL Liniment (Small Bottle)
M.O.6 : TMR Gel
M.O.7 : Volini Gel
M.O.8 : Moov Advance Gel
M.O.9 : Omnigel
M.O.10: T.P.M. Gel
M.O.11: TRP Bous of M/s.Sanofi Company.
XVIII Addl. City Civil Judge
Bangalore City.
58 O.S.No.7234/2015
Judgment pronounced in the open court
as per separate judgment. Operative
portion of judgment is as follows:
ORDER
The suit of plaintiff is hereby dismissed.
The counter claim sought by the defendant is hereby dismissed.
No order as to costs. Draw decree accordingly.
XVIII Addl.C.C. & S.J., Bangalore