Gujarat High Court
Reliance Healthcare Pvt Ltd vs Reliance Medipharma on 12 June, 2018
Bench: M.R. Shah, A.Y. Kogje
C/AO/65/2018 CAV JUDGMENT
IN THE HIGH COURT OF GUJARAT AT AHMEDABAD
R/APPEAL FROM ORDER NO. 65 of 2018
With
CIVIL APPLICATION NO. 1 of 2018
With
R/APPEAL FROM ORDER NO. 66 of 2018
FOR APPROVAL AND SIGNATURE:
HONOURABLE MR.JUSTICE M.R. SHAH Sd/
and
HONOURABLE MR.JUSTICE A.Y. KOGJE Sd/
=========================================
1 Whether Reporters of Local Papers may be allowed to see No the judgment ?
2 To be referred to the Reporter or not ? No
3 Whether their Lordships wish to see the fair copy of the No
judgment ?
4 Whether this case involves a substantial question of law as No
to the interpretation of the Constitution of India or any order made thereunder ?
============================================= RELIANCE HEALTHCARE PVT LTD Versus RELIANCE MEDIPHARMA ============================================= Appearance:
MR. KAMAL TRIVEDI, SENIOR ADVOCATE WITH MR.PARTH CONTRACTOR(7150) for the PETITIONER(s) No. 1 MR. B.D. KARIA, ADVOCATE WITH MR MRUGESH JANI(1984) for the RESPONDENT(s) No. 1,2,3 ============================================= CORAM: HONOURABLE MR.JUSTICE M.R. SHAH and HONOURABLE MR.JUSTICE A.Y. KOGJE Date : 12/06/2018 CAV JUDGMENT (PER : HONOURABLE MR.JUSTICE M.R. SHAH) 1.0. As common question of law and facts arise in both these Appeal From Orders, they are decided and disposed of by this common judgment and order.Page 1 of 31 C/AO/65/2018 CAV JUDGMENT
2.0. Feeling aggrieved and dissatisfied with the impugned order passed by the learned Judge, Commercial Court, Vadodara dated 13.03.2017 passed below Exh.5 in Commercial Trade Mark Suit No. 2 of 2017, by which, the learned Judge has rejected the said application below Exh.5 and has refused to grant the injunction as prayed, the original plaintiff Reliance Healthcare Private Limited has preferred present Appeal From Order No. 65 of 2018.
2.1. Feeling aggrieved and dissatisfied with the impugned order passed by the learned Judge, Commercial Court, Vadodara dated 13.03.2017 passed below Exh.5 in Commercial Trade Mark Suit No. 3 of 2017, by which, the learned Judge has rejected the said application below Exh.5 and has refused to grant the injunction as prayed in the suit against the original defendants, the original plaintiff Reliance Formulation Private Limited has preferred present Appeal From Order No. 66 of 2018.
3.0. At the outset, it is required to be noted that as such the defendants are common in both the aforesaid Trade Mark Suits and the original plaintiffs seem to be sister concern. For the sake of convenience, Appeal From Order No. 65 of 2018 is considered and treated as a lead matter and facts in Appeal From Order No. 65 of 2018 arising out of Commercial Trade Mark Suit No. 2 of 2017 are narrated, which are as under:
4.0. That the appellant original plaintiff (hereinafter referred to as the "Plaintiff") had instituted the Commercial Trade Mark Suit No. 2 of 2017 against the respondents herein original defendants Page 2 of 31 C/AO/65/2018 CAV JUDGMENT (hereinafter referred to as the "defendants") for seeking injunction against the infringement, passingoff and damages from the defendants. It was the case on behalf of the plaintiff and so averred in the plaint / suit that the plaintiff is a manufacturer and merchant in pharmaceutical products and all their goods / products are being sold under the trade name / trading style/ trademark "RELIANCE" along with the "RXRELIANCE" logo. It is the case on behalf of the plaintiff that the word "RELIANCE" was originally coined, invented, adopted and used by the plaintiff's predecessor in title viz. Reliance Pharmaceuticals, partnership firm of Mr. Keshavlal Hiralal Patel, Mr. Virendra Babulal Sanghvi and Mr. Balmukund Shah. That the said trade name/ trade mark RELIANCE along with the "RELIANCE Rx" logo was registered in the name of M/s. Reliance Pharmaceuticals bearing Trade Mark No.399188 and the said trade name / trade mark "RELIANCE" along with "RELIANCE Rx" was subsequently transferred to the plaintiff pursuant to an Indenture of Assignment dated 1.10.1986 executed between Reliance Pharmaceuticals and the plaintiff and now stands registered in the name of the plaintiff and continues to remain valid and subsisting as on date. It is the case on behalf of the plaintiff that the plaintiff manufacturers and sells various pharmaceutical products, like Protoril, Relihist, Relitone, Relizyme and Tules, across India under brand names viz. Reliance with the "Rx RELIANCE" logo, of which the plaintiff is the registered proprietor. It was further the case of the plaintiff that plaintiff is using the said trade name / trade mark 'RELIANCE" along with the "RELIANCE Rx" logo for manufacturing and marketing of its pharmaceutical and medicinal preparations in India since year 1986 and the pharmaceutical goods which are Page 3 of 31 C/AO/65/2018 CAV JUDGMENT manufactured and marketed under the name "RELIANCE' are known as the products from the plaintiff especially in trade circles and consuming public. It was also the case on behalf of the plaintiff that the word "RELIANCE" has great significance and importance for them because the word "RELIANCE" has acquired high popularity and goodwill in the trade and in the consuming public since the last three decades. It was also further averred that the plaintiff is known through the word "RELIANCE" and the work 'RELIANCE" is denoted and connoted to the plaintiff and their business and the plaintiff has statutory right to the exclusive use of aforesaid registered trademarks in connection with pharmaceutical and medicinal preparations in view of the fact that the plaintiff is the registered proprietor as well as prior user under the Trade Marks Act, 1999 (hereinafter referred to as the "Act, 1999") and the adoption of the trade name / trade mark 'RELIANCE" along with the "RELIANCE Rx" logo by the plaintiff is honest, bonafide and as such due to long, prior and continuous user and bonafide adoption, proprietary rights have accrued in favour of the plaintiff.
4.1. It was further averred in the plaint that original defendant no.2 through its proprietorship concern M/s. Sanjivani Medico has been an exclusive distributor and agent of the plaintiff for the region of Maharashtra since 1988 however, the said distributorship arrangement has been terminated by the plaintiff from 1.10.2014. It was further averred that the original defendant no.3 was appointed as a Director in the plaintiff company w.e.f. 17.08.1998 and continues as a Director even today. It was further stated that original defendant no.2 along with defendant no.3 are also equity Page 4 of 31 C/AO/65/2018 CAV JUDGMENT shareholders in the plaintiff. It was the case on behalf of the plaintiff that the plaintiff has very recently come to know of the setting up of the defendant no.1 as a sole proprietorship concern and they are engaging in marketing and manufacturing of pharmaceutical and medicinal goods under the name and style of 'RELIANCE" along with "RELIANCE Rx" logo and are selling and marketing goods and products with brand names which are structurally, phonetically and visually identical with or deceptively similar to the registered trade marks of the plaintiff. It was also further the case of the plaintiff that the plaintiff perceived in the trade circles and by the consuming public, as being associated with or agents of the plaintiff and the defendant no.1 is using the said fact to piggyback upon the goodwill and reputation of the plaintiff to passoff its products as that of the plaintiffs and infringe the trade marks of the plaintiff and passing of the products of the defendant no.1 as those of the plaintiff. It was further the case of the plaintiff that the defendants are continuing with their illegal use of the trade name 'RELIANCE" as well as the "Rx Reliance" logo and tried to confuse and deceive the trade partners and consuming by adopting a similar and identical trade mark as that of the plaintiff. It was also the case of the plaintiff that defendants in addition to infringing the plaintiff's trade mark are also guilty of passing their products as being that of the plaintiff. With the aforesaid averments, the plaintiff has instituted aforesaid Suit before the learned Commercial Court, Vadodara and has prayed for following reliefs:
Page 5 of 31 C/AO/65/2018 CAV JUDGMENT"a. that the defendants by itself and/or through its servants, agents, dealers, manufactures, directors, partners, owners, proprietors, licensees and/or otherwise howsoever be restrained by a perpetual order and injunction of this Hon'ble Court from in any manner using, in relating to pharmaceutical or medicinal products, the word/mark/label RELIANCE and/or the 'RELIANCE Rx' logo, and/or any other word / mark / label which is identical with and/or deceptively similar in any manner to the plaintiff's registered trademark / trade name/ house mark/ trading style RELIANCE and the RELIANCE Rx' logo or 'RELIANCE Rx' label, so as to infringe the plaintiff's trademark bearing number 399188;
b. that the defendants by itself and/or through its servants, agents, dealers, manufactures, directors, partners, owners, proprietors, licensees, and/or otherwise howsoever be restrained by perpetual order and injunction of this Hon'ble Court from in any manner using, in relation to pharmaceutical or medicinal products, the word / mark / label RELIANCE and/or the 'RELIANCE Rx/ logo, and/or any other word/ mark/ label, which is identical with and/or deceptively similar in any manner to the plaintiff's trademark/ trade name/ house mark/ trading style RELIANCE and the 'RELIANCE Rx' logo or RELIANCE Rx' label, so as to passff or enable others to passoff the defendants' impugned pharmaceutical and medicinal products as and for that of the plaintiff;
c. that the defendants by itself and/or through its servants, agents, dealers, manufactures, directors, partners, owners, proprietors, licensee and/or otherwise howsoever be restrained by a perpetual order and injunction of this Hon'ble Court from in any manner using, in relation to pharmaceutical or medicinal products, word / marks / labels / trade name / RELAINCE or any other words / marks / labels/ trade name which is identical with and/or structurally, phonetically, visually, and/or deceptively similar to the words / marks/ labels /trade name RELIANCE so as to passoff or enable others to passoff the defendants' impugned pharmaceutical and medicinal products as and for that of the plaintiff; d. that the defendants by itself and/or through its servants, agents, dealers, manufactures, directors, Page 6 of 31 C/AO/65/2018 CAV JUDGMENT partners, owners, proprietors, licensees and/or otherwise howsoever be restrained by a perpetual order and injunction of this Hon'ble Court from in any manner using, in relation to pharmaceutical or medicinal products, word / marks / labels / trade names Bromax Plus, or any other words / marks / labels/ trade name which is identical with and/or structurally, phonetically, visually, and/or deceptively similar to the registered trademark Bromex Plus (application No. 1783924), so as to passoff or enable others to passoff the defendants' impugned pharmaceutical and medicinal products as and for that of the plaintiff;
e. that the defendants by itself and/or through its servants, agents, dealers, manufactures, directors, partners, owners, proprietors, licensees and/or otherwise howsoever be restrained by a perpetual order and injunction of this Hon'ble Court from in any manner using, in relation to pharmaceutical or medicinal products, word / marks / labels / trade names Relizinc or any other words / marks / labels/ trade name which is identical with and/or structurally, phonetically, visually, and/or deceptively similar to the registered trademark Reliziyme (registration no. No. 1609478), so as to infringe or enable others to infringe the said trademark.
f. that the defendants by itself and/or through its servants, agents, dealers, manufactures, directors, partners, owners, proprietors, licensees and/or otherwise howsoever be restrained by a perpetual order and injunction of this Hon'ble Court from in any manner using, in relation to pharmaceutical or medicinal products, words/ marks/ labels/ trade names Relizinc or any other words / marks / labels / trade name which is identical with and/or structurally, phonetically, visually, and/or deceptively similar to the registered trademark Reliziyme (registration no. No. 1609478), so as to passoff or enable others to passoff the defendants' impugned pharmaceutical and medicinal products as and for that of the plaintiff;
g. that the defendants by itself and/or through its servants, agents, dealers, manufactures, directors, partners, owners, proprietors, licensees and/or Page 7 of 31 C/AO/65/2018 CAV JUDGMENT otherwise howsoever be restrained by a perpetual order and injunction of this Hon'ble Court from in any manner using, in relation to pharmaceutical or medicinal products, words/ marks/ labels/ trade names Proril or any other words / marks / labels / trade name which is identical with and/or structurally, phonetically, visually, and/or deceptively similar to the registered trademark Protoril (registration no. No. 1783927), so as to infringe or enable others to infringe the said trademark;
h. that the defendants by itself and/or through its servants, agents, dealers, manufactures, directors, partners, owners, proprietors, licensees and/or otherwise howsoever be restrained by a perpetual order and injunction of this Hon'ble Court from in any manner using, in relation to pharmaceutical or medicinal products, words/ marks/ labels/ trade names Proril or any other words / marks / labels / trade name which is identical with and/or structurally, phonetically, visually, and/or deceptively similar to the registered trademark Protoril (registration no. No. 1783927), so as to passoff or enable others to passoff the defendants' impugned pharmaceutical and medicinal products as and for that of the plaintiff;
i. that the defendants by itself and/or through its servants, agents, dealers, manufactures, directors, partners, owners, proprietors, licensees and/or otherwise howsoever be restrained by a perpetual order and injunction of this Hon'ble Court from in any manner using the word RELIANCE in its corporate name, so as to infringe the plaintiff's registered trademark/ trade name/ house work/ trading style RELIANCE;
j. that the defendants by itself and/or through its servants, agents, dealers, manufactures, directors, partners, owners, proprietors, licensees and/or otherwise howsoever be restrained by a perpetual order and injunction of this Hon'ble Court from in any manner using, the domain name www.reliancemedipharma.com;
k. that the defendants be ordered and decreed to pay to the plaintiff a sum of Rs. 5,00,00,000/ as and by way Page 8 of 31 C/AO/65/2018 CAV JUDGMENT of damages for infringement of trademarks, violation of rights and passing off thereto or in the alternative the defendants be ordered to render an account of the profits made by them by the use of infringing plaintiff's trade name/ house mark/ trademark and an order against the defendants for payment of such amount found due upon such account being taken;
l. that the defendant be ordered and decreed to delivery up to the plaintiff for destruction all the impugned goods/articles/things used by the defendants containing the following words/marks/trade names / labels, which infringe the registered trademarks of the plaintiff and which are structurally phonetically and deceptively similar to the registered trademarks of the plaintiff;
1. Bromax Plus
2. Relizinc
3. Proril "
4.2. That in the aforesaid suit, the plaintiff submitted an interim injunction application below Exh.5 to the effect that (1) the defendants by itself or through its servants, agents, dealers, manufacturers, directors, partners, owners, proprietors, licensees or otherwise howsoever be restrain by a temporary order and injunction from in any manner using in relation to pharmaceutical or medicinal products, the word, mark, label which is identical with and / or deceptively similar in any manner to the plaintiffs registered trade mark, trading style 'RELIANCE" and the "RELIANCE Rx" logo or "RELIANCE Rx" label (2) the defendants by itself or through its servants, agents, dealers, manufacturers, directors, partners, owners, proprietors, licensees or otherwise howsoever be restrain by a temporary order and injunction from in any manner using in relation to pharmaceutical or medicinal products which is identical and / or structurally, phonetically, visually and / or deceptively similar to the registered trade mark "Bromex Plus", Page 9 of 31 C/AO/65/2018 CAV JUDGMENT "Relizyme", "Protoril" etc. so as to passoff or enable others to pass off the defendants" impugned pharmaceutical and medicinal products as and for that of the plaintiff and (3) the defendants by itself or through its servants, agents, dealers, manufactures, directors, partners, owners, proprietors, licensees or otherwise howsoever be restrain by a temporary order and injunction from in any manner using the word "RELIANCE" in its Corporate name so as to infringe the plaintiff's registered trade mark and trading style 'RELIANCE' and domain name www.reliancemedipharma.com.
4.3. Having been served with the summons issued to the suit, the defendants appeared through their counsel and submitted their reply to the application Exh.5 vide Exh.17 opposing the interim injunction application. It was the case on behalf of the defendants that it is not in dispute that the word "RELIANCE" is registered trade mark having registration no. 355134B in the name of three persons i.e. Mr. Keshavlal Hiralal Patel, Mr. Virendra Babulal Sanghvi and Mr. Balmukund Kantilal Shah who were partners of the Reliance Pharmaceuticals at the relevant time and logo 'RELIANCE Rx" was unregistered trade mark in the year 1986 and the same was registered in the name of the above three persons who were partners of the Reliance Pharmaceuticals by the Trade Mark Registry in February, 1991 being registration no. 399188B but certificate of registration in respect of the word "RELIANCE" having registered trade mark No.355134B is not produced on record by the plaintiff. It was contended that the plaintiff has not produced any certificate of registration in the name of the plaintiff and has made misleading averments in the memo of the plaint as Page 10 of 31 C/AO/65/2018 CAV JUDGMENT well as in the application for interim injunction giving an impression that there is only one registered No. 399188 for both the words "RELIANCE" or "RELIANCE Rx" logo.
4.4. It was also further contended on behalf of the defendants that plaintiff is neither registered proprietor nor registered user of the trade mark "RELIANCE" along with logo "RELIANCE Rx" for manufacturing and marketing of pharmaceutical and medicinal preparations in India. It was further contended that the plaintiff has made false statement that the plaintiff is a registered proprietor as well as prior user under the Act, 1999 and it has a statutory right to the exclusive use of trade mark "RELIANCE" along with logo 'RELIANCE Rx".
4.5. It was further contended on behalf of the defendants that the defendants have started to manufacture different products since 2011 and have obtained the drug license from the competent authority for manufacturing and marketing its products. It was further contended that the products which the plaintiff is manufacturing are never manufactured by the defendant no.1 company and the plaintiff is aware about the fact of manufacturing different products by the defendants since the year 2011. It was further contended that the products which have been named by the plaintiff are all pharmaceuticals products and the said products fall in Schedule H which is a schedule of drugs that cannot be obtained without prescription of the doctor, therefore, the essential test of infringement or passing off that the layman will get confused will fail in products mentioned by the plaintiff as the said drugs are Page 11 of 31 C/AO/65/2018 CAV JUDGMENT prescribed by the expert.
4.6. That the plaintiff also filed rejoinder to the reply filed by the defendant against the application for interim injunction.
4.7. That initially the learned Commercial Court issued notice on the defendants making it returnable on 27.02.2017. That thereafter, after hearing the learned counsel for the respective parties and considering the material on record, vide order dated 17.03.2017, the learned Judge Commercial Court, Vadodara allowed the application Exh.5 partly by granting injunction restraining the defendants by itself, its servant, agents, dealers, manufacturers, directors, partners, owners, proprietors etc. to use the Trade Mark and Trading Style "RELIANCE' and the 'RELIANCE Rx M' logo or 'RELIANCE Rx M' label in respect of the drug products. The learned Judge also granted interim injunction restraining the defendants by itself, its servant, agents, dealers, manufacturers, directors, partners, owners, proprietors, licensee etc. from passing off any drug products under the name and style of 'RELIANCE" or 'RELIANCE Rx M" logo or label.
4.8. That feeling aggrieved and dissatisfied with the order passed by the learned Judge, Commercial Court, Vadodara passed below Exh. 5 dated 17.03.2017, by which, the learned Judge partly allowed the said application Exh.5 and granted injunction as stated above, the original defendant preferred Appeal From Order No. 137 of 2017 before this Court. That with the consent of the learned advocates for the respective parties, the Division Bench of this Page 12 of 31 C/AO/65/2018 CAV JUDGMENT Court vide order dated 20.02.2018 allowed the said appeal along with another Appeal From Order and quashed and set aside the order passed by the learned trial Court passed below Exh. 5 and remanded the matter to the Commercial Court, Vadodara to decide and dispose of the application Exh.5 afresh and in accordance with law and on merits. While remanding the matter, the learned Commercial Court to decide the application Exh.5 afresh, the Division Bench directed the injunction granted vide order dated 17.03.2017 passed below Exh.5 (in fact which was as such was quashed and set aside) to continue till 15.03.2018 and the learned Commercial Court was directed to decide and dispose of the application Exh.5 afresh on or before 15.03.2018.
4.9. That thereafter on remand the learned Judge, Commercial Court, Vadodara has rejected the application Exh. 5 by observing that (1) The word "Reliance" is a common noun and generic word and plaintiff has no exclusiveness over the said word; there are several companies registered with the name "Reliance"; (2) The word "Reliance" is Brand name of Ambanis and the plaintiff itself is taking the benefit of the reputation and goodwill and Ambanis' "Reliance" therefore, when the plaintiff is exploiting the goodwill of other's Brand name, it cannot claim the injunction against the defendant; (3) The Reliance Medipharma of Komal R Patel has not been impleaded in the present proceeding therefore, injunction cannot be granted against the Reliance Medipharma of Komal R Patel. The Reliance Medipharma of Raunak G Patel is carrying on business at Nashik and further the defendants are also residing and carrying on business at Nashik, thus, the injunction cannot be Page 13 of 31 C/AO/65/2018 CAV JUDGMENT granted against the Reliance Medipharma, Vadodara, a proprietorship concerned of Komal R Patel.
4.10. Feeling aggrieved and dissatisfied with the impugned order dated 13.03.2018 passed by the learned Judge, Commercial Court, Vadodara passed below Exh.5 in Commercial Trade Mark Suit No. 2 of 2017, by which, the learned Judge has rejected the said application Exh.5 and has refused to grant the injunction as prayed in the application below Exh.5 against the defendants, the original plaintiff has preferred the present Appeal From Order No. 65 of 2018.
Similar order has been passed by the learned Judge, Commercial Court passed below Exh.5 in Commercial Trade Mark Suit No. 3 of 2017, which is subject matter of Appeal From Order No. 66 of 2018.
5.0. Shri Kamal Trivedi, learned Senior Advocate has appeared with Shri Parth Contractor, learned advocate for the respective appellants and Shri B.D.Karia, learned advocate appeared with Shri Mrugesh Jani, learned advocate for the respondents original defendants.
6.0. Shri Trivedi, learned Senior Advocate appearing on behalf of the plaintiff has vehemently submitted that in the facts and circumstances of the case, the learned Commercial Court has materially erred in rejecting the application Exh.5 and refusing to grant injunction as prayed for against the defendants.
Page 14 of 31 C/AO/65/2018 CAV JUDGMENT6.1. Shri Trivedi learned Senior Advocate appearing on behalf of the plaintiff has submitted that the learned Judge has not properly appreciated the fact that as such the appellant is a registered proprietor and has a statutory exclusive right to use the registered trademarks "Reliance" and "Reliance Rx" Logo. It is submitted that the trademarks ""Reliance" and "Reliance Rx" Logo are registered in the name of the appellant and therefore, is Registered Proprietor of the aforesaid trademarks in terms of Section 2(1)(v) of the Trade Marks Act, 1999. It is submitted that Section 28 of the Act, 1999 as far as exclusive right to use the registered trademark conferred by upon the registered proprietor. It is submitted that therefore, the act on the part of the defendants can be said to be infringement of the aforesaid registered trademark considering Section 29 of the Act, 1999. It is submitted that as per Section 31 of the Act, 1999, registration to be prima facie evidence of validity.
6.2. It is submitted that once the trademark is registered in favour of the appellant, the validity or otherwise of such registration cannot be considered in the proceedings seeking temporary injunction. In support of his above submission, Shri Trivedi, learned Senior Advocate for the appellant has relied upon the decision of the Bombay High Court in the case of Hindustan Embroidery Mills Pvt Ltd vs. K Ravindra & Co reported in 76 BLR
146. 6.3. It is further submitted by Shri Trivedi, learned Senior Advocate for the appellant original plaintiff that original defendant no.1 has been incorporated in the year 2011. However, Page 15 of 31 C/AO/65/2018 CAV JUDGMENT its activities of selling and marketing pharmaceutical products in the name and style 'RELIANCE" with brand names visually, phonetically and structurally similar to that of the appellant, has effectively began sometime around 2014 i.e. after the cancellation of the distributorship arrangement. It is submitted that defendants are selling and marketing pharmaceutical products under the brand name "RELIANCE", which is structurally, phonetically and visually similar to the registered trade mark of the plaintiff, "RELIANCE" along with the "Rx" logo. It is submitted that various other products of the defendant no.1 have names which are deceptively similar to the brand names of the plaintiff. It is submitted that therefore, passing off action qua the use of the wordmark "RELIANCE" (355134) and "Reliance with Rx Logo" (399188) by the defendants is maintainable and the plaintiff is entitled to injunction against the defendants for passing off action also.
6.4. It is further submitted by Shri Trivedi, learned Senior Advocate for the appellant original plaintiff that considering the background of the defendants, the plaintiff is prior user and the use in same Class 5, capable of causing confusion, coupled with the use of products with names identical to that of the products sold by the plaintiff, the plaintiff is entitled to injunction as prayed for. In support of his above submission, learned counsel for the plaintiff has relied upon the decision of the Hon'ble Supreme Court in the case of Cadila Healthcare Ltd vs. Cadila Pharmaceuticals Ltd reported in (2005) 5 SCC 73.
6.5. It is further submitted by Shri Trivedi, learned Senior Page 16 of 31 C/AO/65/2018 CAV JUDGMENT Advocate for the appellant original plaintiff that as adoption of trade name "Reliance" and "Reliance Rx" logo by defendants is identical to the trade name of the plaintiff and both are engaged in the same business and that the defendant no.2 was earlier an employee of the plaintiff and it will cause deception and confusion in the minds of the customers which is actionable for passing off, the plaintiff is entitled to injunction as prayed for. For the aforesaid, Shri Trivedi, learned counsel for the original plaintiff has heavily relied upon the followings decisions:
(1). Bhagwan Dass Gupta vs. Shir Shanker Tirath Yatra Company Prviate Ltd reported in 2001 59 DRJ 609.
(2). FMI Limited vs. Asho Jain and Ors reported in MIPR 2007 (1)
157.
(3). Neev Investment and Trading Pvt Ltd vs. Sasia Express Couriers Pvt Ltd reported in 1993 26 DRJ.
(4). Vashist Food Pvt Ltd vs. Vashisth Agrotech Private Limited reported in ILR 2004 (I) Delhi 434 (5). Sanofi India Ltd vs. Universal Neutraceuticals Ltd reported in MIPR 2014(3) 0183.
(6). Mandev Tubes Pvt Ltd vs. Kalpesh Jain and Ors reported in Manu/MH/2629/2016.
6.6. It is further submitted by Shri Trivedi, learned Senior Advocate for the appellant original plaintiff that the learned Judge has erroneously refused the injunction on the premise that the word "Reliance" is a generic word. It is submitted that assuming that the wordmark "Reliance" is a generic and descriptive word, where the same is registered and is used over a period of time, then Page 17 of 31 C/AO/65/2018 CAV JUDGMENT by virtue of its registration and extensive use by the plaintiff for selling its pharmaceutical products, the said registered marks are associated with the plaintiff and attains a secondary meaning ascribed to the plaintiff. It is submitted that therefore, any use other than by the registered proprietor, more particularly, a dishonest use, ought not to have been permitted. It is submitted that Section 28 of the Act, 1999 clearly grants exclusive use of the wordmark "RELIANCE" to the plaintiff and the validity of the said registration cannot be considered in the present proceedings.
6.7. It is further submitted by Shri Trivedi, learned Senior Advocate for the appellant original plaintiff that the defendants whose adoption of the trademarks is not bona fide, cannot be permitted to use such trade marks, more so when the persons infringing the trade marks were erstwhile distributors (from 1985 to 2014) and directors (upto 2017) and present shareholders in the plaintiff. In support of his above submissions, Shri Trivedi, learned Senior Advocate for the plaintiff has heavily relied upon the following judgments:
(1). T.V. Venugopal vs. Ushodaya Enterprise Ltd & Anr reported in (2011) 4 SCC 85.
(2). Prakash Roadline Ltd vs. Prakash Parcel Service Ltd reported in 1992 (22) DRJ 489.
(3). Montari Industries Ltd vs. Montari Overseas Ltd reported in 1995(33) DRJ 271.
6.8. It is further submitted by Shri Trivedi, learned Senior Advocate for the appellant original plaintiff that the learned Judge Page 18 of 31 C/AO/65/2018 CAV JUDGMENT has materially erred in refusing the injunction on the ground that "Reliance" Medipharma of Komal R Patel has not been impleaded in the present proceedings. It is submitted that as such there is no document produced on record to substantiate the averments of the defendants that Komal Patel is the proprietor of Reliance Medipharama in Vadodara. It is submitted that the only document sought to be relied upon is an FDCA License. It is submitted that firstly the said document has no relevance and that same is issued in the name of "Reliance Medipharma" and not in the name of the Reliance Medipharma. It is submitted that neither in the affidavit in reply to the Exh.5 application nor at the time of hearing before this Court in earlier round of litigation being Appeal From Order Nos. 137 and 138 of 2017, the aforesaid arguments were canvassed by the defendants. It is submitted that such argument is mala fide and is an afterthought to mislead this Court. It is submitted that Komal R Patel is the daughter of defendant nos. 2 and 3 and sister of defendant no.1.
6.9. It is further submitted by Shri Trivedi, learned Senior Advocate for the appellant original plaintiff that even otherwise the impugned order dated 13.03.2018 rejecting the application Exh.5 is contrary to the earlier order dated 17.03.2017 passed by the learned Judge inasmuch as there are no changed circumstances and only the change is that the plaintiff has obtained a legal use certificate in relation to the aforesaid trademark and that the TradeMark No. 355134 is now registered in the name of the plaintiff. It is submitted that as such findings recorded by the learned Judge now while rejecting the application Exh.5 are just Page 19 of 31 C/AO/65/2018 CAV JUDGMENT contrary to the findings and / or observations made while passing the earlier order dated 17.03.2018.
Making above submission and relying upon the following decisions of the Hon'ble Supreme Court, it is requested to allow the present Appeal From Orders and to quash and set aside the impugned order passed below Exh.5 by the learned Commercial Court and grant the injunction as prayed for.
(1). Heinz Italia & Ors vs. Dabur India Ltd reported in (2007) 6 SCC 1.
(2). Midas Hygiene Industries Pvt Ltd vs. Sudhir Bhatia & Ors reported in (2004) 3 SCC 90.
(3). Laxmikant V Patel vs. Chetanbhai Shah and Anr reported in (2002) 3 SCC 65.
(4). Satyam Infoway Ltd vs. Siffynet Solution Ltd reported in (2004) 6 SCC 145.
(5). Mahendra and Mahendra Paper Mills Ltd vs. Mahindra and Mahindra Ltd reported in (2002) 2 SCC 147.
(6). Prakash Roadline Ltd vs. Prakash Parcel Service (P) Ltd reported in 1992(2) Arbitration Law Reporter 174 (7). Himalaya Drug Company vs. SBL Limited reported in 2013(53) PTC 1 (Del) (8). Banana Brand Works Pvt Ltd vs. Kavan Antani and Ors reported in 2016(4) CTC 647.
7.0. Both these appeals are vehemently opposed by Shri B.D. Karia, learned advocate appearing on behalf of the original defendants.
Page 20 of 31 C/AO/65/2018 CAV JUDGMENT7.1. It is further submitted by Shri Karia, learned advocate for the original defendants that in the facts and circumstances of the case and more particularly, the trade name "Reliance" is a common word / generic word and by registering such trade name, the original plaintiff cannot have any monopoly, the learned Judge, Commercial Court has rightly refused to grant injunction against the defendants restraining the defendants from using the word trade name / trademark "Reliance".
7.2. It is further submitted by Shri Karia, learned advocate for the original defendants that as such the learned counsel for the plaintiff made categorical statement before the Commercial Court that plaintiff is not pressing injunction in respect of goods and products and / or pressing injunction on the ground of passing off of the goods under the name of plaintiff and / or name and trade mark similarly deceptive of the plaintiff and is mainly concerned with the use of the word "Reliance" logo and "Reliance Rx". It is submitted that therefore, the learned Judge has rightly observed that plea of injunction regarding passing off the products is not required to be considered and gone into by the Court. It is submitted that thereafter when the learned Judge has found that the word "Reliance" is a common and generic word, the learned Judge has rightly refused to grant the injunction.
7.3. It is further submitted by Shri Karia, learned advocate for the original defendants that mark "Reliance" was originally registered in Part B of the Trade and Merchandise Mark Act, 1958 in the name of Keshavlal Hiralal Patel and two others, being partners of Page 21 of 31 C/AO/65/2018 CAV JUDGMENT M/s. Reliance Pharmaceuticals at the relevant time. It is submitted that it is meant that the said word of device is not a coined word and it is the label as "Device". It is submitted that therefore, accordingly the word mark "Reliance" is a common word and is also generic word having dictionary meaning "the state of depending on or trusting in something or someone. It is submitted that therefore, when the said mark is neither invented nor attached with any formula or product of the plaintiff, mere utilization of the word "Reliance" as a trade name of the drug products shall not give exclusive right in favour of the plaintiff in a paramount way. It is further submitted that the work "Reliance" is a common name and there are 199 companies or firms registered with the word "Reliance" at the initial name of the Companies; out of which 3 companies are operating in the field of Pharma. It is submitted that therefore, in the facts and circumstances of the case the learned Judge has rightly refused to grant injunction restraining the defendants from using the word mark "Reliance".
7.4. Shri Karia, learned advocate for the original defendants has stated at the bar that defendants shall not use logo "Reliance Rx.M"
or "Reliance Rs M label" in respect of drug products. He has stated at the bar that therefore, the defendants have no objection if the impugned order passed by the learned Judge, Commercial Court is modified to the aforesaid extent and the injunction refused may be restricted to word mark "Reliance".
Making above submissions and relying upon the following decisions, it is requested to dismiss the present appeals with modification as stated hereinabove.
Page 22 of 31 C/AO/65/2018 CAV JUDGMENT(1). Aviat Chemicals Pvt. Ltd Vs. Intas Pharmaceuticals Limited reported in 2001 Lawsuit (Del) 881.
(2). Apex Laboratories Ltd vs. Zuventus Health Care Ltd reported in (200&0 1 MLJ 657.
(3). IHHR Hospitality Pvt Ltd vs. Bestech India Pvt Ltd reported in LAWS (DLH) 2012 5 193.
(4). Three NProducts Private Limited vs. Emami Limited rendered in APO No.248 of 2008 in CA No. 204 of 2007 of the Calcutta High Court.
(5). Chandra Bhan Agarwal and Anr vs. Arjundas Agarwal and ors reported in AIR 1979 Cal 2080.
(6). Nirma Chemical Works Pvt Ltd vs. Nirman High School reported in 2011 (5) GLR 3944.
(7). J R Kapoor vs. Mirconix India reported in 1994(14) PTC 260 (SC).
(8). Schering Corporation and Ors vs. Getwell Life Sciences India Pvt Ltd reported in 2008(37) PTC 487 (Del).
(9). Datamatics Global Services Limited vs. Royal Datamatics Private Limited reported in 2016(3) ABR 514.
(10). Orchid Chemicals & Pharmaceuticals Ltd vs. Wockhardt Limited reported in 2013(3) CTC 841.
(11). Cadila Healthcare Ltd vs. Speciality Meditech Private Limited reported in 2010 (5) GLR 3742.
(12). Shaw Wallace & Co Ltd & Anr vs. Superior Industries Limited reported in 2007(35) PTC 782 (Del).
(13). Cadila Health Care Ltd vs. Cadila Pharmaceuticals Ltd reported in (2001) 5 SCC 73.
(14). Cadila Healthcare Ltd vs. Swiss Pharma Pvt Ltd and Anr Page 23 of 31 C/AO/65/2018 CAV JUDGMENT reported in 2002 GLH (1) 234.
8.0. Heard the learned counsel for the respective parties at length. Perused the impugned order passed by the learned Judge, Commercial Court, Vadodara passed below Exh.5 in respective Commercial Trade Marks Suits.
8.1. At the outset, it is required to be noted that though the respective suits filed by the original plaintiffs were for seeking injunction against the infringement, passing off, infringement of trade name / word mark "Reliance" and logo "Reliance Rx", a categorical statement was made by the learned counsel appearing on behalf of the plaintiff before the learned Judge, Commercial Court that he does not press the injunction in respect of the goods and products on the ground of passing off the goods under the name of plaintiff and / or name and trademark similarly deceptive of the plaintiff and is mainly concerned with the use of the word "Reliance" logo and "Reliance Rx". Therefore, the learned Judge did not consider the plea of injunction regarding passing off goods and products and has considered whether on the basis of registered trade mark / trade name / word name "Reliance" and the logo "Reliance Rx" the plaintiff is entitled to injunction on the ground of infringement of trade name / work name "Reliance" ? At this stage, it is required to be noted that in Ground "G" in the appeal memo, it is stated that as such no such concession was made before the learned Judge and on the contrary what was submitted was, that for the time being, the appellant original plaintiff was restricting the arguments to Trademark No. 399188 and 355134 and it is Page 24 of 31 C/AO/65/2018 CAV JUDGMENT further the case on behalf of the appellant so stated in ground "G" that submissions qua the products was not being canvassed in view of the fact that the same was already considered by the learned Judge at the time of passing of the order dated 17.03.2017 and that the appellant original plaintiff would rely upon same. So far as aforesaid ground is concerned, at the outset, it is required to be noted that as such learned trial Court has categorically stated in para 25 as under:
"As far as the plea of Ld. Counsel for the plaintiff regarding the passing off of the goods under the name of the plaintiff or the name and trade mark similarly deceptive to the plaintiff is concerned, the Ld. Counsel for the plaintiff Mr. P.J. Contractor has made the statement before the Court at Bar that he is not pressing the injunction in respect of the goods and products and is he mainly concerned with the use of the word "Reliance" and the logo "Rx Reliance". Thus, in view of this submission, the plea of injunction regarding the passing off of the products is not required to be considered by the Court."
If the learned counsel appearing on behalf of the plaintiff was of the opinion that what is recorded herein above is inaccurate, in that case, the appropriate remedy available to the plaintiff was to file review application before the learned Judge who made aforesaid observations. Even otherwise, it is stated in ground "G" that "what was submitted was for the time being, the appellant original plaintiff was restricting the arguments to Trademark No. 399188 and 355134. It is further stated in ground G that submissions qua the products was not being canvassed in view of the fact that the same was already considered by the learned Judge at the time of passing of the order dated 17.03.2017 and that the appellant original plaintiff would rely upon same. However, it is required to be noted that as such order dated 17.03.2017 was Page 25 of 31 C/AO/65/2018 CAV JUDGMENT already quashed and set aside earlier by this Court and the matter was remanded to the learned Commercial Court for deciding application Exh.5 afresh and therefore, as such there was no reason for the learned counsel for the plaintiff to rely upon the order dated 17.03.2017. It is required to be noted that even otherwise the learned Judge has passed the impugned order solely on the submission with respect to the infringement of trade mark / trade name / word name "Reliance" and logo "Reliance Rx". Therefore, this Court is required to consider whether the learned Judge is right in refusing to grant injunction on the ground of infringement of registered trade mark / trade name / word name "Reliance". At the cost of repetition, it is observed that as such learned advocate for the defendant has made a categorical statement that defendants shall not use logo "Reliance Rx.M" or "Reliance Rx. M"
Label with respect to pharmaceutical and drug products. Therefore, this Court is required to consider whether the plaintiff is entitled to injunction against the defendants restraining the defendants, their agents and servants from using the word mark "Reliance" (Registration No. 355134) only.
8.2. It is the case on behalf of the plaintiff that in terms of provisions of Section 2(1)of the Trade Mark Act, 1999 r/w Section 28 of the Act, the appellant original plaintiff has a statutory protection available against the use of the aforesaid trademarks "Reliance" by third parties. However, the question which is required to be considered is whether a person who has got the word name registered which is generic and / or common, can such person have monopoly to use such generic word, solely on getting such generic Page 26 of 31 C/AO/65/2018 CAV JUDGMENT word registered ? The learned Judge has refused the injunction mainly on the ground that word name "Reliance" is a generic word and common in usage and that approximately more than 199 companies are using the word "Reliance" as their first name, out of which even three companies are dealing in pharmaceutical and therefore, the plaintiff cannot claim an exclusive right to use of "Reliance" as a constitute of any trade mark. It is cardinal principle of law and even as per the catena of decisions of the Hon'ble Supreme Court as well as this Court nobody can claim exclusive right to use a name which is generic and it is publici juris. As per the dictionary meaning of "Reliance", it means "the state of depending on or trusting in something or someone". Thus, the word mark "Reliance" is a common word and is also generic word having dictionary meaning as observed herein above. Since "Reliance" is deceptive of the words "to rely" use for production of many other goods which daily come to the market, no one can claim monopoly over the use of the said word. Therefore, to allow the plaintiff to obtain proprietary right for the "Reliance" will, in effect, amount to recognizing the word "Reliance" to be exclusive property of the plaintiff. The word "Reliance" cannot be said to be in any manner a coined word and that too with respect to particular product. As such the word "Reliance" can be said to be "Device" and being used in a common parlance and being generic word, the plaintiff alone cannot have monopoly to use the word "Reliance" solely on getting the word "Reliance" registered. As observed herein above, the plaintiff has claimed injunction on the ground of infringement of their registered trade mark / trade name, a word name "Reliance".Page 27 of 31 C/AO/65/2018 CAV JUDGMENT
8.3 The submission on behalf of the plaintiff relying upon Section 2(1)(v) r/w Section 28 is to be considered while reading along with Section 17(2) of the Act, 1999. As per subsection(2) of Section 17 notwithstanding anything contained in subsection(1), when a trade mark contains any matter which is common to the trade or is otherwise of a nondistinctive character, the registration thereof shall not confer any exclusive right in the matter forming only a part of the whole of the trade mark so registered. Therefore, as such the learned Judge has rightly refused to grant injunction restraining the defendants from using the name "Reliance" which was claimed by the plaintiff solely on the ground that the plaintiff has got the word name "Reliance" registered and on the ground that the defendants are infringing the said trade mark / trade name / word name. At the cost of repetition, it is observed that the learned trial Court has not at all considered the grant of injunction on the alleged passing off action and as observed herein above, the learned trial Court has specifically observed that the learned advocate for the plaintiff does not press the injunction on the ground of passing off. Therefore, we have restricted our order with respect to alleged infringement of the word mark "Reliance" and / or question with respect to the injunction on the ground that whether the plaintiff has an exclusive right to use the word "Reliance" on getting the word name "Reliance" registered in their favour. As observed herein above, we are of the opinion that the word name "Reliance" is a generic and common word and is not a coined word and / or the word used for a particular project, the plaintiff is not entitled to injunction as prayed for solely on the ground that plaintiff has got word name "Reliance" registered in Page 28 of 31 C/AO/65/2018 CAV JUDGMENT their favour.
9.0. Now, so far as reliance placed upon the decision of the Hon'ble Supreme Court in the case of T.V. Venugopal (supra); Satyam Infoway Ltd (supra) and Mahendra and Mahendra Paper Milss Ltd (supra) by the learned counsel on behalf of the plaintiff are concerned, on considering the said decisions and controversy in the said cases, we are of the opinion that the said decisions shall not be applicable to the facts of the case on hand and / or same shall not be of any assistance to the plaintiff, as in all the cases the observation made by the Hon'ble Supreme Court are with respect to the passing off and not infringement of trade mark / trade name / word name, which as such is a common and generic word. In the case of T.V. Venugopal (supra), it was found that the respondent company was publishing newspaper "Eenadu" in the Telugu language and also provided TV Service under the brand name "ETV" or "Eenadu TV" in the State of Andhra Pradesh. It was found that though "Eenadu" was a descriptive word, meaning "today" in Telugu Language yet it had acquired secondary or subsidiary meaning, by which products and services of respondent company was identified and therefore, it was held that the appellant was manufacturing incense sticks in neighboring State of Karnataka, selling his product with mark "Eenadu" added to it, it was found that appellant was passing off his product as that of respondent company and therefore, has to be restrained from doing so in so far as Andhra Pradesh is concerned.
10. Now, so far as similar decision in the case of Prakash Page 29 of 31 C/AO/65/2018 CAV JUDGMENT Roadline Ltd (supra) also shall not be applicable to the facts of the case on hand as the Delhi High Court was considering the injunction against the passing off.
11. It is required to be noted that as such the learned trial Court has not accepted the submission on behalf of the defendants with respect to territorial jurisdiction and as such defendants have not preferred any appeal against the said findings. Therefore, we are not expressing anything on merits with respect to territorial jurisdiction of the Commercial Court to entertain the suit at this stage and in the present proceedings.
12. In view of the above and for the reasons stated above and on the concession and considering the submission made by Shri Karia, learned advocate for the original defendant that defendants shall not use "Reliance Rx M" logo or "Reliance Rx M" label with respect to pharmaceutical products, present appeals are allowed in part. The impugned orders passed by the learned Judge, Commercial Court Vadodara dated 13.03.2017 passed below Exh.5 in Commercial Trade Mark Suit No. 2 of 2017 and 3 of 2017 are hereby modified to the extent restraining the defendants, their agents and servants from using the "Reliance Rx M" logo or "Reliance Rx M" label with respect to pharmaceutical products. The rest of the order passed by the learned Commercial Court refusing to grant injunction against the defendants restraining the defendants from using name "Reliance" are hereby confirmed. Present appeals are partly allowed to the aforesaid extent. No costs.
Page 30 of 31 C/AO/65/2018 CAV JUDGMENTIn view of order passed in Appeal From Order No. 65 of 2018, Civil Application No. 1 of 2018 stands disposed of accordingly.
Sd/ (M.R. SHAH, J) Sd/ (A.Y. KOGJE, J) FURTHER ORDER After the judgment was pronounced, learned counsel appearing on behalf of the appellant has requested to continue the interim arrangement which was continued during the pendency of the present appeals, so as to enable the appellant to approach the Hon'ble Supreme Court. The prayer is opposed by the learned Advocate appearing for the respondents. However, considering the fact that the interim relief is continued till date, the same is directed to be continued till 09.07.2018.
Sd/ (M.R. SHAH, J) Sd/ (A.Y. KOGJE, J) KAUSHIK J. RATHOD Page 31 of 31