Madras High Court
Mankind Pharma Private Limited, Anand ... vs Laborate Pharmaceuticals India Ltd., ... on 22 March, 2002
Author: P.D. Dinakaran
Bench: P.D. Dinakaran
JUDGMENT P.D. Dinakaran, J.
1. By consent, the appeals themselves were taken up for hearing.
2. The appellant is the plaintiff in C.S.No.38 of 2001 wherein the appellant sought for a decree for perpetual injunction restraining the respondents herein - defendants or any one claiming under them in any manner passing off the plaintiff's medicinal preparations under the Trade Mark "RANISPAS" by use of Trade Mark "RANSPAS" and for consequential relief such as rendition of accounts for profits and damages etc. more fully set out in the plaint, after getting leave under clause 12 of the Letters Patent in Application No.39 of 2001 on 10.1.2001, as the registered office of the first respondent is situated at Panipat, which is outside the jurisdiction of the Court.
3. For the purpose of convenience, parties are referred to as per their rank in the suit.
4.1. Pending the above suit, the plaintiff, in O.A.No.56 of 2001, sought for ad-interim injunction restraining the respondents/defendants, their directors, partners/ proprietors, servants, assigns, representatives, successors, agents, stockiest, dealers, distributors, wholesalers, retailers, or any of them from in any manner passing-off or enabling others to pass-off medicinal preparations under the Trade Mark "RANISPAS" by use of Trade Mark "RANSPAS" or any mark deceptively similar thereto, and obtained an order of interim injunction on 18.1.2001.
4.2. However, the first defendant filed Application Nos.748 and 749 of 2001 to revoke the leave granted on 10.1.2001 in Application No.39 of 2001 under Clause 12 of the Letters Patent and to vacate the interim injunction granted on 18.1.2001 respectively.
4.3. By order dated 14.3.2001, the learned single Judge, vacated the interim injunction granted on 18.1.2001, holding that the plaintiff is only a Marketing agent but not a manufacturer; and that the manufacturer alone has got a right to file a suit for passing off or violation of Trade Mark and therefore, the plaintiff has not made out a prima facie case.
4.4. But, pursuant to the filing of Application Nos.1278 and 1279 of 2001 by the first defendant, viz. to review and suspend the order dated 14.3.2001, the learned single Judge, by order dated 15.3.2001, suspended the order dated 14.3.2001.
4.5. Finally, the matters were disposed of on merits, by order dated 3.8.2001, vacating the order of interim injunction dated 18.1.2001 and revoking the leave granted on 10.1.2001 in Application No.39 of 2001, thereby, allowing Application Nos.748 and 749 of 2001 and dismissing Application No.39 and Original Application No.56 of 2001.
4.6. Aggrieved by the said common order dated 3.8.2001, the plaintiff has preferred the above appeals.
5.1. Both the learned senior counsel appearing for the plaintiff and the counsel for the first defendant reiterated the contentions of the respective parties that were made before the learned single Judge.
5.2. We have given careful consideration to the submissions of both sides.
6.1. The learned counsel for the first defendant contends that the plaintiff is not entitled to maintain the above suit nor to seek the relief of injunction as prayed for, for the following reasons:
(i) the second defendant is not a distributor or a stockiest of the first defendant;
(ii) in the absence of sale by the first defendant within the jurisdiction of this Court, no cause of action would arise in the suit for infringement of Trade Mark much less for passing off, as held in HIMACHAL PRADESH HORTICULTURE PRODUCE MARKETING AND PROCESSING CORPORATION LTD., SIMLA v. M/S. MOHAN MEAKIN BREWERIES LIMITED, SOLAN reported in 1981 PTC 74; and
(iii) to give a jurisdiction to the Court, sale has to be on a commercial basis to the whole seller, retailer or distributor as held in GLEN RAVEN MILLS INC. v. VASPAR CONCEPTS PRIVATE LTD. & ANR. reported in 1995 PTC 15.
6.2. However, the learned counsel for the second defendant is not disputing the fact that the product manufactured by the first defendant was being sold in Chennai by the second defendant, at the instance of the first defendant and that the invoices produced by the plaintiff are related to such sales of the products of the first defendant by the second defendant in Chennai, through normal commercial Channels as Stockist.
7.1. Since the learned counsel for the second defendant had made it clear that the second defendant was appointed as an authorised Stockiest by the first defendant for the year 2000-2001, we are unable to appreciate the contentions of the learned counsel for the first defendant that no cause of action arose within the jurisdiction of this Court, as the sale had taken place purely on commercial basis by appointing the second defendant as the Stockiest of the first defendant. Hence, the decisions relied upon by the learned counsel for the first defendant are not applicable to the facts and circumstances of the case.
7.2. On the other hand, once the passing off within the jurisdiction of this Court had been thus prima facie shown, in our considered opinion, there is no reason to deny the leave to the plaintiff to file the above suit.
7.3. That apart, we are also unable to agree with the learned single Judge that neither a single trap sale nor a sale of small amount would confer the jurisdiction of this Court to file the above suit, in view of the submissions of the learned counsel for the second defendant that the second defendant has been appointed as a Stockiest by the first defendant to sell the products of the first defendant under the Trade Mark "RANSPAS".
7.4. Further, the reason that the plaintiff is not a manufacturer, but only a marketing agent, having address at Delhi and the defendant is based at Faridabad and therefore, the plaintiff has not made out any prima facie case, is also, in our considered opinion, not tenable in law, because, the sale of medicinal products are normally effected and dealt with by the Chemists. The plaintiff being a Chemist and Druggist, are undisputedly authorised to sell the product of "RANISPAS" and therefore, the right of the plaintiff to challenge the passing off the Trade Mark of "RANISPAS" by use of Trade Mark "RANSPAS" or any mark deceptively similar thereto or in any other manner whatsoever, cannot be denied merely because the plaintiff happened to be a marketer, but not a manufacturer, as rightly contended by Mr. Mohan Parasaran, learned senior counsel appearing for the plaintiff.
7.5. Having satisfied with the materials placed before us that the plaintiff has made out a prima facie case and the defendants are passing off the Trade Mark of "RANISPAS" by use of Trade Mark "RANSPAS", we are unable to agree with the learned single Judge in revoking the leave and vacating the order of interim injunction granted to the plaintiff. Hence, the order dated 3.8.2001 made in O.A.No.56 of 2001 and in Application No.748 of 2001 is set aside. Consequently, leave is granted to the plaintiff to file the above suit and the appellant is entitle for an order of injunction as prayed for, till the disposal of the suit.
8. In the result, appeals are allowed. No costs. CMP Nos.22211 & 22212 of 2001 are closed.