Delhi District Court
Suncare Formulations Pvt. Ltd vs Oreo Healthcare on 15 April, 2025
IN THE COURT OF MS. NEELAM SINGH
DISTRICT JUDGE (COMMERCIAL)-02, SOUTH EAST
SAKET COURTS, NEW DELHI
CS (COMM)-12/2024
1. Suncare Formulations Pvt Ltd.
113, Basement, DSIDC Complex,
Okhla Industrial Area, Phase-1,
New Delhi-110020
Registered office at:
E-20, UPSIDC, Industrial Area,
Selaqui, Dehradun-248011,
Uttarakhand
2. Suncare Pharmaceuticals Pvt Ltd.
Address at:
40/3, Strand Road, 3rd Floor,
Room No. 21, Kolkata-700001
3. Suncare Laboratories LLP
House No.4, GMS Road,
Engineers Enclave, Dehradun,
Uttarakhand-248001
All Corporate Offices at:
113, Basement, DSIDC Complex,
Okhla Industrial Area, Phase-1,
New Delhi-110020 ..... Plaintiffs
Versus
1. Oreo Healthcare
(Through its Proprietor/Owner/CEO
Mr. Raghubir Singh)
Address: Plot No. 169, Ground Floor,
Industrial Area, Phase-2, Panchkula,
Haryana-14113
2. Synergic Pharma
(Manufacturer)-(Hemocal-S) & (Hemocal SZ Drops)
CS(COMM)-12/2024 Suncare Formulations Pvt Ltd. & Ors. vs. Oreo Healthcare & ors. Page 1 of 39
Address: Barotiwala,
Baddi, District Solan,
H.P-174103
3. N.B Healthcare
(Manufacturer)-(Hemocal-SZ)
Plot No. 966, JLPL Industrial Park
Sector-82, Mohali-160062 (PB)
4. Ramom Healthcare Pvt Ltd.
(Manufacturer)-(Hemocal-SZ) Capsules
Plot No. 58, Sector-5,
Parwanoo-173220, HP
5. Maxwell Pharma
(Manufacturer)-(Hemocal-S Inj)
GMP Compliance Factory
Plot No. 6 & 7
Sector-5, Parwanoo,
Solan, HP-173220
6. Shibhu Drugs Agency
(Distributor)
(Through its proprietor Mr. Shiv Pal)
Address: Near Subhash Chowk,
Khoositola Road,
Khidia Ghat, Bettiah
Bihar-845438
7. Raushan Drug Agency
(Stockiest/Seller)
(Through its proprietor Mr. Anjar Aalam)
Address: Bhola Babu Campus,
Near Teen Lalten, Betiah,
Bihar-845438
8. Bablo Drug Agency
(Stockiest/Seller)
(Through its proprietor Mr. Bablu)
Address: Bettiah Main Road,
CS(COMM)-12/2024 Suncare Formulations Pvt Ltd. & Ors. vs. Oreo Healthcare & ors. Page 2 of 39
Majhauliya, Betiah,
Bihar-845454
9. Ma Laxmi Medical Hall
(Stockiest/Seller)
(Through its proprietor Mr. Ajay Kumar)
Address: Patjirwa Mandir Puja
West Champaran,
Bihar-845438
10. Aryan Medical Hall
(Stockiest/Seller)
(Through its proprietor Mr. Prabhari Kumar)
Manuapull Chowk, Bagha Road,
Bettiah, Bihar-845438 .....Defendants
Date of Institution: 06.01.2024
Arguments concluded on : 01.04.2025
Date of Judgment: 15.04.2025
JUDGMENT
The crux of facts stated in brief is noted below:
Case of the plaintiff;
1.1 It is the case of the plaintiff that the plaintiffs are the sister concern constituted under the Companies Act with an objective to manufacture and market pharmaceuticals and medicinal products.
The corporate office of plaintiffs is situated at Okhla, New Delhi. In the year 2015, plaintiff no. 2 Suncare Pharmaceutical Private Limited being proprietor of the trademark filed the company petition for demerger bearing no. 99/2015 before the Hon'ble High Court at Calcutta and the Hon'ble High Court of Calcutta vide its order dated 08.03.2017 allowed the scheme of merger and CS(COMM)-12/2024 Suncare Formulations Pvt Ltd. & Ors. vs. Oreo Healthcare & ors. Page 3 of 39 thereafter plaintiff no. 3 (Suncare Laboratories Private Limited) (transferee) (now known as Suncare Laboratories LLP as per conversion dated 02.08.2021) accordingly became the proprietor of the trademark 'HAEMOCAL'.
1.2 The trademark certificate issued by the trademark registry for application number 1922347 in class 5 for registration of 'HAEMOCAL' and the certificate of legal proceedings have been placed on record. Plaintiff no. 3 through its agreement, authorized plaintiff no. 1 for sale and marketing of the product 'HAEMOCAL'. The trademark 'HAEMOCAL' is renewed, subsisting and continuous in use by the plaintiffs. The continuous and extensive use of the trademark 'HAEMOCAL' by the plaintiffs in respect of goods since the last decades has become a well-known mark of the plaintiff. The plaintiff on its own and through its affiliates in India are providing health-care and pharmaceutical products to its valued customers. The products manufactured and marketed by the plaintiffs are sold under the trademark 'HAEMOCAL' and are known in India for their superior quality, technical excellence and effectiveness. It is the case of the plaintiff that the trademark 'HAEMOCAL' has been recognized and associated with the plaintiff. The popularity and reputation enjoyed by the plaintiffs mark 'HAEMOCAL' has gauged a large sales of the product all over India.
1.3 In addition to the distinct use of trademark, plaintiffs also CS(COMM)-12/2024 Suncare Formulations Pvt Ltd. & Ors. vs. Oreo Healthcare & ors. Page 4 of 39 used an art work on his packaging that is the letter 'O' with a creative symbol of blood in red is an artwork of plaintiff. In addition, the plaintiffs product under the mark 'HAEMOCAL' are sold in a box packaging bearing a unique colour combination and writing style. Due to the efforts and investment in promoting the brand 'HAEMOCAL', the trade and public identity of the mark 'HAEMOCAL' through its packaging and trade dress has achieved a specification for the plaintiff. Plaintiff is also engaged in advertisement of the product 'HAEMOCAL' in various magazines of repute.
1.4 The plaintiff came to know that defendant no. 1 to 5 are the manufacturer of the drugs by using the trademark of the plaintiff 'HEMOCAL' and defendant no. 7 to 10 are the stockists and seller of the infringed products. It is submitted that defendants are using the mark 'HEMOCAL' for the same drug compound as that of the plaintiffs' which has a similar trade name, similar packaging and is likely to create confusion amongst the purchasing public, medical professionals by believing that the product of the plaintiff and of the defendant are connected or otherwise. The defendant products are related to the plaintiff. Such confusion will not only impact the business of the plaintiff but also customers who will mistakenly buy the products bearing the similar marks/ packaging by the defendants.
1.5 A comparison between the packaging of the plaintiff's CS(COMM)-12/2024 Suncare Formulations Pvt Ltd. & Ors. vs. Oreo Healthcare & ors. Page 5 of 39 products with that of the defendant is detailed herein below:
COMPARISON Plaintiff's Defendant's
Product Product
Trade mark: "HAEMOCAL "HEMOCAL"
The marks of both "
plaintiffs and defendants
are deceptively similar
except few insignificant
alterations.
Packaging the rival "HAEMOCAL "HEMOCAL"
products are sold in " Written in
similar packaging. Written in white on red
white on red background
background
Mark represented on red
back ground, with
letters in similar white
fonts. With letter "O" in
the mark as an art work
for drop of blood.
1.6 It is further submitted by Ld. Counsel for the plaintiff that
given the identical nature of the rival marks a man of ordinary prudence and imperfect recollection is bound to get confused as to the origin of goods for the following reasons:
a. The impugned mark i. e. "HEMOCAL" is virtually identical with and/or deceptively similar, to the plaintiff's registered trade mark "HAEMOCAL";
b. The packaging of the goods under the rival mark "HEMOCAL" is nearly identical to that of the products under the plaintiff's mark "HAEMOCAL".
c. The drug formulation of Defendant's product "HEMOCAL"CS(COMM)-12/2024 Suncare Formulations Pvt Ltd. & Ors. vs. Oreo Healthcare & ors. Page 6 of 39
is same as that of the plaintiff's product.
d. The class of consumers are same; and e. Defendant's "HEMOCAL" medicines are sold through
pharmacies which also sell the plaintiff's "HAEMOCAL" preparations. It may mislead members of the trade and public into buying the defendant's product believing that the Defendant's goods is made under license or with the approval of the plaintiffs. Further, it may help the chemists to unintentionally dispense the defendant's product as the doctors' prescriptions are scribbled and with the difference in one or two letters insufficient to distinguish from plaintiffs mark both the chemist and consumers are likely to mistakenly sell/purchase the defendant's product. It is humbly submitted that if the defendant is not restrained from manufacturing marketing and selling its medicinal preparations bearing deceptively similar mark, it is likely to cause irreparable and unquantifiable damage to the plaintiff's business and hence, the present suit seeking permanent injunction restraining the defendants alongwith rendition of accounts and punitive damages to the tune of Rs. 50,00,000/- against the defendants.
Case of the defendants;
2.1 Defendants have contested the present suit by filing written statements. It is submitted by defendant no.1 that defendant no.1 i.e. Oreo Healthcare Pvt Ltd. was established in the year 2018 and is known as wholesale trader, service provider and manufacturer of wide range of drugs & combinations with highly maintained CS(COMM)-12/2024 Suncare Formulations Pvt Ltd. & Ors. vs. Oreo Healthcare & ors. Page 7 of 39 standards and quality.
2.2 It is submitted that defendant no.1 has not invaded and is not threatening to invade the right of the plaintiff. It is further submitted that no cause of action ever arose in favour of the plaintiff to file the present suit against defendant no.1. It is further submitted that this court has no territorial jurisdiction to entertain the present suit as neither the plaintiffs nor the defendant have any branch or a working unit within the jurisdiction of this Court.
2.3 It is further submitted that defendant no.1's product 'HEMOCAL-S' and 'HEMOCAL-SZ' is in no way similar to plaintiff's product 'HAEMOCAL'. It is submitted that there is neither visual similarity nor phonetical similarity between the products "HAEMOCAL" and "HEMOCAL-S" & "HEMOCAL- SZ".
2.4 It is further submitted that defendant no.1 has adopted the word 'HEMOCAL' for the reason that said name is derived from the name of the ingredients of the product. It is submitted that the word 'HEMOCAL' is a mere adaptation of the name of the basic drug. It is submitted that it is the common practice of the pharma industries to adopt the name of the ingredient/ chemical compound as the name of its product.
2.5 It is further submitted that the trademark of the plaintiff is CS(COMM)-12/2024 Suncare Formulations Pvt Ltd. & Ors. vs. Oreo Healthcare & ors. Page 8 of 39 neither unique/ distinctive nor invented. It is submitted that a medicinal preparation which is wholly derived from the name of the principle drug used in its manufacture doesn't enjoy the same protection that is available to an invented word. It is further submitted that plaintiff has suppressed so many facts and has not approached the court with clean hands. It is further submitted that the plaintiff doesn't have the locus standi to file the present suit. The case of the plaintiff has been denied by the defendant in the aforesaid manner stated above.
3.1 WS has also been filed on behalf of defendant no.2. It is submitted by defendant no.2 that defendant no.2 i.e. Synergic Pharma is a newly formed Sole Proprietorship Firm in year 2019 at Baddi, Himachal Pradesh. It is submitted that defendant no.2 is a manufacturer of pharmaceutical tablets, drops, syrup, suspensions, etc. It is submitted that defendant no.2 accept the orders from their clientele i.e. other pharmaceutical companies and thereafter procure the ordered products from the trusted vendors.
3.2 It is further submitted that defendant no.2 had received the orders of 'HEMOCAL SZ' and 'HEMOCAL-S' syrup from the Oreo Health Care Pvt. Ltd., Panchkula, Haryana. It is submitted that the above-said order consisted of '1000 X (30 ML) DROP' worth Rs. 6,500/-(Rupees Six Thousand Five Hundred Only) & '1000 X (300 ML) SYP' worth Rs. 14500/-(Rupees Fourteen Thousand Five Hundred Only). It is further submitted that the CS(COMM)-12/2024 Suncare Formulations Pvt Ltd. & Ors. vs. Oreo Healthcare & ors. Page 9 of 39 name of the product is provided by the company who places the order and the artwork /get-up is approved by them only.
3.3 It is further submitted that defendant no.2 however had made extensive research to find out as to whether the ordered products resemble with any other products having registered trademark or not. But, defendant no.2 could not find any reason to believe that the impugned work was subject to any registered trade mark. It is further submitted that defendant no.2 has not invaded or threatening to invade the right of the plaintiff.
3.4 It is further submitted that no cause of action ever arose in favour of the plaintiff to file the present suit against defendant no.2. The case of the plaintiff has been denied by the defendant no.2.
4.1 WS has also been filed on behalf of defendant no.3. It is submitted that the defendant No.3 i.e. N.B. Healthcare is a Private Limited company formed in year 2007 at Mohali, Punjab. It is submitted that the defendant no.3 is a manufacturer of pharmaceutical tablets, drops, syrup, suspensions, etc. It is submitted that defendant no.3 accepts the orders from their clientele i.e. other Pharmaceutical Companies and thereafter procure the ordered products from the trusted vendors.
4.2 It is further submitted that in the present case the defendant CS(COMM)-12/2024 Suncare Formulations Pvt Ltd. & Ors. vs. Oreo Healthcare & ors. Page 10 of 39 no.3 had received the orders of 'HEMOCAL SZ' - syrup from the Oreo Health Care Pvt. Ltd., Panchkula, Haryana. It is submitted that the above-said order consisted of "1000 X (450ML) SYP' worth Rs. 21000/-(Rupees Twenty One Thousand Only). It is submitted that the name of the product is provided by the Company who places the order and the artwork/get-up is approved by them only.
4.3 It is further submitted that defendant no.3 however had made extensive research to find out as to whether the ordered products resemble with any other products having registered trademark or not. But, defendant no.3 could not find any reason to believe that the impugned work was subject to any registered trade mark.
4.4 It is further submitted that defendant no.3 has not invaded or is not threatening to invade the right of the plaintiff. It is further submitted that no cause of action ever arose in favour of the plaintiff to file the present suit against the defendant no.3. The case of the plaintiff is denied by defendant no.3.
5. It is pertinent to mention that plaintiff has only pressed his case against defendant no.1 to 3 and only defendant no.1 to 3 have filed their WS in this case.
CS(COMM)-12/2024 Suncare Formulations Pvt Ltd. & Ors. vs. Oreo Healthcare & ors. Page 11 of 396. Replication has been filed on behalf of the plaintiff, wherein plaintiff has reiterated the submissions made in the plaint and has denied the submissions made in the Written Statement by all the three defendants.
7. Upon completion of the pleadings, the following issues were framed on 19.07.2024:
1. Whether the trade name 'HEMOCAL-S' and 'HEMOCAL-
SZ' used by defendants are not similar to the plaintiff's trade name 'HAEMOCAL'? OPDs
2. Whether there is no visual and phonetical similarity between the trade name 'HAEMOCAL' (of plaintiff) and 'HEMOCAL-S' and 'HEMOCAL-SZ' (of defendants)? OPDs
3. Whether the word 'HEMOCAL' is a generic name in the field of drugs? OPP & OPDs
4. Whether the trademark of the plaintiff 'HAEMOCAL' is not distinctive or invented by the plaintiff? OPP & OPDs
5. Whether the present dispute is not a commercial dispute within the meaning of section 2 © of Commercial Disputes Act, 2015? OPDs.
6. Whether the plaintiff is entitled for a permanent injunction thereby restraining the defendant, its directors/partners or proprietors, as the case may be their officers, servants, agents and representatives from manufacturing, selling and offering for sale advertising, directly or indirectly medicinal and pharmaceutical CS(COMM)-12/2024 Suncare Formulations Pvt Ltd. & Ors. vs. Oreo Healthcare & ors. Page 12 of 39 preparations under the trademark "HEMOCAL" and /or any other mark deceptively similar and/ or in any manner whatsoever doing any other thing as may be likely to cause confusion or deception amounting to passing off their goods and business as and for those of the plaintiffs and/or any other mark deceptively similar to the plaintiff's "HAEMOCAL" mark in terms of prayer clause A of the suit? OPP
7. Whether the plaintiff is entitled for a permanent injunction thereby restraining the defendant, its directors/partners or proprietors, as the case may be, their officers, servants, agents and representatives from manufacturing selling and offering for sale advertising, directly or indirectly medicinal and pharmaceutical preparations under the mark "HEMOCAL" filed alongwith the plaint which is identical and/or a colourful imitation or substantial reproduction of the plaintiff's "HAEMOCAL" as filed alongwith the plaint described above, amounting to infringement of copyright thereto in terms of prayer clause B of the suit? OPP.
8. Whether the plaintiff is entitled for a permanent injunction thereby delivery up and rendition of account regarding infringing goods and all goods, dies, blocks, labels, and any other printed matter bearing the impugned mark and/or the impugned packaging, to the authorized representative of the plaintiffs for the purpose of destruction/erasure and rendition of account in terms of prayer clause C of the suit? OPP
9. Whether the plaintiff is entitled for decree for damages and punitive damages of Rs. 50,00,000/- in favour of plaintiff and against the defendants in terms of prayer clause D of the suit?
CS(COMM)-12/2024 Suncare Formulations Pvt Ltd. & Ors. vs. Oreo Healthcare & ors. Page 13 of 39OPP
10. Whether the plaintiff is entitled for interest on the decreetal amount, if yes, then at what rate and for which period in terms of prayer clause E of the suit? OPP
11. Whether the plaintiff is also entitled to the cost of the suit? OPP
12. Relief.
8. (a) The matter was then kept for evidence. In order to prove the case of the plaintiff, plaintiff has examined Sh. Ravi Ranjan Verma as PW-1 who tendered his evidence by way of affidavit Ex.PW1/A. He also relied upon the following documents:
1. Certificate of Incorporation of Plaintiff No. 1. EXHIBIT- PW1/1(OSR).
2. Certificate of Incorporation of Plaintiff No. 2. EXHIBIT- PW1/2(OSR).
3. Certificate of Incorporation of Plaintiff No. 3. EXHIBIT- PW1/3(OSR)
4. Incorporation certificate of change of address of Plaintiff No. 3.
EXHIBIT-PW1/4 (Objected to that the original documents of EX.PW1/4 are net downloaded).
5. GST Certificate of Plaintiff No. 1. EXHIBIT-PW1/5 (COLLY) total 3 pages.
6. General Power of Attorney of all Plaintiffs EXHIBIT-PW176 (COLLY) running in 6 pages which is d-exhibited and Mark-A.
7. Certified Copy of order dated 08.03.2017 passed for demerger, by the Hon'ble High Court of Kolkata. EXHIBIT-PW1/7(OSR) CS(COMM)-12/2024 Suncare Formulations Pvt Ltd. & Ors. vs. Oreo Healthcare & ors. Page 14 of 39 (COLLY) running in 34 pages.
8. Receipt of filing of the TMP for transmission. EXHIBIT-PW1/8
9. Registration certificate of Trademark HAEMOCAL which is EXHIBIT-PW1/9(OSR).
10. Online status of Trademark HAEMOCAL which is EXHIBIT- PW1/10(OSR)
11. Filing Receipt for Certificate of Legal Proceeding. EXHIBIT- PW1/11.
12. Trademark License Agreement EXHIBIT-PW1/12(OSR).
13. Representation of Trademark of Plaintiff EXHIBIT-PW1/13
14. Representation of Trademark of Defendant EXHIBIT-PW1/14 (COLLY) running in 4 pages.
15. Certificate issued by Chartered Accountant and sale invoices. EXHIBIT-PW1/15 (COLLY) running in 58 pages.
16. Copy of Advertisement of Plaintiff's Product in magazine "CHAMPAK" dated August (second edition), 2023, "GRAHSHOBHA" dated August (second edition), 2023, "SARITA" dated February (First edition), 2023. EXHIBIT-PW1/16 (COLLY)(OSR) running in 5 pages.
17. Copy of the Website of Defendant No. 1 EXHIBIT-PW1/17 (COLLY) (OSR) running in 35 pages.
18. Photographs of the Sellers. EXHIBIT-PW1/18(COLLY).
19.EXHIBIT-PW1/19 is Not available in evidence by way of affidavit.
20. Copy of Legal Notice dated 02.08.2023, receipts of postal, purchase order screenshot of WhatsApp, consignment with product. EXHIBIT-PW1/20 (COLLY) running in 19 pages.
CS(COMM)-12/2024 Suncare Formulations Pvt Ltd. & Ors. vs. Oreo Healthcare & ors. Page 15 of 39(b) PW-1 was cross examined by Ld. Counsel for defendant at length. The relevant portion of his cross examination is reproduced as under:
"........this trademark is being used since 1991. HAEMO is derived from HEAM meaning Iron. It is correct that HAEMO is a generic word. It is correct that before 1991 many pharmaceutical companies may be using prefix HAEMO. Suncare Laboratory LLP i.e. plaintiff is holding the mark HAEMOCAL. It is correct that none of the defendant mentioned in the memo of parties are residing in the territorial jurisdiction of this court. HAEMOCAL is a registered mark but I cannot say about the artwork whether registered or not. It is correct that plaintiff's company manufactures the product of other interested party/company....... The product of the plaintiff HAEMOCAL is used over the counter which means this product is sold with or without prescription. It is correct that the plaintiff's brand name is HAEMOCAL and defendant's brand name is HEMOCAL-S.....It is correct that HAEMOCAL and HEAMO is derived from Heamoglobin ."
Thereafter, PE was closed.
9. (a) Matter was then kept for defence evidence. In order to prove its case, defendant no.1 has examined Sh. Raghubir Singh as DW-1 who tendered his evidence by way of affidavit Ex.DW1/A. Admittedly, he has not relied upon any document.
(b) DW-1 was cross examined by Ld. Counsel for plaintiff. Relevant portion of his cross examination is reproduced as under:
CS(COMM)-12/2024 Suncare Formulations Pvt Ltd. & Ors. vs. Oreo Healthcare & ors. Page 16 of 39"................Oreo Healthcare Pvt Ltd. is a proprietorship firm. It was formed in 2018 and do pharmaceutical work. It is correct that defendant no.2 and 3 manufactures upon the order given by defendant no.1. It is correct that the trade dress to defendant no.2 and 3 is given by defendant no.1. I do not recall the unit price of HEAMOCAL, HEAMOCAL-S, HEAMOCAL- SZ. It is correct that HEAMOCAL-S and HEAMOCAL-SZ is manufactured for children injection and drops and is sold in medical stores."
10. Final arguments heard. Record perused carefully. I have gone through the testimony of the plaintiff as well as defendant's witness and on the basis of arguments rendered by both the parties, documents, pleadings and testimony of PW-1, my issue wise findings are as follows:
Issue No.1: Whether the trade name 'HEMOCAL-S' and 'HEMOCAL-SZ' used by defendants are not similar to the plaintiff's trade name 'HAEMOCAL'? OPDs Issue No.2: Whether there is no visual and phonetical similarity between the trade name 'HAEMOCAL' (of plaintiff) and 'HEMOCAL-S' and 'HEMOCAL-SZ' (of defendants)? OPDs
11. Issue no. 1 and 2 are interconnected and hence taken together. The onus to establish above issues was upon the defendants. It is the case of the defendants that use of word 'HEMOCAL-S' and 'HEMOCAL-SZ' by the defendants have not caused any confusion and deception qua the mark of the plaintiff CS(COMM)-12/2024 Suncare Formulations Pvt Ltd. & Ors. vs. Oreo Healthcare & ors. Page 17 of 39 i.e. 'HAEMOCAL' among the public at large and between the medical professionals. It is submitted that the claim of the plaintiffs that both these words caused confusion and deception is outrightly not maintainable. It is further argued that even otherwise, plaintiff has not placed on record any document or also has not established that use of word 'HEMOCAL-S' and 'HEMOCAL-SZ' have caused confusion among the general public at large and also between the medical professionals. It is argued that defendant is a well known trader, service provider and manufacturer of wide range of drugs and combinations with highly maintained standards and quality. It is argued that defendants have not invaded in any manner the rights of the plaintiffs.
12. It is argued that the product of the defendant 'HEMOCAL- S' and 'HEMOCAL-SZ' is in no way similar to plaintiffs' product 'HAEMOCAL'. It is argued that even there is no visual similarity and no phonetic similarity between the products 'HAEMOCAL' of the plaintiffs on one side and 'HEMOCAL-S' and 'HEMOCAL- SZ' of the defendant on the other side. It is further argued that it is common practice of the Pharma Industries to adopt the name of the Ingredient/Chemical Compound as the name of its product and defendant has bonafidely adopted the chemical name of the drug by the name of 'HEMOCAL-S' and 'HEMOCAL-SZ'.
13. On the other hand, it is argued by Ld. Counsel for the plaintiffs that plaintiffs are the registered owner of the trademark CS(COMM)-12/2024 Suncare Formulations Pvt Ltd. & Ors. vs. Oreo Healthcare & ors. Page 18 of 39 'HAEMOCAL' and the trademark 'HAEMOCAL' is renewed, subsisting and continuous in use. It is argued that mark of the defendant 'HEMOCAL-S' and 'HEMOCAL-SZ' is deceptively similar mark and has been used by the defendants dishonestly in order to take benefit of the reputation of the plaintiff which the plaintiff has established after a lot of hard work put in the product and also for registration of the trademark for the same. It is further argued by Ld. Counsel for the plaintiffs that prima-facie both the names are phonetically similar and visually also similar. It is further argued by Ld. Counsel for the plaintiffs that it has been held in catena of cases by Hon'ble Apex Court as well as by various Hon'ble High Courts that matters pertaining to trademark infringement of pharmaceutical companies should be dealt with stringent action by Court to protect public health.
14. I could lay my hand on one judgment of Hon'ble Apex Court in F. Hoffman-La Roche & Co. Ltd Vs. Geoffrey Manners & Co. Pvt. Ltd. 1970 decide on 08.09.1969, wherein Hon'ble Apex Court has considered the judgment of Parker-Knoll Ltd. Vs. Knoll International Ltd. in which the test for a confusion of two words marks were formulated: The relevant paragraph is reproduced hereunder:
"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, CS(COMM)-12/2024 Suncare Formulations Pvt Ltd. & Ors. vs. Oreo Healthcare & ors. Page 19 of 39 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."
15. The comparison between the plaintiffs' and defendants' trademark is as below:
COMPARISON Plaintiff's Defendant's
Product Product
Trade mark: "HAEMOCAL "HEMOCAL"
The marks of both "
plaintiffs and defendants
are deceptively similar
except few insignificant
alterations.
Packaging the rival "HAEMOCAL "HEMOCAL"
products are sold in " Written in
similar packaging. Written in white on red
white on red background
background
Mark represented on red
back ground, with
letters in similar white
fonts. With letter "O" in
the mark as an art work
for drop of blood.
16. Accordingly, I am of this considered opinion that both the products are visually and phonetically similar and capable of creating confusion in the mind of general public at large and even in the mind of professional. Accordingly, issue no. 1 and 2 are decided in favour of plaintiffs and against the defendants.
CS(COMM)-12/2024 Suncare Formulations Pvt Ltd. & Ors. vs. Oreo Healthcare & ors. Page 20 of 39Issue No.3: Whether the word 'HEMOCAL' is a generic name in the field of drugs? OPP & OPDs Issue No.4: Whether the trademark of the plaintiff 'HAEMOCAL' is not distinctive or invented by the plaintiff? OPP & OPDs
17. Issue no. 3 and 4 are interconnected and hence taken together. The onus to establish issue no. 3 and 4 was upon both the parties. It is argued by Ld. Counsel for the defendant that the word 'HEMOCAL' is a generic name in the field of drugs and the trademark for such a generic name cannot be registered and the general public at large cannot be prevented by using such a generic name. It is argued that 'HEMOCAL' is a mere adoption of the name of basic drug and it is common practice of pharma industries to adopt the name of the ingredient/ chemical compound as the name of its product. It is further argued that when a name of product is wholly derived from the name of the principal drug used in its manufacturing, then the same is not available for protection under the trademark act.
18. On the other hand, it is argued by Ld. Counsel for the plaintiffs that trademark 'HAEMOCAL' used by the plaintiff for its product/ medicine is not a generic word and is also not a mere adoption of name of any basic drug, it is a unique and distinctive name and is invented by the plaintiffs. It is argued that in the year 2015, plaintiff no. 2, Suncare Pharmaceutical Private Limited with plaintiff no. 3 Suncare Pharmaceuticals LLP filed a company CS(COMM)-12/2024 Suncare Formulations Pvt Ltd. & Ors. vs. Oreo Healthcare & ors. Page 21 of 39 petition for demerger bearing no. 99/2015 before Hon'ble High Court at Calcutta and vide its detailed order dated 08.03.2017, Hon'ble Court has allowed the scheme for demerger. Therefore, plaintiff no. 3 as per conversion dated 02.08.2021 became proprietor of the trademark 'HAEMOCAL' and the application for registration of trademark has been filed by plaintiff no. 3.
19. It is argued by Ld. Counsel for plaintiffs that in the year 2015, plaintiff no. 2 which is a sister concern of plaintiff no. 1 filed and granted the trademark vide certificate no. 1451203 in class 5 for the word 'HAEMOCAL' and this trademark is still valid and subsisting as on date. It is argued that the word 'HAEMOCAL' cannot have generic name and has been coined by the plaintiffs and have become a recognized and exclusively associated with the plaintiffs.
20. It is argued by Ld. counsel for the plaintiffs that the 'HAEMOCAL' is a preparation made by the plaintiffs which is a syrup containing mixture of iron and folic acid and is not a generic medicine. It is argued that this medicine is formulated by Suncare Formulations Pvt. Ltd. and 'HAEMOCAL' is a specific name given to this iron and folic acid supplement.
21. I could lay my hand on a judgment of Hon'ble Delhi High Court in Automatic Electric Limited Vs. R.K. Dhawan & Anr. 1999IAD(DELHI)603, 77 (1999) DLT292 decided on 06.01.1999.
CS(COMM)-12/2024 Suncare Formulations Pvt Ltd. & Ors. vs. Oreo Healthcare & ors. Page 22 of 39The relevant paragraph of the judgment is reproduced hereunder:
"19. It is undoubtedly true that the first syllable of a work mark is generally the most important and thus, when the defendants are using a similar prefix with that of the plaintiff with a little variation in the suffix part of it, in my considered opinion, the trade marks are deceptively similar and cause of action for prima facie infringement is complete. The submission of the learned counsel for the defendants that the word "DIMMER" is a generic and descriptive word also cannot be accepted for the trade mark is "DIMMERSTAT"
and not "DIMMER" and the Court in a case of infringement of trade mark has to look into the whole of the trade mark as registered including the word "DIMMER". Since the plaintiff has been using the said trade mark for a long period of time, user of deceptively similar trade mark by the defendants would necessarily cause irreparable loss and injury to the plaintiff. In my considered opinion, balance of convenience is also in favour of the plaintiff and against the defendants."
22. In the present case, the defendants have failed to produce any credible evidence or authoritative material to establish that the word 'HEMOCAL' is a generic or commonly used term in the pharmaceutical industry. No pharmacopoeia, scientific literature, or regulatory guideline has been placed on record to show that 'HEMOCAL' refers to a known class or generic name of a medicine or compound. Mere assertions that the name is based on an ingredient or its properties are not sufficient to discharge the onus placed upon the defendants.
23. On the contrary, the plaintiffs have demonstrated that 'HAEMOCAL' is a coined term which is not directly derived from any specific compound or ingredient, and is not a generic CS(COMM)-12/2024 Suncare Formulations Pvt Ltd. & Ors. vs. Oreo Healthcare & ors. Page 23 of 39 descriptor. The addition of "HAEMO" and "CAL" in this particular configuration results in a unique and distinctive mark. The plaintiffs have shown consistent and long-term use of this mark in relation to their specific formulation, which contains iron and folic acid, and there is no evidence that this combination has acquired any generic name known as "HAEMOCAL" in the industry.
24. Furthermore, the registration of the mark 'HAEMOCAL' in Class 5 under the Trade Marks Act, 1999, and its continuous subsistence further supports the claim that it is not a generic term. A valid registration serves as prima-facie evidence of distinctiveness and ownership under Section 31 of the Trade Marks Act, 1999. Section 31 of the Trade Marks Act, 1999 is reproduced hereunder:
"Registration to be prima facie evidence of validity.
(1) In all legal proceedings relating to a trade mark registered under this Act (including applications under section 57), the original registration of the trade mark and of all subsequent assignments and transmissions of the trade mark shall be prima facie evidence of the validity thereof. (2) In all legal proceedings as aforesaid a registered trade mark shall not be held to be invalid on the ground that it was not a registrable trade mark under section 9 except upon evidence of distinctiveness and that such evidence was not submitted to the Registrar before registration, if it is proved that the trade mark had been so used by the registered proprietor or his predecessor in title as to have become distinctive at the date of registration."CS(COMM)-12/2024 Suncare Formulations Pvt Ltd. & Ors. vs. Oreo Healthcare & ors. Page 24 of 39
25. The defendants have neither challenged this registration in any appropriate forum nor shown any pending rectification proceedings, which weakens their assertion of the mark being generic or non-distinctive. The argument that names in the pharmaceutical industry are often derived from ingredients does not automatically make every such name generic. As held by the Hon'ble Delhi High Court in Automatic Electric Ltd. v. R.K. Dhawan & Anr. (Supra), even if part of a trademark is allegedly descriptive or suggestive, the trademark must be considered as a whole. In this case, the whole word 'HAEMOCAL' has acquired a secondary meaning due to the plaintiffs' longstanding and continuous use, and it identifies the source of the product as that of the plaintiff.
26. I could also lay my hand on a landmark judgment of Hon'ble Supreme Court in Cadila Healthcare Limited Vs. Cadila Pharmaceuticals Limited AIR 2001 SUPREME COURT 1952, decided on 26.03.2001. The relevant paragraphs of the judgment are reproduced hereunder:
"Dealing with the question as to whether there was likelihood of confusion between the two marks, which was the view taken by Desai, J. of the Bombay High Court in that case which was over-ruled by the Division Bench, this Court observed at page 978 as follows:
We think that the view taken by Desai, J., is right. It is well known that the question whether the two marks are likely to give rise to confusion or not is a question of first impression. It is for the court to decide that question. English cases proceeding on the English way of pronouncing an English word by Englishmen, which it may be stated is not always the same, may not be of CS(COMM)-12/2024 Suncare Formulations Pvt Ltd. & Ors. vs. Oreo Healthcare & ors. Page 25 of 39 much assistance in our country in deciding questions of phonetic similarity. It cannot be overlooked that the word is an English word which to the mass of the Indian people is a foreign word. It is well recognised that in deciding a question of similarity between two marks, the marks have to be considered as a whole. So considered, we are inclined to agree with Desai,J., that the marks with which this case is concerned are similar. Apart from the syllable co in the appellants mark, the two marks are identical. That syllable is not in our opinion such as would enable the buyers in our country to distinguish the one mark from the other. (emphasis added) * * Secondly, while dealing with the question of burden of proof in an action for infringement of trade mark, this Court in Durga Dutt Sharmas case (supra) held as under:
When once the use by the defendant of the mark which is claimed to infringe the plaintiffs mark is shown to be in the course of trade, the question whether there has been an infringement is to be decided by comparison of the two marks. Where the two marks are identical no further questions arise; for then the infringement is made out. When the two marks are not identical, the plaintiff would have to establish that the mark used by the defendant so nearly resembles the plaintiffs registered trade mark as is likely to deceive or cause confusion and in relation to goods in respect of which it is registered (Vide S. 21). A point has sometimes been raised as to whether the words or cause confusion introduce any element which is not already covered by the words likely to deceive and it has some times been answered by saying that it is merely an extension of the earlier test and does not add very materially to the concept indicated by the earlier words likely to deceive. But this apart, as the question arises in an action for infringement the onus would be on the plaintiff to establish that the trade mark used by the defendant in the course of trade in the goods in respect of which his mark is registered, is deceptively similar. This has necessarily to be ascertained by a comparison of the two marks the degree of resemblance which is necessary to exist to cause deception not being capable of definition by laying down objective standards. The persons who would be deceived are, of course, the CS(COMM)-12/2024 Suncare Formulations Pvt Ltd. & Ors. vs. Oreo Healthcare & ors. Page 26 of 39 purchasers of the goods and it is the likelihood of their being deceived that is the subject of consideration. The resemblance may be phonetic, visual or in the basic idea represented by the plaintiffs mark. The purpose of the comparison is for determining whether the essential features of the plaintiffs trade mark are to be found in that used by the defendant. The identification of the essential features of the mark is in essence a question of fact and depends on the judgment of the Court based on the evidence led before it as regards the usage of the trade. It should, however, be borne in mind that the object of the enquiry in ultimate analysis is whether the mark used by the defendant as a whole is deceptively similar to that of the registered mark of the plaintiff. * * The answer to the question whether the sound of one word resembles too nearly the sound of another so as to bring the former within the limits of Section 12 of the Trade Marks Act, 1938, must nearly always depend on first impression, for obviously a person who is familiar with both words will neither be deceived nor confused. It is the person who only knows the one word and has perhaps an imperfect recollection of it who is likely to be deceived or confused. Little assistance, therefore, is to be obtained from a meticulous comparison of the two words, letter by letter and syllable by syllable, pronounced with the clarity to be expected from a teacher of elocution. The Court must be careful to make allowance for imperfect recollection and the effect of careless pronunciation and speech on the part not only of the person seeking to buy under the trade description, but also of the shop assistant ministering to that persons wants. It is important that the marks must be compared as wholes. It is not right to take a portion of the word and say that because that portion of the word differs from the corresponding portion of the word in the other case there is no sufficient similarity to cause confusion. The true test is whether the totality of the proposed trade mark is such that it is likely to cause deception or confusion or mistake in the minds of persons accustomed to the existing trade mark. Thus in Lavroma case Lord Johnston said:
we are not bound to scan the words as we would in a question of comparatio literarum. It is not a matter for microscopic inspection, but to be taken from the general and even casual point of view of a customer CS(COMM)-12/2024 Suncare Formulations Pvt Ltd. & Ors. vs. Oreo Healthcare & ors. Page 27 of 39 walking into a shop."
On the facts of that case this Court came to the conclusion that taking into account all circumstances the words Protovit and Dropovit were so dissimilar that there was no reasonable probability of confusion between the words either from visual or phonetic point of view.
* * The boards view that a higher standard be applied to medicinal products finds support in previous decisions of this Court, Clifton Vs. Plough 341, F.2d 934, 936, 52, CCPA 1045, 1047 (1965) (It is necessary for obvious reasons, to avoid confusion in the dispensing of pharmaceuticals), Campbell Products, Inc. Vs. John Wyeth & Bro. Inc, 143, F. 2d 977, 979, 31 CCPA 1217 (1944) it seems to us that where ethical goods are sold and careless use is dangerous, greater care should be taken in the use of registration of trade marks to assure that no harmful confusion results) In the case of R.J. Strasenburgh Co. Vs. Kenwood Laboratories, Inc. reported in 106 USPQ 379, as noted in the decision of Morgenstern Chemical Companys case (supra), it had been held that:
Physicians are not immune from confusion or mistake. Further more it is common knowledge that many prescriptions are telephoned to the pharmacists and others are handwritten, and frequently handwriting is not unmistakably legible. These facts enhance the chances of confusion or mistake by the pharmacists in filling the prescription if the marks appear too much alike when handwritten or sound too much alike when pronounced."
The drugs have a marked difference in the compositions with completely different side effects, the test should be applied strictly as the possibility of harm resulting from any kind of confusion by the consumer can have unpleasant if not disastrous results. The courts need to be particularly vigilant where the defendants drug, of which passing off is alleged, is meant for curing the same ailment as the plaintiffs medicine but the compositions are different. The confusion is more likely in such cases and the incorrect intake of medicine may even result in loss of life or other serious health problems. In this regard, reference may usefully be made to the case of Glenwood Laboratories, Inc. Vs. American Home Products Corp., 173 USPQ 19(1972) 455 F.Reports 2d, 1384(1972), where it was held as under:CS(COMM)-12/2024 Suncare Formulations Pvt Ltd. & Ors. vs. Oreo Healthcare & ors. Page 28 of 39
The products of the parties are medicinal and applicants product is contraindicated for the disease for which opposers product is indicated. It is apparent that confusion or mistake in filling a prescription for either product could produce harmful effects. Under such circumstances, it is necessary for obvious reasons, to avoid confusion or mistake in the dispensing of the pharmaceuticals.
Trade mark is essentially adopted to advertise ones product and to make it known to the purchaser. It attempts to portray the nature and, if possible, the quality of the product and over a period of time the mark may become popular. It is usually at that stage that other people are tempted to pass off their products as that of the original owner of the mark. That is why it is said that in a passing off action, the plaintiffs right is against the conduct of the defendant which leads to or is intended or calculated to lead to deception. Passing off is said to be a species of unfair trade competition or of actionable unfair trading by which one person, through deception, attempts to obtain an economic benefit of the reputation which other has established for himself in a particular trade or business. The action is regarded as an action for deceit. (See Wander Ltd. Vs. Antox India Pvt Ltd., 1990 Suppl. SCC 727. Public interest would support lesser degree of proof showing confusing similarity in the case of trade mark in respect of medicinal product as against other non-medicinal products. Drugs are poisons, not sweets. Confusion between medicinal products may, therefore, be life threatening, not merely inconvenient. Noting the frailty of human nature and the pressures placed by society on doctors, there should be as many clear indicators as possible to distinguish two medicinal products from each other. It is not uncommon that in hospitals, drugs can be requested verbally and/or under critical/pressure situations. Many patients may be elderly, infirm or illiterate. They may not be in a position to differentiate between the medicine prescribed and bought which is ultimately handed over to them. This view finds support from McCarthy on Trade Marks, 3rd Edition, para 23.12 of which reads as under:
The tests of confusing similarity are modified when the goods involved are medicinal products. Confusion of source or product between medicinal products may produce physically harmful results to purchasers and greater protection is required than in the ordinary case. If the goods involved are medicinal products each with different effects and designed for even subtly different uses, confusion among the products CS(COMM)-12/2024 Suncare Formulations Pvt Ltd. & Ors. vs. Oreo Healthcare & ors. Page 29 of 39 caused by similar marks could have disastrous effects. For these reasons, it is proper to require a lesser quantum of proof of confusing similarity for drugs and medicinal preparations. The same standard has been applied to medical products such as surgical sutures and clavicle splints."
27. Accordingly, I am of the considered view that the mark 'HAEMOCAL' is not generic in nature, and is distinctive and coined by the plaintiffs. The defendants have failed to discharge their onus to show otherwise. Therefore, both Issue No. 3 and Issue No. 4 are decided in favour of the plaintiffs and against the defendants.
Issue No.5: Whether the present dispute is not a commercial dispute within the meaning of section 2 © of Commercial Disputes Act, 2015? OPDs.
28. The onus to prove the said issue was upon the defendants. It is argued by the Ld. Counsel for the defendants that the present case does not qualify as a commercial dispute under the Commercial Courts Act, 2015, and therefore the present suit is not maintainable before a commercial court.
29. On the other hand, it is submitted by the Ld. Counsel for the plaintiffs that the present dispute clearly falls within the scope of a commercial dispute as defined under Section 2(c) of the Act. It is argued that the case relates to infringement of a registered trademark, which is a commercial asset of the plaintiffs and forms part of intellectual property rights specifically covered under CS(COMM)-12/2024 Suncare Formulations Pvt Ltd. & Ors. vs. Oreo Healthcare & ors. Page 30 of 39 clause (xvii) of Section 2(c) of the Act. Section 2 (1) (c) of the Commercial Courts Act, 2015 is reproduced hereunder:
"commercial dispute" means a dispute arising out of--
(i)ordinary transactions of merchants, bankers, financiers and traders such as those relating to mercantile documents, including enforcement and interpretation of such documents;
(ii)export or import of merchandise or services;
(iii)issues relating to admiralty and maritime law;
(iv)transactions relating to aircraft, aircraft engines, aircraft equipment and helicopters, including sales, leasing and financing of the same;
(v)carriage of goods;
(vi)construction and infrastructure contracts, including tenders;(vii)agreements relating to immovable property used exclusively in trade or commerce;
(viii)franchising agreements;
(ix)distribution and licensing agreements;
(x)management and consultancy agreements;
(xi)joint venture agreements;
(xii)shareholders agreements;
(xiii)subscription and investment agreements pertaining to the services industry including outsourcing services and financial services;
(xiv)mercantile agency and mercantile usage;(xv)partnership agreements;
(xvi)technology development agreements; (xvii)intellectual property rights relating to registered and unregistered trademarks, copyright, patent, design, domain names, geographical indications and semiconductor integrated circuits;
(xviii)agreements for sale of goods or provision of services; (xix)exploitation of oil and gas reserves or other natural resources including electromagnetic spectrum; (xx)insurance and re-insurance;
(xxi)contracts of agency relating to any of the above; and (xxii)such other commercial disputes as may be notified by the Central Government."
30. I have considered the submissions made by both sides. The definition of "commercial dispute" under Section 2(c) of the Commercial Courts Act, 2015, includes disputes relating to CS(COMM)-12/2024 Suncare Formulations Pvt Ltd. & Ors. vs. Oreo Healthcare & ors. Page 31 of 39 "intellectual property rights relating to trademarks, copyright, patent, design, domain names, geographical indications and semi- conductor integrated circuits." The present dispute clearly arises out of the alleged unauthorized use of the plaintiffs' registered trademark 'HAEMOCAL' by the defendants, which squarely falls within this definition.
31. Therefore, there is no doubt that the present suit pertains to a commercial dispute involving intellectual property rights, and the plaintiffs were well within their right to file this suit before the commercial court. The mere fact that the subject matter involves a medicine or pharmaceutical product does not take it outside the purview of a commercial dispute, especially when the core issue revolves around use and protection of a trademark.
32. Accordingly, I find that the defendants have failed to establish that the present suit is not a commercial dispute. The issue is, therefore, decided in favour of the plaintiffs and against the defendants.
Issue No.6: Whether the plaintiff is entitled for a permanent injunction thereby restraining the defendant, its directors/partners or proprietors, as the case may be their officers, servants, agents and representatives from manufacturing, selling and offering for sale advertising, directly or indirectly medicinal and CS(COMM)-12/2024 Suncare Formulations Pvt Ltd. & Ors. vs. Oreo Healthcare & ors. Page 32 of 39 pharmaceutical preparations under the trademark "HEMOCAL" and /or any other mark deceptively similar and/ or in any manner whatsoever doing any other thing as may be likely to cause confusion or deception amounting to passing off their goods and business as and for those of the plaintiffs and/or any other mark deceptively similar to the plaintiff's "HAEMOCAL" mark in terms of prayer clause A of the suit? OPP
33. The onus to prove the said issue was upon the plaintiff. This issue is about whether the plaintiffs can stop the defendants from using the mark 'HEMOCAL', which is confusingly similar to their mark 'HAEMOCAL'. As already held under Issue Nos. 3 and 4, the trademark 'HAEMOCAL' is not a generic word-it is distinctive and coined by the plaintiffs. It has been validly registered and used by them since 2015.
34. The defendants' use of the mark 'HEMOCAL', which is nearly identical in spelling, pronunciation, and appearance, is clearly causing confusion among consumers. This kind of use can mislead people into believing that the defendants' product is somehow connected to or approved by the plaintiffs, which is not the case.
35. Hence, the defendants must be permanently restrained from using the mark 'HEMOCAL' or any other mark that is deceptively similar to 'HAEMOCAL', to avoid confusion or passing off. Therefore, this issue is decided in favour of the plaintiffs and CS(COMM)-12/2024 Suncare Formulations Pvt Ltd. & Ors. vs. Oreo Healthcare & ors. Page 33 of 39 against the defendants.
Issue No.7: Whether the plaintiff is entitled for a permanent injunction thereby restraining the defendant, its directors/partners or proprietors, as the case may be, their officers, servants, agents and representatives from manufacturing selling and offering for sale advertising, directly or indirectly medicinal and pharmaceutical preparations under the mark "HEMOCAL" filed alongwith the plaint which is identical and/or a colourful imitation or substantial reproduction of the plaintiff's "HAEMOCAL" as filed alongwith the plaint described above, amounting to infringement of copyright thereto in terms of prayer clause B of the suit? OPP.
36. This issue relates to whether the defendants have copied not only the name 'HAEMOCAL' but also the look and feel of the plaintiffs' product packaging, making it a case of copyright infringement.
37. From the comparison of the packaging and label filed by the plaintiffs, it is clear that the defendants have substantially reproduced the artistic features and get-up of the plaintiffs' label. The overall presentation, layout, and style used by the defendants are clearly inspired from the plaintiffs' packaging.
CS(COMM)-12/2024 Suncare Formulations Pvt Ltd. & Ors. vs. Oreo Healthcare & ors. Page 34 of 3938. The plaintiffs hold copyright in the label design and artistic features used on the 'HAEMOCAL' packaging. The use of deceptively similar visual elements by the defendants amounts to infringement of this copyright under the Copyright Act. Therefore, the plaintiffs are entitled to a permanent injunction restraining the defendants from using the infringing packaging. This issue is decided in favour of the plaintiffs and against the defendants.
Issue No.8: Whether the plaintiff is entitled for a permanent injunction thereby delivery up and rendition of account regarding infringing goods and all goods, dies, blocks, labels, and any other printed matter bearing the impugned mark and/or the impugned packaging, to the authorized representative of the plaintiffs for the purpose of destruction/erasure and rendition of account in terms of prayer clause C of the suit? OPP
39. Since it has been held in the previous issues that the defendants have infringed both the trademark 'HAEMOCAL' and the copyright in the packaging, the plaintiffs are entitled to not only stop further use, but also to have all infringing materials-like labels, blocks, dies, and products-surrendered and destroyed to prevent further misuse. In such trademark and copyright disputes, courts routinely grant delivery up and destruction of infringing material to ensure that the wrongful activity does not continue. The defendants cannot be allowed to retain or reuse the infringing materials.
CS(COMM)-12/2024 Suncare Formulations Pvt Ltd. & Ors. vs. Oreo Healthcare & ors. Page 35 of 3940. Hence, the plaintiffs are entitled to a permanent injunction along with delivery up and destruction of infringing goods and materials. The issue is decided in favour of the plaintiffs and against the defendants.
Issue No.9: Whether the plaintiff is entitled for decree for damages and punitive damages of Rs. 50,00,000/- in favour of plaintiff and against the defendants in terms of prayer clause D of the suit? OPP Issue No.10: Whether the plaintiff is entitled for interest on the decreetal amount, if yes, then at what rate and for which period in terms of prayer clause E of the suit? OPP
41. The onus to prove the said issue was upon the plaintiff. The plaintiffs have claimed a total amount of Rs. 50,00,000/- as damages and punitive damages for the alleged infringement of their trademark 'HAEMOCAL' and for causing loss to their goodwill and reputation. However, it is noted that no specific evidence has been led by the plaintiffs to prove actual damages suffered, such as loss of business, market share, or profits due to the defendants' use of the mark 'HEMOCAL'.
42. That being said, the findings under the earlier issues clearly establish that:
CS(COMM)-12/2024 Suncare Formulations Pvt Ltd. & Ors. vs. Oreo Healthcare & ors. Page 36 of 39(a) The plaintiffs are the rightful and prior users of the mark 'HAEMOCAL';
(b)The defendants used a deceptively similar mark 'HEMOCAL';
(c) Such use is likely to deceive the public and amounts to infringement and passing off;
(d) The defendants also imitated the plaintiffs' product packaging and overall presentation.
43. In such cases, even if no detailed proof of damage is led, the Court has the discretion to award nominal or symbolic damages, especially when the infringement is proven and is likely to have caused harm to the business reputation and goodwill of the plaintiffs. The object is also to discourage dishonest conduct in the market.
44. Considering the facts and circumstances of the case, and balancing the lack of specific evidence with the established wrongful conduct of the defendants, this Court deems it appropriate to award a sum of Rs. 1,00,000/- (Rupees One Lakh only) as damages in favour of the plaintiffs. Therefore, this issue is partly decided in favour of the plaintiffs and against the defendants, and plaintiffs are awarded Rs. 1,00,000/- as damages, though the full claim of Rs. 50,00,000/- is not granted for want of concrete evidence.
CS(COMM)-12/2024 Suncare Formulations Pvt Ltd. & Ors. vs. Oreo Healthcare & ors. Page 37 of 39Issue No.11: Whether the plaintiff is also entitled to the cost of the suit? OPP
45. Parties to bear their own costs.
Relief.
46. In view of the findings on the issues above, the suit of the plaintiffs is hereby decreed. The plaintiffs are entitled to the following reliefs:
(a) A permanent injunction is granted in favour of the plaintiffs and against the defendants, their directors/partners or proprietors, officers, servants, agents, and representatives, restraining them from manufacturing, selling, offering for sale, or advertising-
directly or indirectly-any medicinal or pharmaceutical products under the mark "HEMOCAL" or any other mark deceptively similar to the plaintiffs' mark "HAEMOCAL", so as to prevent confusion or deception in the market or passing off.
(b) A permanent injunction is also granted restraining the defendants and all persons acting on their behalf from using, copying, reproducing, or issuing packaging and labeling materials which are identical or deceptively similar to the plaintiffs' artistic work/label of "HAEMOCAL", as filed along with the plaint, thereby amounting to infringement of the plaintiffs' copyright.
(c) The defendants are further directed to hand over to the authorized representative of the plaintiffs all infringing goods, CS(COMM)-12/2024 Suncare Formulations Pvt Ltd. & Ors. vs. Oreo Healthcare & ors. Page 38 of 39 including cartons, labels, dies, blocks, packaging materials, printed matter, advertising material, and any other articles bearing the impugned mark "HEMOCAL" or any similar mark, for the purpose of destruction or erasure.
(d) The plaintiffs are also awarded a sum of Rs. 1,00,000/- (Rupees One Lakh only) as damages, to be paid by the defendants.
47. Parties to bear their own costs. Decree-sheet be prepared accordingly. File be consigned to Record Room after due compliance. Digitally signed NEELAM by NEELAM SINGH Announced & dictated SINGH Date: 2025.04.15 04:45:23 +0530 in the open Court on this 15th day of April, 2025 (NEELAM SINGH) District Judge (Commercial Court-02) South-East, Saket Courts, ND CS(COMM)-12/2024 Suncare Formulations Pvt Ltd. & Ors. vs. Oreo Healthcare & ors. Page 39 of 39