Bombay High Court
Macleods Pharmaceuticals Ltd. vs Tidal Laboratories P. Ltd. And Anr. on 27 October, 2005
Equivalent citations: 2006(32)PTC221(BOM)
JUDGMENT S.U. Kamdar, J.
1. Though I am considering only the ad-interim application the matter has been argued at length by both the learned Counsel and both wanted the matter to be heard at the ad-interim stage and not final. In that view of the matter I am required to grant a detailed reasoned order which I accordingly pass herein.
2. The present application for ad-interim is moved by the plaintiff on cause of action of passing off under the provisions of the Trade and Merchandise Marks Act, 1999. The plaintiffs are seeking an injunction from this Court restraining the defendant from in any manner using the impugned trade mark named 'Rabemax' or any other mark deceptively similar to the plaintiff trade mark of 'Rabemac' so as to pass off the plaintiff product as that of the defendant. By prayer (b) Court Receiver is sought in respect of various materials, packages, cartons and the articles and dyes. It is the case of the plaintiff that the plaintiff is entitled to injunction on the basis of passing off cause of action because the plaintiffs mark 'Rabemac' is closely similar to the defendants mark 'Rabemax'. It is the case of the plaintiff that the plaintiff is using the said mark 'Rabemac' in relation to the medicinal preparations manufactured by the plaintiff being Rabemac 10, Rabemac 20, Rabemac DSR. Sometime in or about 21.3.2002 the plaintiffs claimed to have filed an application for registration of the mark 'Rabemac' under Application No. 10899361 under Clause V of the Schedule to the Trade Marks Act. The mark of the plaintiffs have been advertised and application is pending for registration. It is further the case of the plaintiff that the plaintiffs have been using the mark from March 2002 though the application which has been produced by the plaintiff at Ex.B to the plaint purportedly indicates user since 2001. In para 7 of the plaint the explanation sought to be given is that the plaintiffs have conceived the mark in 2001 and, therefore, the user is mentioned since 2001 though infact the goods are sold in the market only from October 2002. The plaintiff has set out their sales figure in Ex.D which inter-alia states that the sales figures are from October 2002 to 31.8.2005. The plaintiff has contended that the plaintiff is the exclusive user of the mark 'Rabemac' and the defendant is not entitled to use the said mark 'Rabemac' and/or any deceptively similar mark such as 'Rabemax' used by the defendants in relation to the medicinal preparations.
3. The learned Counsel for the defendant has resisted the said application for passing off on various grounds. Firstly it has been contended that the defendant is already a proprietor of the said mark as they are the holder of registered trade mark and registration certificate has been issued on 7.1.2005 by the Trade Mark Registry and the plaint falsely proceeds on a footing that the defendant is not a holder of the registered trade mark but his application is pending for registration. It has been contended that in view of the mark registered in favour of the defendant herein the plaintiff is not entitled to maintain the action of plassing off.
4. The next contention advanced by the learned Counsel for the defendant that the goods which are manufactured by the plaintiff and the defendant is a common molecule 'Rabeprozale sodium'. Thus, the word 'Rabe' is used both by the plaintiff and the defendant to indicate that the goods are manufactured from the said molecule 'Rabeprozale sodium'. He has further contended that the word 'Rabe' as a prefix is being used by many parties and has nothing so special about the same insofar as the plaintiffs are concerned. The learned Counsel has further contended that the plaintiffs have come to the Court with a false case that they are using the mark since 2001 and or that the figures shown as if the same are for entire period of 2002-2003. Learned counsel for the defendant has contended that admittedly the licence to manufacture the drug has been received by the plaintiff in September 2002 and thereafter the sales has commenced only from October 2002. He has further contended that for a month of October 2002 there is only one sales as indicated by the invoice at Ex. C.I dated 23.10.2002. As against that the plaintiff has contended that it is an admitted position that the plaintiffs are in market since November 2002 and their sales figure produced before me indicates that for the period November 2002 to March 2003 the sales has been of Rs. 16,81,605 and for subsequent period the sales figures have grown. The learned Counsel has further taken me through documents which are produced by him in the course of the hearing to show that the adoption of the mark by the defendant has not been dishonest and or with intention to pass off the goods of the plaintiff. It has been contended that as far back as September 2002 i.e. prior to the mark of the plaintiff coming in the market in October 2002 the defendant have cause a search report made by the Trade Mark Attorneys in the record of Trade Registry to ascertain whether they can use the mark inrespect of 'Rabimac' and after making such inquiries they decided to have the mark 'Rabemax' instead of 'Rabima' and therefore it is not the dishonest adoption of the mark belonging to the plaintiff. Learned counsel for the defendant has also contended that the word 'Rabe' as it is mentioned above is a generic word pertaining to the ingredient of the said medicine and the word 'MAX' is use for maximum power of the said medicine. He has contended that in view of the fact that the defendant adopted the mark much prior to he plaintiff mark coming in market in October 2002 and goods with the said mark being sold in market since November 2002 it cannot be stated that the defendants adoption of the mark is dishonest or lacks bona fide.
5. The learned Counsel for the plaintiff has on the other hand contended that the registration of the mark by the plaintiff is irrelevant factor in passing off action. By placing reliance on the Single bench Judgment of the Delhi High Court in the case of Whirlpool Co. and Anr. v. N.R. Dongre and Ors. 1996 PTC (16) and the Judgment of the Apex Court in the case of N.R. Dongre v. Whirlpool Corporation 1996 PTC (16) it has been contended that a mere registration of the mark is no ground for refusing the relief in a passing off action. I have perused the Judgment of the Delhi High Court as well as the Judgment of the Supreme Court. While interpreting Sub-section (2) of Section 27 of the Trade Mark Act the Court has taken a view that the registration of the mark is not a decisive factor in an action of passing off and merely because registration is granted, the relief cannot be refused inrespect of passing off action. However in my opinion it is one of the factor which should be considered while granting the relief for passing off action though it may not be a decisive factor in refusing to grant relief in passing off action. The learned Counsel for the plaintiff has thereafter relied upon the Judgment of the Supreme Court in the case of Midas Hygiene Industries P. Ltd. and Anr. v. Sudhir Bhatia and Ors. 2004 (28) PTC 121 (SC) and has contended that in a case of passing off action the relief must be granted even if there is a delay in bringing action, once it is prima facie established that the adoption of the mark was itself dishonest.
6. The learned Counsel for the defendant has on the other hand has relied upon the Judgment of the Supreme Court in the case of Uniply Industries Ltd. v. Unicorn Plywood Ltd. and Ors. and the Judgment of the Division Bench in Appeal No. 498 of 2002 in Notice of Motion No. 725 of 2002 in Suit No. 1305 of 2002 in the case of Bal Pharma Ltd. v. Wockhardt Ltd. decided on 12.6.2002. I have considered the law as cited before me. I am of the opinion that it is true that the registration is not a decisive factor in view of the provisions of Section 27(2) of the Trade Mark Act, 1999. However on considering the matter on its facts I am of the opinion that the plaintiff is not entitled to any ad-interim injunction. It is because for a passing off action it must be shown that the perpetual injunction by the defendant is a dishonest adoption and it should be with the intention to pass off the goods belonging to the plaintiff. I am also of the further opinion that the test of prior user to is required to be satisfied by showing that infact by virtue of the sale in the market of goods belonging to the plaintiff the mark was well known in the market and, therefore, the defendant has sought to adopt with an intention to pass off his goods as that of the plaintiff. In the present case from the record it is clear that the sales of the plaintiff has commenced only in October 2002 because it is an admitted fact that the drug licence was issued only in September 2002 and Ex. D in which figures of sales are set out also indicates that sales figures are from October 2002 to 31.8.2005. It is not in dispute that the defendant has come in the market with the goods in November 2002 which is almost simultaneously with that of the plaintiff herein. At the time when the defendant came in the market with intention to sell the goods it cannot be stated that by virtue of any prior user the plaintiffs have obtaine such a reputation that the defendant has adopted the mark with a dishonest intention to pass-off his goods as that of the plaintiff.
7. I am of the further opinion that the plaintiff is also not entitled to ad-interim orders because as far back as 14.5.2003 the defendant had intimated to the plaintiff that they have filed their application for registration of the mark 'Rabemax' in relation to their goods. Not only the plaintiff did not oppose the application before the trade Mark Registry but even did not file a suit for passing off for almost two years. The only explanation given in the plaint was that the goods of the plaintiffs were not available in the market from September 2003 onwards till recently in October 2005. The defendant have produced the sales figures of sales during this period which runs to about Rs. 1,24,93,698. In that view of the matter it is not possible to accept the contention of the plaintiff that the defendant has come in the market recently in October 2005. In my opinion the plaintiff has permitted the defendant to use the mark from November 2002 till date and the user of the plaintiff of their own mark and the defendants of their mark has been concurrent since October/November 2002. In that view of the matter I am of the opinion that at this ad-interim stage no case is made out for grant of any ad-interim injunction. Thus, Application rejected for ad-interim reliefs.
Motion is made returnable in usual course.