Delhi High Court
Sun Pharmaceutical Industries Ltd vs Amra Remedies Ltd. & Ors. on 30 August, 2013
Author: Jayant Nath
Bench: Jayant Nath
* IN THE HIGH COURT OF DELHI AT NEW DELHI
Date of decision: 30.08.2013
+ CS (OS) 630 of 2013
SUN PHARMACEUTICAL INDUSTRIES LTD. ..... Plaintiff
Through Mr. Sachin Gupta, Advocate
versus
AMRA REMEDIES LTD. & ORS. ..... Defendants
Through Mr. Deepak Gogia, Advocate for D-3
CORAM:
HON'BLE MR. JUSTICE JAYANT NATH
JAYANT NATH, J. (ORAL)
1. Arguments have been heard in the suit. The defendant no. 1 and 2 entered appearance once but have not appeared thereafter. They were proceeded ex parte vide Order dated 04.07.2013. The present suit is filed by the plaintiff for permanent injunction restraining the infringement of its registered trade mark 'EYEMIST' by the defendants. Defendant no.3 has as recorded in Order dated 23.05.2013 has stated that prior to the institution of the suit he was manufacturing the products under the impugned mark of the present suit but is no longer manufacturing the said products and will not manufacture the products carrying the impugned mark.
2. It is the contention of the plaintiff that it is a company incorporated under the Companies Act, 1956 under the name of M/s Sun Pharmaceutical Industries Ltd. and is engaged in the business of marketing drugs and formulations in India and abroad. It is the CS (OS) No. 630/2013 Page 1 of 7 contention of the plaintiff that it is involved in the manufacture of specialty pharmaceuticals and active pharmaceutical ingredients since 1983. It is further the contention of the plaintiff that is has a consolidated annual turnover of Rs. 5806.58 crores and is ranked no. 1 in India in specialty therapy areas like psychiatry, neurology and cardiology and is amongst top 3 in a total of seven therapy areas as mentioned in para 2 of the plaint.
3. It is the contention of the plaintiff that one of its medicinal preparations manufactured and marketed by the plaintiff is an ophthalmic lubricant under the trade mark EYEMIST. It is contended that the plaintiff's product under the mark EYEMIST contains Hydroxypropyl Methyl Cellulose. It is the contention of the plaintiff that the said product is a mist for dry eyes, used when an artificial tears solution is not effective. It is also used to treat eye disorders, protects eyes from injury, infection and to decrease symptoms of dry eyes such as burning and itching. It is further the contention of the plaintiff that the said product under the name and style of EYEMIST is commercially used by the plaintiff since October 2003 and is a coined and invented mark with inherent distinctiveness.
4. It is stated that the trade mark EYEMIST is registered in India in class 5 since 13.10.2003. It is stated by the plaintiff that the said trade mark has acquired goodwill and reputation as a badge of quality drug in the market. The plaintiff has further stated that the product has achieved annual sales of Rs. 9837 lacs.
CS (OS) No. 630/2013 Page 2 of 75. It is the contention of the plaintiff that in the first week of February, 2013, the plaintiff came to know about the adoption of the impugned trade mark IMIST by the defendants, which is deceptively similar to the plaintiff's registered trade mark EYEMIST and is using it in relation to a moisturising cream. On further research, the plaintiff discovered that defendant no. 2 has applied for registration of the impugned trade mark on 18.10.2011 in class 3 claiming user since 06.09.2011.
6. It is the contention of the plaintiff that the defendants are separate companies incorporated under the Companies Act, 1956 and all are engaged in the manufacturing and marketing of pharmaceutical products. The product under the impugned mark is being manufactured by defendant no. 3 and marketed by defendant no. 1. The defendant no.2 has applied for registration of the impugned mark before the Trade Mark Registry as mentioned above. The plaintiff however states that it is not aware of the exact constitution and relation between the defendants.
7. It is stated by the plaintiff that it sent a notice dated 06.02.2013 calling upon the defendants to cease and desist from manufacturing/ marketing and using the impugned trade mark IMIST in relation to pharmaceutical and medicinal preparations. The defendant no. 1 vide its reply dated 22.02.2013 refused to comply with the cease and desist notice of the plaintiff on the ground that the impugned mark is being used for selling a moisturising cream. Defendant no. 3 in its reply dated 15.02.2013 to the notice of the plaintiff stated that the impugned mark belongs to defendant no. 1 and 2 and it has been manufacturing the product under CS (OS) No. 630/2013 Page 3 of 7 the impugned mark for defendant no. 1 by virtue of an alleged Supply Agreement.
8. It is the contention of the plaintiff that the product under the impugned mark is manufactured and marketed by pharmaceutical companies and such products are sold over the same counters, hence there arises a strong likelihood of confusion due to identical phonetic similarity between the plaintiff's trade mark and the impugned mark of the defendants. The plaintiff contends that any unauthorised use thereof or any other identical or similar mark by any unauthorised trader would inevitably lead to erosion of the distinctiveness of the registered trade mark EYEMIST which has been sold in the name of plaintiff since October, 2003. It is also the contention of the plaintiff that the use of the impugned mark IMIST by the defendants constitutes act of misrepresentation and passing off defendant's goods.
9. Mr. Hani Rizvi, Assistant Manager of the plaintiff concern has led evidence on behalf of the plaintiff as PW1. He has stated that one of the medicinal preparations manufactured and marketed by the plaintiff is an ophthalmic lubricant, which is an all-natural mist for dry eyes under the trademark EYEMIST. Original Carton of the plaintiff's medicine has been proved and placed on record as Exhibit PW-1/3. He has also proved the copy of the FDA license dated 01.11.2007 issued in favour of the plaintiff to manufacture medicinal products under the trademark EYEMIST is placed on record as Exhibit PW-1/4. It is averred by him that the mark EYEMIST is an invented and coined word indicating trade origin and source of medicinal preparations of the plaintiff. He has CS (OS) No. 630/2013 Page 4 of 7 averred that the said product is being manufactured and has been extensively commercially used by the plaintiff since October, 2003. Originals of sales invoices of the plaintiff for the period of 2003-13 are proved and are Exhibit PW-1/6(colly). He states that the mark EYEMIST has been registered in India under class 5 vide Registration no. 1242761 dated 13.10.2003. A copy of Trademark Registration Certificate and Trade Mark Journal is proved and is collectively placed as Exhibit PW1/7. He has further proved the annual sales achieved by the plaintiff for the above mentioned medicinal product. The copy of CA certificate certifying sales figures of the plaintiff's product for the period of 2003-12 is placed on record as Exhibit PW-1/8.
10.It is stated in the evidence that the defendants are engaged in the business of manufacturing and marketing pharmaceutical products. . It is further stated that the plaintiff in the first week of February, 2013 came to know about the adoption of the impugned trade mark IMIST by the defendants, which is deceptively similar to the trade mark of the plaintiff EYEMIST and is using it in relation to a moisturizing cream. Original carton of the defendant's medicine IMIST is placed on record as Exhibit PW-1/12. It is also stated that the product under the impugned mark is being manufactured by defendant no. 3 and marketed by defendant no. 1, whereas, defendant no. 2 has applied for registration of the impugned mark 'IMIST' before the Trade Mark Registry. Copy of electronic record from the official website of the Indian Trade Mark Registry with respect to Defendant no.2's trade mark application for the mark IMIST under no. 2222030 is proved and is Exhibit PW-1/9. It is CS (OS) No. 630/2013 Page 5 of 7 stated that the plaintiff vide its notice dated 06.02.2013 called upon the defendants to cease and desist from manufacturing/ marketing and using the impugned mark IMIST. Office copy of the said notice is proved and is placed as Exhibit PW-1/10. The reply of defendants no. 1 and 2 to the said notice is also proved and is Exhibit PW-1/11. It is further averred in the evidence that the defendants were well aware of the plaintiff's flagship brand/trade name EYEMIST and knowingly, with dishonest intention adopted and conceived the impugned mark IMIST. It is further averred that defendant no.2 has also mischievously applied for the registration of the impugned trade mark. It is stated that the trade mark IMIST is visually, structurally and phonetically identical to the plaintiff's trade mark EYEMIST and that the defendants are deriving profits by practicing deception and misappropriating the goodwill and reputation that already subsist in the trade mark EYEMIST of the plaintiff.
11.In view of the averments made in the plaint and the un-rebutted evidence filed by the plaintiff, the plaintiff has established that it is a registered proprietor of the said trade mark EYEMIST in class 5, thus has a statutory right to the exclusive use of the same. The plaintiff has also proved that the use of the mark IMIST by the defendants constitutes a violation of plaintiff's statutory right as it is structurally, visually and phonetically identical to the registered trade mark of the plaintiff EYEMIST. The act of the defendants also appears to be lacking bonafide. The goods are sold from the same counter and sold under the deceptively similar trade mark will lead to passing off the goods of CS (OS) No. 630/2013 Page 6 of 7 defendants as that of the plaintiff.
12.Learned counsel for the plaintiff has submitted that he does not press the relief for rendition of account of profits.
13.Accordingly, a decree of permanent injunction is passed in favour of the plaintiff and against defendants No.1 and 2 restraining the said defendants from selling, advertising, dealing or preparing any pharmaceutical preparations or cosmetics under the trademark EYEMIST or any other trademark that may be deceptively similar with the trade mark EYEMIST of the plaintiff. The plaintiff shall also be entitled to costs of the present Suit.
JAYANT NATH, J AUGUST 30, 2013 Sh Signed today i.e. 21.12.2013 CS (OS) No. 630/2013 Page 7 of 7