Charak Pharmaceuticals (India) ... vs Glenmark Pharmaceticals Limited
2007 Latest Caselaw 827 Bom

JUDGMENT

A.M. Khanwilkar, J.

Page 1533

1. This order will dispose of the prayer for ad-interim relief pressed on behalf of the plaintiffs during pendency of the Notice of Motion.

2. In substance, the plaintiffs' case is that the plaintiffs are the originator of the trade mark "EVANOVA"and have adopted the same for its Medicinal Page 1534 and Pharmaceutical preparation since 1999. It is the plaintiffs case that the plaintiffs have got the trade mark registered bearing No. 849756. The plaintiffs are relying on documents to support its claim that the trade mark "EVANOVA" which is a registered trade mark under Class-5 in respect of its Ayurvedic Medicinal preparation, is being manufactured and marketed by the plaintiffs since the time of registration. According to the plaintiffs, the plaintiffs learnt about the illegal activities of the defendants of infringement of the plaintiffs' registered trade mark "EVANOVA" and of passing off their product as that of the plaintiffs product. That came to the plaintiffs notice in or about June 2006. As a result, the plaintiffs gave legal notice to the defendants on 15th September 2006 by registered post. The defendants gave reply to the said legal notice denying the fact that they were indulging in any illegal activity of infringement of plaintiffs' registered trade mark or of passing off.

3. According to the defendants, the defendants have independently evolved the trade mark "ECONOVA" in the year 2006 and have applied for registration thereof on 27th February 2006 vide application No. 1424608 in Class-5 in respect of Pharmaceutical and Medicinal preparations. It is the case of the defendants that the plaintiffs cannot claim any right in respect of the suffix "NOVA" as "NOVA" means "Novel" or "New". The prefix "ECO" in their trade mark "ECONOVA" makes it completely different from the plaintiffs mark phonetically, aurally and visually. Besides, it is the case of the defendants that their Pharmaceutical product is sold by prescription only, in contrast to the plaintiffs product which is sold across the counter being an OTC product. For such reasons the defendants assert that there is no similarity in the two marks and that the plaintiffs cannot claim any exclusive right over the suffix "NOVA".

4. It is not in dispute that the reply sent by the defendants raising the above points dated 27th September 2006, was duly received by the plaintiffs. However, the present suit has been filed in this Court only on 13th June 2007 and the matter is now moved for ad-interim relief.

5. At the hearing, counsel for the plaintiffs more or less restated the stand taken by the plaintiffs in the legal notice to the effect that the mark adopted by the defendants is phonetically and structurally deceptively similar to that of the mark of the plaintiffs and was likely to create confusion in the minds of the consumers. It was argued that the defence taken on behalf of the defendants was unacceptable in view of the settled legal position. Learned Counsel placed reliance on the decision of the Apex Court in Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. . According to the plaintiffs, the defence taken on behalf of the defendants is squarely answered in this decision. Besides, the plaintiffs would rely on the decision in the case of Lupin Laboratories Ltd. v. Jain Products reported in 1999-PTC(19)- 118 to contend that the products of the plaintiffs and that of the defendants deal in the same area, the standard of scrutiny will have to reckon whether there was phonetical and structural similarity in the Page 1535 two marks which pertains to the same class of goods and whether they were likely to cause confusion in the minds of men of ordinary intelligence. This decision is also pressed into service to deal with the objection of the defendants that mere inaction of the plaintiffs does not amount to acquiescence but something more is necessary to be pleaded and proved. Counsel for the plaintiffs has also placed reliance on the decision of the Apex Court in the case of Midas Hygiene Industries (P) Ltd. and Anr. v. Sudhir Bhatia and Ors. particularly paragraph No. 5 thereof which takes a view that mere delay in bringing an action is not sufficient to defeat grant of an injunction in cases where the Court prima facie finds that adoption of mark was itself dishonest. Reliance is then placed on the decision of our High Court in case of Ranbaxy Laboratories Ltd. v. Cherryb Pharma reported in 2006(1)-AIR-Bom-565 and the case of Ranbaxy Laboratories Ltd. v. Indkus Biotech (P) Ltd. Mumbai reported in 2006(1)-AIR-Bom-569 and Rediff Communication Ltd. v. Cyberbooth and Anr. reported in AIR-2000-Bom-27 particularly paragraph No. 18 thereof to buttress the argument that the Court will have to note similarities of the two marks and not decide on the basis of dis-similarities and more particularly to keep in mind whether the mark adopted by the defendants was likely to cause confusion with the mark of the plaintiffs. Reliance is also placed on the observations in the decision of the House of Lords in the case of Parker-Knoll Ltd. v. Knoli International Ltd. which takes a view that it is not necessary that the marks adopted by the opposite party should be intended to deceive or intended to cause confusion. It is further observed in the said decision that we do not have to look into the mind of the user to see what he intended. Its probable effect on ordinary people which you have to see. On the above basis it was contended that the defendants be injuncted from infringing the registered trade mark of the plaintiffs as well as from indulging in passing off or enable others to pass off the defendants' goods as for the goods of the plaintiffs or in some way concerned with the plaintiffs.

6. On the other hand, counsel for the defendants besides reiterating the stand taken by the defendants in the reply sent by the defendants to the legal notice, would contend that the plaintiffs are not entitled for any indulgence as they have approached this Court for ad-interim relief without due deligence in spite of learning about the existence of the product manufactured and marketed by the defendants at least from June 2006. It is then contended that the mark of the defendants is phonetically, structurally and visually different and dis-similar to that of the mark of the plaintiffs. Moreover, there are other products already in the market which are Class-5 items pertaining to Medicinal and Pharmaceutical preparations having words suffix "NOVA". A list of such products is appended to the reply affidavit Exhibit-F from pages 73 to 92. Most of the products referred to therein are already registered. It was, therefore, argued that the test to be applied in such situation is expounded by the Apex court in the case of Cora Products Refining Co. v. Shangrila Food Products Ltd. in Page 1536 particular paras 13 and 15 thereof. Reliance is also placed on the decision of our High Court in the case of Ranbaxy Laboratories Ltd. v. Indohemie Health Specialities Pvt. Ltd. reported in 2002(24)-PTC-510 (Bom). According to the learned Counsel, there was marked difference between the two marks adopted by the respective parties and there was no possibility of any confusion by any standards. More so, the product of the defendants was available only against prescription and not across the counter as is the case of the plaintiffs' product. For the aforesaid reasons, according to the defendants, no relief be granted at this stage as several contentious issues have been raised on behalf of defendants which will have to be examined in depth at the hearing of the motion. It is vehemently urged that as the plaintiffs have admitted in paragraph 26 of the plaint that they learnt about the impugned activities of the defendants in or about June 2006, however, chose to give legal notice to the defendants only in September 2006 and even after the reply was received from the defendants, approached this Court with prayers for grant of ad-interim relief only now after institution of the suit in June 2007. This, according to the defendants, is a good reason for declining any indulgence or discretionary relief to the plaintiffs.

7. Having considered the rival submissions I have no difficulty in acceding to the later submission made on behalf of the defendants. It is seen that the plaintiffs have conceded that they learnt about the impugned activities in or about June 2006, as asserted in paragraph 26 of the plaint. Indeed, the counsel for the plaintiffs at the hearing would submit that the month mentioned in the plaint is a mistake. However, such argument cannot be countenanced so long as the averments in para 26 remain unaltered. Even if that contention was to be accepted, the fact remains that the plaintiffs gave legal notice to the defendants on 15th September 2006 and in response thereto the defendants sent its reply on 27th September 2006. The fact that the said reply was received by the plaintiffs in September 2006 is not in dispute at all. No explanation is forth coming as to what prevented the plaintiffs to institute the present suit till June 2007 and to move this Court for ad-interim relief at this belated stage. To get over this position the counsel for the plaintiffs would rely on the exposition in the case of Midas Hygine Industries (P) Ltd. and Anr. v. Sudhir Bhatia and Ors. (supra). Indeed, in this decision the Court has noted that mere delay in bringing an action is not sufficient to defeat grant of injunction in cases of infringement of trade mark. In the present case, however, it is seen that in spite of knowledge of infringement in June 2006, the plaintiffs have chosen to file the present suit only in June 2007 that too without offering any explanation as to what prevented the plaintiffs to institute the suit in earlier point of time. It is therefore, a clear case of inaction on the part of plaintiffs. That can be a good consideration at least to refuse the prayer for ad-interim relief. Inasmuch as, request for ad-interim relief ought to be considered only if the plaintiffs had approached the Court with utmost dispatch. If the plaintiffs fail to show any urgency, as in this case for almost a year, will not be entitled for the discretionary relief.

Page 1537

8. Counsel for the plaintiffs would, however, contend that mere inaction is not sufficient to infer acquiescence. This submission, however, overlooks that I am not rejecting the prayer for ad-interim relief on the finding of acquisence by the plaintiffs as such. All that I propose to observe is that as the plaintiffs have not approached this Court promptly, are not entitled to ask for discretionary order of ad-interim relief to be passed against the defendants during the pendency of the Notice of Motion. For, the plaintiffs have waited for over one year to ask for such relief in the present case. In other words, I am not expressing any opinion on the correctness of the stand of the rival parties on merits but denying the relief of ad-interim relief to the plaintiffs on the ground that they have not approached the Court at the earliest opportunity and more particularly for having failed to offer any explanation whatsoever for such long delay of one year.

9. Accordingly, prayer for ad-interim relief is rejected. Instead, the Notice of Motion shall proceed for hearing on 29th September 2007 before the appropriate bench. Parties to exchange the pleadings well in advance to be filed in the registry on or before 14th September 2007.

10. It is made clear that the Notice of Motion will have to be heard and decided on its own merits in accordance with law, uninfluenced by any observations in the present order as the same are made only to consider the prayer for grant of ad-interim relief.