Bombay High Court
Aristo Pharmaceuticals Pvt. Ltd vs Innova Cap Tab And Another Ig on 24 December, 2013
Bench: S.J. Kathawalla
KPPNair 1 NMSL 1839/2013
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
ORDINARY ORIGINAL CIVIL JURISDICTION
NOTICE OF MOTION (L) NO. 1839 OF 2013
IN
Suit (L) NO. 826 OF 2013
Aristo Pharmaceuticals Pvt. Ltd. ... Applicant
In the matter between:
Aristo Pharmaceuticals Pvt. Ltd. ... Plaintiff
v/s.
Innova Cap Tab and another ig . Defendants
Dr. B.B. Saraf along with Ms. Pooja Kshirsagar and Mr. B.N. Poojari, instructed by
M/s. Asian Patent Law, for the Plaintiff.
Mr. Y.S. Khochane, instructed by Mr. Sanjeev S. Hariakar, for Defendant No.2.
CORAM : S. J. KATHAWALLA, J.
Order
reserved on
: 12
December, 2013
th
Order pronounced on: 24 December, 2013
th
ORDER:
1. The Plaintiff has filed the present Suit against the Defendants inter alia for a
perpetual order of injunction restraining the Defendants from infringing the
Plaintiff's registered trademark 'MONTINA'. By the present Notice of Motion, the
Plaintiff has sought an order of temporary injunction against the Defendants from
manufacturing and marketing any medicinal preparation/product by using the mark
MONTINA-L.
2. The Plaintiff is engaged in the business of manufacturing and sale of medicinal
and pharmaceutical preparations. The Defendant No. 2 is carrying on business in
KPPNair 2 NMSL 1839/2013
marketing of medicinal and pharmaceutical preparation in the State of Gujarat and
the Defendant No.1 is the manufacturer of several pharmaceutical and medicinal
preparation of Defendant No.2. In December, 2002, the Plaintiff (then a Public
Limited Company being Aristo Pharmaceuticals Limited) originally conceived and
adopted a trademark being 'MONTINA', to be used for its medicinal/pharmaceutical
preparations. The Plaintiff thereafter conducted a search and did market survey and
did not find any mark which was identical and/or similar to MONTINA in India or
elsewhere. On 31 st December, 2002, the Plaintiff applied for and got the
trademark MONTINA registered in Class 5, for medicinal and pharmaceutical
preparations. The registration was granted on 9 th March, 2005 which is effective
from the date of application i.e. 31 st December, 2002. The Plaintiff was subsequently
converted into a Private Limited Company i.e. Aristo Pharmaceuticals Pvt. Ltd. The
Plaintiff's name as a Private Limited Company is also recorded as the subsequent
proprietor in the Register of Trademarks. The registration of the trademark was
renewed on 31st December, 2012 for a further period of ten years in favour of the
Plaintiff. The registration of the trademark is thus valid and subsisting.
3. In June, 2013, the Plaintiff commenced manufacturing of medical preparation
in the form of syrup and tablets which was to be marketed under the trademark
MONTINA. In August, 2013, the Plaintiff commenced selling the medicinal
preparation under the trademark MONTINA-L. Since then the Plaintiff is selling the
said medicinal preparation in tablet as well as syrup form.
KPPNair 3 NMSL 1839/2013
4. Sometime in September, 2013, the Plaintiff came across the Defendants'
medicinal preparation sold under the identical trademark MONTINA-L. On 19 th
September, 2013, the Plaintiff filed the above Suit against the Defendants for
infringement of its trademark and passing off the Defendants' goods as those of the
Plaintiff's by the Defendants' use of the trademark 'MONTINA'. The Plaintiff also
took out the above Notice of Motion seeking ad-interim and interim reliefs. The
Plaintiff apprehended that if the notice of the application for ad-interim relief is
given to the Defendants, the Defendants will either remove the stock of medicinal
preparation bearing trademark MONTINA-L or flood the market with the
pharmaceutical preparation bearing trademark MONTINA-L. Therefore, an
application for ad-interim relief was made ex parte. On 27 th September, 2013, this
Court granted the following ex parte ad-interim injunction in favour of the Plaintiff:
"Pending the hearing and final disposal of the Notice of Motion, the
Defendants by themselves and/or their servants, agents,
representatives and/or any person(s) claiming under or through
them are restrained from infringing the Plaintiff's trademark
'MONTINA' under registration No. 1162864 in Class 05 in Exhibit
A-1 & Exhibit A-2 hereto by adopting and/or in any manner using
the mark 'Montina-L' or any mark identical with and/or
deceptively similar to, and/or colourable imitation of the registered
trademark 'MONTINA' in relation to medicinal and/or
pharmaceutical preparations or similar goods".
5. On 2nd October, 2013, Defendant No.2 appeared before this Court and filed an
affidavit in reply to the above Notice of Motion wherein the Defendant No.2 mainly
KPPNair 4 NMSL 1839/2013
contended the following:
(i) The trademark 'MONTINA' was invented by Defendant No.2 in the year
2008. The prefix 'MONT' is taken from the principal drug 'Montelukast' and 'INA' is
taken from the name of the Company ANIKEM.
(ii) At the time of the adoption of the trademark, the Plaintiff's products were not
available in the market and therefore the adoption is honest.
(iii) Defendant No.2 has spent monies on the sales/promotional activities.
(iv) Since the year 2009, Defendant No. 2 is openly, regularly and extensively
using the trademark 'MONTINA-L' in relation to their medicinal and pharmaceutical
preparations as can be seen from the sales figures provided by the Defendant No. 2.
(v) Defendant No.2 is selling the medicinal preparation in the market since 2009
and the present Suit is filed by the Plaintiff in the year 2013. Therefore there is a
delay on the part of the Plaintiff in filing the above Suit.
(vi) The Plaintiff has allowed Defendant No.2 to continue, expand and consolidate
the business under the trademark 'MONTINA'.
6. The Plaintiff has filed an affidavit in rejoinder denying the aforestated
allegations including the sales figures of the medicinal preparation under the
trademark 'MONTINA-L', as asserted by the Defendant No.2 in their affidavit in reply.
7. The submissions advanced before this Court by the Learned Advocate
appearing for the Plaintiff are briefly set out hereunder:
KPPNair 5 NMSL 1839/2013
7.1 The Plaintiff's trademark validly subsists on the Register of Trademarks
since 31st December, 2002 and the use of any identical and/or deceptively similar
trademark by the Defendant amounts to infringement of the Plaintiff's trademark.
7.2 The adoption and/or use of the trademark 'MONTINA-L' by the Defendants is
subsequent to the Plaintiff's said registration of the trademark 'MONTINA'. The
Plaintiff is a registered proprietor of the trademark MONTINA and the use of
identical trademark by the Defendants amounts to infringement of the Plaintiff's
trademark.
7.3 The Defendants' subsequent adoption and/or unauthorized use of its
trademark 'MONTINA' and/or any mark identical with and in any case deceptively
similar thereto is an infringement of the Plaintiff's trademark thereby violating the
Plaintiff's statutory rights to proprietorship and exclusive use of the trademark in
respect of the said goods.
7.4 The adoption and use of the trademark by the Defendant is admittedly
subsequent to the Plaintiff's registration and therefore the defence under Section 34
of the Trademarks Act, 1999 ("the Act") is not available to the Defendants.
7.5 The dictum of the Hon'ble Supreme Court in the case of Cadila Health
Care Ltd. vs. Cadila Pharmaceuticals Ltd. 1 and the findings/observations of the
Division Bench of this Court in the matter of Bal Pharma Ltd. vs. Centaur
Laboratories Pvt. Ltd. and another2 will squarely apply to the present case.
7.6 The reliefs sought by the Plaintiff in the above Notice of Motion therefore be
granted.
1 AIR 2001 SC 1952 (Paras 32 to 35)
2 2002 (24) PTC 226 (DB)
KPPNair 6 NMSL 1839/2013
8. The Learned Advocate appearing for the Defendant No.2 during his
arguments advanced the submissions set out in paragraph 5 above. However, when
the written submissions were filed on behalf of Defendant No.2, this Court noticed
that the Defendant No. 2 has traversed far beyond what was either pleaded or
argued before this Court. An incorrect and unhealthy trend of filing written
submissions traversing far beyond what is pleaded or what is argued before the
Court has now set in. Such conduct on the part of a party and/or his Advocate us
most improper and the same is strongly deprecated. However, I have considered all
the submissions made by the parties including the submissions made on behalf of
Defendant No. 2 in its written submissions.
9. The Defendants have in the affidavit in reply not pleaded that the Plaintiff's
registration is invalid. The Advocate for the Defendants also did not submit in the
course of his arguments that this Court is empowered to go behind a registration.
However, in the written submissions it has been extensively submitted, relying upon
the judgments of the Hon'ble Delhi High Court and the other courts, to contend that
the Court can go behind the registration. It is also contended that the issue
whether the Court can go behind the registration has been referred to a larger Bench
of this Court. However, as submitted by the Learned Advocate appearing for the
Plaintiff, it has been the consistent view of this Court in various judgments that it is
not permissible to go behind the registration of a trademark more so in an interim
proceeding and that till the mark remains on the Register, others ought not to be
KPPNair 7 NMSL 1839/2013
permitted to imitate the same. In the case of Hindustan Embroidery Mills Pvt. Ltd. vs.
K. Ravindra and Co.3 it was held that it is not the practice to consider the validity of
the registration of the trademark on a motion for interlocutory injunction taken out
by a person who has got the mark registered in his name. While the mark remains in
the Register (even wrongly) it is not desirable that others should imitate it. Similar
view has been taken by this Court in (i) Poddar Tyres vs. Bedrock Sales Corporation
Ltd.4; (ii) Biochem Pharmaceuticals vs. Biochem Synergy5; (iii) Indchemie Health
Specialities v. Naxpar Labs6; (iv) Maxheal Pharmaceuticals vs. Shalina Laboratories 7;
(v) Kores (India) Ltd. v. Whale Stationery Products 8; (vi) Bade Miya vs. Mubin Ahmed9;
and (viii) ITM Trust vs. Educate India Society10. In the light of the binding precedents
of this Court, the reliance on judgments of the other Courts, including in the case of
Marico Ltd. vs. Agrotech Food Ltd 11, SBL vs. Himalaya Drug12, Kivi Labs vs. Sun
Pharmaceuticals13, Lowenbrau Ag and another vs. Jagpin Breweries 14, is misconceived.
The mere fact that in the case of Lupin Ltd. vs. Johnson & Johnson 15, the learned
Single Judge of this Court has referred the issue as regards the power of the Court to
go behind a registration to a larger bench, does not in any manner dilute the binding
precedents of this Court till the same are expressly set aside. It is settled law that
3 (1974) 76 Bom LR 146.
4 AIR 1993 Bom. 237 (Para 51)
5 (1997) 99 Bom LR 538
6 2002 (3) Mh LJ 744
7 Judgment dated 16th Feb. 2005 of a Division Bench of this Court in Appeal No. 88 of 2005 in NMS No.
2638 of 2004
8 2008 (36) PTC 463 (Bom)
9 2011 (3) Mh LJ 813
10 Unreported judgment dated 20th July, 2012 in NMS No. 310 of 2012 in S. No. 284 of 2012
11 2010 (44) PTC 736 DB
12 1997 (17) PTC 540 DB
13 Laws (MAD) - 2012-10-9
14 2009 (39) PTC 726 Del
15 Judgment dated 12th Sept. 2012 in NMSL 2178 of 2012 in SL No. 1842 of 2012
KPPNair 8 NMSL 1839/2013
pending a reference, the prevailing judgments continue to be binding precedents.
9.1 The Defendants have also relied upon the case of M/s. J.K. Sons vs. Parksons
Games and Sports16 (which relies on a judgment of this Court in Abdul Cadur Alliboy
vs. Mahomedally Hyderally17) and has contended that this judgment is in conflict
with the view expressed by the Division Bench of this Court in Maxheal
Pharmaceuticals vs. Shalina Laboratories (supra). It is submitted that the said
judgments i.e. M/s. J.K. Sons (supra) and Abdul Cadur Alliboy (supra) hold that a
person who himself has imitated somebody else's mark/copyright and is guilty of
false and misleading representation is not entitled to an injunction and the same is
applicable to the cases of infringement of trademark and passing off. However, the
Defendants in the present case have neither pleaded nor proved that the Plaintiff has
copied the trademark of some other manufacturer and therefore the reliance placed
on the judgment of M/s. J.K. Sons (supra) is completely misplaced.
9.2 In the circumstances, the question of going behind the registration of the
Plaintiff's trademark as contended by the Defendant No.2 does not arise.
10. It is next submitted on behalf of the Defendant No. 2 that though the Plaintiff
got its trademark 'MONTINA' registered since 2002, the Plaintiff has not used the
said trademark until August, 2013. As against this, the Defendant No.2 has been
selling its medicinal preparation in the market since 2009 and the total sales
16 2011 (47) PTC 443 (Bom)
17 1901 (3) Bom. L.R. 220
KPPNair 9 NMSL 1839/2013
turnover of the Defendants are as follows:
Sr. Year Total Sales Turnover (INR)
No. MONTINA Tab MONTINA-L Tab. MONTINA-l syrup
1 2009-10 33,520.00 ... ....
2 2010-11 12,564.00 3,92,320.00 ....
3 2011-12 .... 6,85,600.00 88,639.00
4 2012-13 .... 8,97,512.40 2,37,212.40
5 2013-14 4,95,998.20 1,51,698.00
April-
September
It is therefore submitted that the Defendants being the prior user of the mark
'MONTINA-L', the Plaintiff is not entitled to seek any restraint orders against the
Defendants on the ground of alleged infringement of the Plaintiff's registered
trademark 'MONTINA'.
10.1 In order to deal with the above submission, it is necessary to reproduce hereunder
Section 34 of the Act. The same reads as under:
"34. Saving for vested rights.-- Nothing in this Act shall entitle the
proprietor of a registered user of a registered trademark to interfere
with or restrain the use by any person of a trademark identical with
or nearly resembling it in relation to goods in relation to which that
person or a predecessor in title of his has continuously used that
trademark from a date prior-
(a) to the use of the first mentioned trade mark in relation to those
goods by the proprietor or a predecesssor in title of his; or
(b) to the date of registration of the first mentioned trademark in
KPPNair 10 NMSL 1839/2013
respect of those goods in the name of the proprietor or a
predecessor in title of his;
whichever is the earlier, and the Registrar shall not refuse (on such
use being proved) to register the second mentioned trade mark by
reason of the registration of the first mentioned trademark
(emphasis supplied).
10.2 A bare reading of Section 34 of the Act in my view, makes it clear that in
order to avail the benefit of Section 34 of the Act, the use of a trademark by a
person other than the registered proprietor must be prior to the date of use by the
registered proprietor or the date of the registration, whichever is earlier. Thus, in
circumstances where the use by a Defendant is prior to the use by the registered
proprietor, but not prior to the date of registration, the benefit of Section 34 of the
Act is not available. In the present case, the registration is effective as of 2002
whereas Defendant No. 2 claims to have used the mark only from 2009. In such
circumstances, no alleged right of the Defendant is saved under Section 34 of the
Act.
10.3 As pointed out by the Plaintiff, a similar view was taken by the Division Bench
of this Court (in an Appeal from an ad-interim order) in the matter of Bal Pharma
Ltd. vs. Centaur Laboratories Pvt. Ltd. (supra).
11. The Defendants have next contended that the trademark of the Plaintiff has
become liable to be removed from the Register of Trademarks under Section 47 (1)
KPPNair 11 NMSL 1839/2013
(b) of the Act. The Defendant No.2 has in support of this contention relied on the
decision of the Hon'ble Supreme Court in the case of American Home Products
Corporation vs. Mac Laboratories and others18.
11.1 Section 47 (1) (b) of the Act is reproduced hereunder for ready reference:
"47. Removal from register and imposition of limitations on
ground of non-use.- (1) A registered trade mark may be taken off
the register in respect of the goods or services in respect of which it is
registered on application made in the prescribed manner to the
Registrar or the Appellate Board by any person aggrieved on the
ground either-
(a) ... ... .... ...
(b) that up to a date three months before the date of the application,
a continuous period of five years from the date on which the trade
mark is actually entered in the register or longer had elapsed during
which the trade mark was registered and during which there was no
bona fide use thereof in relation to those goods or services by any
proprietor thereof for the time being.
.... ..... .... .."
11.2 From a reading of Section 47 set out hereinabove, in my view it is clear
that the said Section gives a right to an aggrieved person to make an application to
the Registrar or the Appellate Board for removal of the trademark from the Register
of Trademarks, if the grounds as set out in Section 47 of the Act exist and the same
are proved. However, this does not empower a person to use a mark by infringing a
18 AIR 1986 SC 137
KPPNair 12 NMSL 1839/2013
registered mark, till such time as it is removed from the Register. The reliance
placed by the Defendants on the judgment of the Hon'ble Supreme Court in the case
of American Home Products Corporation vs. Mac Laboratories and others (supra) will
not lend assistance to the Defendants. The said case was a case arising from an
application for removal of a mark from the Register and as such has no application
whatsoever to a Suit for infringement of a registered trademark which continues to
subsists on the Register. The judgment does not in any manner hold that in an
infringement action, while the registration of the mark still continues to subsists, it is
open to the Defendant to raise the contention that there was no bona fide intention
on the part of the registered proprietor to use the mark when the mark was
originally registered.
11.3 In view thereof the contention of the Defendant No. 2 that the trademark
of the Plaintiff has become liable to be removed from the Register of the Trademarks
under Section 47 (1) (b) of the Act is rejected.
12. The Defendant No.2 has also contended that they have derived the trademark
MONTINA from the name of a generic pharmaceutical ingredient called
"MONTELUKAST" . It is further contended that the drug was initially developed at a
place called MONTREL. It is contended that since the trademark is derived from the
name of the main ingredient drug, no single manufacturer can claim monopoly on
the generic word. In support of this contention the Defendant No. 2 has relied upon
the decisions in SBL Limited vs. Himalaya Drug Company(supra) and Kiwi Labs v. Sun
KPPNair 13 NMSL 1839/2013
Pharmaceuticals (supra).
12.1 As correctly pointed out by the Plaintiff, the Defendant No. 2 in its affidavit in
reply has merely stated as to how it coined the mark MONTINA but has not raised a
specific plea to prove that the mark is generic, and therefore the Plaintiff does not
have a monopoly despite the registration. In the absence of such a plea, an
argument of this nature cannot be raised across the bar. Again, the very fact that
Defendant No. 2 claims that MONTINA is a coined mark, is a clear admission by
them that the same is novel and original. In any case, this contention is devoid of
merit. It is the contention of the Defendants that they used the word 'MONT' from
the name of a generic drug. As regards the remaining portion of the mark 'INA', the
only explanation given by the Defendant is that it is the reverse form of the first
three letters of the name of the Defendant No.2 i.e. 'ANIkem'. The explanation as to
how the Defendants derived the very name which is absolutely identical to that of
the Plaintiff is not bona fide and does not inspire any confidence. In any event, as
stated hereinabove, once a mark is registered, it is not open to any person so long as
the mark remains on the Register, to contend that the same has been derived from its
generic drug and therefore invalid.
12.2 Applying the aforesaid principle, this Court has in different judgments, in
the context of registered trademarks, dealt with the contention that the mark has
been derived from a generic name. In the case of Wyeth Holdings Corporation and
KPPNair 14 NMSL 1839/2013
another vs. Burnet Pharmaceutical (Pvt.) Ltd. 19, the learned Single Judge of this
Court was considering the case of the Plaintiff, wherein the Plaintiff alleged
infringement of its trademark "FOLVITE" in Class 5. The Defendant was earlier using
the mark FOLCACID which was subsequently changed to FOLV. The Learned Judge
observed thus:
"18. The contention of the Defendant is that the mark FOLVITE is a
combination of FOL which stands for folic acid and VIT which is an
abbreviation for Vitamin. The theory propounded by the Defendant is
that the Plaintiffs cannot assert a monopoly over folic acid on the one
hand and Vitamin on the other by adding an "e" to an abbreviation of
the two words. This argument of the Defendant clearly misses the
point and there are several reasons why it cannot be accepted. First
and foremost, the word FOLVITE has absolutely no meaning in the
English language. It is an invented word. As the Supreme Court
observed in Cadila, it is not right to take a part of a word and
compare it with a part of another. Each word must be taken as a
whole and compared as a whole with the other. 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."
19. Secondly, it is a settled principle of law that so long as a mark
continues on the Register, it is not open to the Defendant in an action
for infringement to question the validity of the registration. Sub-
section (1) of Section 31 postulates that in all legal proceedings
relating to a trade mark registered under the Act, the original
registration of the trademark and of all subsequent assignments and
19 2008 (36) PTC 478
KPPNair 15 NMSL 1839/2013
transmissions of the mark shall be prima facie evidence of the validity
thereof. The sequitur of the submission of the Defendant is that the
mark of the Plaintiffs comprises of a generic description of two
elements, namely folic acid and Vitamin, resulting thereby in the mark
losing its distinctive character. During the course of the submissions,
however, Mr. Dhond, the Learned Counsel appearing on behalf of the
Defendant who argued the case with felicity, submits that the
Defendant does not question the distinctive character of the mark of
the Plaintiffs or the validity of the mark. The mark of the Plaintiffs
constitutes a composite invented word and it would not be open to the
Defendant by a process of breaking down the mark to claim that it is
only a combination of common elements. Such an exercise would be
impermissible and so long as the mark continues to be borne on
the Register of Trade Marks, the validity of the mark cannot be
questioned."
Relying upon the above judgment, a similar view has been taken by another Judge
of this Court in SMS Formulations Pvt. Ltd. and M/s. Santacruz Medical Stores vs.
Sahib Singh Agencies (Bom.) Ltd. and others20 .
12.3 The judgments relied upon by the Defendants in support of its case are not at
all applicable to the present case. The judgment of the Delhi High Court in SBL
Limited vs. Himalaya Drug Company (supra) relied upon by the Defendant is a
judgment in interim proceedings and is reversed at the final stage. Furthermore, this
judgment held that whether such feature is 'publici juris' or generic is a question of
fact. Furthermore, in that case it was established by documentary evidence that
there were about 100 drugs in the market which had similar abbreviation as prefix
20 2012 (5) Bom CR 858
KPPNair 16 NMSL 1839/2013
or suffix. In the present case, the Defendant has not even pleaded this ground and
no evidence has been led by the Defendant in this regard. The reliance on the
judgment in Kivi Labs vs. Sun Pharmaceuticals (supra) by Defendant No. 2, is also
completely misplaced and is contrary to the view taken by this Court. It is submitted
that the Plaintiff's trademark is an invented word and as long as its validity exists on
the Register, its validity cannot be questioned.
13. It is also contended on behalf of Defendant No.2 in its written submissions
that various manufacturers who are manufacturing the 'MONTELUKAST' drug are
using the prefix 'MONT' as a part of their trademark. The Plaintiffs have correctly
contended that the contention of 'common to trade' is a matter of fact and ought to
have been pleaded and proved by the Defendant No.2 in its affidavit in reply. In the
absence of any such plea, it is not permissible to raise such a plea in the course of
arguments. It is further correctly submitted on behalf of the Plaintiff that an
argument of 'common to trade' is an argument in support of a contention that there
is no deceptive similarity between the two marks and there is no likelihood of any
confusion. By raising a plea of 'common to trade' in arguments, what the Defendants
are attempting to plead is that there are a series of similar marks available in the
market containing common features which results in a consumer to be more
discerning and pay more attention to the features which are different, and this
reduces the likelihood of confusion. This can never be an argument available in
circumstances where the marks are identical. In the present case, both the marks are
identical marks and the plea of 'common to trade' is completely misplaced and
KPPNair 17 NMSL 1839/2013
misconceived.
13.1 In any event, in order to succeed in the defence of 'common to trade', the
Defendants are required not only to plead but also to prove with cogent material
that there are similar marks in the market and the same are in extensive use. This
ratio is laid down in the following judgments:
(i) Corn Products Refining Co. vs. Shangrila Food Products Ltd. 21. It was held that the
series of marks containing the common elements can only assist the defendant when
these marks are in extensive use in the market. The onus of proving such user is
of course on the person, who wants to rely on the marks.
(ii) Pidilite Industries Ltd. vs. S.M. Associates and others22:
"..if a Defendant in a Suit for infringement of its trade mark seeks to
rely upon the series theory in resisting the claim, he must establish the
user upon which the objection is founded. It is further held that even in
interim proceedings, it is not sufficient merely for the Defendant to show
prima facie that there is some user of the marks. There must be prima
facie evidence to show extensive use. At the final hearing of the Suit the
level of proof required is higher - the matter requiring to be proved viz.
"extensive or substantial use" remaining the same".
13.2 The Defendants have also submitted that the Defendants have been
marketing its products since 2009 and that there has been delay and acquiescence
on the part of the Plaintiff. The Plaintiff has submitted that there is no delay on the
part of the Plaintiff in instituting the present Suit. The Plaintiff has stated that the
21 AIR 1960 SC 142
22 2004 (28) PTC 193
KPPNair 18 NMSL 1839/2013
sales figures of Defendant No. 2 are minuscule and which could have hardly been
noticed by the Plaintiff. This Court has noted that the Defendant No.2 has not
produced any evidence that it ever advertised its products under the said mark. In
any event, where a party has used a mark in the face of a registered trademark
without even bothering to take search in the Register, such use is at the Defendants
own risk and it is not open to the Defendants to then raise a contention of delay. I
am in complete agreement with the findings/observations of this Court in the case of
Bal Pharma (supra). Paragraph 11 of the said decision is relevant and reproduced
hereunder:
"11. Then we turn to the question of delay and acquiescence. Mr.
Tulzapurkar, learned Counsel appearing for the Respondent cites the
judgment of the Supreme Court in Power Control Appliances and Ors.
vs. Sumeet Machines Pvt. Ltd.23 wherein the Supreme Court
approvingly referred to the judgment of the Appeal Court in England in
Electrolux LD v. Electrix and quoted a passage therefrom in paragraph
34 of its judgment. Our attention was also drawn to the judgment in
Electrolux itself. Reference to the judgment in Electrolux shows that
there is no hard and fast rule that delay per se would defeat an
application for interlocutory injunction. The judgment indicates that in
a situation where the defendant to an action has been using the mark,
even if concurrently, without making himself aware of the fact as to
whether the same mark is the subject-matter of the registration and
belongs to another person, the first person cannot be heard to complain
for he has been using it negligently in as much as he has not taken the
elementary precaution of making himself aware by looking at the public
record of Registrar as to whether the mark in question is the property of
23 (1994) 1 SCR 708
KPPNair 19 NMSL 1839/2013
another. If, however, he had taken search and, knowing full well that the
mark was the property of another person, continues to use the mark,
then he runs the risk of a registered proprietor challenging his action for
infringement and merely because it is done at a subsequent stage, he
cannot be heard to complain on the ground of delay. Further discussion
in the judgment shows that in order to deny an interlocutory injunction,
the delay must be such as to have induced the defendant or at least to
have lulled him into a false sense of security to continue to use the trade
mark in the belief that he was the monarch of all he surveyed. In our
judgment, such are not the circumstances here. We are not satisfied
from the record that a search was taken of the registry by the Appellant
to assure itself that there was no other person who owned the mark
"MICRODINE". Assuming that the search was taken, and the Appellant
has done it consciously, then the Appellant has to thank itself for having
gambled by investing large amounts in a risky venture. Either way, we
do not think that the defence can succeed, at this stage, at least."
13.3 In any case, it is settled law that in case of infringement, delay is never a
defence. In Midas Hygine Industries vs. Sudhir Bhatia and others 24, it was held by the
Hon'ble Supreme Court that the law on the subject is well settled. In cases of
infringement either of the trademark or of copyright normally an injunction must
follow.
13.4 Again, the concept of acquiescence is very distinct and different from delay.
Mere delay is never an answer to an action for infringement. In so far as the plea of
acquiescence is concerned, a mere allegation of inaction is not sufficient. The
24 2004 (28) PTC 121 (SC)
KPPNair 20 NMSL 1839/2013
Courts have repeatedly held that acquiescence requires tacit or express consent;
not merely silence or inaction. This has been repeatedly held by the Courts in
various judgments including in (i) Schering Corporation and Ors. vs. Kilitch and Co. 25,
(ii) Heinz Italia and another vs. Dabur India Ltd. 26 and (iii) Hindustan Pencils Pvt.
Ltd. vs. M/s. India Stationery Products Co. and Anr.27
13.5 In Power Control Appliances and others vs. Sumeet Machines (supra) the
Hon'ble Supreme Court observed as under:
"26. Acquiescence is sitting by, when another is invading the
rights and spending money on it. It is a course of conduct
inconsistent with the claim for exclusive rights in a trademark,
trade name, etc. It implies positive acts; not merely silence or
inaction such as is involved in laches. It is important to
distinguish mere negligence and acquiescence. Acquiescence is one
fact of delay. If the Plaintiff stood by knowingly and let the
Defendants build upon important trade until it had become
necessary to crush it, then the Plaintiffs would be stopped by their
acquiescence. If the acquiescence in the infringement amounts to
consent, it will be a complete defence"
In the aforesaid judgment, the Hon'ble Supreme Court has quoted with approval the
judgment in the case of Willmott v. Barber28(as he then was) at p. 105 and the
following passage therefrom is reproduced hereunder:
"'It has been said that the acquiescence which will deprive a man of
25 1990 1 PLR 1: PTC (supp) (2) 22 Bom.
26 (2007) 6 SCC 1
27 AIR 1990 Delhi 19 (Para 39)
28 (1880) 15 Ch. D. 96 by Fry. J.
KPPNair 21 NMSL 1839/2013
his legal rights must amount to fraud, and in my view that is an
abbreviated statement of a very true proposition. A man is not to be
deprived of his legal rights unless he has acted in such a way as would
'make it fraudulent for him to set up those rights'. Let me pause here
to say that I do not understand that, by the word 'fraudulent', the
learned Judge was thereby indicating conduct which would amount to
a common law tort of deceit. 'What, then, are the elements or
requisites necessary to constitute fraud of that description?' In the
first place 'the plaintiff must have made a mistake as to his legal
rights'. Secondly, the plaintiff must 'have expended some money or
must have done some act (not necessarily upon the defendant's land)
on the faith of his mistaken belief. Thirdly, the defendant, the
possessor of 'the legal right, must know of the existence of his own
right which is inconsistent with the right claimed by the plaintiff. If
he does not know of it he is in the same position 'as the plaintiff, and
the doctrine of acquiescence is founded upon conduct with a
knowledge' of your legal rights. Fourthly, the defendant, the possessor
of the legal right, must know 'of the plaintiff's mistaken belief of his
rights. If he does not, there is nothing which' calls upon him to assert
his own rights. Lastly, the defendant, the possessor of the legal 'right,
must have encouraged the plaintiff in his expenditure of money or in
the other acts which he has done, either directly or by abstaining
from asserting his legal right'. In reading that passage, it is perhaps
necessary to note (because it makes it at first sight a little more
difficult to follow) that the positions of plaintiff and defendant as they
are usually met with are there transposed, and that one of the parties
who is there spoken of as the plaintiff corresponds with the present
case with the defendants, and vice versa."
14. The Defendants have also sought to contend that they have adopted the
KPPNair 22 NMSL 1839/2013
trademark honestly. The Plaintiff has correctly submitted that once a case of
infringement is made out, honest adoption is not a defence available to the
Defendants. The same view was taken by a Division Bench of this Court in Cadila
Pharmaceuticals ltd. vs. Sami Khatib of Mumbai and another 29 where the Court was
considering the question as to whether the Plaintiff's mark "RB TONE" is being
copied by the Defendants as "HB TONE". The Division Bench observed thus:
"15. We will assume that the Appellant adopted the mark "Hb
TONE" as alleged in the affidavit in support. Firstly, even if it did so
honestly and independently, it would make no difference to the
grant of an injunction for infringement or passing off once it is held
that the mark is deceptively similar to the Respondent's mark (See
Sun Pharmaceutical Industries Ltd. vs. Wyeth Holding Corporation,
2005 (30) PTC 14 (Bom) (DB) paragraph 21."
In any case the explanation given for adoption of the mark MONTINA by the
Defendant No.2 completely defeats the contention of honest adoption. It is the
contention of the Defendant No.2 that they used the word 'MONT' from the name
of the generic drug Montelukast. As regards the remaining portion of the mark
'INA', the only explanation given by the Defendant is that it is the reverse form of
the first three letters of the name of the Defendant No.2 'ANIkem'. The entire
explanation as to how the Defendants derived the very same name which is
absolutely identical as that of the Plaintiff is not bona fide and does not inspire any
confidence.
15. The Defendants have contended that the Plaintiff's registered mark is
29 2011 (3) Bom CR 587
KPPNair 23 NMSL 1839/2013
MONTINA whereas the Defendants are using the mark MONTINA-L and as such the
Defendants' mark is not identical or deceptively similar to the Plaintiff's mark. This is
not a contention raised in the affidavit. In fact in paragraphs 15 and 16 of the
Affidavit, the Defendant No. 2 has contended that their trademark is MONTINA and
MONTINA-L. In the absence of such a plea, the Defendant cannot be permitted to
raise this contention in arguments. In any case, this contention is misconceived in
law. In Ruston and Hornby Ltd. vs. Zamindara Engineering Co. 30, the Hon'ble
Supreme Court while considering the rival marks "Ruston" and "Rustom India" held
that the mere fact that the word 'India' was added to the Defendant's mark is of no
consequence. In Indchemie Health Specialities Pvt. Ltd. vs. Naxpar Labs Pvt. Ltd. and
another (supra) this Court has held that if the Plaintiff's mark is entirely incorporated
in the Defendants' mark, the same tantamounts to an infringement of the registered
mark. In Bevit Pharmaceutical ltd. vs. Planned Pharma Pvt. Ltd. and another 31 while
considering the infringement of a mark ATNOL as against a mark ENTALL-P, this
Court held that emphasis placed on the existence of the suffix 'P' is uncalled for, as
suffixes such as these are rarely employed in speech.
16. The Defendant No.2 has placed reliance on Section 124 of the Act and
contended that the Suit ought to be adjourned and/or stayed under Section 124 of
the Act. Firstly, the Defendants are yet to file their written statement to the Suit. The
Defendants even in the affidavit in reply have not raised the plea regarding the
invalidity of the registration of the Plaintiff's trademark. In such a case, as submitted
30 AIR 1970 SC 1649 : AIR 1970 SC 1649
31 2003 (1) Bom. C.R. 314
KPPNair 24 NMSL 1839/2013
by the Plaintiff, the reliance on Section 124 of the Act is completely baseless and
misconceived and the said provision has no applicability in the state of pleadings as
they stand today. Under Section 124 of the Act, it is incumbent for the Defendants,
as contemplated in Section 124 (a) of the Act, to plead that the Plaintiff's trademark
is invalid. This is not even a plea raised by the Defendants. In such circumstances,
Section 124 of the Act has no applicability whatsoever. In the light of the aforesaid,
the various judgments relied upon by the Defendants including Astrazeneca UK Ltd.
vs. Orchid Chemicals32, Pfizer Inc. vs. Rajesh Chopra and others 33, BDA Pvt. Ltd. vs. Paul
P. John34, Apex Laboratories vs. Apex Formulations35 and Shakti Traders vs. Shakti
Press36 which are in the context of the power of the Court to stay the Suit are
completely misconceived and inapplicable to the facts of the present case. In any
case, as set out hereinabove, the judgments of the other Courts run contrary to the
settled law as laid down by this Court and hence would have no applicability to the
present proceedings.
17. The Defendants have also contended that the registration of the trademark
does not give a person a defence against an action for passing off at the instance of a
person who has a vested common law right to the marks. However, the said
contention has no applicability to the facts of the present case since this is not an
action of passing off by the Defendant against the Plaintiff. This aspect has also been
considered by the Division Bench of this Court in the case of Bal Pharma (supra).
32 2006 (32) PTC 733 Del
33 2006 (32) PTC 301
34 2008 (37) PTC 569, 669
35 2011 (46) PTC 391
36 2008 (5) All M.R. 699
KPPNair 25 NMSL 1839/2013
18. It is further contended by the Defendants that the Defendants are using the
trademark since last six years and have acquired goodwill and/or reputation which is
attached to the trademark MONTINA and/or MONTINA-L in relation to medicinal
preparation and that people have started associating the said trademark with
Defendant No.2 and therefore if Defendant No.2 is restrained from using the
trademark it will cause hardship to the members of the public. As correctly
submitted by the Plaintiff, the said contention is without any basis. The medicinal
preparation which Defendant No. 2 is selling has not acquired any distinctiveness
which can be seen from the sales figures produced by Defendant No.2. In any case,
the said medicinal preparation is not a patented or a rare drug which will not be
found by the public at large. The contention is thus fallacious. The Plaintiff's
products are in any case available in the market. This contention is also contrary to
the Defendants' own contention that there are various other products available in the
market. In any case, if the Defendants have developed any business by infringing
the Plaintiff's mark, the Defendants cannot take shelter of the plea of public interest
to continue an illegality.
19. The Defendant No.2 has also contended that the Plaintiff has made
misrepresentation qua the date of user of the impugned mark by the Defendants.
According to the Defendants, the Plaintiff was aware about the use of the trademark
by the Defendants prior to September, 2013. However, the Defendants have not been
able to show anything prior to September, 2013. This plea therefore cannot be
KPPNair 26 NMSL 1839/2013
accepted. In fact, the minuscule sales figures asserted by the Defendants
strengthens the Plaintiff's contention that they were unaware of the use of the mark
by the Defendant.
20. Lastly, the Defendant No.2 has contended that the balance of convenience is in
their favour. In the instant case, the Defendants have not even bothered to take
search in the office of the Registrar of Trade Marks. The Register of Trade Marks is
open to the public and tantamounts to public notice to any one who adopts a mark.
If the Defendants adopted an identical mark and in any case deceptively similar to
the Plaintiff's mark then in the face of its presence in the Register of Trade Mark, the
Defendants did so at its own risk and cannot claim any equity on the basis of such a
user.
20.1 The issue as regards the balance of convenience in identical circumstances
was also considered by the Division Bench of this Court in the case of Bal Pharma
(supra) wherein the Hon'ble Court held:
"11. Finally, that brings us to the question of balance of convenience.
Even on balance of convenience, we are of the view that the learned
Single Judge is right. The damage caused to the goodwill of the
proprietor of a trade mark may be intangible and not computable in
terms of money, but it has the long term effect of devaluing the trade
mark itself which is the property of the registered proprietor. Another
person, who consciously or without taking the necessary steps to
assure himself of the existence of such a mark, uses it and invests
money therein, does not obviously have the balance of convenience in
KPPNair 27 NMSL 1839/2013
his favour. At any rate, at this stage at least, we are satisfied that the
judgment of the learned Single Judge cannot be faulted on the ground
of balance of convenience also. Our attention is drawn to the
judgment of Kurdukar, J. dated 8th March, 1989 in Notice of Motion
No. 1920 of 1988 in Suit No. 2903 of 1986, Pepsico Inc. v. Express
Bottlers Services Pvt Ltd. and Anr., which was confirmed in appeal by
the judgment dated 8th February 1991 in Appeal No. 436 of 1989 by
the Division Bench to which one of us (B.N. Srikrishna, J.) was a
party and we stand confirmed in our view."
20.2 In Wyeth Holding Corporation vs. Burnet Pharmaceutical Pvt. Ltd. (supra) this
Hon'ble Court in the context of pharmaceutical products held in paragraph 14-A that
where the two competing marks are used for drugs of the same composition, the
same does not justify applying a lower standard of scrutiny, than what is otherwise
done in the case of pharmaceutical products.
20.3 The Defendants in support of its contention of balance of convenience have
relied on certain judgments which are dealt hereinbelow:
(i) Kamat Hotels37 : The facts and circumstances in the said case and the business
of the rival parties in the said case and present case are different. In that case the
Defendant had filed proceedings for rectification of the mark of the Plaintiff which
were pending. It was also found that the annual turnover of the Defendant in that
case was Rs. 140 crores and that the Defendant had built up substantial reputation
and therefore the Court protected the Defendant against the damage which may
result to its existing enterprise which had a substantial turnover and reputation.
37 2011 (47) PTC 111 Bom.
KPPNair 28 NMSL 1839/2013
However, the Court restrained the Defendant from starting any hotel or line of
business with a mark that infringes the registered mark of the Plaintiff.
(ii) Wander Ltd. vs. Antox38 : The facts and circumstances of that case and
present case are totally different and thus reliance placed on the judgment is
irrelevant.
(iii) Schering Corporation vs. Kiltch (Co.) Pharma Ltd. (supra): The test laid down
by the said judgment to refuse injunction on the ground of inordinate delay of such
nature which would disentitle the Plaintiff to the equitable relief, has not been
satisfied by the Defendants in the case at hand. The reliance placed on the
judgment is thus misplaced.
21. In the circumstances, the Plaintiff has made out a prima facie case in their
favour. The balance of convenience is also in their favour. In view thereof, pending
the hearing and final disposal of the Suit, the ad-interim order dated 27 th
September, 2013, passed by this Court and set out in paragraph 4 above shall
continue to be in force. Notice of Motion is accordingly disposed of.
(S.J. KATHAWALLA, J.)
38 1990 Supp. SCC 726
