Calcutta High Court

New Life Laboratories Private Limited vs Nlcare Private Limited on 19 August, 2024

OCD-29

                                ORDER SHEET

                      IN THE HIGH COURT AT CALCUTTA
                           COMMERCIAL DIVISION
                               ORIGINAL SIDE

                           IA No. GA-COM/1/2024
                             In IP-COM/22/2024

                NEW LIFE LABORATORIES PRIVATE LIMITED
                                -Vs-
                       NLCARE PRIVATE LIMITED

  BEFORE:
  The Hon'ble JUSTICE KRISHNA RAO
  Date : August 19, 2024.

                                                                       Appearance:
                                                  Mr. Rudraman Bhattacharyya, Adv.
                                                           Mr. Siddhartha Das, Adv.
                                                        Ms. Laboni Chaudhuri, Adv.
                                                            Mr. Akash Munshi, Adv.
                                                             Mr. Harsh Tiwari, Adv.
                                                            Mr. SouvikKundu, Adv.
                                                           Mr. Subhomoy Paul, Adv.
                                                                   ...for the plaintiff

          The Court: The plaintiff has filed the suit for perpetual injunction

restraining the defendants and its men, agents, servants and assignees and

any other persons or entity on its behalf from holding themselves out as part

of the connected with the plaintiff and allied prayers.

          In the suit, the plaintiff has also filed an application for grant of ad

interim injunction.

          The plaintiff is a company registered under the provisions of the

Companies Act, 1956.

          The defendant is also a company incorporated under the

provisions of Companies Act, 2013.
                                       2

         One    Dr.   Mohammad      Idrees,   had   commenced      practicing

homeopathy in Bhopal, Madhya Pradesh and he utilized his expertise and

skill to prescribe and sell highly effective homeopathic medications to his

patients. In the year 1970, the eldest son of Dr. Mohammad Idrees, namely,

Dr. Mohammad Ilyas joined the profession of practicing homeopathy and

prescribed innovative homeopathic medicines to his patients. Dr. Ilyas used

his expertise and skill to expand the operations of the said sole concern

such that the moniker or the trade name "NEW LIFE"came to be associated

exclusively with the homeopathic medicinal practice and medicinal sales

business of the said Dr. Ilyas. Due to rise in the popularity and goodwill,

revenue and profits of the business of said Dr. Ilyas as a homeopath and

homeopathic medicine merchant, the said Dr. Ilyas along with his wife Mrs.

Ishrat Begum and his sons, namely, Dr. Mohammad Zakariya, Dr.

Mohammad Zaki and Dr. Salman Mohammad, primarily promoted the

company of the plaintiff in the year 1995 which also expanded into

manufacturing homeopathic medications instead of merely trading in them.

         Many of the other heirs of Dr. Ilyas became shareholders in the

plaintiff company in order to consolidate the family business having the


name "NEW LIFE" and the mark "            " under one mother concern. The

entirety of the business of selling homeopathic medicinal drugs setup by Dr.

Ilyas came under the banner of the plaintiff, which became the principal

proprietor of such business including the goodwill attached thereto and the

tangible and intangible assets thereof. The plaintiff continued operating its
                                         3

business from 1995 by utilizing the said corporate name "NEW LIFE" and


the said house mark "           ".

           The plaintiff apart from the common law rights acquired in respect

of the mark "NEW LIFE" applied for and obtained statutory protection under

the Trade Marks Act, by way of registration under no.2477030 in Class 35.

On 31.03.2018 Faizan, Mohammad Ilyas, ZakiMohommad and Saima

Begum have resigned as Board of Directors of the plaintiff company and

transferred their respective shares in the plaintiff company after receipt of

their valuable consideration.

           The plaintiff came to know that the defendant has been infringing

upon and passing off the mark of the plaintiff and a significant feature

thereof by utilizing the abbreviation of the name "NEW LIFE" i.e. "NL" in its

corporate name "NLCARE PRIVATE LIMITED". The defendant is engaged in

the same business as that of the plaintiff for trading, selling, manufacturing,

wholesale, retail, advertising and marketing homeopathic medicinal drugs.

           The defendant has made applications to Registrar to register the

said corporate name with the Registry of Trade Marks with deceptively

similar word mark and deceptively similar logo containing abbreviation of

the name "NEW LIFE". The plaintiff has filed opposition to the application

no.5762782 filed by the defendant and other two application nos. 5595531

and 5595533 stand objected by the Registry itself.

           The mark of the plaintiff and the mark of the defendant are as

follows:


                  - Mark of the plaintiff
                                        4



                         - Mark of the defendant

         The defendant is utilizing the deceptively similar mark to that of

the plaintiff without consent or permission from plaintiff who is the prior

user and without any right, marketing and selling the same goods to that of

the plaintiff in the market. The defendant is using deceptively similar marks

as its goods, packaging and trade dress and on the hoardings and boards of

its shops and outlets.

         Before filing of this case, the plaintiff had filed a civil suit against

the defendant at Delhi but subsequently the same was withdrawn and now

filed the present case as cause of action arose within the jurisdiction of this

Court.

         The plaintiff is selling the product under the mark "NEW LIFE"

since the year 1999. The plaintiff has also got the certificate of registration

for manufacturing and supply of homeopathic medicines on 22 nd June,

2010.

         The plaintiff has relied upon the judgment in the case of

Laxmikant V. Patel -vs- Chetanbhai Shah and Another reported in

(2002) 3 Supreme Court Cases 65 wherein the Hon'ble Supreme Court has

held that in an action of passing off it is usual, rather essential, to seek an

injunction, temporary or ad interim. The principles for the grant of such

injunction are the same as in the case of any other action against injury

complained of.

         Counsel for the plaintiff submits that once the case of passing off

is made out the practice is generally to grant a prompt ex parte injunction

followed by appointment of Local Commissioner, if necessary.
                                         5

          The plaintiff has also relied upon another judgment in the case of

Assam Roofing Ltd. & Anr. -vs- JSB Cement LLP & Anr. reported in

2015 SCC OnLine Cal 6581 and submitted that a trade mark is infringed if

the essential features of the registered mark of an owner have been copied.

A mark is said to be infringed by another trader if, even without using the

whole of it, the latter uses one or more of its "essential features". If a word

forming part of a mark has come in trade to be used to identify the goods of

the owner of the mark, it is an infringement of the mark itself to use that

word as the mark of the plaintiff.

          The plaintiff has also relied upon a judgment in the case of

Sirmour Remedies Private Limited & Anr. -vs- Kepler Healthcare

Private Limited & Ors. reported in 2014 SCC OnLine Cal 2703 and

submitted that the defendants have copied the mark of the plaintiff who are

the shareholders of the company before their resignation and after the

resignation they have started the same business and as such it is necessary

for appointment of Receiver to make inventory of the goods of the defendant.

          The plaintiff has also relied upon the judgment in the case of

Surjeet Book Depot -vs- Surjeet Book Depot (P) Ltd. And Ors. reported in

MANU/DE/0513/1982 and submitted that the plaintiff has got the

registered trade mark and using the said trade mark since the year 1970

and now the defendant is using the said name of the plaintiff but the

defendant has not made any application for rejection of the mark of the

plaintiff and as such the plaintiff is entitled to get ad interim injunction.

          Considered the submission made by the counsel for the plaintiff.

          Perused the materials on record.
                                        6

           This Court finds that the directors of the defendant company were

the shareholders as well as directors of the plaintiff company till the year

2018. They have resigned from the plaintiff company and have surrendered

their share in the plaintiff company after receiving all the benefits. After

resigning from the plaintiff company, the directors of the defendant have

applied for similar business and similar trademark before the Trade Mark

Registry and has started the similar business using the similar mark of the

plaintiff by infringing and passing off the right of the plaintiff. It is also

found that the plaintiff is using the said trademark since the year 1999 and

subsequently it was registered in the year 2013 and the same is within the

knowledge of the directors of the defendant.

           Considering above, this Court finds that the plaintiff has made out

a prima facie case and balance of convenience and inconvenience is in

favour of the plaintiff. This Court also finds that this is a fit case wherein

Receiver can be appointed for making inventory of the product of the

defendant which is being used by the defendants in the name and style of

the plaintiff's trademark.

           In view of the above, the defendant, its men, servants, agents,

assigns, stockists, distributors and all such persons involved with the

defendant are restrained from infringing and/or enabling others to infringe

in any manner whatsoever, by way of manufacturing and/or marketing

and/or processing and/or selling and/or advertising and/or dealing with

drugs/ medications / preparations or allied/ cognate products, by using the



marks/ "          " "        " or any other identical and/or similar and/or

deceptively similar trade mark to that of the plaintiff's name/mark "NEW
                                        7


LIFE"/ "        " or any other trade mark which is identical and/or similar

and/or deceptively similar to the said name/mark of the plaintiff and also



restrained from utilizing the marks of the defendant "           " "       " or

from passing off its inferior quality products bearing the marks of the

defendant hereinabove by using, manufacturing, selling, offering to sell,

advertising, marketing and promoting in electronic media or interactive

websites or otherwise dealing in goods bearing the above mark or consisting


of the plaintiff's mark "NEW LIFE"/ "             " or any other identical or

deceptively similar mark in any form whatsoever including as a part of their

corporate name, or under any other mark in isolation or in conjunction with

any other mark which is identical with or deceptively similar to the plaintiff's

said mark, as a part of its corporate or domain name or brand name or in

any manner whatsoever till 30th September, 2024.

           Mr. Shounak Mukhopadhyay, Mr. Altamas Alim and Mr. Varun

Kothari are appointed as Receivers to inspect premises of the respondent at

'Homeo Universe', 31, Dr. Jagabandhu Lane, Kolkata - 700 012, PS

Muchipara, 'Maa Homeo Pharmacy', 69, Shyambazar Street, Kolkata - 700

004, PS Shyampukur, 'New Life Homeo House', Elinna Residency, Sodepur

Road, Madhyamgram opposite More Super Market, Kolkata - 700 129,

'Patidar Homeopathic Medical Store & Clinic' 123, Ashirwad Complex,

Kanadia Rd, Near Telephone Nagar, Gulmarg Colony, Indore Madhya

Pradesh 452016 and 'New Life Homeopaths' Ground Floor, Yahya Complex,

Balvihar Road, Ghora Nakkas , Bhopal 462001 - Madhya Pradesh, India

and at Khasra No. 49/1/2, Khamkheda Berasia, Bhopal - 462 038 and

make inventory and to submit report before this Court by 30th September,

2024.

Remuneration of the Receivers is fixed Rs. 1,00,000/- each and