Walter Bushnell Limited vs Mr. Vipin Aggarwal & Others
1999 Latest Caselaw 682 Del

ORDER

Vikramajit Sen, J.

1. This is a suit for grant of permanent injunction restraining infringement of Trade Mark, passing off, damages, delivery etc.

2. It has been averred in the Plaint that the Plaintiff is engaged in the business of manufacturing and marketing pharmaceutical since 1978 and one of these products is the antibiotic sold under the name of "AMCLOX" and that this trade name is registered in its favour since 21.11.1978. It is further averred that in order to distinguish its AMLOX capsules, the Plaintiff had selected a blue and white colour combination for its had selected a blue and white colour combination for its capsules since 1981. This colour combination has become distinctive of the Plaintiff's medicinal preparations, particularly in relation to composition of Ampicillin and Cloxacillin. The Plaintiff was aggrieved that the Defendants were marketing pharmaceutical preparations which were also antibiotic under the Trade Name AMCLOX which were also capsules having composition of Ampicillin and Cloxacillin and that the colour combination of these capsules was also blue and white. This phonetically and deceptively similar name and packaging adopted by the defendants has instituted the filing of this suit.

3. Almost immediately after receiving notice of the suit a statement was made by Mr. Vipin Aggarwal, Defendant No. 1 that he would not use the empty antibiotic capsules of blue and white colour combination for the purpose of manufacturing and trading any medicine under the trade name of AMCLOX or any other trade name which is deceptively similar with the trade name AMCLOX. He further undertook not to use these capsules for filling any medicine which is a combination of Ampicillin and Cloxicillin.

4. Although a Written Statement was filed and the following Issue was framed, no substantial progress took place in the proceedings:

Whether colour combination blue and white is the sole and exclusive property of the plaintiff and could not be used on capsule by any other trader as the part of the packing of the pharmaceu tical preparations ?

5. The matter was argued in some detail before me. While there was no objection of the Defendant to the issuance of an injunction restraning the Defendants for using the trade name AMCLOX, there was strenuous opposition to legal propriety of the Plaintiff claiming exclusivity in the blue and white combination for its capsules. This is now the only point of contention in the suit which is also evident from the Issue framed. In the cource of hearing arguments, I had observed that it appear, prima facie, to be too wide a claim for injunction to restrain the use of blue and white capsules. It had been further observed by me that the injunction would be justifiable and warranted if the blue and white combination is used for Ampicillin and Cloxacillin capsules. To an unwary or illiterate customer, the manufacturer would not be distinguishable. Counsel for the Plaintiff had submitted that there are precedents in his support for seeking a prohibition even for the use of these colors combination, but that in the present case he would leave it to the Court to pass appropriate orders.

6. I would refer to the Undertaking given by Defendant No. 1 on February 13, 1995. This undertaking was threefold - (1) that he would not use the trade name of AMCLOX. (2) that he would not use the empty capsules blue and white the colour combination for the purpose of manufacturing and trading any medicine under this trade name or any other trade name deceptively similar to it and (3) that he would not use the capsules (obviously referring to the blue and white colour combination) for filling any medicine which is a combination of Ampicillin and Cloxicillin. In my view this undertaking sufficiently balanced the equities of the case and the trade interests of the parties. If the blue and white colour combination of capsules is used for a medicine altogether different from the combination of Ampicillin and Cloxicillin the possibility of deception or confusion would be almost eradicated.

7. I, therefore, pass a decree of injunction restraining the defendant from the use of the trade name AMCLOX and from using the blue and white combination for capsules any medicine for filling any medicine which is a combination of Ampicillin and Cloxicillin.

8. The quantum of damages, to be awarded, has been fairly left by counsel for the parties to the discretion of the Court. The Plaintiff claims a sum of Rs 5 lakhs. The undertaking given by Defendant No. 1 with alacrity almost immediately after receiving notice of the suit ought not to be lost sight of. It is not the case of the Plaintiff that after the institution of the suit there was any violation of the undertaking given. The ends of justice would be met if a decree of Rs. 50,000/- is passed as nominal damages, in respect of the damages suffered by the Plaintiff for its good-

will, business and reputation on account of illegal trade activities of the Defendant.

9. The decree sheet be drawn up accordingly.