Panacea Biotec Ltd. vs Elprags Pharma
2001 Latest Caselaw 1612 Del

JUDGMENT

Sharda Aggarwal, J.

1. The plaintiff company is carrying on the business of manufacturing and selling "drugs and pharmaceuticals". They had obtained a Drug license regarding the use of the trade mark NIMULID in January, 1995. This medicine is used for ailment of inflammatory control, analgesic and antipyretic etc. In a short span of three years this medicine became popular with the patients, doctors, hospitals and other medical institutions all over India. The medicine under the trade mark NIMULID in tablet form is packed and offered for sale in distinctive packing cartons/packing wrappers/packing strips having a unique colour combination. The plaintiffs claim to be the owner of exclusive proprietary rights with respect to the artistic work on the cartons/blister strips under the provisions of Indian Copyright Act, 1957 (in short the Act). The plaintiffs on account of the quality of the product acquired unique goodwill and reputation with respect to its NIMESULIDE tablets under the trade mark NIMULID . Since November, 1995, various other companies tried to copy the trade mark and the artistic design work and colour scheme of the cartons and the blister strips and pass off NIMESULIDE tablets in the market as that of the plaintiffs. The plaintiffs had filed suits for injunction against various companies to protect their proprietary rights. Some of the suits, on giving undertaking by the defendant companies, ended in compromise decrees, whereas in others, plaintiffs have successfully obtained injunctions restraining them from using the trade mark and artistic design work of packing cartons and strips which were identical and deceptively similar to that of the plaintiffs.

2. It was in January, 1998 that plaintiffs came to know that defendants started manufacturing and selling NIMESULIDE tablets packed in blister packing and packing strips consisting of yellow and blue colour combination amounting to infringement of plaintiff's copyright as well as passing off their goods as those of plaintiffs. The plaintiffs company filed the present suit for injunction, passing off, infringement of copyright and damages etc. and obtained an ex-parte ad-interim injunction on 24th June, 1998 retraining the defendants from using packing boxes, blister packing and packing strips consisting of yellow and blue colour combination in respect of NIMESULIDE tablets. A Local Commissioner was also appointed to take into custody the infringing material of the defendants. Notice of the suit and the injunction application was served on the defendants. Since despite service defendants failed to put in appearance, they were proceeded ex-parte.

3. An affidavit of the General Manager of the plaintiffs company was filed by way of ex-parte evidence and the relevant documents were duly proved and exhibited. The General Manager of the plaintiffs company stated in the affidavit that the Board of Directors had duly authorised him to sign, verify and file the present suit. He duly proved the power of attorney in his favor and the certificate of incorporation of the plaintiffs company which established that the present suit has been filed by a duly authorised person. The deponent has further proved the allegations of the plaint. He has testified as to how plaintiffs came to know about the infringement of their copyright and use of the trade mark NIMULID by the defendants. He has also deposed that within a short span of three years, plaintiffs company had acquired a unique goodwill and reputation with respect to the medicine manufactured and sold under the trade mark NIMULID and that it had become acceptable through out India by patients, doctors, medical institutions etc. He also proved copies of the bills/invoices of the plaintiffs company regarding the sale of NIMESULIDE tablets under the trade mark NIMULID in yellow and blue wrappers in packing boxes/strips etc. as PW-4/A to PW-4/X. He further testified that in the year 1996-97, sale figure of the medicine had touched Rs. 8 crores approx. He also stated about the earlier various suits for injunction filed against various companies by the plaintiffs and proved the injunction orders and final decrees in those suits. He also proved the packing box of the plaintiffs as PW-6 and that of the defendants as PW-7 and pointed out that the same had the trade mark NIMESULIDE and the infringing yellow and blue colour scheme, get up and lay out which was similar to that of the plaintiffs. He also proved the blister packing of the plaintiffs as PW-8 and that of the defendants as PW-9. It was also deposed that the goods of the defendants i.e. medicines sold under the trade mark NIMESULIDE was having the same composition and meant for the same ailment and were being sold on the same shops on the same counters which caused confusion and deception in the minds of purchasers. He also stated that the plaintiffs suffered huge losses in their reputation and business on account of the fact that defendants manufactured and passed off their products in the market as that of the plaintiffs encashing on their reputation and goodwill.

4. In view of the evidence adduced by the plaintiffs which remains unrebutted, it is established that defendants have been using the offending trade mark NIMESULIDE and packing cartons/packing boxes and packing strips which are identical/deceptively similar to that of the plaintiff's copyright and are passing off their medicines as that of the plaintiffs establishes that by manufacturing and marketing the medicinal product having same composition and passing off the same in the market as that of the plaintiffs have caused huge losses to the plaintiffs whereas defendants have earned profits on that account by encashing the reputation and goodwill of the plaintiffs. The plaintiffs have placed on record and proved their own packing cartons and blister strips and that of the defendants. On a visual comparison of the two, one finds that the lay out, design, set up, colour combination and artistic work on the defendant's cartons/packing/blister strips is so deceptively similar that it is difficult to locate dis-similarities at a glance. It appears to be flagrant and blatant attempt on the part of defendants to imitate the plaintiff's design work and colour scheme etc. for the same products with a view to deceive the purchasers and exploit and encash their goodwill in order to pass off their products as that of the plaintiffs. The plaintiffs are accordingly entitled to the grant of injunction prayed for. Accordingly, decree for permanent injunction is passed in favor of the plaintiffs and against the defendants in terms of prayer (a), (b) and (c) of para 24 of the plaint with the direction to defendants to destroy all the blocks, dies, packing cartons/wrappers, packing boxes etc. as prayed for in prayer (d) of para 24 of the plaint.

5. So far as prayer (d) of para 24 of the plaint, relating to rendition of accounts is concerned, I hold that defendants are liable to render the accounts of the profits earned by them by using the impugned trade mark and design work, get up, colour scheme and artistic work and by passing off their goods as those of the plaintiffs. Accordingly, I pass a preliminary decree that accounts be taken of such profits. I appoint Mr. Munish Kochar, Advocate as Local Commissioner to take the accounts after giving notice to both the parties in accordance with law. The fee of the Local Commissioner is fixed at Rs. 15,000/- payable by the plaintiffs. The Local Commissioner would submit his report to the Court for consideration. The plaintiffs will be at liberty to move the court after filing of the report by the Local Commissioner for passing a final decree.

6. Suit is accordingly decreed in the terms mentioned above with costs. Decree sheet be drawn up accordingly.