Glaxo India Ltd. And Anr. vs Drug Laboratories
2002 Latest Caselaw 226 Del

JUDGMENT

J.D. Kapoor, J.

1. The plaintiff is the owner of registered trade mark GLAXO of Glaxo India Limited Company incorpoorated under the laws of England. Glaxo is one of the world's leading research based pharmaceutical companies. The plaintiff is one of the main respective 10 companies of India who have residual reputation of trade mark GLAXO. After from this the plaintiff has been using the mark GLAXO in a special manner which has an artistic work within the meaning of Section 2(c) of the Copy Right Act which encompasses painting, a sculpture, a drawing, engraving or a photograph etc.

2. It is averred that during the fourth week of July 2000 the plaintiff came across a medicine namely ORTHODE manufactured and marketed by the defendant. On the said product it was written that the 'product is cooperated by Glaxo Ayurvedi Limited'. In the price list also the defendants have been using the said trade mark GLAXO with effect from 1st April, 2000. According to the plaintiff he has got no company in the name of Glaxo Ayurvedi Limited nor have they authorized the defendant to use the mark 'Glaxo. Since the defendant is making mis-representation in the public at large and is circulating the price list all over India it gives an impression that the defendant has got relation or connection with the plaintiff or has got some authority to use the said name. It is averred that the expression 'co-operated with GLAXO Ayurvedi Ltd.' is an essential feature of the defendants' name and is, therefore, a calculated move which is intended to deceive the public and to trade upon the plaintiff's goodwill, name and reputation as it deals with the same set of customers. They are likely to be confused and deceived as they would not be able to distinguish the goods of the plaintiff and defendants.

3. Despite service of the summons of the suit the defendant did not put in appearance to contest the suit and was proceeded ex parte.

4. In order to establish its claim the plaintiff has proved the following documents :-

(i) Exhibit A-1 is the copy of the power of attorney executed by the plaintiff company in favor of the Mr. K.K. Master.

(ii) Exhibit A2 is the registered certificate of the trade mark Glaxo.

(iii) Exhibits P3 and P4 are the copies of the registration certificates of the Trade Mark. It still subsists in the Register of the Trade Marks.

(iv) Exhibit P3 and P4 are the copies of the registration certificates of the Trade Mark. It still subsists in the Register of the Trade Marks.

(iv) Exhibit A-5 is the report in the business world containing the article "India's Most 10 companies who have residual reputation". The plaintiff's name figured in the said article.

(v) Exhibits P1 and P4 are the material of the goods manufactured and marked by the plaintiff company with the trade mark Glaxo used on the said list showing artistic work within the meaning of Section 2(c) of the Copy Right Act.

5. In view of the aforesaid averments duly supported by affidavit and the documents filed by the plaintiff, it is apparent that the word 'GLAXO is invented word and forms essential feature of the plaintiff's corporate name. By virtue of the original adoption, registration, long and continuous user, the plaintiff alone have become entitled to the exclusive user of the trade mark GLAXO in India and no one else can use the same name without the plaintiff's written permission. It has also statutory right to protect it under Section 28 of Trade & Merchandise Marks Act, 1958 which is as follows:-

(1) Subject to the other provisions of this Act, the registration of a trade mark in Part A or Part B of the register shall, if valid, give to the registered proprietor of the trade mark the exclusive right to the use of the trade mark in relation to the goods in respect of which the trade mark is registered and to obtain relief in respect of infringement of the trade mark in the manner provided by this Act.

(2) The exclusive right to the use of a trade mark given under Sub-section (I) shall be subject to any conditions and limitations to which the registration is subject.

(3) Where two or more persons are registered proprietors of trade marks, which are identical with or nearly resemble each other, the exclusive right to the use of any of those trade marks shall not (except so far as their respective rights are subject to any conditions or limitations entered on the register) be deemed to have been acquired by any of those persons as against any other of those persons merely by registration of the trade marks but each of these persons has otherwise the same rights as against other persons (not being registered users using by way of permitted use) as he would have if he were the sole registered proprietor.

6. Similarly the plaintiff is also entitled to protect its Copyright registered under the Copyright Act, 1958 as it falls within the definition contained Section 2(c) of the Act. It reads like this:-

"artistic work" means,-

(i) a painting, a sculpture, a drawing (including a diagram, map, chart or plan), an engraving or a photograph, whether or not any such work possesses artistic quality;

(ii) an [Work of architecture]; and

(iii) any other work of artistic craftsmanship;

7. Any person having long, continuous and prior use of any non-descriptive, invented and individual mark having peculiarities of its own in the business has a right to protect its mark from infringement by way of either identical mark or mark having deceptive similarities in look and sound and its artistic work as to its lay out or colour combination or other distinguished features. There is statutory protection if these are registered under The Trade and Merchandise Marks Act or Copy Rights Act respectively and if not the redressal is against the offence of pasing off as grave injustice is occasioned if the trade name of a person being in long, continuous and exclusive use is either adopted in full or has elements or deceptive similarity or confusing identitiy as to its source and origin with an ulterior motive to trade and thrive upon the reputation and goodwill of the earlier user.

8. If the infringing party adopts such a trade mark in respect of the same subject of goods which the aggrieved party is dealing in it is tantamount to not only deceiving the customers but also results in dilution of the trade mark.

9. In view of the aforesaid position of law with regard to the right of the plaintiff to protect this trade mark as well as the Copyright under the Copyright Act, the suit of the plaintiff is decreed in respect of the prayer made in the suit. Decree sheet be drawn accordingly.