Reckeweg & Co. Gmbh And Anr. vs Wellmans Homoeopathic ...
2002 Latest Caselaw 12 Del

JUDGMENT

V.S. Aggarwal, J.

1. Dr. Reckeweg & Co. GMBH has filed a suit for passing off, infringement of copyright. It seeks to restrain the defendant Dr. Wellmans Homoeopathic Laboratories Ltd., its directors, servants, agents or representatives acting on their behalf from passing off by using the code numbers, identification numbers, serial number WR-1 to WR-75 in respect of homoeopathic medicines or any other trade mark, code number which may be identical, confusingly or deceptively similar to the established trade mark, code number R1 to R75 of the plaintiff. It also seeks a permanent injunction to restrain the defendant from infringing the copyright of the plaintiff in their literature in respect of homoeopathic medicines and also to restrain the defendant from passing off their goods as those of the plaintiff by using infringing serial number, codes with respect to homoeopathic medicines. During the pendency of the suit by virtue of IA 6525/99 the plaintiff seeks an ad interim injunction during the pendency of the suit on the lines mentioned above.

2. The relevant facts alleged are that plaintiff No. 1 Dr. Reckeweg & Co. and GMBH is a company manufacturing and marketing homoeopathic medicines. The homoeopathic specialities known as R series are manufactured by plaintiff No. 1 in Federal Republic of Germany for last 50 years. While preparing the said specialities apart from good manufacturing process national and international production guide-lines are taken into consideration and the same are prepared strictly according to the German Homoeopathic Pharmacopoeia. The said medicines are being manufactured and numbered as R1 to R75. Out of them homoeopathic specialities are 1 to 89 are marketed in India indicating ailment which they cure. Letter R is derived from Dr. Reckeweg, the founder promoter of plaintiff No. 1 and numerals 1 to 3 to indicate the speciality of the medicines. Plaintiff No. 2 Dr. Roshan Lal Agarwal & Sons Pvt. Ltd is stated to be a private limited company engaged in distributing and marketing of homoeopathic medicines of plaintiff No. 1 since 1990. The said medicines with code numbers/trade mark R1 to R 75 are alleged to be extensively used in India and the transborder reputation has significantly been established. Plaintiff No. 2 has prepared and developed the catalogue/literature in English and Hind pertaining to homoeopathic medicines with plaintiff No. 1 consisting of R series. The catalogue/literature prepared by plaintiff No. 2 is stated to be a literary work within the meaning of Copyright Act, 1957. The plaintiffs have established a unique goodwill and reputation.

3. In October 1997 the plaintiff No. 1 came to know that defendant No. 1 was planning to bring out homoeopathic medicines under identical deceptively similar series symbolished as WR1 to WR75. In the end of 1999 the plaintiff came to know that the defendant has brought has actually brought out the homoeopathic medicines. The intention of the defendant is stated to be dishonest so much so that defendant intentionally reproduced the literature of the plaintiff and committed infringement of the copyright. The copying is fortified by the fact that even mistakes of spellings and punctuation in the bulletin have been so produced. Some of the names used in WR series of the defendant are also absolutely identical. Hence the present suit has been filed with relief already mentioned above.

4. In the written statement the defendant asserts that it started manufacturing homoeopathic medicines with a product range comprising of liquid patent medicines in 1989. In 1993 a Bio-chemic section was set up. In 1997 it pioneered a new concept by introducing homoeopathic medicines in blister packaging. The defendant applied to the Drug Controller of India through the State Drug Controller for grant of permission to manufacture WR range of medicines. The said permission and since been granted. It was asserted that there is no provision by way of which the formula of the composition of medicines can be patented. There is no restriction as per Drugs and Cosmetics Rules for manufacture of medicine whose composition is identical to that of another manufacture. All the ingredients used for manufacture of WR series of medicines are described in the Indian Homoeopathic Pharmacopoeia. There is no cause of confusion or deception between WR series of medicines of defendants as compared to the goods of the plaintiff since there exists certain basic difference in the quantity, packaging, price etc. Thus it is alleged that the plaintiff has no cause to claim the relief. By virtue of the present order the above said IA 6525/99 is proposed to be disposed.

5. On behalf of the defendant No. 1 it had been pointed that the defendant is manufacturing the medicines of WR range after the permission of the Drug Controller and consequently the plaintiff in this regard can have little cause. The copy of the permission that has been granted dated 13th November, 1997 has been placed on the record as Annexure R1. permission had been granted for certain items with Wr series numbering 1 onwards. In this regard indeed it becomes unnecessary to ponder further because the permission has simply been granted to the defendant but there is nothing to indicate that before granting permission to manufacture the said drug the authority was satisfied that there will be no confusion or deception in the market. There is no search report from the Trade Mark Office alleged to have been obtained. Thus the permission seemingly has been granted by the Drug authorities on basis of the application. When such is the position, if any civil right of the plaintiff is infringed. Then mere grant of the permission as such referred to by the defendant will not be a fetter on the powers of the court in an appropriate case to issue the ad interim injunction.

6. Before proceeding further one can briefly refer to the position in law in such like actions in passing off. Through there has been a numerous decisions from the Apex court and the other courts, it becomes unnecessary to refer to them since the same have been noticed by the few judgments that have been referred to hereinafter.

7. In the case of Hymac Ltd. v. Priestman Brothers Ltd. (1978) RPC 495. The plaintiff was manufacturing mechanical excavators which included excavators known as 580 series. The designation 580 owned its origin to the capacity of the particular excavation bucket used on such machines, which was five-eights of a cubic yard. Defendants had begun to market an excavator for which the numbers 580 were used for identification. The plaintiff was seeking an action for passing off. The defendant claim that they were using the number which had a descriptive connotation and which was therefore available for any one to use. It was held that there was no satisfactory reason as to why defendants have selected the designation 580 an ad interim injunction was granted.

8. A Division Bench of this court in the case of Rai Toys Industries and Ors. v. Munir Printing Press, Delhi 1982 PTC 85 was concerned that mater were Tambola tickets were being prepared. It was held that it cannot be described to be merely a compilation of information which is usually available. It required skill, labour and application of mind. Therefore, if the plaintiff had produced a bill containing 1500 tickets and defendants chose on the sly to pick up 600 tickets and put them in a book without even change of single figure, it was held that it was a sheer piracy. An ad interim injunction granted by the Single Judge of this court had been approved.

9. Yet in another case this court considered the same controversy in the case of Burlington Home Shopping Pvt. Ltd. v. Rajnish Chibber and Anr. 1995 PTC 15. A date consisting of compilation of addresses of customers had been prepared which was developed over a period of time. The defendant was using the same and the question for consideration was as to if ad interim injunction should be granted or not. This court held it in the affirmative.

10. Most of the other precedents from the Supreme Court had been taken note of in the case decided by the Apex Court Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. Special Leave Appeal 1594/98 decided on 26th March, 2001. The Supreme Court took note of the earlier decisions including Amritdhara Pharmacy v. Satya Deo AIR 1963 SC, Durga Dutt Sharma v. NP Laboratories , S MDyechm Ltd.

v. Cadbury (India) Ltd. and other precedents. The observations made in the case of S M Dyechem had not been approved and taking note that bulk of the medicines are sold on prescription still it was held that confusion can exist and the Supreme Court held:

"Public Interest would support lesser degree of proof showing confusing similarity in the case of trade mark in respect of medicinal product as against other non-medicinal products. Drugs are poisons, not sweets. Confusion between medicinal products may, therefore, be life threatening, not merely inconvenient. Noting the frailty of human nature and the pressures placed by society on doctors, there should be as many clear indicators as possible to distinguish two medicinal products from each other. It was not uncommon that in hospitals, drugs can be requested verbally and/or under critical/pressure situations. Many patients may be elderly, infirm or illiterate. They may not be in a position to differentiate between the medicine prescribed and bought which is ultimately handed over to them. This view finds support from MoCarthy on Trade Marks, 3rd Edition, para 23.12 of which reads as under.

"The tests of confusing similarity are modified when the goods involved are medicinal products. Confusion of source or product between medicinal products may produce physically harmful results to purchasers and greater protection is required than in the ordinary case. If the goods involved are medicinal products each with different effects and designed for even subtly different uses, confusion among the products caused by similar marks could have disastrous effects. For these reasons, it is proper to require a lesser quantum of proof of confusing similarity for drugs and medicinal preparations. The same standard has been applied to medicinal products such as surgical sutures and clavicle splints."

11. Thereupon for broad outlines following findings had been arrived at:

a) The nature of the marks i.e. whether the marks are word marks or label marks or composite marks, i.e. both words and label works.

b) The degree of resembleness between the marks, phonetically similar and hence similar in idea.

c) The nature of the goods in respect of which they are used as trade marks.

d) The similarity in the nature, character and performance of the goods of the rival traders.

e) The class of purchasers who are likely to buy the goods bearing the marks they require, on their education and intelligence and a degree of care they are likely to exercise in purchasing and/or using the goods.

f) The mode of purchasing the goods or placing orders for the goods and

g) Any other surrounding circumstances which may be relevant in the extent of dissimilarity between the competing marks.

12. It is on the touchstone of this pronouncements that this court has to see the facts and circumstances of the present case as to if the plaintiff has a prima facie case or not. This fact was not disputed during the course of submissions that the plaintiff had been selling homoeopathic medicines that is manufactured by plaintiff No. 1 under the series R1 onwards with names of different medicines in the homoeopathic method of medicine. The short question that comes up for consideration, therefore, is as to whether the medicines of defendant are being passed off as those of the plaintiffs. As already referred to above the similarities an dis-similarities, if any, have to be judged from the point of view of an ordinary man. it has to be seen as to what sort of persons purchase the medicine and whether they would pass off as those of the plaintiff. This conclusion as already pointed out above has to be viewed in light of the oveall facts and circumstances. As already referred to above the plaintiff had been seeling goods of Dr. Reckeweg & Co. under the series R1 onwards. The defendant No. 2 on the contrary is selling the goods of Dr. Wellmans Homoeopathic Laboratories under the series WR1 onwards. The few cartons of the medicines of the parties are on the record. At the outset it is re-mentioned that names of the plaintiff No. 1 and defendant No. 1 is totally different. There is no phonetic similarity. It has to be remembered that probably for this reason plaintiff was feeling shy of producing most of the cartons or the medicines of the plaintiff and the defendant to show the similarity. In addition to that the products of the plaintiff and defendant have been shown to be different and some of the differences so pointed reads:-

Sl.No. Particulars R-Series WR Series (mfg by (mfg by Plaintiff) defendant)

---------------------------------------------------------------------------

1. Quantity The medicines are The medicines packed in a quantity are packed in of 22 ML. Pack size a quantity of 30 Ml.Pack size.

2.             Packaging       The outer box of R      The outer box
                               series drops is of      of WR series is
                               white background.       of sea green
                               (Copy of outer          box background.
                               packing are annexed     (Copy of outer
                               are marked as Annex.    box packing are
                               -2)                     annexed and
                                                       marked as
                                                       Annex.-3)
3.             Price           The price is not        The MRP of
                               printed                 Rs. 50/- is duly
                                                       printed

4.             Dosage          The recommended         No recommen-
                               dosage is mentioned     dation is made
                                                       regarding
                                                       dosage

5.             Photo-          Photographs of          The photograph
               graphs          Dr. Sa                  is very much
                               Hahnemann               founder depicted
                               of Homeopathy is
                               not present on the
                               packaing

6.             No. of          The range comprises     The range
               medicines       of R-1 to R-90          comprises of
                                                       WR-1 to  WR-75 

 

13. Merely because if the plaintiff is using the word "R" in the series and the defendant is using WR would not make all the difference. If this was the sole factor same would be made on behalf of the plaintiff but as pointed above this is not all. The names of the products, namely the manufacturing companies are different, the types of inscriptions are different, the purchasers are likely to buy the goods by taking note of all the fact ors and not merely the series "R" or "WR".

14. So far as the medicines are concerned they are from the book of the homoeopathic medicines and plaintiff indeed can have little grievance in this regard. To that extent indeed plaintiff cannot be termed to be having a prima facie case. There is another way of looking at the matter. The defendant had obtained the license to manufacture the drugs in the year 1997. The plaintiffs event admits in paragraph 15 that it had come to know that defendant was planning to bring out homoeopathic medicines under identical deceptively similar series, still the civil suit had been filed only in May 1999. There is inordinate delay therefore in coming to the court for seeking an ad interim injunction.

15. But the plaintiff has brought to the notice of the court that the literature drafted by the defendant is basically copied. It is a literary work. Even the spelling mistakes have been repeated. To that effect indeed the plaintiff is entitled to temporary injunction.

16. As an off shoot of these reasons it must be held that the plaintiff is not entitled to the ad interim injunction prayed except to extent that defendant is restrained from infringing the copy right of the plaintiff relating to the literature of the plaintiff.

17. Documents be filed within four weeks. List it before the Joint Registrar for admission/denial of documents on 19.4.2002.