Dr. Reckeweg And Co. Gmbh Through ... vs Mr. S.M. Sharma Managing Director ...
2006 Latest Caselaw 678 Del

JUDGMENT

Madan B. Lokur, J.

Page 1691

1. The Plaintiff filed IA No. 2788/2003 under Order XXXIX Rules 1 and 2 of the CPC for an injunction restraining the Defendants from infringing the copyright of the Plaintiffs in the catalogue and literature pertaining to its homeopathic medicines and also from using the alphanumeric series L-1 to L-75 in respect of homeopathic medicines. The latter grievance arises because, according to the Plaintiffs, they have been using the alphanumeric series R-1 to R-75 for several years and by using the alphanumeric series L-1 to L-75, the Defendants are trying to pass off their homeopathic medicines as those of the Plaintiffs.

2. By an ex parte ad interim order dated 7th March, 2003 the Defendants were restrained from marketing, distributing and selling homeopathic medicines under the ?Lords L? alphanumeric series, since the alphanumeric description of the medicine of the Defendants and the corresponding ailment were identical to the alphanumeric description of the medicine of the Plaintiffs and the corresponding ailment. The Defendants were also restrained from distributing their catalogue and literature, which are a verbatim copy of the copyrighted catalogue and literature of the Plaintiffs.

3. The Defendants filed IA No. 4231/2003 under Order XXXIX Rule 4 of the CPC for vacation of the ex parte ad interim injunction granted in IA No. 2788/2003. Both these applications were heard on 3rd and 4th April, 2006 when orders were reserved.

4. The broad facts of the case are that Plaintiff No. 1 is a company incorporated in Germany and has been manufacturing and marketing homeopathic Page 1692 medicines for the last 50 years. Plaintiff No. 2 is the duly constituted attorney of the Plaintiff and is a company registered under the Companies Act, 1956.

5. The Plaintiffs manufacture and market their homeopathic medicines in what is called the ?R series? derived from the name of Plaintiff No. 1, that is, Dr. Reckeweg. These medicines are marketed and sold as drops in the alphanumeric series R-1 to R-75. As an example, medicine R-1 is for treatment of a local inflammation of a catarrhal and purulent nature while medicine R-7 is for treatment of organic and functional complaints of the liver and gall bladder. The Plaintiffs do not market in India medicine R-61 (although it is sold elsewhere in the world) and the medicines R-8, R-15 and R-30 require specialized equipment and so are not normally manufactured in India, although they have a copyright in the catalogue and literature pertaining to them.

6. The Plaintiffs have filed on record an extract from the Register of Copyrights dated 5th May, 1999 bearing Registration No. 18231/99. This copyright is in the catalogue pertaining to 75 homeopathic specialty medicines. Similarly, the Plaintiffs have placed on record their copyright Registration No. 18275/99 dated 6th May, 1999 in respect of the literature containing the unique composition and formulation of the medicines.

7. As per the catalogue of the Plaintiffs, medicine R-1 pertains to inflammation drops and it is prescribed for: -

Local inflammations, acute and chronic, of catarrhal and purulent nature, with swelling of the glands. Sudden infections and high fever with irritations of the meninges, conjunctivas and pharynx

Medicine R-7 pertains to liver and gall bladder drops and it is prescribed for: -

Organic and functional complaints of liver and gallbladder, hepatopathy, cholecystopathy, calculi, disturbances of the biliary secretion, hepatitis, swelling of the abdomen, premature satiety, lack of appetite, bitter taste in mouth, flatulence, constipation, weariness after meals, irritation, hypochondria.

8. The Defendants were due to launch their homeopathic specialty drops in the alphanumeric series Lords L-1 to L-75 when the application for injunction was filed. The medicine L-1 described in the catalogue of the Defendants also pertains to inflammation drops and its description is absolutely identical to what has been copyrighted by the Plaintiffs. Similarly, medicine L-7 pertains to liver and gall bladder drops and its description is also absolutely identical to what has been copyrighted by the Plaintiffs. Indeed, this was not even seriously disputed by learned Counsel for the Defendants and the injunction as prayed for by the Plaintiffs in this regard must certainly be granted because the Defendants have bodily lifted the contents of the catalogue of the Plaintiffs.

9. However, during the pendency of these applications, the Defendants amended their catalogue. As per the amended catalogue, medicine L-1 is now prescribed for: -

Acute or chronic inflammations purulent and catarrahal in nature including inflammation of glands associated with high fever of infections, meningitis, pharyngities and conjuctivities.

Page 1693

Similarly, medicine L-7 is now prescribed for: -

Functional or organic complaints of the gallbladder and liver, Hepatitis, Abdominal Swelling, Lack of appetite, Flatulence, Constipation, Bitter taste of the mouth.

10. The grievance of learned Counsel for the Plaintiffs, under these changed circumstances, was three-fold.

Firstly, the amended catalogue remains substantially similar to the catalogue of the Plaintiffs and, therefore, there is no need to file a separate application for injunction and that the injunction already prayed for would cover the amended catalogue as well because even the amended catalogue infringes the copyright of the Plaintiffs.

Secondly, the medicines in the alphanumeric series L-1 to L-75 adopted by the Defendants continue to represent the same medicines as those of the Plaintiffs in the alphanumeric series R-1 to R-75. This alphanumeric combination, read with the catalogue, is enough to mislead the public consuming homeopathic medicines and it would certainly not be appropriate if unwary consumers are misled by the products of the Defendants, which are in essence the products of the Plaintiffs. In other words, a case of passing off was made out by learned Counsel for the Plaintiffs.

Thirdly, the composition and formulation of the medicines prepared by the Defendants is an exact copy of the unique composition and formulation of the medicines prepared by the Plaintiffs and the Defendants have blindly copied them without having independently worked or researched to arrive at those compositions and formulations.

The submission of learned Counsel was that if all these factors are considered cumulatively, then on an overall conspectus of the documents on record, the catalogue for the homeopathic medicines, as well as the literature containing the printed composition and formulation, it is quite clear that the Defendants are acting dishonestly in proposing to market their medicines, giving it an appearance that the medicines are those of the Plaintiffs. The intention of the Defendants seems to be to take advantage of the goodwill of the Plaintiffs and lure away their customers with an identical product.

11. Learned counsel for the Defendants, on the other hand, contended that the Plaintiffs do not have any copyright over the numerals 1 to 75 or the alphabets and that the Defendants cannot be prohibited from using these numerals, with or without the alphabet L or Lords L. After all, these numbers are common numbers and can be used by anybody. With regard to the catalogue, it was submitted that there were substantial differences between the Plaintiffs catalogue and the amended catalogue of the Defendants, so no case of infringement of a copyright was made out. As regards the unique composition and formulation of the homeopathic medicines, it was submitted that there was no specific prayer for restraining the Defendants from using the same composition and formulation of medicines. In any case, at best, the Plaintiffs could claim a patent in the unique composition and formulation of the medicines but could not claim any copyright thereon. Learned counsel for the Defendants also produced cartons of the medicinal drops manufactured Page 1694 by the Plaintiffs and the Defendants and contended that there was no visual similarity in the two cartons and, therefore, it cannot be said that the Defendants were guilty of passing off their goods as those of the Plaintiffs.

12. I am of the view that the entire issue has to be looked at on broad overall considerations and perspective and not from a narrow point of view. It is quite natural to expect that whenever there is an attempt at infringing a copyright or at plagiarism, the infringer or plagiarist will, more often than not, make minor alterations and corrections here and there to deflect an allegation of infringement or plagiarism. Therefore, if there is a word-by-word analysis or a sentence-by-sentence analysis of the copyrighted work and the infringing material, there are bound to be some apparent differences; but that does not mean that the copyrighted work has not been infringed or plagiarized.

13. In this context, it is worth referring to Section 14 of the Copyright Act, 1957 (the Act). This section defines 'copyright' as meaning the exclusive right to do or authorize the doing of any act in respect of a work, such as in the case of a literary work (for example), to make any adaptation thereof.

Section 2(a) of the Act defines 'adaptation' to mean, in relation to any work, any use of such work involving its re-arrangement or alteration. A copyright is said to be infringed, in terms of Section 51 of the Act, when any person, without a license granted by the owner of the copyright or the Registrar of Copyrights does anything, the exclusive right to do which is conferred upon the owner of the copyright or when any person distributes for the purpose of trade any infringing copies of that work, which would, quite naturally, include any unauthorized or substantial adaptation thereof. This is subject to Section 52 of the Act which lays down what shall not constitute an infringement of copyright but that has not been pleaded by the Defendants.

14. In the light of the above, if one looks at the catalogue of the Plaintiffs as well as the amended catalogue of the Defendants, in the two examples pertaining to medicines R-1 and L-1 and R-7 and L-7, the contents and purport of both the catalogues are substantially identical, the latter being an adaptation of the former. In fact, the Plaintiffs handed over a comparative statement and a random comparison of the ailments for which medicines, such as R-16 and L-16, R-23 and L-23, R-33 and L-33, R-53 and L-53, R-65 and L-65 and R- 69 and L-69 are prescribed shows that the ailments sought to be cured by the two sets of medicines are substantially similar. These are reproduced hereinbelow to illustrate the point.

R-16

L-16

Migraine, nervous headaches, neuralgia of the head, indisposition due to continuous headaches frequently resulting from an insignificant chill. Nervous headaches, migraine, Neuralgia of the head and indisposition due to continuous and persistent headaches.

R-23

L-23

Acute and chronic eczema, pimples, herpes, rashes, eschar. Dermatitis, pimples rashes urticaria, psoriasis, acute and chronic eczema.

Page 1695

R-33

L-33

Epilepsy and epileptic fits. Irritation of the nerves and convulsions. Choreo minor. Convulsive and cramps. Cramps in the thighs. Epileptic cramps, convulsions, cramps in thighs, epilepsy of any origin.

R-53

L-53

Acne vulgaris, pimples, suppurative diseases of the skin, eczema and dermatitis. Pimples, Eczema, dermatIT is and acne vulgaris.

R-65

L-65

Psoriasis vulgaris, psoriasiform eczema. Recommended for psoriasis vulgaris, psoriasisiform eczema.

R-69

R-69

Intercostal neuralgia. Very useful for intercostal neuralgia.

15. Obviously the Plaintiffs cannot have a copyright on the numerals or the alphabets individually (perhaps even collectively) but when the alphanumeric combination is used for a medicine which cures an ailment, and a similar alphanumeric combination is used for another medicine which also cures a substantially similar ailment, and if the alphanumeric combination and substantial similarity in the ailment persist for medicine after medicine and for ailment after ailment and in the same sequence, then it is just not possible to entertain a belief that it is a coincidence. Had there been a harmonized system of classification, then the Defendants might have been able to make out an arguable point, but that is not the case set up by the Defendants. Since the entire ?R series?, ailment by ailment and medicine by medicine has been substantially copied or adapted by the Defendants in their amended catalogue, the intention of the Defendants is obviously to plagiarize the work of the Plaintiffs, which they have done, and this indicates a dishonest intention on their part.

16. Add to this the fact that the Plaintiffs have left out medicine R-61 and it is found that the Defendants have also left it out. Similarly, some specialized homeopathic medicines have been left out such as R-8, R-15 and R-30, which the Plaintiffs are either not manufacturing or have difficulty in manufacturing - again, it is found that these have also been left out by the Defendants in their catalogue. Surely, this cannot but be deliberate and smacks of a rather crude attempt at plagiarizing the catalogue of the Plaintiffs in violation of their copyright.

17. In so far as the unique composition and formulation of the medicines are concerned, a few examples would show that the Defendants have completely copied the unique composition and formulation of the medicines manufactured by the Plaintiffs. For example, the composition and formulation of medicine R-1 and L-1 and medicine R-7 and L-7 read as follows: -

R-1 Apis mell. D4, Barium chlorat. D6, Belladonna D4, Calcium jodat. D4, Hepar sulf. D12 Kalium bichrom. D4, Marum verum D6, Mercur. Subl. corr. D5, Phytolacca D4.

Lords L-1 Apis Mell 4x, Bar. chlor. 6x, Belladonna 4x, Calc. lod. 4x, Hepar Sulph. 12x, Kali Bichromicum 4x, Teucrium Marum Virum 6x, Merc, Corr. 5x Phytolacca 4x.

Page 1696

R-7 Carduus mar. D2, Chelidonium D2, Cholesterinum D6, Colocynthis D6, Lycopodium D4, Nux vomica D4.

Lords L-7 Carduus Marianus 2x, Chelidonium Maj. 2x, Cholesterinum 6x, Colocynthis 6x, Lycopodium 4x, Nux vomica 4x.

18. Interestingly, not only are the ingredients of the medicines the same but even the potency of the ingredients is the same. In other words, what the Defendants are trying to tell the consumers of these homeopathic medicines is this: whatever you expect to get from the Plaintiffs, the exact same is available from the Defendants not only will the same medicine be available for the same ailment but that that medicine will have the same composition and the same potency as the medicine of the Plaintiffs, who say that this can be verified from a complete comparison of their literature and the literature of the Defendants, and not only from the above examples.

19. The Plaintiffs can, having published the unique composition and formulation, claim a copyright in the literary work, which they have, and they have also got a copyright bearing No. 18275/99 for that literary work. Therefore, it can safely be said that by completely copying the literature, the Defendants have violated even this copyright of the Plaintiffs.

20. The final submission of learned Counsel for the Defendants was that the cartons in which they sell their medicines are very different from the cartons of the Plaintiffs, in as much as the design and colour combination are different and while the Plaintiffs use the alphanumeric ?R series?, the Defendants use a visually and phonetically different alphanumeric ?Lords L series?. The contention in this regard was that if the matter has to be looked at in a broad perspective, then it cannot be said that the Defendants are passing off their goods as those of the Plaintiffs, since a consumer of medicines can straightway notice the dissimilarity in the cartons and thereby identify the two products as coming from different sources.

21. In support of this argument, learned Counsel for the Defendants relied upon Dr. Reckeweg and Co. v. Dr. Wellmans Homeopathic Laboratories Ltd. 2002 (25) PTC 98. In that case, the defendant was restrained from infringing the copyright of the same plaintiff relating to the literature, but on the basis of a lack of phonetic similarity between the ?R series? manufactured by the plaintiff and the ?WR series? manufactured by the defendant, as well as the difference in the cartons, an injunction was declined on the ground that no case of passing off was made out by the plaintiff.

22. Before dealing with this contention, it is appropriate to see the prayer made by the Plaintiffs in their injunction application, which is to the effect that the Defendants and those acting under them be restrained ?from passing off by using the code nos/identification nos/serial nos L-1 to L-75 in respect of Homeopathic medicines or any other trade mark/code nos which may be identical with and/or confusingly or deceptively similar to the reputed, established and legally protected trade mark/code nos R-1 to R-75 of the Page 1697 plaintiffs. In view of the prayer made, the issue of similarity or dissimilarity in the cartons does not at all arise for consideration. The limited prayer made by the Plaintiffs is that the Defendants be restrained from using the alphanumeric ?L series? on their cartons, thereby seeking to pass off their goods as those of the Plaintiffs.

23. In this connection, the views of the Supreme Court, as expressed in Cadila Health Care Ltd., v. Cadila Pharmaceuticals Ltd. are important. The Supreme Court observed in paragraph 18 of the Report: - ?As far as this Court is concerned, the decisions in the last four decades have clearly laid down that what has to be seen in the case of a passing off action is the similarity between the competing marks and to determine whether there is likelihood of deception or causing confusion

24. On the issue of what is likely to cause confusion, the Supreme Court (in paragraph 33 of the Report) while dealing with medicinal preparations observed as follows: -

While dealing with cases relating to passing off, one of the important tests which has to be applied in each case is whether the misrepresentation made by the defendant is of such a nature as is likely to cause an ordinary consumer to confuse one product for another due to similarity of marks and other surrounding factors. What is likely to cause confusion would vary from case to case. However, the appellants are right in contending that where medicinal products are involved, the test to be applied for adjudging the violation of trade mark law may not be at par with cases involving non-medicinal products. A stricter approach should be adopted while applying the test to judge the possibility of confusion of one medicinal product for another by the consumer. While confusion in the case of non-medicinal products may only cause economic loss to the plaintiff, confusion between the two medicinal products may have disastrous effects on health and in some cases life itself. Stringent measures should be adopted specially where medicines are the medicines of last resort as any confusion in such medicines may be fatal or could have disastrous effects. The confusion as to the identity of the product itself could have dire effect on the public health.

25. Applying this law to the facts of the case, what has to be seen is whether, by using the alphanumeric ?L series? in place of the ?R series? of the Plaintiffs, are the Defendants passing off their medicines as those of the Plaintiffs. I would think so. A difference in the cartons merely proves their facial dissimilarity, but this is not a good enough argument against an allegation of passing off in respect of medicines which, as the Supreme Court tells us, fall in a different category altogether. A stricter approach should be adopted while applying the test to judge the possibility of confusion of one medicinal product for another by the consumer.? From the point of view of the consumer, what is of primary concern is the medicine that he is purchasing for the treatment of a particular ailment. In this respect he cannot afford to be misled. Page 1698 Therefore, it may or may not matter to him whether the carton is the same or different what certainly does matter is the medicine that he is purchasing. In this case, what the Defendants are essentially doing is selling the medicines of the Plaintiffs, though in a different carton and with a different alphanumeric series. On these basic facts, it cannot seriously be said that the Defendants are not guilty of any wrongdoing. If they are, then they should be prohibited from doing so.

26. In Cadila the Supreme Court cautions us to also keep in mind an unwary purchaser of average intelligence and imperfect recollection. If this is done, as it should be, such a customer is likely to be misled into purchasing an ?L series? medicine instead of an ?R series? medicine because there is no difference between the two in terms of the curative effect vis-?-vis the ailment and its symptoms, regardless of the carton. In this context, it is worthwhile to repeat what the Supreme Court says (again in Cadila) that the consumer?s lack of knowledge of English and other surrounding factors must also be kept in mind - ?While examining such cases in India, what has to be kept in mind is the purchaser of such goods in India who may have absolutely no knowledge of English language or of the language in which the trade mark is written and to whom different words with slight difference in spellings may sound phonetically the same. While dealing with cases relating to passing off, one of the important tests which has to be applied in each case is whether the misrepresentation made by the defendant is of such a nature as is likely to cause an ordinary consumer to confuse one product for another due to similarity of marks and other surrounding factors.? (Paragraph 33).

On the basis of the various tests laid down by the Supreme Court, I find it difficult to come to any conclusion other than that a consumer of homeopathic medicines is quite likely to be confused between the ?L series? medicines of the Defendants and the ?R series? medicines of the Plaintiffs given their alphanumeric similarity as also their similarity in terms of curative effect vis-?-vis the ailment and its symptoms.

27. In so far as the decision relied upon by learned Counsel for the Defendants is concerned, that decision dealt with the dissimilarity of the competing cartons and whether, under those circumstances, no case of passing off was made out. In the present case, learned Counsel for the Plaintiffs has proceeded on the basis that the cartons are dissimilar; the contention was that nevertheless, an unwary consumer of the medicine would be misled by the use of a similar alphanumeric combination for similar medicines for similar ailments. This contention is well founded for the reasons already given above.

28. It is also worth noting that even according to the Defendants the use of numerals for homeopathic medicines ?is a common practice in the relevant class of trade.? In paragraph 4 of their written statement (under the heading ?Preliminary Objections?) the Defendants state -

4. Under Section 122 of the Trade and Merchandise Marks Act, 1957 this Hon'ble Court would take into consideration the usage of the trade concerned as a material fact including the legitimate use of trademark/name by other persons. In the instant case, as a trade usage the homeopathic medicines are being sold under the numerical series that Page 1699 is a particular numerical indicating a specific medicine for an ailment. The use of numerals to specify and identify a specific preparation with a specific composition and curative strengths for specified ailments is a common practice in the relevant class of trade. In order to avoid confusion as to the source of the preparations, the individual manufacturers tend to adopt and use the numerals with a distinct prefix such as R or L normally derived from the trading name and style of the manufacturers. The numerals per se have no trademark significance as they are being used to indicate particular preparations and not any particular manufacturer. The use of same numerals in respect of the same preparation by the different manufacturers is in practice and for the convenience of the purchasers.

This is all the more reason for the Defendants not to use the same numeral as the Plaintiffs for the same medicine and for the same ailment. In fact, learned Counsel for the Plaintiffs submitted that his clients could not have any possible objection if the Defendants used a different numeral for a similar medicine. The use of the same numeral would clearly mislead an unwary consumer, given the trade practice, and the intention of the Defendants seems to be, quite clearly, to cash in on the goodwill of the Plaintiffs.

29. Consequently, I am of the view that merely because the cartons of the medicinal products of the Plaintiffs and the Defendants are not the same, but since what is contained in the cartons is an identical product in more ways than one, and the medicines are identified by their alphanumeric combination, the Plaintiffs have made out a prima facie case for the grant of an injunction. Obviously, irreparable damage will be caused to the reputation of the Plaintiffs if the Defendants? medicines are sold as those of the Plaintiffs. The balance of convenience clearly lies in favor of the prayer of the Plaintiffs being granted, particularly from the point of view of the consumers of homeopathic medicines.

30. Under the circumstances, the Defendants are restrained from using the alphanumeric series L-1 to L-75 in respect of the same medicinal product for the same ailment as per the catalogue of the Plaintiffs since this would amount to a clear infringement of their copyright. Similarly, the Defendants are restrained from using the unique composition and formulation of the Plaintiffs in its homeopathic medicines bearing the alphanumeric series R-1 to R-75 since this would also amount to an infringement of their copyright. The cartons used by the Defendants are not similar to the cartons used by the Plaintiffs and, therefore, the Defendants may use those cartons for its medicines but those cartons should not display the alphanumeric series L-1 to L-75.

31. The application of the Plaintiffs for the grant of an injunction is allowed while the application of the Defendants for vacation of the injunction is dismissed. The Plaintiffs will be entitled to costs of Rs. 10,000/-. 32. Needless to say, any expression of opinion is only for the purposes of disposal of the pending applications, and will not bind the parties in the trial of the case.

Certified that the corrected copy of the judgment has been transmitted in the main Server.