Glaxo Group Limited And Anr. vs Mr. Manjit Patel And Anr.
2006 Latest Caselaw 1320 Del

JUDGMENT

Anil Kumar, J.

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1. The judgment shall dispose of the plaintiffs' suit for permanent injunction for infringement of trademark, passing off, rendition of accounts against the defendants for using trade mark `NORTAM' in respect of their antibiotic, antibacterial preparations and substances.

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2. Brief facts to comprehend the controversy are that the Plaintiff No. 1, Glaxo Group Ltd., is a company incorporated under the laws of the United Kingdom and having its registered office at Glaxo Wellcome House, Berkeley Avenue, Greenford, Middlesex, UB60 ONN UK. The plaintiff No. 2, Glaxo Smith Kline Pharmaceuticals Ltd. is a company incorporated under the Indian Companies Act, 1956 and having its registered office at Dr. Annie Besant Road, Worli Mumbai 400 025. The plaintiffs are members of GlaxoSmithKline Group of companies of which GlaxoSmithKline Plc. (hereinafter referred to as ?GlaxoSmithKline?) is the parent company. GlaxoSmithKline was formed following the merger of Glaxo Wellcome Plct and SmithKline Beecham Plc, one of the world's largest pharmaceutical companies.

3. The Plaintiffs are engaged in a world-wide business together and through their subsidiaries/affiliates world-wide, of manufacturing and marketing a wide range of products, inter alia, pharmaceutical and medicinal preparations and health care products of high quality. The Plaintiffs and their subsidiaries and affiliates the world over are one of the world's largest and fastest growing pharmaceutical, consumer and healthcare product companies sharing the corporate vision of research, discovery, development and creation of effective consumer and healthcare products in compliance with stringent quality control standards.

4. The present suit concerns the Plaintiffs' statutory and common-law proprietary rights over the trade mark FORTUM and violation thereof by the Defendants. The trade mark FORTUM has been registered in the name of Plaintiff No. 1 under registration No. 371733 in Class 5 in India since February 2, 1981 in respect of antibiotic, antibacterial preparations and substances.

5. The plaintiffs have trade mark registered in their favor and they are the exclusive owner of the above said trade mark in relation to the goods for which the said trade marks are registered. The plaintiffs have claimed right to restrain anyone from using the deceptively similar trade mark especially the defendants.

6. The Plaintiffs contended that the FORTUM products comprise of distinctive outer packaging and the Plaintiffs are the owner of the copyright in the said packaging. The packaging bears a distinctive get up, colour scheme and arrangement of features. The said trade mark is being used by the plaintiffs in a distinctive packaging material.

7. The plaintiffs stated that in the month of July, 2004 they became aware of the Defendants' use of a deceptively similar mark NORTAM through market inquiries. The market inquiries further indicated availability of nofloxacin formulations under the trademark NORTAM and NORTAM TZ in the tablet form. They gathered that the defendants are manufacturing and marketing the said preparation. Defendant No. 1, Mr. Manjit Patel is the Director of Shantam Pharmaceutical Pvt. Ltd. (defendant No. 2).

8. The product manufactured and marketed by the defendants, is a prescription drugs prescribed as an antibiotic to cure infections relating to the chest, urine, abdomen etc. The medicines marketed by the defendants Page 0289 are similar as those sold by plaintiffs which are deceptively similar to the registered trademark FORTUM of plaintiff No. 1 in respect of identical goods which mark is registered and this amounts to infringement of trade mark with registration No. 371733 in class 5. According to the plaintiffs the offending mark NORTUM of the defendants is phonetically, visually and structurally similar to the mark of the plaintiffs' FORTUM. The defendants have obviously adopted a similar mark to create confusion amongst the trade and public associated with the health and pharmaceutical industry. The conduct of the defendants was stated to be dishonest and malafide with a view to exploit and take an unfair advantage of the enviable goodwill and reputation of the plaintiffs in India and internationally. The confusion is inevitable according to the plaintiffs because the class of customers and channels of trade are identical and the competing goods fall under the same category, viz., antibiotic preparations and pharmaceutical preparation.

9. Assertion of the plaintiffs is that there is a duty of extreme care placed on the manufacturer to ensure that the quality and standard of products meet the prescribed requirements under law. According to the plaintiffs they are also responsible for public health and are bound to ensure that they do not permit counterfeiting and unlawful use of their trademark which can lead to confusion and deception among buyers and result in harmful consequences. Apprehension of the plaintiffs is that the defendants are not likely to have the level of hygiene or quality that the products of the the plaintiffs are subjected to.

10. With these apprehensions the plaintiffs filed the suit for permanent injunction seeking a restraint against the defendants from using trade mark NORTUM for their products and restraint against manufacturing and selling and offering for sale medicines, antibiotic preparations under the trade mark NORTUM besides the relief of rendition of accounts and for recovery of damages of Rs. 5,00,000 and a decree of Mandatory injunction to hand over all the offending goods to the plaintiffs.

11. On filing the suit plaintiffs were granted an interim injunction restraining defendants from using trade mark NORTUM for their products. In spite of service of summons of the suit and of the application for interim injunction on the defendants they did not appear and, therefore, they were proceeded ex- parte by order dated 28th January, 2005. Thereafter plaintiffs filed his evidence on affidavit and also proved the documents in support of their contentions.

12. The deposition of Mr. Rahul Sethi was filed on behalf of the plaintiffs on an affidavit who deposed that he is the constituted attorney of plaintiff No. 1. Plaintiff No. 2 was stated to be incorporated under the Indian Companies Act, 1956. It was deposed that the plaint is signed on behalf of the plaintiff No. 2 by Mrs. Sree K. Patel whose signatures were identified by the deponent. The plaintiffs, however, did not produce anything to show that Mr. Rahul Sethi is a constituted attorney of the plaintiff No. 1 and is authorised to sign the plaint and verify the same and institute it on behalf of the plaintiff No. 1. Similarly nothing was proved to show that Mrs. Sree K. Patel was authorised to sign, verify and institute the plaint on behalf of plaintiff No. 2.

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13. The deponent on behalf of the plaintiff proved the copy of the registration certificate under No. 371733 in Class 5 for the trade mark FORTUM. It was deposed that the trademark FORTUM is an invented word having no dictionary meaning and has highest degree of distinctiveness, connoting the plaintiffs' goods exclusively. The plaintiffs deposed about the sales of their products worldwide. It was deposed that the plaintiffs' products under the trade mark FORTUM provide a highly effective and well tolerated first line of antibiotic treatment of various infections in adults and children. It was deposed that FORTUM, a third generation Cephalosporin was first launched by the Plaintiffs in 1980 and is now prescribed worldwide. The deponent on behalf of the plaintiffs deposed about sales of FORTUM in India till 2003 and the amount spent on promotional expenses.

14. It was deposed by the plaintiffs that their product has acquired valuable goodwill and reputation in respect of mark FORTUM and it is distinctive. The distinctive trade mark and packing of the plaintiffs' product was also produced and proved by the plaintiffs as Exhibit PW-2. The plaintiffs also proved the deceptively similar products of the defendants as Exhibit PW-3 and they also proved the price list containing the deceptively similar trade mark NORTUM which was exhibited as Exhibit PW-4. It was deposed that the defendant No. 1 is the Managing Director of Defendant No. 2.

15. The plaintiffs though did not plead about an undertaking given by the defendants not to use the similar trade mark, however, they produced the original undertaking executed by defendant No. 1 duly notarized stipulating the rights of the plaintiffs in the trade mark FORTUM and also not to infringe the trade mark FORTUM of the plaintiffs by using trade mark NORTUM. The defendants also undertook not to pass off their goods as that of the plaintiffs and to withdraw all the goods from the market and agreed to destroy the same. The said undertaking of the defendant No. 1 on behalf of the defendant No. 2 was proved and exhibited by the plaintiffs as Exhibit PW-5.

16. The plaintiffs have relied on various judgments that the two marks FORTUM and NORTUM are deceptively similar and the defendants are liable to be restrained from using this mark. In 1996 PTC 44, American Home Products Corporation Wyeth Lab Ltd. v. Lupin Lab Ltd. Plaintiff was the registered proprietor of the trademark ROLAC in respect of medicinal preparations. The defendants were selling analgesic tablets under the trademark torOLAC. It was contended that the prefix ?TO? plays a very important role in judging the visual, phonetic or structural dissimilarity between the two marks and that the prefix ?torO? is emphatic and catchy and it distinguishes the defendant's trademark torOLAC from the registered trademark ROLAC. The Court, however, did not agree with the plea of the defendant and injunction was granted in favor of the plaintiff. In 1998 (1) Arb.L.R. 61, Anglo-French Drugs and Industries Ltd v. Eisen Pharmaceutical Company, the Plaintiff was a registered proprietor of the marks BEPLEX and BEPLEX-ZEE. Defendant had adopted the mark ZEEPLEX. It was contended on behalf the defendant that there are a large number of vitamin tablets in the market with the suffix ?PLEX? and that this suffix has now become common to the trade. The Court, however, did not agree with the plea of the defendant and injunction was granted in favor of the plaintiff. In yet another case PTC (Suppl)(1) 600, Page 0291 Simatul Chemical Industries Pvt. Ltd. v. Cibatul Ltd. the trade name CIBATUL formed part of the name of the plaintiff company. The name SIMATUL was also part of the name of the defendant company. The defendant contended that the name SIMATUL was invented as a result of the combination of two names-Sima, the name of the daughter of the younger brother of the Managing Director and Atul, the name of the son of the Managing Director. The Court, however, held that the two names were deceptively similar and the plaintiff was entitled to injunction against the defendant as the products were medicinal and no confusion could be permitted. In another case of medicinal and pharmaceutical preparations, 2004(28) PTC 456 (Del), Pfizer Ireland Pharmaceuticals v. Intas Pharmaceuticals and Anr. the Plaintiff had adopted the mark LIPItor. The defendant was using the mark LIPICOR. It was pleaded on behalf of the defendant that the plaintiff is not entitled for interim injunction as the word ?LIPI? is a generic word common to the trade and stands adopted by many companies and that no one could have any exclusive monopoly over such words which have become ?publici juris?. The defendant had further contended that the words ?tor? and ?COR? are not deceptively similar. It was, however, observed by the Court that when similarity, whether visually or phonetically is judged and considered, the entire word has to be taken as whole and injunction was granted as there was deceptive similarity between the two marks pertaining to medicines. The Courts had dealt with the similar marks of medicine and pharmaceutical products in , Amritdhara Pharmacy v. Satya Deo. In this matter appellants were the registered proprietor of the mark AMRITDHARA whereas the Respondent had adopted the mark LAKSHMANDHARA. It was contended on behalf of the respondents that apart from the difference in name, the label and packing of Lakshmandhara had exclusive design of its own and the same was not likely to be confused with the product of the appellant. This was not agreed to by Court and the injunction was granted against the deceptively similar mark Lakshmandhara. The plaintiffs have also placed reliance on 2003 PTC 425, Wockardt Limited v. Patiala Medical Agencies and Anr. in which case Plaintiff was the registered proprietor of the trademark ANALGON and the defendant had adopted the mark PALGON. Two marks were found to be deceptively similar and injunction was granted in favor of plaintiff.

17. Other precedents relied on by the plaintiffs regarding deceptively similar trade marks are Tata Iron and Steel Co. Ltd v. Mahavir Steel in which Plaintiff was the registered proprietor of the mark TISCO and the defendant had adopted the mark FISCO. It was contended that the suffix ?ISCO? is commonly used in the trade and therefore the same has become Jurisdiction publics. It was further contended there are a number of firms/companies which are using phonetically similar trade names to the trademark TISCO and that in view of the wide use of suffix ?ISCO? by traders, the defendants cannot be stopped from using ?FISCO? as their trade mark. The Court, however, rejected the contentions raised by the defendant and held that the defendant Page 0292 had infringed the registered mark of the plaintiff. In 2004(1) CTMR 398 (Delhi), Syncom Formulations (India) Ltd v. SAS Pharmaceuticals, the respondent/plaintiff was the proprietor of the mark REGULIN and REGULIN FORTE and the appellant/defendant adopted the mark REGU-30. It was contended on behalf of the appellant the cartons are completely different and that there is no similarity between the words REGU-30 used by the appellant and the words REGULIN FORTE used by the respondents. However, it was held that the two marks were deceptively similar. Deceptive similarity was also held in two marks in 2004(1) CTMR 425 (Delhi), Charak Pharma Private Limited v. Prashi Pharma Private Limited in which case plaintiff was manufacturing and marketing pharmaceutical preparations under the mark ?M2 Tone? whereas the Defendant was manufacturing and marketing medicinal preparations under the mark ?MV Tone?. It was contended that the defendant's product under the trademark ?MVTONE? is only a tonic which could be sold over the counter whereas the product of the plaintiff under the trademark ?M2TONE? is a product for Gynaecological problem and could be sold only upon a prescription given by the doctor. The plea was, however, not accepted and it was held that both marks were phonetically and visually similar and injunction was granted in favor of the plaintiff. Two trade marks TROVIREX and ZORIREX were held to be phonetically and visually similar in 2002 PTC 580, torrent Pharmaceuticals Ltd v. The Wellcome Foundation Ltd. Similarly BETALOC AND BETALONG were held to be similar in , Astra-IDL Limited v. TTK Pharma Limited.

18. On the ratio of these precedents, it is inevitable to infer that the marks FORTUM and NORTUM are deceptively similar. The pleas raised by the plaintiffs have remained un-rebutted as neither any reply to the pleas raised in the plaint were filed nor any one appeared on behalf of the defendants to refute the pleas and contentions raised against the defendants. The testimony of the witness of the plaintiff, constituted attorney remained un-rebutted who proved that plaint has been signed and verified by him and another authorized person on behalf of the plaintiff No. 2. The other pleas raised by the plaintiff also were proved by the said witnesses and nothing was produced by the defendants to refute the pleas and contentions proved on behalf of the plaintiffs.

19. In the circumstances, the plaintiffs have proved that they have a distinctive trade mark FORTUM and the trade mark used by the defendants NORTUM is deceptively similar to that of the plaintiffs. The plaintiffs also proved that the defendants do not have a right to use a deceptively similar trade mark NORTUM. The plaintiff also proved the undertaking given by the defendants as Exhibit PW-5 where the defendants agreed not to use the deceptively similar trade mark NORTUM. The inevitable inference in the facts and circumstances is that the defendants are not entitled to manufacture, sell and use their products under the trade mark NORTUM.

20. The witness of the plaintiff has not deposed any thing about the rendition of account by the defendants. Rather the plaintiffs seem to be satisfied with Page 0293 the undertaking given by the defendants which is exhibit PW-5. In the circumstances, the plaintiffs are not entitled for rendition of accounts from the defendants.

21. The plaintiffs had also pleaded for recovery of damages of Rs. 5,00,000 from the defendants. However, the plaintiffs have neither deposed nor proved that they have suffered damages of Rs. 5,00,000 or any other amount. The testimony of the witness of the plaintiff is completely silent about the damages allegedly suffered by the plaintiffs.

22. The learned Counsel for the plaintiffs have relied on 2005 (3) PTC, Times Incorporation v. Lokesh Srivastava and Anr. to contend that the plaintiffs are entitled for recovery of damages as even punitive damages are awarded to discourage and dishearten law breakers who indulge in violation with impunity. The judgment relied on by the plaintiff, however, does not lay down that without the proof of the damages, whether general of punitive, the Court must award such damages. The witness of the plaintiffs is just silent as to whether the plaintiffs have suffered any damages, whether general or punitive. There is no proof as to how much damages have been suffered by the plaintiffs as there is not even a deposition to this effect. The witness of the plaintiffs have not even prayed for any damages in his testimony which was on affidavit. The inevitable inference in the facts and circumstances is that the plaintiffs have failed to prove that they have suffered any damages and have also failed to prove as to how much damages they have suffered and how much damages they are entitled to. The inevitable conclusion is that the plaintiffs are not entitled for any damages from the defendants.

23. The plaintiffs have relied on the undertaking Exhibit PW 5 given by defendant No. 1 as Director of defendant No. 2. In the undertaking, the defendants agreed to withdraw all goods, packing materials bearing the mark NORTAM in any form from the market and also which are in the possession of the defendants and which they agreed to destroy without any compensation from the plaintiffs. Consequently, the plaintiffs shall be entitled for a decree of mandatory injunction.

24. In these circumstances, the suit of the plaintiffs for permanent injunction is decreed and the decree of permanent injunction is passed in favor of the plaintiff and against the defendants restraining them from manufacturing, selling and offering for sale directly or indirectly medicinal products under the trade mark NORTAM so as to infringe plaintiffs trade mark FORTUM having registration No. 371733 in class 5. The defendants are also restrained from using the packaging, layout, colour scheme and arrangement of features of plaintiff's packing under the trade mark FORTUM. A decree for mandatory injunction is also passed in favor of plaintiffs and against the defendants directing them to withdraw all goods, packing materials bearing the mark NORTAM in any form from the market and destroy such goods in the packing materials bearing the mark NORTAM after withdrawing such goods from the market and which are in their possession. Cost of the suit is also awarded to the plaintiffs and against the defendants.