Neol Pharma And Anr. vs Guruchem Laboratories Pvt. Ltd.
2006 Latest Caselaw 940 Del

JUDGMENT

Anil Kumar, J.

Page 1983

1. This judgment shall dispose of plaintiff's suit seeking permanent injunction against the defendants restraining them from infringing their trademark 'COLINOL' for their pharmaceutical products and passing of their goods as that of plaintiff.

2. The plaintiffs contended that plaintiff No. 1 is a proprietorship firm having its registered office at Laxmi Narayana Nagar Colony, Hyderabad, Andhra, Pradesh which was formerly known as M/s. Anros Pharma and Shri S. Venkataiah is the proprietor of the said firm. Plaintiff No. 2 is contended to be a partnership having its registered office at 9, Nagari Terrace, Soonawala Agiyari Lane, Mahim, Mumbai and Shri S. Venkataiah is one of the partners of the said firm. Shri S. Venkataiah is contended to be the partner and authorized to sign, verify and institute the suit on behalf of plaintiff. The plaintiff asserted that they have trademark 'COLINOL' for their pharmaceutical products and defendants are using the confusingly similar mark 'POLINOL' and passing off their goods as that of plaintiffs.

3. According to pleas of the plaintiffs, the trademark 'COLINOL' was originally registered in the name of M/s Noel Pharma and it has been renewed from time to time and is subsisting and in full legal force. The plaintiff No. 2 is stated to have become the registered proprietor of the trademark 'COLINOL' w.e.f. 26th November, 2002 by virtue of Assignment and consequent order passed by the Trade Mark Registry, Government of India on 28th February, 2003. Plaintiff No. 1 has got the right to use the trade mark 'COLINOL' on account of royalty agreement.

4. Plaintiffs asserted that they are manufacturing and marketing various pharmaceutical products such as metroquin, colinol, betephil, rumatin, etc. which are of highest possible quality. Plaintiffs are stated to have invested enormous sums of money in research and development to establish and bring Page 1984 to market a wide variety of innovative pharmaceutical products and in the process has created a vast reputation for the high quality and effectiveness of its pharmaceutical products.

5. 'COLINOL' is fanciful and coined word having no descriptive meaning according to the plaintiff. The name 'COLINOL' is for medicine having composition of Dicyclomine Hydrochloride and Paracetamol. This medicine has received an enormous amount of public and Doctor's attention and the medicine is used widely for Spasmodic Pain. The plaintiffs have given the sales figure of their product for 2004-05 as Rs. 3,30,00,000/-. The plaintiffs have also given the amount spent on the promotion of plaintiffs' product in 2004-2005 as Rs. 23,50,000/-.

6. It was pleaded on behalf of plaintiff that recently the came across a deceptively and confusingly similar brand 'POLINOL' of the defendant which was advertised in Trademark General before its acceptance. According to the plaintiffs, the mark 'POLINOL' is deceptively and confusingly similar to the plaintiffs' reputed trademark 'COLINOL'. The defendant has deliberately chosen the name 'POLINOL' which is deceptively and confusingly similar with a view to ride upon the goodwill and reputation of the plaintiffs' company.

7. The plaintiffs contended that the use of deceptively and confusingly similar trademark by the defendants for its medical preparation is causing immense loss and erosion of the plaintiffs' reputation. The drugs marketed by the plaintiff though is Schedule 'H' category drug and can be sold only on medical prescription however, the possibility of its sale without a medical prescription and even confusion among the doctors and chemist can not be ruled out and the inferior product of the defendant causing immense loss to the plaintiffs' reputation is very distinct and very realistic and may also have disastrous health hazards. The plaintiffs averred that the loss to their reputation and goodwill shall be unquantifiable and in the circumstances the suit for permanent injunction and rendition of accounts was filed by the plaintiffs.

8. On an interim application of the plaintiff being IA No. 6794/2005 an interim injunction was granted and defendant was restrained from using the word 'POLINOL' either as a trademark or a part of trademark or corporate name till further orders. The summons of the suit was served on the defendant and no one appeared on 8th November, 2005 when the suit was taken up. Since no one appeared on behalf of defendant, he was proceeded ex-parte and plaintiffs were directed to file their evidence on affidavit.

9. Shri S. Venkataiah has deposed on affidavit on behalf of plaintiff contending that he is authorized representative of the plaintiff and he is well- conversant with the facts and circumstances of the case. It was deposed by him that M/s Noel Pharma is a proprietorship firm which was formerly known as M/s Anros Pharma and he is the proprietor of the said firm. He deposed that he has signed and verified the pleadings and instituted the suit and he is authorized to do so. Copies of the drug license and Central Excise Registration certificate were filed and proved as Exhibit PW-1/1 and PW-1/2 to show that the name of the firm was changed from M/s Anros Pharma to M/s Noel Pharma. The witness of the plaintiff also deposed that he is a partner of plaintiff No. 2 and consequently he is entitled to file the suit on behalf of Page 1985 partnership firm, plaintiff No. 2 and he also produced the copy of the partnership deed and authorization which have been exhibited as Exhibit PW-1/3 and PW-1/4.

10. The witness of the plaintiff deposed about the registration of the trademark and that the registration of trade mark `COLINOL' it is still subsisting and valid. The witness of the plaintiff also proved certificate issued by Trademark Registry, Government of India giving the date of the registered trademark 'COLINOL' which was exhibited as Exhibit PW-1/5 and the order of the Trademark Registry allowing the trademark 'COLINOL' bearing Registration No. 390788 as Exhibit PW-1/6.

11. The deponent stated that the plaintiffs also manufacture various other pharmaceutical products such as metroquin, colinol, betephil, rumatin, etc. According to the plaintiff since 1982 the medicine 'COLINOL' is on sale in the entire country. 'COLINOL' brand is stated to be very effective which has made the plaintiffs brand very profit oriented and has become a household name since 1982 when it was introduced, it is used for treatment of spasmodic pain. The deponent on behalf of the plaintiff also deposed about the sales figure of the medicine since 2000 and some of the invoices regarding the sale of the medicine to different persons have been produced and proved and exhibited as Exhibit PW- 1/8. The deponent has also proved the amount spent in the advertisement and the documents in this regard were proved and were exhibited as Exhibit PW-1/9.

12. The deponent categorically contended that the mark of the defendant is deceptively and confusingly similar to the trademark of the plaintiff and this has been done by the defendant with a view to utilize the goodwill and reputation of the plaintiff. According to the plaintiff, the defendant does not have any plausible reason for adopting confusingly and deceptively similar trade mark `POLINOL' for his product.

13. Neither any pleadings were filed by the defendant or on behalf of the defendant refuting the pleas and contentions raised by the plaintiff nor the deposition on behalf of the plaintiff has been controverter by the defendant. The deposition made on behalf of the plaintiff is deemed to have been accepted and pleas raised by the plaintiff proved.

14. I have no reason to disbelieve the sole proprietor of plaintiff No. 1 and the partner of plaintiff No. 2 and various averments made by him and the pleas and contentions raised and proved by him on behalf of the plaintiff. The defendants have not rebutted any thing established on behalf of the plaintiffs as neither any person appeared on behalf of defendant nor the witness of the plaintiffs was cross-examined and there is also nothing to show anything in favor of defendant.

15. From the pleadings of the plaintiff and the evidence, it is apparent that the plaintiff No. 1 is a proprietorship concern and the proprietor of the plaintiff No. 1 is also the partner of plaintiff No. 2 and authorized to sign, verify and institute the suit. The suit, therefore, has been instituted by an authorized person on behalf of the plaintiffs. The plaintiffs have also established that the name of the plaintiff earlier was M/s. Anros Pharma. The plaintiffs have Page 1986 also able to establish that the registration of the trademark 'COLINOL' is with the plaintiffs and it is duly registered with the Trademark Registry and is subsisting. The plaintiffs have also proved that they are using the trade name `COLINOL' much prior to the defendant and have a very good reputation about their product. Their product `COLINOL' has very vast reputation for the high quality and its effectiveness. The other pharmaceutical products of the plaintiffs are also very reputed which fact plaintiffs have been able to establish. The apprehension of the plaintiffs are that if the defendant is allowed to continue with his illegal and unlawful activity of using deceptively and confusingly similar trade mark `POLINOL', the trademark of the plaintiffs shall be diluted and the reputation of the plaintiffs shall be affected adversely and the loss and damage caused to the plaintiffs shall be irreversible and it shall also lead to multiplicity of proceedings.

16. Apex Court in case of Cadilla Health Care Ltd. v. Cadilla Pharmaceuticals Ltd dealt with passing off and infringement of medicinal preparation and drugs. In this case principles laid down by the Apex Court exhaustively deal with the passing off the drugs and therefore this judgment is very relevant. Following factors are to be considered while dealing with an action for passing off:

(1) The nature of the marks i.e. whether the marks are word marks of label marks or composite marks, i.e. both words and lable marks.

(2) The degree or resembleness between the marks, phonetically similar and hence similar in idea.

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

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

(5) 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.

(6) The mode of purchasing the goods or placing order for the goods and.

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

In the Cadilla Health Care Ltd (supra) the Apex Court also held that when the question of passing of action is to be decided in a case involving medicinal products, the test to be applied to adjudge the violation of trade mark law may not be at par with cases involving non-medicinal products. Relying on the test laid down by the Supreme Court in the case of Cadila Private Ltd. (supra) it is inferable without any doubt that the trademark of the defendant 'POLINO' is very deceptively similar to the trademark 'POLINOL' of plaintiffs. The plaintiffs have been able to establish that defendant has no reason to use a deceptively or confusingly similar trade mark as that of plaintiff for its product. The averments and pleas established by the plaintiff have remained Page 1987 un-rebutted and in the circumstances, the plaintiffs have been able to establish that they are entitled for permanent injunction as prayed by them. In case the defendant is allowed to use the confusing and deceptively similar trade mark it will cause hardship to the plaintiffs and it may also lead to multiplicity of proceedings.

17. Though the plaintiffs had prayed for a decree for rendition of account in the plaint, however, no evidence was led by the plaintiffs that they are entitled for renditions of account from the defendant. In view of this the learned Counsel for the plaintiffs contended at the time of arguments that the plaintiffs give their claim for rendition of account by the defendant.

18. Therefore, considering the pleas and contentions and facts proved by the plaintiffs, the suit of the plaintiffs for permanent injunction is decreed and a decree for permanent injunction is passed in favor of the plaintiffs and against the defendant restraining him from using the trade mark 'POLINOL' or confusingly similar trade mark for his pharmaceutical drugs. The defendant is further restrained from using the word 'POLINOL' as a trade name or a corporate name. Cost of the suit is also awarded to the plaintiffs against the defendant. Decree sheet be prepared accordingly