Sas Pharmaceuticals vs Emerson Labs Ltd. And Anr.
2007 Latest Caselaw 2163 Del

JUDGMENT

Badar Durrez Ahmed, J.

Page 3130

1. This suit has proceeded ex parte against the defendants. The ex parte orders were passed on 01.02.2007. However, that was done after the defendant No. 2 had filed its written statement. It is only after the filing of the written statement that the defendant No. 2 stopped appearing in the matter. By the order dated 01.02.2007, the plaintiff was directed to file its evidence by way of affidavit within four weeks and also to have the exhibits marked. Thereafter, the plaintiff has filed the evidence affidavit of Mr Sandeep Jain (PW-1) who is the partner in the plaintiff firm. Along with the evidence affidavit, various documents were annexed and marked as Exhibits PW-1/1 to PW- 1/28. The evidence affidavit filed on behalf of the plaintiff essentially supports the averments made in the plaint.

Page 3131

2. Having examined the evidence on record, I am of the view that the plaintiff is entitled to succeed in this suit, particularly in respect of prayers (a), (aa) and (b) of para 25 of the amended plaint. The plaintiff is the registered proprietor of the trade mark 'REGULIN FORTIS' under Registration No. 1306019 dated 31.08.2004 The plaintiff has also been able to demonstrate that it is the proprietor of the trade mark 'REGULIN' which it has been using since 1990 in respect of its pharmaceutical products. The plaintiff has also been able to establish that the defendant has adopted the trade mark 'REGULIFE' in respect of the same pharmaceutical products. The learned Counsel for the plaintiff has placed before me a decision of this Court in the case of Syncom Formulations v. SAS Pharmaceuticals 2004 (28) PTC 632 (Del) in which the very same trade mark of the plaintiff and the infringing mark of 'REGU-30' came up for consideration. The case before the High Court was an appeal against an injunction granted in favor of the plaintiff and against the defendants therein for the use of mark 'REGU-30' which was held to be deceptively similar to the plaintiff's trade mark 'REGULIN FORTE'. The decision referred to by the learned Counsel for the plaintiff also indicates that the plaintiff had taken out a number of proceedings to protect its trade mark 'REGULIN' and 'REGULIN FORTIS' and / or 'REGULIN FORTE'. It is noted in the said decision in paragraph 20 that it is clear that the goods of the plaintiff are popular and have a ready and apparently large market share, tempting others to pass off their goods as those of the plaintiff. This court observed that such a tendency ought to be discouraged.

3. Considering these factors as also the fact that the plaintiff had regularly protected its trade mark 'REGULIN' and 'REGULIN FORTE' by a series of litigations against offenders and persons who are attempting to pass off their goods as those of the plaintiff's, this Court rejected the appeal and confirmed the injunction against the defendants therein. The learned Counsel for the plaintiff states that the suit also has been finally decreed in favor of the plaintiff and a sum of Rs 5 lakhs was awarded as damages.

4. In this background, I am of the view that the plaintiff has clearly established its case for infringement of its trade mark as well as in respect of the passing off action. The trade mark 'REGULIFE' utilised by the defendant is deceptively similar to the mark 'REGULIN' used by the plaintiff. It is also deceptively similar to the registered trade mark 'REGULIN FORTIS' of the plaintiff.

5. In these circumstances, the plaintiff is entitled to a decree in terms of prayers (a), (aa) and (b) of para 25 of the amended plaint.

6. As regards the prayer for damages, the learned Counsel for the plaintiff referred to a series of decisions starting from the decision of this Court in the case of Time Incorporated v. Lokesh Srivastaa and Anr. 2005 (30) PTC 3 (Del) wherein it is indicated that in such instances the courts have been Page 3132 awarding punitive damages. Considering the fact that the courts have been awarding punitive damages in such cases, I am of the view that the plaintiff would be entitled to such damages which I quantify at Rs 5 lakhs.

7. Accordingly, the suit is decreed in terms of prayers mentioned in paragraph 25 (a), (aa) and (b) of the amended plaint, with costs. The plaintiff is also entitled to punitive damages to the extent of Rs 5 lakhs. The suit stands decreed accordingly. The formal decree be drawn up.