M/S Arbro Pharmaceuticals Ltd vs M/S Franklin Remedies (Prop. ...
2008 Latest Caselaw 1322 Del

*      IN THE HIGH COURT OF DELHI AT NEW DELHI

+                    CS(OS) 451/2007


%                              Date of decision : 12.08.2008



M/S ARBRO PHARMACEUTICALS LTD                                  ....... Plaintiff
                                                Through:   Mr. Siddharth, Advocate.


                                      Versus


M/S FRANKLIN REMEDIES                                          ........ Defendants
(PROP. HANSUM FIBERS PVT LTD)
                                                       Ex parte.




CORAM :-
HON'BLE MR. JUSTICE RAJIV SAHAI ENDLAW
     1.

Whether reporters of Local papers may be allowed to see the judgment? YES

2. To be referred to the reporter or not? Not Necessary

3. Whether the judgment should be reported Not Necessary in the Digest?

RAJIV SAHAI ENDLAW, J

1. The plaintiff claims permanent injunction for restraining the

defendant from passing of its pharmaceutical products under the

trademark/packaging „MARKIN‟ for the reason of the same being

similar/deceptively similar to the plaintiffs mark/packaging "NORKIN" with

the suffix "PLUS" also in relation to pharmaceutical preparations. The

defendant was by ex parte ad interim order dated 12-03-2007 restrained

from making, selling, dealing in pharmaceutical preparations under the

impugned trademark/packaging identical or deceptively similar to that of

the plaintiff. The defendant was proceeded ex parte on 23-08-2007 and the

interim orders confirmed during the pendency of the suit. The defendant

remains ex parte. The plaintiff has led ex parte evidence by affidavit of its

manager Sh. Sanjay Gupta.

2. From the evidence, it is established:

a. That the plaintiff is a company within the meaning of the companies Act 1956 as evident from the certificate of incorporation Ex. Pw 1/1.

b. The suit has been instituted and the plaint signed and verified by a duly authorized person on behalf of the plaintiff as evident from the resolution of the board of directors of the plaintiff Ex. Pw 1/2.

c. That the plaintiff in January 1995 conceived and adopted the trademark NORKIN with the suffix PLUS in respect of pharmaceutical preparations manufactured by it.

d. The trademark/packaging of the plaintiff is evident from Ex PW 1/3.

e. License dated 20/04/1995 Ex. P.W 1/4 was issued to the plaintiff by the Drug Control Department of the Government of National Capital Territory Of Delhi for manufacture inter alia, of Norfloxacin, tablets and suspension under the brand name "NORKIN" and "NORKIN" with the suffix `PLUS‟.

f. Plaintiff has been selling pharmaceutical preparations under the brand NORKIN with the suffix PLUS with effect from 1995 till date as evident from bills proved as Ex. Pw 1/5 to PW 1/113.

g. That the design, colour combination and the packaging has been authored by the employee of the plaintiff and the plaintiff is the owner thereof.

h. That the trademark NORKIN with the suffix PLUS has been used by the plaintiff.

i. That the plaintiff has been in the past instituting legal proceedings to protect its aforesaid trademark.

j. The plaintiff claims to have restrained use of trademark MARKIN by another pharmaceutical company in CS(OS) 145/2007 of this court and in suit no 138/2005 of the district court and also of trademark "MORKIN" by yet another pharmaceutical company.

3. The defendant is stated to have commenced manufacture and

marketing Norfloxacin Suspension packed in a carton bearing trademark

„MARKIN‟. The carton of the defendant is Ex Pw 1/16(Annexure D to the

plaint).

4. The jurisdiction of this court has been invoked since the

defendant is stated to be carriying on business within the jurisdiction of this

court.

5. The witness of the plaintiff has also deposed that the plaintiff has

suffered damage of Rs 15 Lakh and has also claimed punitive damages of

RS 5 lakh against the defendant.

6. The evidence of the plaintiff remains un rebutted. The counsel for

the plaintiff has relied on Cadila Health Care V Cadila Pharmaceuticals ltd

2001 (21) PTC 300(SC) to urge that physicians are not immune from

confusion or mistake and owing to the nature of trade, phonetic similarity

can cause confusion. It is also urged that in a passing off action, the

plaintiffs right is against the conduct of the defendant intending to deceive.

7. I am satisfied that the trademark MARKIN adopted by the

defendant is phonetically similar to the trademark NORKIN with the suffix

PLUS of the plaintiff. The packaging of the plaintiff depicts a small girl. The

defendant has also adopted the picture of a small girl on its packaging and

which is also likely to cause confusion and lead to the concerned people to

believe that the pharmaceutical preparation of the defendant is in some way

connected to the plaintiff. The plaintiff thus has become entitled to relief of

permanent injunction claimed.

8. However, as far as the relief of damages, delivery for destruction

and disclosure is concerned, there is no complaint of violation by the

defendant of the ex parte order of 12/03/2007. The plaintiff claims that it

had come to its knowledge in the first week of March 2007 that the

defendant was manufacturing and selling pharmaceutical preparations

under the impugned trademark. It is not in evidence as to since when the

defendant was manufacturing and selling under the impugned trademark.

The plaintiff has also not led any evidence as to the quantum of damages, if

any, suffered. The plaintiff is thus not entitled to other reliefs claimed save

of punitive damages which owing to the short time in which the defendant

has passed off its goods as that of the plaintiff are assessed at Rs 1 lakh.

9. A decree of permanent injunction is passed in favour of the

plaintiff and against the defendant, its directors, and agents restraining

them from manufacturing, advertising or dealing in pharmaceutical

preparations under the trademark MARKIN or any other mark identical/

deceptively similar to the plaintiff‟s NORKIN with the suffix PLUS as

depicted in Annexure "D" to the plaint and proved as Exhibit PW1/116.

10. A decree for recovery of Rs. 1 lakh as punitive damages is also

passed in favour of the plaintiff and against the defendant. However, since

the defendant has not contested this suit, plaintiff to bear its own costs.

Decree sheet be drawn up.

RAJIV SAHAI ENDLAW JUDGE August 12, 2008 MN