Smithkline Beecham Plc & Anr vs Mr Umeshbhai Patel & Ors
2008 Latest Caselaw 1890 Del

     *IN THE HIGH COURT OF DELHI AT NEW DELHI

+                 CS(OS) 2079/2002



%                                 Date of decision: 23.10.2008


SMITHKLINE BEECHAM PLC & ANR                          ....... Plaintiffs
                        Through: Mr Varun Meon, Advocate.


                                Versus



MR UMESHBHAI PATEL & ORS                        ....... Defendants
                         Through: Ex parte


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

1.    Whether reporters of Local papers may
      be allowed to see the judgment?                 No

2.    To be referred to the reporter or not?          No

3.    Whether the judgment should be reported         No
      in the Digest?


RAJIV SAHAI ENDLAW, J.

1. The suit is instituted to restrain infringement and passing off of

the trademark PANADOL and the copyright in the packaging as of in

relation to the product CROCIN both belonging to plaintiffs. The suit

was initially instituted against three defendants of which the

plaintiffs settled with the defendant No.3 and the name of the

defendant No.3 was ordered to be struck off from the array of

defendants vide order dated 19th July, 2004. The defendants 1 and 2

could not be served at their address given by the plaintiffs, as were

not found there, and were ultimately served by publication and

ordered to be proceeded ex parte vide order dated 3rd October, 2005.

The plaintiff has led ex parte evidence.

CS(OS)2079/2002 page 1 of 3

2. The plaintiffs have, by ex parte evidence, proved that the

trademark PANADOL is registered in the name of M/s Winthrop

Products Incorporated. The plaintiffs claim to be assignee of the

said trademark from M/s Winthrop Products Incorporated and

application for registration of the assignment has been deposed to be

pending with the Registrar of Trademarks.

3. The defendants adopted the trademark PANAMOL in relation

to same goods. It is further in evidence that the defendants have, for

marketing the same goods under the trademark PANAMOL, used a

blue blister strip packing and swirl device which the plaintiffs use for

manufacturing and marketing CROCIN tablets and syrups.

4. As far as injunction restraining the defendants from using the

mark PANAMOL for the same goods is concerned, this court in

SmithKline Beecham Plc v Sunil Singh 2001 PTC 321 found that

PARAMOL EXTRA and PAMACOL used by the defendants in that

case infringed the trademark PANADOL of the plaintiff. Even

otherwise I find the mark PANAMOL adopted by the defendants

likely to create confusion. The Apex Court in Cadila Health Care

Ltd v Cadila Pharmaceuticals Ltd AIR 2001 SC 1952 has laid

down the principles in this regard in relation to pharmaceutical

products. Even though the mark PANADOL is not registered in the

name of plaintiffs but it has been held by this court in M/s. Modi

Threads Limited v. M/s. Som Soot Gola Factory and another

AIR 1992 (Delhi) 4, Grandlay Electricals (India) Ltd v Vidya

Batra 1998 PTC (18) Delhi and Astrazeneca UK Ltd. and Anr. v.

CS(OS)2079/2002 page 2 of 3 Orchid Chemicals and Pharmaceuticals Ltd. (2006) PTC 733

DELHI that rights in the trademark accrue on the basis of

assignment deeds and such rights cannot be denied on the ground

that in the records of the Registrar of Trademark, the mark is still

shown in the name of the assignor and that the assignee is entitled

to protect the violation of the trademark at the hands of

unscrupulous persons. The plaintiffs as assignees would thus be

entitled to injunction.

5. As far as other relief claimed of restraining the defendants

from using the swirl device as used by the plaintiffs in relation to

CROCIN is concerned, the plaintiffs have failed to prove the said

swirl device used by them in relation to CROCIN. The affidavit by

way of ex parte evidence of the plaintiffs merely refers to the same

without proving the same before the court. In the absence of any

evidence, no relief can be granted to the plaintiffs.

6. As far as other reliefs claimed of accounts, delivery and

damages are concerned, the plaintiffs having failed to even serve the

defendants at the address given of the defendants and it being on

record that the defendants are no longer at the said addresses, it is

clear that the defendants are not marketing the products infringing

rights of plaintiffs. If the defendants were still marketing the

infringing products, the plaintiffs would have been able to locate the

defendants and to serve the defendants. In any case, vide ex parte

order dated 17th December, 2002, the defendants were restrained

and there is no averment that the said injunction order has been

violated. Thus, the present is not the case where the defendants by

CS(OS)2079/2002 page 3 of 3 remaining away from the court are seeking to avoid any enquiry into

accounts or a decree for damages against them. I, therefore, do not

find the plaintiffs entitled to the other reliefs.

7. Accordingly, a decree for permanent injunction is passed in

favour of the plaintiffs and against the defendants restraining the

defendants, their partners, proprietors, officers, servants, agents

from manufacturing, marketing, offering for sale, advertising directly

or indirectly or dealing in pharmaceutical preparations under the

trademark PANAMOL or any other mark identical or deceptively

similar to the trademark PANADOL, so as to infringe the plaintiff's

registration No.396820 in class 5. They are also restrained from

reproducing, printing or publishing any label or packaging which is a

colourable imitation or substantial reproduction of the plaintiffs'

PANADOL label and packaging as described in paragraph 11 of the

plaint. The plaintiffs shall also be entitled to costs of the suit against

the defendants.

The decree sheet be drawn up accordingly.

                                             RAJIV SAHAI ENDLAW
                                                  (JUDGE)
October 23, 2008
M




CS(OS)2079/2002                                             page 4 of 3