Novartis Ag vs Crest Pharma Pvt. Ltd. & Anr.
2009 Latest Caselaw 2806 Del

*            HIGH COURT OF DELHI: NEW DELHI

+            IA No.5495/2008 in CS (OS) No.851/2008

%                  Judgment reserved on:        29th April, 2009

                   Judgment pronounced on:      24th July , 2009

NOVARTIS AG                                            ..... Plaintiff
                   Through:     Mr. Pravin Anand, Ms. Binny Kalra
                                & Ms. Vaishali Kakra, Advs.

                   Versus

CREST PHARMA PVT. LTD & ANR                  ..... Defendants
            Through: Mr. Manish Kumar Jha, Adv. For D-1
                      Mr. Shashi Shanker, Adv. For D-2

Coram:

HON'BLE MR. JUSTICE MANMOHAN SINGH

1. Whether the Reporters of local papers may
   be allowed to see the judgment?                       Yes

2. To be referred to Reporter or not?                    Yes

3. Whether the judgment should be reported               Yes
   in the Digest?

MANMOHAN SINGH, J.

1. By this order I shall dispose of this application being IA

No.5495/2008 under Order XXXIX Rules 1 & 2 read with Section 151

CPC.

2. The facts of the case are that the plaintiff has filed a suit for

permanent injunction restraining passing of, damages and delivery up

etc.

Plaintiff's case

3. The plaintiff is manufacturing and selling pharmaceutical

specialities and is in the business for the past 100 years. The plaintiff is

the proprietor of the trademark „SECEF‟, a medicinal formulation

containing cefisime which is sold by the plaintiff in capsule and

suspension form.

4. The trade mark SECEF, as per the plaintiff, was adopted in the

year 1998 and is a coined word and is a distinctive trade mark. The said

trade mark, according to the plaintiff, was available in many countries

since late 1980s and early 1990s and in India since May 2002. There

was also a discussion in various pharmaceutical well known trade

journals in the year 1988.

5. The plaintiff‟s application for registration of the said trade mark is

pending in India under No. 1494475 in class 5 dated 9th October, 2002.

The plaintiff‟s earlier application bearing No. 814621 in class 5 was

abandoned by it otherwise the trade mark was registered in 53 countries

of the world.

6. As per the plaintiff, the trade mark SECEF has been continuously

and extensively used in India since May 2002 and has registered total

sale of 20.7 crores till date. The plaintiff has alleged in the plaint that

the trademark SECEF has earned substantial reputation and goodwill and

is associated with the goods of the plaintiff and has acquired valuable

common law rights.

7. In February, 2007 through its representative the plaintiff came

across the product bearing the mark CECEF which is also a cefixime

preparation meant for same indication as that of the plaintiff.

8. On enquiry, the plaintiff came to know that defendant No.1 is

using the said trade mark. The products packaging revealed that it was

being manufactured by defendant No.2. The search report also revealed

that defendant No.1 had applied for registration of the trade mark under

No. 1452902 in class 5.

9. The plaintiff thereafter sent seize and desist letter dated 25 th April,

2007. However, due to oversight, the plaintiff dispatched the said letter

only on 18th August, 2007. The said letter was returned undelivered with

the postal remark "left returned to sender". On further investigation, the

address of defendant No.1 and 2 was found and notices were reissued to

three addresses on 22nd September, 2007. However, no response was

received from any of the addresses.

10. The plaintiff thereafter issued the reminder on 8th November, 2007

offering an amicable resolution of the matter and in exchange the

defendant No.1 would withdraw his trade mark application bearing No.

1452902 in class 5. The plaintiff thereafter received a reply in

November, 2007 whereby the defendant No.1 informed the plaintiff that

they have taken steps to withdraw their trade mark application and

attached the letter addressed to the trade mark office for withdrawing the

said application.

11. The plaintiff dispatched the said letter to the trade mark registry in

the hope that it would conclude the matter and enable an amicable

settlement and the defendants would cease to use the trade mark CECEF.

12. The plaintiff for the purpose of his satisfaction sent another letter

dated 4th December, 2007 for the said clarification coupled with the final

notice to the defendants on 12th February, 2008 for confirmation

regarding the cease of the goods under the trademark CECEF altogether.

In spite of the various letters the defendants did not give any reply and,

therefore, the present suit has been filed by the plaintiff.

13. The contention of the plaintiff is that the two trade marks SECEF

and CECEF are visually, structurally and phenotically similar and are

also prescribed for the identical indications and the use of the said trade

mark CECEF by the plaintiff is unauthorized and unlicensed, therefore,

the consumers, chemists and doctors are bound to be misled or deceived

in believing these two products originating or approved by or connected

with the plaintiff in some way even though the medicine in question is a

Schedule H drug.

14. Lastly, it is alleged by the plaintiff that the defendants‟ adoption

of the trademark CECEF is deliberate with a view to rake the business

and earn illegal profits from the reputation and goodwill which is created

by the plaintiff in respect of its trade mark SECEF and it is a classic case

of passing off where the defendants are passing of their goods as that of

the plaintiff.

15. The suit along with the interim application was listed on 6 th May,

2008 when this court issued summons in the suit and notices in the

interim application. An ex parte ad interim injunction was also issued in

favour of the plaintiff restraining the defendants from manufacturing,

selling or dealing with the product under the trade mark CECEF or any

other trade mark which is deceptively similar with the trade mark of the

plaintiff.

16. The defendants filed the written statement as well as the reply to

the interim application.

Defendants' case

17. The defendants have, interalia, raised the following defences and

prayed for vacation of the ex parte ad interim injunction:-

(i) there is no resemblance or similarity between the two

trade marks of the parties i.e. SECEF and CECEF. The

trade mark of the defendant CECEF is visually,

structurally and phonetically different.

(ii) the plaintiff‟s product is prescribed for urinary respiratory

trace infection and acute ottis ...whereas the defendants‟

product is anti-biotic and is prescribed mostly for post

operation basis. The ingredients of both the products are

also different. The plaintiff‟s product is available in

tablet and oral suspension whereas the defendants‟

product is available in injection form.

(iii) there is no confusion as the product of the defendants

being schedule "H" drug can only be sold in retail on

prescription by Registered Medical Practitioner. The

medical practitioner or the doctor being educated will

never get confused as to the source of the two products as

their use and structure is totally different.

(iv) this court does not have the territorial jurisdiction to try

or entertain the present suit as none of the defendants

actually and voluntarily reside or carry on business or

professionally work for gain within the local limits of this

court. The defendants have not sold its product within

the territorial jurisdiction of this court, therefore, the

plaintiff has no right to invoke the jurisdiction of this

court and the plaint is liable to be rejected under the

provisions of Order 7 Rule 11 CPC.

(v) the plaintiff has not approached this court with clean

hands and has knowingly made several false and

misleading statements as the defendants had filed the

application six months prior to the application for

registration of the trade mark by the plaintiff.

(vi) the plaintiff has also failed to prove the element of deceit

and in the absence of the same, the suit is liable to be

dismissed.

(vii) there are number of other companies who are using the

similar trade mark as that of the plaintiff such as CEFF,

SIMCEF, CEF, BECEF, SYCEF, CEACEF, SYCEF,

SICEF and C-CEF.

(viii) the suffix is used on several products of the same nature

by the parties other than the defendants even prior to its

use by the plaintiff. Hence, no case of passing off can be

made out.

(ix) the plaintiff is also not entitled for any relief as there is

acquiescence and delay on the part of the plaintiff as the

plaintiff has admitted that it came to know about the

goods of the defendants in February, 2007 itself but the

plaintiff chose to file the present suit in the month of

May, 2008.

18. I have heard learned counsel for the parties and have gone through

the pleadings and documents on record.

19. Now I shall deal with the first contention raised by learned

counsel for the defendant that there is no resemblance or similarity

between the two trade marks in question i.e. SECEF and CECEF.

Learned counsel for the plaintiff has referred to various decisions

contrary to the contention raised by the learned counsel for the

defendants. The said decisions are:-

(a) AIR 1960 SC 142 Corn Products Refining Co. Vs.

Shangrila Food Products Ltd. the Apex court has held that

the trademark Gluvita and Glucovita are deceptively

similar.

(b) AIR 1963 449 Amritdhara Pharmacy vs. Satyadev

Gupta the Apex court has held that the trade mark

Amritdhara and Laxmandhara are closely similar to each

other.

(c) 2006(33) PTC 157 Remidex Pharma Pvt Ltd vs.Sarita

Pharmaceuticals where the marks ZEVIT and EVIT are

held to be deceptively similar and the court granted the

injunction in favour of the plaintiff.

(d) 2005(3) PTC 14 Sun Pharmaceuticals Industries Ltd vs.

Wyeth Holdings Corporation & Anr where the marks

Parkitane and Pacitane were held to be deceptively similar.

(e) 2004 (28) PTC 456 (Del) Pifzer Ireland Pharmaceuticals

vs. Intas Pharmaceuticals & Anr where the marks Lipitor

and Lipicor were held to be deceptively similar.

(f) 2003 (27) PTC 525 (Del) Sanat Products Ltd vs. Glade

Drugs & Nutracenticals Pvt Ltd & Anr where the marks

Reform and Refirm were held to be deceptively similar.

(g) 2002 (25) PTC 592 (Bom) (DB) Medley Laboratories

Pvt Ltd, Mumbai &Anr vs. Alkem Laboratories Ltd

where the marks Spoxin and Supaxin were held to be

deceptively similar.

(h) 2002 (25) PTC 482 (Del) Smithkline Pharma (India)Ltd

& Ors vs. Prakash Setia & Ors where the marks Alben

and Aben were held to be deceptively similar.

(i) 1996 PTC (16) Del, Ciba Geigy Ltd vs. Crosslands

Research Laboratories Ltd where the marks Voltaren and

Volta-K where held to be deceptively similar.

(j) PTC (Suppl.) (2) 452 (P&H) (DB) Anglo French Drug

Co. (Eastern) (Bombay) vs. Belco Pharmaceuticals

(Haryana) where the marks Beplex and Belplex were held

to be deceptively similar.

20. One important factor in the present case is that the said marks

used by the parties have been shown in English language and the

defendant has used the first letter "C" in place of "S" of the plaintiff.

The rest of the mark is the same as that of the plaintiff. It cannot be

denied that if both the marks are written and read in other languages,

then both the marks are identical. Therefore, the contention of the

defendant cannot be accepted that the two trade marks are dissimilar.

21. The second contention of the defendant is that the plaintiff‟s drug

is prescribed for urinary respiratory track infection and acute otitis media

whereas the defendant‟s product being an antibiotic is prescribed mostly

for post operative cases and the ingredients of the two products are also

different and used for different purposes of disease. The defendant has

also contended that the plaintiff‟s product is used in tablet and oral

suspension form whereas the defendant‟s product is only available in

injection form, therefore, there is no confusion and deception between

the two products in question.

22. I do not accept the submission of the learned counsel for the

defendant as I feel that it is more dangerous if the pharmaceuticals

products bearing the same mark is used for different purposes for the

same ailment or even otherwise. I also do not accept the contention of

the defendant‟s counsel that there would be no confusion if the product

contain different ingredients/different salt. In my opinion, it is more

dangerous and harmful in the trade if the same trade mark is used for

different ailments. The Apex court has already dealt with this

proposition of law in the case of Cadila Healthcare Ltd. Vs. Cadila

Pharmaceuticals, (2001) 5 SCC 73 and held as under :

"25. The drugs have a marked difference in the compositions with completely different side effects, the test should be applied strictly as the possibility of harm resulting from any kind of confusion by the consumer can have unpleasant if not disastrous results. The courts need to be particularly vigilant where the defendant's drug, of which passing off is alleged, is meant for curing the same ailment as the plaintiff's medicine but the compositions are different. The confusion is more likely in such cases and the incorrect intake of medicine may even result in loss of life or other serious health problems. In this regard, reference may usefully be made to the case of Glenwood Laboratories, Inc. Vs. American Home Products Corp. 173 USPQ 19(1972) 455 F.Reports 2d, 1384(1972), where it was held as under:

"The products of the parties are medicinal and applicant's product is contraindicated for the disease for which opposer's product is indicated. It is apparent that confusion or mistake in filling a prescription for either product could produce harmful effects. Under such circumstances, it is necessary for obvious reasons, to avoid confusion or mistake in the dispensing of the pharmaceuticals."

23. The other argument of the counsel for the defendant that the

plaintiff‟s product is available in tablets and oral suspension form and

the defendant‟s product is available in injection form has also no force as

it has been seen from experience of the pharmaceuticals products

available in all over the world that most of the companies are making

pharmaceuticals products in both the forms i.e. tablets as well as in

injection form under the same trade mark. As per well settled law, the

actual confusion and deception is not required in order to prove the case

of passing off even if the defendant has adopted the mark innocently and

the court comes to the conclusion that the two trade marks are

deceptively similar, injunction under the said circumstances has to be

granted. Actual deception is not required in an action of passing off.

Century Traders vs. Roshan Lal Duggar & Co., AIR 1978 (Del) 250.

Therefore there is no chance of confusion and deception.

24. In the case of Laxmikant V. Patel Vs. Chetanbhat Shah &

Anr., (2002)3SCC65 the Apex court has dealt with this question at great

length in paras 8 and 9 which reads as under :

"13. In an action for passing off it is usual, rather essential, to seek an injunction temporary or ad-interim. The principles for the grant of such injunction are the same as in the case of any other action against injury complained of. The plaintiff must prove a prima facie case, availability of balance of convenience in his favour and his suffering an irreparable injury in the absence of grant of injunction. According to Kerly (ibid, para 16.16) passing off cases are often cases of deliberate and intentional misrepresentation, but it is well- settled that fraud is not a necessary element of the right of action, and the absence of an intention to deceive is not a defence though proof of fraudulent intention may materially assist a plaintiff in establishing probability of deception. Christopher Wad low in Law of Passing Off (1995 Edition, at p.3.06) states that the plaintiff does not have to prove actual damage in order to succeed in an action for passing off. Likelihood of damage is sufficient. The same learned author states that the defendant's state of mind is wholly irrelevant to the existence of the cause of action for passing off (ibid, paras 4.20 and 7.15). As to how the injunction granted by the Court would shape depends on the facts and circumstances of each case. Where a defendant has imitated or adopted the plaintiff's distinctive trade mark or business name, the order may be an absolute injunction that he would not use or carry on business under that name, (Kerly, ibid, para 16.97)"

25. The third contention of the learned counsel for the defendant is

that the product of the parties in question is Schedule "H" drug and the

same has to be purchased by the customers only on the prescription of

medical practitioner. The argument of the defence of Schedule "H" drug

has already been dealt with in various cases decided by the High Courts

as well as the Apex court wherein the court has rejected the said

submission many times. In the case of Cadila Pharmaceuticals (supra)

in para 22 and 28 it was held as under :

"22. It may here be noticed that Schedule "H" drugs are those which can be sold by the chemist only on the prescription of the Doctor but Schedule "L" drugs are not sold across the counter but are sold only to the hospitals and clinics. Nevertheless, it is not un-common that because of lack of competence or otherwise, mistakes can arise specially where the trade marks are deceptively similar. In Blansett Pharmaceuticals Co. Vs. Carmick Laboratories Inc. 25 USPQ 2nd, 1473 (TTAB 1993), it was held as under:

"Confusion and mistake is likely, even for prescription drugs prescribed by doctors and dispensed by pharmacists, where these similar goods are marketed under marks which look alike and sound alike".

"28. Here, it will be useful to refer to the decision of Morgenstern Chemical Company's case (supra) where it has been held as under:

"[5] In the field of medical products, it is particularly important that great care be taken to prevent any possibility of confusion in the use of trade marks. The test as to whether or not there is confusing similarity in these products even if prescribed and dispensed only by professionally trained individuals does not hinge on whether or not the medicines are designed for similar ailments. The rule enunciated by Judge Helen in Cole Chemical Co. Vs. Cole Laboratories D.C. Mo. 1954, 118F. Supp. 612, 616, 617, 101, USPQ 44, 47, 48, is applicable here:

"Plaintiff and defendant are engaged in the sale of medical preparations. They are for ultimate human consumption or use.***They are particularly all for ailments of the human body. Confusion in such products can have serious consequences for the patient. Confusion in medicines must be avoided.

*****

"Prevention of confusion and mistakes in medicines is too vital to be trifled with"

The observations made by Assistant Commissioner Leeds of the Patent Office in R.J. Strasenburgh Co. Vs. Kenwood Laboratories INC. 1955, 106 USPQ 379, 380 are particularly apt, that

"Physicians are not immune from confusion or mistake. Further more it is common knowledge that many prescriptions are telephoned to the pharmacists and others are handwritten, and frequently handwriting is not unmistakably legible. These facts enhance the chances of confusion or mistake by the pharmacists in filling the prescription if the marks appear too much alike when handwritten or sound too much alike when pronounced."

The defendant concedes that physicians and pharmacists are not infallible but urges that the members of these professions are carefully trained to detect differences in the characteristics of pharmaceutical products. While this is doubtless true to dos not open the door to the adoption by manufacturers of medicines of trade marks or names which would be confusingly similar to anyone not exercising such great care. For physicians and pharmacists are human and in common with the rest of mankind are subject to human frailties. In the field of medicinal remedies the courts may not speculate as to whether there is a probability of confusion between similar names. If there is any possibility of such confusion in the case of medicines public policy requires that the use of the confusingly similar name be enjoined (See Lambert Pharmacol Ltd. Vs. Bolton Chemical Corporation DCNY 1915, 219 F. 325.326."

26. Also in the case of Ranbaxy Laboratories Ltd. Vs. Dua

Pharmaceuticals Pvt. Ltd., AIR1989Delhi44 in para 6 it was held as

under :

"(6) It was then contended by the learned counsel for the defendant that the said medicines can only be sold on the doctor's prescription and, thereforee, there can be little likelihood of confusion. It is true that the said drugs are supposed to be sold on doctor's prescription, but it is not unknown that the same are also available across the counters in the shops of various chemists. It is also not unknown that the chemists who may not have "CALMPOSE" may pass off the medicine "CALMPROSE" to an unwary purchaser as the medicine prepared by the plaintiff. The test to be adopted is not the knowledge of the doctor, who is giving the prescription. The test to be adopted is whether the unwary customer, who goes to purchase the medicine can make a mistake."

27. The next contention of the learned counsel for the defendant is

that suffix of the mark „CEF" is suggestive of the ingredient and there is

nothing novel or distinctive about the mark of the plaintiff. The suffix

"CEF" has been derived by the parties from the ingredient containing

Cefixime, therefore, the mark of the plaintiff itself is a distinctive trade

mark as claimed by the plaintiff and there is no visual similarity under

the said circumstances.

28. This proposition has already been discussed in various decisions

passed by Apex Court for the last more than four decades in which have

clearly laid down that the rival marks of the parties have to be compared

as a whole. Therefore, it is not a valid defence by the defendant to first

split the mark in question portion-wise and then give its justification for

adoption and use of similar mark of the other party.

29. In the case of Corn Products (Supra) it was held that in deciding a

question of similarity between two marks, the marks have to be

considered as a whole. Similarly, in the case of Amritdhara (supra) it

was observed that the trade mark is the whole thing. The whole word has

to be considered. Also in the case of Kaviraj Pandit Durga Dutt

Sharma Vs. Navaratna Pharmaceutical Laboratories, AIR 1965 SC

980) the Apex Court held that where common marks are included in the

trade marks to be compared, or in one of them, the proper course is to

look at the marks as whole and not to disregard the parts which are

common.

30. In the case of Rapidex Pharmaceuticals (supra), the mark of the

plaintiff and defendant was Zavit and Evit and the objection was raised

by the defendant that the suffix of the mark VIT is adopted from the

generic name vitamin and is common in use by other manufacturer and

traders, therefore, the mark was not a distinctive. However, the

injunction was granted. In another case reported in Sun Pharma

Industries Ltd (supra) where the mark of the parties were Parkitane and

Pacitane, the parties were using the mark in respect of the disease like

Parkinson. While comparing the mark as a whole, the court granted the

injunction. In the case reported of Smithkline Pharma‟s case (supra)

where the marks in question were Alben and Aben, the mark Alben, was

derived by the plaintiff from the generic name, the court granted the

injunction against the defendant.

31. The learned counsel for the plaintiff says that the plaintiff has no

objection if the defendants may use the generic name cefixime as a trade

mark.

32. The next contention of the defendant is that there are number of

other companies who are using the similar trade mark as that of the

plaintiff, those are CEFF, SIMCEF, CEF, BECEF, SYCEF, CEACEF,

SYCEF, SICEF and C-CEF. The contention of the defendant has no

force as the defendants have failed to produce any evidence of the actual

user of the said marks referred by the defendants. In order to take the

said defence, the party has to give cogent evidence before this court as to

since when these trade marks are being used and what is the goodwill

and reputation of the said trade marks. The defendant in the present case

has not produced the samples of the third parties in order to show as to

whether the said marks are being used and goods are available in the

market or not. The similar defence raised in various cases has been dealt

by the courts from time to time in the cases of Century Traders (supra),

Corn Products refining Co. Vs. Shangrila Food Products Ltd., AIR

1960 SUPREME COURT 142 and Pankaj Goel vs. Dabur India Ltd.,

2008(38) PTC 49 (Del). Relevant part of the decision of Corn

product(supra) is reproduced hereinbelow:-

"17. The series of marks containing the common element or elements therefore only assist the applicant when those marks are in extensive use in the market. The onus of proving such user is of course on the applicant, who wants to rely on those marks. Now in the present case the applicant, the respondent before us, led no evidence as to the user of marks with the common element. What had happened was that Deputy Registrar looked into his register and found there a large number of marks which had either 'Gluco' or 'Vita' as prefix or suffix in it. Now of course the presence of a mark in the register does not prove its user all. It is possible that the mark may have been registered but not used. It is not permissible to draw any inference as to their user from the presence of the marks on the register.

33. A mere filing of the search report from the trademarks office does

not prove as to whether the marks mentioned in search report was

actually been used or not. It is imperative on the part of the party who

relies upon the marks of third party to produce cogent and clear evidence

of user in order to prove the defence of common marks to the trademark

on the basis of the third party user. Hence, in the absence of valid and

cogent evidence, the submission of the defendant cannot be accepted.

34. The next submission of the learned counsel for the defendant is

that this court does not have the territorial jurisdiction to try and

entertain the present suit. The plaintiff in the present case has invoked

the jurisdiction as per Para 21 of the plaint which reads as under:-

"This Hon‟ble court has necessary jurisdiction as the sales of the plaintiff‟s products are available in New Delhi through its agents as is the defendant‟s product. The plaintiff‟s sales are also affected causing losses and harm to the plaintiff in Delhi which the sale made by the defendant cuts into the plaintiff‟s business and reduces its sales, interalia, at Delhi. The harm caused to the plaintiff is due to a direct correlation between the defendant‟s infringing activities and the plaintiff‟s business and, therefore a part of the cause of action has arisen in Delhi, therefore, this Hon‟ble court has the jurisdiction to entertain the present suit under Section 20 of CPC."

35. Learned counsel for the plaintiff has argued that the plaintiff has

invoked the jurisdiction of this court on the basis of fact that the

defendant‟s product is available in New Delhi and that the plaintiff‟s

sales are also effected within the territory of this court.

36. At the instance of the defendant, the statement of investigator of

the plaintiff under Order X CPC has also been recorded on 21st January,

2009. In the said statement recorded under Order X CPC, the

investigator has made the statement that the defendant has created

confusion in the market by using of the trade mark CECEF. The

plaintiff‟s and defendants products are available in Delhi through their

agents. Learned counsel for the plaintiff has further argued that the mere

averment in the plaint is sufficient to invoke the jurisdiction.

37. In view of the settled law, it is clear that part of cause of action

has arisen at Delhi and at this stage the court has to see only the

averments made in the plaint. (Ref. LG Corporation & Anr. Vs

Intermarket Electroplasters(P) Ltd. and Anr.; 2006 (32) PTC 429,

Tata Iron & Steel Co. Ltd. V. Mahavir Steels & Ors.; 47(1992)

DLT 412).

38. Further since the point of territorial jurisdiction of this court is a

mixed question of facts and law, therefore, prima facie, on the basis of

averments in plaint, this Court has the territorial jurisdiction.

39. The next contention of the learned counsel for the defendant is

that the defendant‟s application is prior in time, therefore, the plaintiff is

not entitled for injunction in the matter. It is a matter of fact that the

plaintiff is the earlier user of the trade mark in question. The plaintiff

has produced the evidence of prior user on record, therefore, the

contention of the defendant has no force. The mere filing of the

application prior in time of the plaintiff‟s application does not confer

any right in favour of the defendant when the plaintiff is the actual prior

user of the mark in question. Further in reply to notice issued by the

plaintiff, the defendant had agreed to withdraw the same very application

as alleged. In the case of Century Traders (supra), it was observed that

in order to succeed in an application for temporary injunction the

appellant had to establish user of the aforesaid mark prior in point of

time than the impugned user by the respondents.

40. The other contention of the defendant is that there is delay on the

part of the plaintiff to file the present suit. The said contention is also

totally merit-less because it is the defendant who himself has given the

reply to the notice issued by the plaintiff to withdraw the application for

registration of the trade mark and also issued a letter in favour of the

Registrar of the Trade Marks. As a matter of fact after issuing the notice

by the plaintiff, it was the defendant who at that point of time made up

its mind to withdraw the mark. However, it appears that the defendant

later on changed its mind as per the pleadings of the defendant. It is well

settled law that if the defendant had knowledge about the plaintiff‟s

trademark then the subsequent user of the defendant, if any, is at its own

peril and it should not be construed as bonafide user on the part of the

defendant. Therefore, the said contention has also no force in the eyes of

law.

41. In the case of Ramdev Food Products Pvt. Ltd. Vs. Arvindbhai

Rambhai Patel and Ors., 2006( 33) PTC 281 (SC) in para 111 it was

held as under :

"111. Applying the aforementioned principles in the instant case, it is evident that the time gap between the issuance of the notice and filing of an application for grant of injunction was not a voluntary act on the part of the appellant herein. It had to wait for the outcome of various proceedings pending before different courts. The respondents having themselves taking recourse to judicial proceedings, as noticed hereinbefore, cannot now be permitted to set up the defence of acquiescence

on the part of the appellant. Indisputably, in Page 3760 a case of infringement of trade mark, injunction would ordinarily follow where it is established that the defendant had infringed the trade mark and had not been able to discharge its burden as regard the defence taken by it."

42. In the case of Colgate Palmolive Company and Anr. Vs.

Anchor Health and Beauty Care Pvt. Ltd. 2003 (27) PTC 478 (Del)

in paras 65 and 66 it was held as under :

"65. As regards the plea of the defendant that plaintiff are not entitled to interim injunction because of delay, laches and acquiescence inasmuch as notice was issued in July, 1998 and action was brought in 2003, such a defense is not available as it is well settled principle of law that if use is found to be dishonest, delay or acquiescence has no relevance. The very fact that notice was served upon the defendant, the bringing of the action after two or three years becomes insignificant and irrelevant.

66. Further, though notice was given to the defendant on 13/7/98 against the old product but when the defendant discontinued with the old product and brought out a new product in 2002 the instant action was taken within three months and thereforee the question of delay does not arise. The notice was given against the use of red and white colour combination with blue line in between. Admittedly the plaintiff did not take any action as the sales were insignificant but when they modified the product with red and white colour combination alone in October, 2002 and the sales of the defendants goods have suddenly went up the instant action was taken."

43. The last contention of the defendant is that the plaintiff has not

approached this court with clean hands as the plaintiff has knowingly

made false and misleading statements. It is not in dispute that the two

products are pharmaceutical products, the submission of the defendant

that the two products are used with different ingredients does not amount

to concealment of material fact. The said contention has no force and

the same is rejected in view of my discussion in para 21 of my order.

After considering the overall circumstances of the matter, I am of the

view that prima facie it appeared that the defendants have infringed the

legal rights of the plaintiff and therefore, they have no justification to

use the impugned trade mark. I am of the considered view that an ex

parte ad interim injunction granted by this court on 6 th May, 2008 is to

be confirmed and ordered accordingly. The application stands disposed

of.

44. List this matter before the Joint Registrar on 18th August, 2009.

MANMOHAN SINGH, J JULY 24, 2009 SD