M/S Dabur India Ltd. vs M/S Alka Ayurvedic Pvt. Ltd.
2009 Latest Caselaw 4015 Del

*IN THE HIGH COURT OF DELHI AT NEW DELHI
+                  IA No.15609/2008 in CS(OS) No.2639/2008


%                                   Date of decision:06.10.2009


M/S DABUR INDIA LTD.                                          ....Plaintiff

                         Through: Mr. Sudhir Chandra, Sr. Advocate with
                                  Mr. Sudhir K. Makkar & Ms.
                                  Meenakshi Singh, Advocates.

                                  Versus

M/S ALKA AYURVEDIC PVT. LTD.                                  ... Defendant

                         Through: Mr. M.K. Miglani, Mr. C.L. Dhawan &
                                  Mr. Kapil Kumar Giri, Advocates.


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?      Yes

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


RAJIV SAHAI ENDLAW, J.

1. The application of the plaintiff for interim injunction in a suit

for permanent injunction restraining infringement of trademark and

passing off, is for consideration. The plaintiff as registered proprietor

of trademark "HAJMOLA" in respect of goods in Class 05 has

instituted the present suit for restraining the defendant from using

the mark "PACHMOLA" in respect of the same goods. On the

counsel for the plaintiff citing the judgment dated 4th July, 2008 of

the Division Bench of this court in Pankaj Goel Vs. Dabur Ltd.

FAO(OS) No.82/2008 upholding the ex parte order of injunction (also

at the instance of the plaintiff) restraining appellant in that case

from using the mark "RASMOLA" in relation to the same goods and

further upon the counsel for the plaintiff informing that the Special

Leave Petition preferred to the Supreme Court against the said

judgment of the Division Bench had been dismissed, vide ex parte

order dated 17th December, 2008 in the present case, the defendant

till the disposal of the application was restrained from using the

trademark "PACHMOLA" or any other mark deceptively similar to

the trademark "HAJMOLA" of the plaintiff in respect of digestive

tablets or any other chewing tablets.

2. The defendant has opposed the suit as well as the application

for interim injunction inter alia on the grounds:

a. that the plaintiff is guilty of gross and material

concealments of facts and particulars and has instituted

the suit with the sole intent to crush a competitor and to

secure an illegal monopoly;

b. that the defendant is a registered proprietor of the

trademark "PACHMOLA" in Class 05 in respect of

Ayurvedic Digestive Preparations w.e.f. 11th June, 1997,

claiming user since 1st December, 1995;

c. that the plaintiff is aware of the registration in favour of

the defendant and has intentionally concealed the same

from this court;

d. it is averred that the plaintiff claiming to be market

leader in digestive tablets sector ought to be aware of

use since 1995 by the defendant of the mark

"PACHMOLA";

e. it is further pleaded that Pankaj Goel appellant in the

judgment of the division bench of this court (Supra) in

his written statement filed one year prior to the

institution of the present suit had pleaded the factum of

the defendant herein being the registered proprietor of

the mark "PACHMOLA";

f. it is contended that the plaintiff thus since at least one

year prior to the institution of the suit was aware of the

registration in favour of the defendant and chose not to

take any action and also concealed the factum of

registration from the plaint;

g. it is further pleaded that the plaintiff also became aware

of the registration in favour of the defendant, because in

response to the application of one M/s Mehta Unani

Pharmacy & Co. for registration of the mark

"PACHMOLA", both the plaintiff as well as defendant had

filed opposition, again at least one year prior to the

institution of the present suit; it is contended that the

said fact also has been concealed from this court;

h. that the plaintiff did not file any opposition to the

applications of the defendant for registration of the

trademark and label "PACHMOLA" and has thus allowed

the defendant extensive use of the mark "PACHMOLA"

            and    acquiesced        in     the     use   of     the      trademark

            "PACHMOLA" by the defendant;


      i.    that the plaintiff itself has allowed use of marks

            "SATMOLA",          "SWADMOLA",                "SIDHMOLA"                 &

"CHATMOLA" by various third parties and has concealed

the said facts also from this court and is not entitled to

the relief on this ground also;

j. that the word "HAJMOLA" or "MOLA" is common to the

trade and is in extensive use by various manufacturers of

Ayurvedic and Digestive Tablets, Churan etc. for which

reason the plaintiff is disentitled to the relief;

k. instances of other registrations are given;

l. that various third parties have been opposing the

plaintiff's application for registration in respect of

trademark "HAJMOLA" and which oppositions are still

pending and which also were not disclosed in the plaint;

m. that the plaintiff itself had in various applications for

registration disclaimed the trademark "HAJMOLA"

and/or word "MOLA"

n. That "MOLA" is sui generis and in public domain;

o. the plaintiff claims registration since 1972 but even prior

thereto "CREAMOLA" was registered since the year

1943;

p. that the plaintiff had made false and vague allegations of

having become aware of the defendant just prior to the

institution of the suit;

q. that there is no similarity between "HAJMOLA" &

"PACHMOLA" or in the packaging or the trade dress of

the products of the plaintiff and the defendant and no

possibility of any confusion;

r. other distinguishing features of the goods of the two are

cited;

s. that the defendant had established a vast trade and

carried out substantial commercial activities under the

trademark "PACHMOLA" and growing sale figures of the

defendant are pleaded.

3. The plaintiff filed a replication to the written statement of the

defendant in which the plaintiff inter alia denied knowledge of the

factum of the defendant being the registered proprietor of the

trademark "PACHMOLA"; it is contended that even if the defendant

had secured registration of "PACHMOLA", the plaintiff has a lawful

right to restrain the defendant by way of an injunction as the

trademark of the defendant is deceptively similar to that of the

plaintiff; with respect to the pleadings in Pankaj Goel case it is

merely stated that they are a matter of record and it is further

pleaded that the plaintiff was not aware of the defendant's product

till just prior to the institution of the suit; it is further pleaded that

the registration of the defendant is of the label inclusive of

"PACHMOLA" and not of trademark "PACHMOLA" - reliance is

placed on Section 17 of the Trademark Act, 1999; with respect to

delay, it is stated that even if the defendant had any presence in the

market, the same was not significant to get noticed and consequently

the plaintiff was not aware of any such product; it is denied that

there are any distinguishing features - it is pleaded that merely

because the trade dress, packaging etc. of the defendant is different,

the possibility of deception cannot still be ruled out as there is

distinctive resemblance between the two trademarks.

4. The counsel for the parties have been heard.

5. The documents filed by the defendant show the registration of

the word mark "PACHMOLA" in Class 05 relating to Ayurvedic

Digestive Preparations in favour of the defendant w.e.f. 1997. The

defendant being the registered proprietor of the mark, the suit for

infringement does not lie under Section 28(3) and 29 of the Act.

6. I have in Clinique Laboratories LLC Vs. Gufic Limited

MANU/DE/0797/2009 held that the court under Section 124 of the

Act is entitled to grant the relief of interim injunction even in the

case of infringement against a registered proprietor. However, in

this case Section 124 does not come into play. Though the defendant

has pleaded registration of its marks and thus raised a defence

under Section 30 (2) (e) of the Act but the plaintiff has not pleaded

invalidity of the registration of the defendant's mark. As aforesaid

the plaintiff in spite of being informed in the written statement in the

Pankaj Geol case of the registration of mark "PACHMOLA" in

favour of the defendant, concealed the said fact from the plaint. Even

after the defendant expressly raised a plea in this regard in its

written statement, the replication of the plaintiff is evasive. Though

the replication with respect to pleadings in Pankaj Goel case is of

the same being a matter of record but the plaintiff still has put the

defendant to strict proof on the plea of its registration. I find such

behavior/pleadings of the plaintiff to be unfair. Once the defendant

has expressly pleaded that the plaintiff is aware of the registration of

the defendant's mark and has also filed along with its written

statement the documents showing registration of its mark, the

plaintiff even if till then not aware of the same could have very well

verified the same and ought to have made an express plea with

respect thereto. The plaintiff however persisted with the plea of

being entitled to maintain a suit for infringement. I have carefully

gone through the replication of the plaintiff and do not find any plea

therein of the invalidity of the registration of the defendant's

trademark. It is not even urged that any proceedings for rectification

of the registration in relation to the defendant's trademark have

been initiated by the plaintiff or are pending. Thus the question of

applicability of Section 124 of the Act does not arise in the present

case. The suit of the plaintiff cannot thus be treated as for

infringement of a trademark in view of the registered trademark of

the defendant.

7. However, since the suit is also filed for the relief of passing off

and which relief the plaintiff notwithstanding the registration in

favour of the defendant is entitled to claim, it has to be seen whether

the ingredients for the grant of interim relief in a case of passing off

are satisfied by the plaintiff. The test, for the purpose of interim

relief is much stricter in case of passing off than in a case of

infringement.

8. As far as the defences of the defendant noted herein above are

concerned, several of those are no longer res integra in the light of

the judgment of the Division Bench of this court in Pankaj Goel

(Supra). The pleas of; (i) "MOLA" being common to the trade; (ii) the

plaintiff not suing other small scale infringers not affecting the

business of the plaintiff; (iii) the plaintiff itself having permitted use

of the mark "SIDHMOLA", "SATMOLA", "SWADMOLA" &

"CHATMOLA", have been negated.

9. The counsel for the defendant has contended that there are

several other distinguishing features in the defence of the defendant

than the defence of Pankaj Goel. Firstly, it is contended that the

Division Bench in that case was guided by there being no substantial

evidence of use of the mark by Pankaj Goel ; in the present case

there is substantial evidence of use showing significant use of the

mark "PACHMOLA" by the defendant; continuous invoices from July,

1998 till 2008 have been filed. The defendant has also filed various

trade directories/yellow pages in this regard. However, the same are

of 2007, 2008. Secondly, it is contended that Pankaj Goel was found

to be selling digestive tablets also in the name of "RASGOLI",

"RASMOLI", "RASWALI" etc. and the said fact prevailed with the

Division Bench in maintaining the order of injunction qua

"RASMOLA". Per contra, the defendant in this case is selling

digestive tablets only in the name of "PACHMOLA" and interim

injunction against the defendant would destroy 13 years' labour of

the defendant in developing the mark "PACHMOLA" and wipe out

the defendant from the market. Thirdly, it is contended that Pankaj

Goel had already been restrained by another court since 2005 from

using the label/device "RASMOLA" at the instance of a third party -

that prevailed with the Division Bench in maintaining the injunction;

in the present case there is no prior injunction against

"PACHMOLA".

10. Grant of injunction is a discretionary relief, I am quite

disturbed by the casual manner/attitude in which the plaintiff has

sued. Pankaj Goel case in which pleading was made of defendant

herein being the registered owner of "PACHMOLA" has been fought

by the plaintiff herein in a close span of one year before three

different courts and not so far back as to wipe out its memory. I do

not find any explanation whatsoever for the plaintiff not making a

clean breast of affairs. It was incumbent upon the plaintiff to disclose

before the court the plea taken in the Pankaj Goel case of the

defendant herein being the registered proprietor of "PACHMOLA"

with respect whereto the present suit had been filed. Not only so, the

plaintiff ought to have been put to an enquiry and made its own

investigations. The plaintiff is found to be vigorously protecting its

intellectual proprietary rights in a large number of suits filed in this

court. The suit is instituted and the plaint signed and verified by Mr.

B.K. Gupta working as Senior Manager (Legal) with the plaintiff

company. It reflects that the plaintiff is running a full fledged Legal

Deptt.

11. The senior counsel for the plaintiff engaged to address only in

rejoinder, when confronted with the above, replied that the factum of

registration of the mark of the defendant was inadvertently not

mentioned in the plaint. It was further contended that inadvertently

the plea of, the registration of the mark of the defendant being bad,

had also not been taken. I find the said explanation by the senior

counsel in rejoinder to be not enough. The plaintiff had an

opportunity to render an explanation in its replication. However, as

aforesaid, the replication in this regard is evasive. The plaintiff in

spite of being challenged did not state as to how it had learnt, if not

from the written statement in Pankaj Goel case, of the mark

"PACHMOLA" of the defendant. If the plaintiff had learnt of

"PACHMOLA" from the written statement of Pankaj Goel, then the

plaintiff learnt of registration in favour of the defendant of the said

mark also from the said written statement. In the replication no

explanation of inadvertent error as given by the senior counsel for

the plaintiff has been given. On the contrary as aforesaid the factum

of registration of "PACHMOLA" is still denied and the defendant put

to strict proof thereof.

12. The question which arises is whether the plaintiff, which

indulges in so abusing the process of the courts, entitled to the

discretionary relief of injunction. The judgments/precedents in this

regard need not be reiterated. The courts have repeatedly held that

the party which approaches the court, especially for ex parte ad

interim relief is bound by duty to carefully place before the court all

facts which may enable the court to consider the feasibility of grant

of such relief. The conduct of the plaintiff is found wanting in this

regard. The plaintiff is not entitled to the relief of interim injunction

on this ground alone.

13. I also find the conduct of the plaintiff of not challenging the

registration of the mark of the defendant, neither before the

Registrar or the Appellate Board nor in the present suit, and of not

even averring the registration in favour of the defendant being bad

or invalid to be also an act of acquiescence/waiver disentitling the

plaintiff to the grant of any interim injunction. It shows that it did not

occur even to the counsel for plaintiff that there was anything wrong

in the registration of the defendant for the reason of the same being

similar or deceptively similar to that of the plaintiff. The Supreme

Court in F.Hoffimann-La Roche & Co. Ltd. Vs. Geoffrey Manner

& Co. Pvt. Ltd. AIR 1970 SC 2062 approved such reasoning. The

plaintiff is not entitled to interim relief on this ground also.

14. The guiding principle in a case of passing off is the possibility

of deception/confusion. A perusal of the trade dress/packaging of the

plaintiff does not show any similarity or possibility of deception or

confusion in the two. The colour scheme, caricature and shape of

sachet of the two are different. The defendant's sachet also has

prominently displayed on the same, immediately above

"PACHMOLA" "ALKA-G". On the contrary, the plaintiff on its

packaging displays itself as manufacturer. It thus cannot be said that

anyone wanting to buy the goods of the plaintiff would be deceived

into buying those of the defendant. The plaintiff in the replication

also brushed aside the distinguishing features pleaded by the

defendant in the written statement by contending that there is

distinctive resemblance between the two trademarks. In this context,

the action of the defendant of permitting "SATMOLA", "SIDMOLA",

"CHATMOLA" & "SWADMOLA" becomes relevant. The said action of

the plaintiff shows that the existence of other similar goods with the

word "MOLA" was acceptable to the plaintiff. Thus merely because

a product bears "MOLA" does not denote or identify the product with

the plaintiff i.e. it is not distinctive of the plaintiff. The

distinctiveness if any has been blunted by the plaintiff allowing use

of "MOLA" by others. The Division Bench in Pankaj Goel has held

that that such allowance by the plaintiff cannot be a license to the

world at large to infringe "HAJMOLA". The same is binding on this

court. However, if there are distinguishing features and no

possibility of deception/confusion, mere use of "MOLA" by the

defendant will not entitle plaintiff to injunction.

15. The senior counsel for the plaintiff in rejoinder contended that

the mark of the plaintiff has acquired singular fame in the realm of

Digestive Tablets and is a household mark, is a totally coined mark

which the courts have held deserve highest degree of protection.

Instances were given of injunction being issued qua "MAYUR" &

"PEACOCK" in spite of apparent dissimilarity. It was argued that

use by the defendant of "MOLA" would associate the goods of the

defendant with the plaintiff. It was further contended that the sale

figures cited by the defendant were inclusive of all goods of the

defendant and not of "PACHMOLA" only; that the cause of action for

the suit to the plaintiff arose only when the defendant started using

the mark substantially and started passing off its goods as that of the

plaintiff and not by negligible sales/use. It was further contended

that the plaintiff cannot even be accepted to have knowledge of all

such infringers; instance was given of Pankaj Goel who was

advertising on the same channel as the plaintiff but still the Division

Bench held that the same could not amount to knowledge of the

plaintiff. It was also contended that the sale invoice of the defendant

showed that the defendant also was marketing/selling Digestive

Tablets under several other names and had falsely argued that it will

be wiped out if prohibited from using "PACHMOLA". Reliance was

placed on Hindustan Pencils Pvt. Ltd. Vs. India Stationery

Products Co. AIR 1990 Delhi 19 to buttress the proposition that it

was also essential to prevent third party consumers from being

fooled and that where the adoption of the mark by the defendant was

found to be dishonest, no amount of delay could deprive the plaintiff

of an injunction though the same may be relevant in assessment of

damages. It was further contended that the plaintiff had no objection

to the use of the mark "PACHGOLA" which the defendant after the

injunction had been using. It was further urged that the present case

is fully covered by the Division Bench judgment in Pankaj Goel

(Supra). It was also argued that the test was of similarity and not of

dissimilarity.

16. The counsel for the defendant was allowed sur rejoinder. He

contended that the Director of the defendant was earlier joint in

business of marketing same goods under the marks "CHATMOLA"

with his brother; that there was litigation with the brother; that since

the plaintiff had given no objection to use of "CHATMOLA", the

Director of the defendant with a view to settle disputes with the

brother bonafide adopted "PACHMOLA", secure in the feeling that

the plaintiff having given no objection to "CHATMOLA" would have

no objection to "PACHMOLA" also and in fact plaintiff had not raised

any objection in the last 13 years. It was further contended that the

defendant besides marketing "PACHMOLA" was also carrying on

business only in the name of "AAM CHASKA" and which mark had

been assigned by defendant in 2008 and since when had been

carrying on business only in the name of "PACHMOLA". With respect

to other goods on its invoices, it was stated that the same were not a

trademarked but generic products.

17. I find merit in the distinguishing features aforesaid urged by

the defendant with the Pankaj Goel case. From the documents filed

by the defendant, continuous use by the defendant of the mark

"PACHMOLA" since 1998 is evident. There is nothing to show that

the defendant is trading under several other marks, as Pankaj Goel

was found to be doing. Similarly, there is no other injunction against

defendant, as was against Pankaj Goel. The contentions raised by

the senior counsel for the plaintiff in rejoinder are without any basis.

It is not pleaded as to how the volume of sales of the defendant has

increased for the plaintiff to have decided to sue the defendant now.

Moreover, if according to the plaintiff the turnover of the defendant

now is more, so as to make the plaintiff sue the defendant, the same

would also be of relevance in the balance of convenience in granting

the interim relief. As aforesaid, this court after examining the trade

dress of the product of plaintiff and of the defendant prima facie

does not find any possibility of the buyers being deceived or there

being possibility of any confusion.

18. The counsel for the plaintiff has also relied upon a number of

judgments filed along with the list of authorities. However, in view

of the above and the principles being well settled need is not felt for

discussing the same.

19. The plaintiff is not found entitled to the interim relief on the

ground of passing off for the reasons aforesaid. The application is

disposed of only with the direction to the defendant to maintain

accounts of sales of Digestive Tablets/Digestive Preparations under

the mark "PACHMOLA" and to file the same in this court with

advance copy to the plaintiff on quarterly basis. Needless to say,

nothing contained herein to be deemed to be an expression of

opinion on merits of the matter.

No order as to costs.

RAJIV SAHAI ENDLAW (JUDGE)

October 6th ,2009 PP