Glaxo Group Ltd.& Anr. vs Mr.S.D.Garg & Ors.
2010 Latest Caselaw 5840 Del

         THE HIGH COURT OF DELHI AT NEW DELHI

%           Judgment Reserved on: 16th December, 2010
            Judgment Pronounced on: 22nd December, 2010

+           CS(OS) No.326/2004

GLAXO GROUP LTD.& ANR.                       .....Plaintiffs

                          - versus -

MR.S.D.GARG & ORS.                           ....Defendants

Advocates who appeared in this case:
For the Plaintiffs:     Mr. Manav Kumar with Mr.
                        Sushant Singh and Mr. P.C.
                        Arya, Adv.

For the Defendants:         Mr. Inderdeep Singh, Adv.

CORAM:-
HON'BLE MR JUSTICE V.K. JAIN

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 Digest?

V.K. JAIN, J

1. This is a suit for permanent injunction and

rendition of accounts. Plaintiff No.1 Glaxo Group Ltd. is a

company incorporated in United Kingdom, whereas plaintiff

No.2 GlaxoSmithKline Pharmaceuticals Ltd. is a company

incorporated under the Companies Act, 1956. Both the

plaintiffs are members of GlaxoSmithKline Groups of

Companies of which GlaxoSmithKline plc. is the parent

company. The plaintiffs are engaged in manufacturing and

marketing a wide range of products including

pharmaceutical and medicinal preparations throughout the

world and are one of the largest pharmaceutical and

healthcare companies and had worldwide sales of £21.44

billion in the year 2000.

2. The trademark BETNOVATE is registered in India

in the name of plaintiff No.1 in class 5 since 5th December,

1963 in respect of pharmaceutical, veterinary and sanitary

substances and is an invented word having no dictionary

meaning and connoting exclusively the goods of the

plaintiffs. The trademark is stated to be registered in more

than 30 countries in the name of plaintiff No.1 and is being

used for creams, ointment and lotion as also for topical

treatment of skin irritations, such as redness, itching and

swelling of skin conditions. The sale of goods by plaintiff

No.2 under the name BETNOVATE in India amounted to

Rs.7253.30261 lacs, Rs.7896.16792 lacs and 7662.53576

lacs during the years 2001, 2002 and 2003 respectively.

The plaintiffs claimed to have spent Rs.10.2 millions, 13.1

millions and 2.5 millions in the years 1999, 2000 and 2001

respectively on the promotion of this trademark.

BETNOVATE is being sold by the plaintiffs in different

variations including BETNOVATE-N which is the

combination of betamethasone Valerate and Neomycin and

BETNOVATE-C which is the combination of Betmethasone

and Clioquinol Cream BP. The plaintiffs claim copyrights

under Section 2(c) of the Copyright Act in the outer cartons

and tubes in which BETNOVATE-N and BETNOVATE-C are

sold by them.

3. It is alleged that in or about 2004, the plaintiffs

came to know that the defendants had copies the colour

scheme of BETNOVATE-N for their product BECNATE-N

and that of BETNOVATE-C for their product BECNATE-C.

The case of the plaintiffs is that the mark BECNATE is

deceptively similar to their registered trademark

BETNOVATE and the defendants are using the mark

BECNATE in respect of identical goods thereby causing

infringement of their registration.

4. This is also the case of the plaintiffs that the

defendants have cleverly copied the essential features of

packaging for BETNOVATE-N and BETNOVATE-C used in

India. The plaintiffs have given the following comparisons of

their cartons and the cartons of the defendants to make out

a case of reproduction and imitation of their colour scheme,

get up, lay out, arrangement of features etc.

Plaintiffs' Outer Carton & Defendants' Outer Carton Tube Packaging for & Tube packaging for BETNOVATE-N BECNATE-N Use of an overall colour Use of an overall colour scheme of white/green scheme of white background background with a with a combination of combination of trademarks trademarks and descriptive and descriptive matters matters appearing in white, appearing in white, black black and green. and green.

„Glaxo SmithKline‟ appears „Systochem‟ appears in white in white letters on a green letters on a green background at the right background at the right hand side of the tube in an hand side of the tube. oblique angle.

The name of the product and      The name of the product and
trademark BETNOVATE-N is         the trademark BECNATE-C
written in the middle of the     is written in the middle of
packaging starting from the      the packaging started from
extreme left.                    the extreme left.
The essential ingredient of      "Beclomethasone
the cream "Betamethasone         Dipropionate and Neomycin
Valerate    and    Neomycin"     Sulphate" appears on the
appears on the face of the       face of the packaging, just
packaging, just above the        above      the     trademark
trademark BETNOVATE-N            BECNATE-N.
Plaintiffs' Outer Carton &       Defendants' Outer Carton
Tube       Packaging     for     & Tube Packaging for
BETNOVATE-C                      BECNATE-C
The overall colour scheme is     The overall colour scheme is
that of a pale yellow base       that of a yellow base with a
with    a    combination  of     combination of trademarks
trademarks and description       and    description    matters



 matters appearing in a pink,       appearing in a pink, white,
white and black.                   brown and black.
The    plaintiffs‟  corporate      "Systochem"       appears   in
name "Glaxo SmithKline" in         white letters on a brown
white letters on a pink            background at the right
background at the right            hand side of the outer
hand side of the packaging.        packaging in a diagonal
                                   angle.
The essential ingredient of        The essential ingredient of
the                     cream      the cream "Beclomethasone
"BETAMETHASONE            and      Dipropionate and Chinoform
CLIOQUINOL Cream BP" is            Cream" is printed in large
printed in large pink letters      brown letters at the very top
at the very top of the face of     of the face of the packaging.
the packaging. Below this,         Below this, in large, black
in large, black letters is         letters is written the name of
written the name of the            the product and trademark
product    and     trademark       BECNATE-C.
BETNOVATE-C.

It is also claimed by the plaintiffs that the class of

customers and class of trade are identical for their products

BETNOVATE-N and BETNOVATE-C as well as defendants‟

products BECNATE-N and BECNATE-C and that their

products as well as the products of the defendants fall in

the same category viz. Dermatological Skin Cream.

5. It is also alleged that BETNOVATE is an OTC

product and, therefore, the plaintiffs have to take extreme

care to maintain the quality and standard of their products

and have also to ensure that no harm is caused to the

public on account of the confusion and deception which will

be caused to them on account of use of the mark BECNATE

by the defendants. The plaintiffs also claim to have

obtained injunction against the use of the marks Betnate,

Betnefate, Getanate and Beclovate-C & Beclovate in suit

No.1618/1999, 2627/2001, 2516/2001 and 1232/2002

respectively. They have sought permanent injunction

restraining the defendants from manufacturing, selling,

offering for sale, advertising, directly or indirectly dealing in

skin care products or other related goods under the

trademark BECNATE or under any other mark deceptively

similar to their trademark BETNOVATE. They have also

sought injunction against imitation or reproduction of

packaging used by them for the products sold by them

under the name BETNOVATE. They have also sought

mandatory injunction directing defendants to hand over all

goods, packaging cartons, unfinished products, bill boards

etc. bearing the impugned packaging similar to the

plaintiffs‟ product BETNOVATE. They have further sought

rendition of accounts from the defendants for the profits

made by them on account of using the trademark BECNATE

and the impugned packaging.

6. The defendants have contested the suit. They have

alleged that the products BECNATE-N and BECNATE-C

were introduced by defendant No.2 in September, 2002 and

the name BECNATE has been invented by defendant No.2.

It has been further alleged that there is no similarity

between the products of the plaintiffs and the products of

defendant No.2. They have also denied having copied the

colour scheme of the plaintiffs products in respect of

BETNOVATE-N and BETNOVATE-C. It is further alleged

that there is a total mismatch of (i) name (ii) essential

features (iii) get up and layout (iv) colour scheme of the

products.

It is also alleged that unlike the products of the

plaintiffs, the products of the defendants are not OTC

products.

7. The following issues are framed on the pleadings of

the parties:-

(i) Whether plaintiff No.1 is the registered proprietor of the trademark BETNOVATE-C registered under No.219258 in class 5?

              (ii)    Whether the plaintiff No.1 is the
              owner     of   the  artistic    work    of
              BETNOVATE-C and BETNOVATE-N and

packaging material as detailed in para 14 of the plaint?

               (iii)    Whether the use of the trademark
              BECNATE-C      and    BECNATE-N       and
              packaging    material    used     by  the
              defendants amounts to infringement of
              the trademark and copyright of the
              plaintiffs?

              (iv)     Whether the defendant is passing

off its goods as those of the plaintiffs?

(v) Whether there is any delay in bring the action against the defendants and to what effect?

              (vi)      Relief.



            Ex.PW-2       is   the   certificate    of   registration     of

trademark BETNOVATE in favour of plaintiff No.1 in class A

to Registration 219258, w.e.f. 05th December, 1963 in

respect of pharmaceutical, veterinary and sanitary

substances. According to PW-1, the aforesaid trademark

has been renewed from time to time and is subsisting in full

legal force. There is nothing on record to dispute the

deposition of PW-1 in this regard. The issue is, therefore,

decided against the defendants and in favour of the plaintiff.

9. Issue No.2

According to PW-1 Mr Rahul Sethi, plaintiff‟s

BETNOVATE products comprises of distinctive outer

packaging and a sample of the packing used by them as

Ex.PW-4. The essential features of the packaging being

used by the plaintiff as given in para 14 of the plaint are as

under:

 The overall colour scheme is that of a pale green base

with a combination of trademarks and descriptive

matters appearing in a dark green, white and black.

 The plaintiff‟s corporate name "Glaxo SmithKline"

appears in large bold white letters on a darker green

background at the right hand side of the packaging.

Along the beginning of this oblique appears GSK logo

in orange colour.

 The essential ingredient of the cream

"BETAMETHASONE VALERATE AND NEOMYCIN" is

printed in large dark green letters at the very top of the

font of the packaging. Underneath this is in smaller

dark green letters is written the skin cream.

 Below this, in large, black letters is written the name of

the product and trade mark BETNOVATE-N.

Essential features of the BETNOVATE-N tube

 The overall colour scheme is a white background with

a combination of trademarks and descriptive matters

appearing in white, green and black.

 The plaintiff‟s corporate name "Glaxo SmithKline"

appears in large bold white letters on a green

background at the right hand side of the tube in an

oblique angle.

 "BETAMETHASONE VALERATE AND NEOMYCIN" is

printed in large green letters at the very top of the

tube. Underneath this in smaller green letters are the

words skin cream.

 Below this, in large, black bold letters is written the

name of the product BETNOVATE-N.

Essential features of the outer packaging for

BETNOVATE-C

 The overall colour scheme is that of a pale yellow base

with a combination of trademarks and descriptive

matters appearing in a link, white and black.

 The plaintiffs‟ corporate name "Glaxo SmithKline"

appears in large bold white letters on a pink

background at the right hand side of the packaging.

Along the beginning of this oblique appears GSK logo

in orange colour.

 "BETAMETHASONE AND CLIOQUINOL CREAM BP" is

printed in large pink letters at the very top of the font

of the packaging

 Below this, in large, black bold letters is written the

name of the product BETNOVATE-C.

Essential features of the BETNOVATE-C tube

 The overall colour scheme is a white background with

a combination of trade marks and descriptive matters

appearing in white and pink.

 The plaintiff‟s corporate name "Glaxo SmithKline"

appears in large bold white letters on a pink

background at the right hand side of the tube in an

oblique antle.

 "BETAMETHASONE AND CLIOQUINOL CREAM BP" is

printed in large pink letters at the very top of the tube.

Underneath this in smaller black letters are the words

skin cream

 Below this, in large, black bold letters is written the

name of the product BETNOVATE-C.

10. The defendants do not claim any copyright in the

packaging being used by the plaintiffs. I, therefore, hold that

plaintiff No.1 is the owner of the work comprised in the

packagings being used by it to sell BETNOVATE-N and

BETNOVATE-C. The issue is decided against the

defendants and in favour of the plaintiff.

11. Issue No.5

According to PW-1, it was in the month of January,

2004 that the plaintiffs came to know of the use of the mark

BECNATE-C by the defendants for skin creams. There is

nothing on record to prove that the plaintiffs had come to

know of the user of the marks BECNATE-C and BECNATE-

N by the defendants prior to January, 2004. The

defendants have not produced any evidence at all. Since

the suit was filed in March, 2004, it cannot be said that

there was any abnormal delay in initiating action against

the defendants. The issue is decided against the defendant

in favour of the plaintiff.

These issues are interconnected and can be

conveniently decided together. The admitted facts are that

the plaintiffs are selling their products under the name

BETNOVATE-N and BETNOVATE-C, whereas the

defendants are selling their products BECNATE-C and

BECNATE-N. Admittedly, the products being sold by the

plaintiff under the name BETNOVATE-N and BETNOVATE-

C as well as the products being sold by the defendants

under BECNATE-N and BECNATE-C are pharmaceuticals

products and are meant to be used externally on human

skin. A perusal of the packagings filed by the plaintiff

would show that the compounds being used by the plaintiff

in BETNOVATE-N are BETAMETHASONE VALERATE and

NEOMYCIN and the compounds used in BETNOVATE-C are

BETAMETHASONE AND CLIOQUINOL CREAM BP. The

defendants on the other hand are using the compounds

BECLOMETHASONE DIPROPIONATE & NEOMYCIN

SULPHATE CREAM in BECNATE-C and the compound

BECLOMETHASONE DIPROPIONATE CHINOFORM CREAM

in its product being sold under the name BECNATE-N. It

has also been proved that the plaintiffs are the registered

proprietors of the trademark BETNOVATE, whereas the

defendants hold no such registration in respect of its

trademark BECNATE.

13. The evidence produced by the plaintiff shows that

the trademark BETNOVATE is being used by them since

1963, whereas there is no evidence of the defendants using

the mark BECNATE prior to January, 2004. The plaintiff

had sale of Rs. 7896.16/- lacs, Rs. 7662.53 lacs and Rs.

9321.83/- in the year 2002 to 2004 in India and has

incurred promotional expenditure of Rs 30.12 million, 48.73

million and 98.86 million during this period. The sales of

the plaintiff in the year 2005 up to the month of August

were Rs 7227.37/- lacs, whereas it had incurred

promotional expenditure of Rs 69.61 million during this

period. There is no evidence on record to prove the sale of

the products being sold by the defendants under the name

BECNATE-N and BECNATE-C and the promotional

expenditure, if any, incurred by it on promoting these

products and building the brand name BECNATE.

14. Section 28 of Trade Marks Act, 1999 gives

exclusive rights to its registered proprietor, to the use of the

trademark in relation to the goods or services in respect of

which the trademark is registered and to obtain relief in

respect of infringement of the trademark. Section 29 of the

Act, to the extent it is relevant, provides that a registered

trademark is infringed by use of a mark which is identical

with or deceptively similar to the trademark in relation to

the goods or services in respect of which the trademark is

registered. Sub-section (2) of Section 29 provides that a

registered trade mark is infringed by a person who, not

being a registered proprietor or a person using by way of

permitted use, uses in the course of trade, a mark which

because of (a) its identity with the registered trade mark and

the similarity of the goods or services covered by such

registered trade mark; or (b) its similarity to the registered

trade mark and the identity or similarity of the goods or

services covered by such registered trade mark; or (c) its

identity with the registered trade mark and the identity of

the goods or services covered by such registered trade mark,

is likely to cause confusion on the part of the public, or

which is likely to have an association with the registered

trade mark.

15. A comparison of the name BETNOVATE with the

name BECNATE would show that the first two letters as well

as the last three letters of the two marks are same being BE

and ATE respectively. Phonetically the name BECNATE

would appear to be similar to the name BETNOVATE to a

layman who while purchasing a product of this nature is

hardly likely to undertake a careful comparison of the two

names. If the marks BETNOVATE and BECNATE are read

and/or heard as a whole, without dissecting the words, it is

difficult to dispute that they are phonetically as well as

visually similar or identical. There is reasonable probability

of the product bearing the trademark BECNATE-N and

BECNATE-C being passed off to an unwary customer as

BETNOVATE-N and BETNOVATE-C respectively, by the

chemist who may be interested in selling the product of the

defendants or may be having only the product of the

defendants in his shop or the customer himself picking up

the product bearing the trademark BECNATE-N, assuming

the same to be BETNOVATE-N and the product bearing the

mark BECNATE-C assuming the same to be BETNOVATE-N,

since both the products are primarily skin ointment though

different compounds have been used in their manufacture.

16. In Cadila Health Care Ltd. vs. Cadila

Pharmaceuticals Ltd., AIR 2001 SC 1952, Supreme Court

was of the view that public interest would support lesser

degree of proof showing confusing similarity in the case of

trade mark in respect of medicinal product as against other

non-medicinal products. There should be as many clear

indicators as possible to distinguish to medicinal products

from each other. It was noted that in our country, it was not

uncommon that in hospital, drugs can be requested verbally

and/or under critical/pressure situations and many

patients may be elderly, infirm or illiterate, may not be in a

position to distinguish between the medicine prescribed and

bought and is ultimately handed over to them. In this

context, the Court referred to McCarthy on Trade Marks,

3rd Edition, para 23.12 wherein it was noted that confusion

of source or product between medicinal products may

produce physically harmful results to purchasers and

greater protection is required than in the ordinary case. It

was further noted that if the goods are designed even for

subtly different uses, confusion amongst the products

caused by similar marks could have disastrous effects.

Taking note of the fact that in our country, there is no single

common language, a large percentage of population is

illiterate and a small fraction of people know English, the

Court was of the view that in our context, to apply the

principles of English law regarding dissimilarity of the

marks or the customer knowing about the distinguishing

characteristics of the plaintiff's goods seems to overlooking

the ground realities in India. It was also observed that while

examining such cases in India, what has to be kept in mind

is the purchaser of such goods in India who may have

absolutely no knowledge of English language or of the

language in which the trademark is written and to whom

different words with slight difference in spellings may sound

phonetically the same.

Noticing that Schedule "H" drugs are to 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, Supreme Court

observed that it was not uncommon that because of lack of

competence or otherwise, mistakes can arise specially where

the trademarks are deceptively similar.

Supreme Court was also of the view that for the

drugs having a marked difference in composition 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. It was further observed that 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 since the confusion is more likely in such cases.

In the case before this Court also, the compounds

being used in the products of the plaintiff being different

from the compound being used in the products of the

defendant and the drugs of both the parties being skin

ointment, the test to be applied by the Court needs to be

stricter so as to avoid any possibility of a person intending

to purchase medicine containing a particular compound

being passed off as the medicine containing an altogether

different compound. Since the products of the plaintiffs are

OTC drugs, there is a greater possibility of the products of

the defendants, which also are skin ointments, being picked

up by the customer himself, assuming them to be the

products of the plaintiffs on a count of the visual and

phonetic similarity of the two marks.

17. In Corn Products Refining Company Vs

Shangrila Food Products Limited AIR 1960 SC 142, M/s

Shangrila Food Products had applied for registration of the

mark "Glucovita" and M/s. Corn Products, who were the

owners of registered trademark "Glucovita" filed its

objections to its registration to the mark "Glucovita". The

Deputy Registrar was of the view that the words "Glucovita"

were not visually or phonetically similar and that there was

no reasonable likelihood of any deception being caused by

or any confusion arising from the use of respondent's

proposed trademark. The learned Single Judge of Bombay

High Court disagreed with the finding of the Deputy

Registrar. The Division Bench, however, restored the

decision of the Deputy Registrar. Allowing the appeal filed

by Corn Products, Supreme Court was of the view that the

Division Bench was in error in deciding in favour of the

respondent basing themselves on the series of marks having

"Gluco" or "Vita" as a prefix or a suffix". The Court was of

the view that the syllable „co‟ was not such as would enable

the buyer in our country to distinguish one mark from the

other. During the course of the judgment, the Court, inter

alia, observed as under:

"Again, in deciding the question of similarity between the two marks we have to approach it from the point of view of a man of average intelligence and of imperfect recollection. To such a man the overall structural and phonetic similarity and the similarity of the idea in the two marks is reasonable likely to cause a confusion between them.

The absolute identity of the two competing marks or their close resemblance is only one of the tests for deterring the question of likelihood of deception or confusion. Trade connection between different goods is another such test. Ex hypothesi, this latter test applies only when the goods are different. These tests are independent tests. There is no reason why the test of trade connection between different goods should not apply where the competing marks closely resemble each other just as much as it applies, as held in the "Black Magic" and "Panda" cases, where the competing marks were identical."

18. In Amritdhara Pharmacy Vs . Satya Deo, AIR

1963 SC 449, Supreme Court was dealing with medicinal

preparation for the alleviation of various ailments. The

trademark of the plaintiff in that case was "Amritdhara",

whereas the mark used by the defendant was

"Lakshmandhara". The Court noted that such medicinal

preparation will be purchased mostly by people mostly by

people who instead of going to a doctor wish to purchase a

medicine for the quick alleviation of their suffering, both

villagers & townsfolk, literate as well as illiterate. The Court

was of the view that to such a man the overall structural

and phonetic similarity of the two names 'Amritdhara' and

'Lakshmandhara' was likely to deceive or cause confusion

since an unwary purchaser of average intelligence and

imperfect recollection would not split the name into its

component parts. He would go by overall structure and

phonetic similarity and the nature of the medicine he has

previously purchased, or has been told about, or about

which he has otherwise learnt and which he wants to

purchase. The observations made by the Supreme Court

would equally apply to the cases before this Court since

BETNOVET as well as BECNET both are skin ointment and

a customer with average intelligence and imperfect

recollection is hardly likely to notice the difference between

the two names when he finds phonetic as well as visual

similarity between the words BETNOVATE and BECNATE

when the words are read as a whole. It is also to be kept in

mind that the customer is hardly likely to find the product

of the plaintiff and the product of the defendant, lying side

by side in the same shop, and, therefore, may not have an

opportunity to compare the two marks.

19. In Glaxo Group Limited & Others vs. Vipin

Gupta and Ors.2006(33) PTC 145 (Del.), the plaintiff-

company was granted injunction by this Court against use

of the mark BETAVAT by the defendants.

In Bio-Chem Pharmaceutical Industries vs Astron

Pharmaceuticals 2003(26) PTC 200 (Delhi), the mark of the

plaintiff was BIOCILLIN, whereas the mark being used by

the defendant was BICILLIN. The defendant was injuncted

from using the mark BICILLIN.

In Ranbaxy Laboratories Ltd. vs. Universal Twin

Labs 2008 (36) PTC 675 (Bombay), the plaintiffs‟ mark was

"VOLINI", whereas the defendant was using the mark

"VONIGEL". The contention of the defendant was that their

mark was not word for word similar to the mark of the

plaintiff and, therefore, was not deceptively similar.

Rejecting the contention, Bombay High Court reiterated the

settled proposition of law that the Court has to have due

regard to the rival marks as a whole and to the impact

which they would make on an ordinary and unwary

purchaser.

20. For the reasons given in the preceding paragraphs, I

am of the considered view that the mark BECNATE being

used by the defendants is similar to the registered mark

BETNOVET of the plaintiff and thereby infringes the

trademark of the plaintiff in terms of Section 29 of Trade

Marks Act, 1999 on account of the phonetic, structural and

visual similarity between the two marks and there is a

strong probability of an unwary customer with average

intelligence and imperfect recollection picking up the

products of the defendants assuming them to be the

products of the plaintiff since the product of both the

parties are ointment to be used externally on human skin.

Also, there is a reasonable probability of a chemist stocking

only the goods of defendants or interested in selling only

their goods passing off the products of the defendants to an

ordinary customer as the products of the plaintiff. Since the

compounds used in the products of the defendants are

different from the compounds being used in the products of

the plaintiffs, use of the products of the defendants by a

person seeking to use the products of the plaintiff may

result in harmful effect on the skin of the customer. It is,

therefore, in the interest not only of the plaintiff‟s company,

but also of the general public that such deceptively similar

marks are not allowed to be used, particularly with respect

to medicinal preparations. This is more so, when the

products of the parties fall in the same category being skin

products to be used externally. The issues are decided

accordingly.

In view of my findings on the other issues, the

plaintiffs are entitled to injunction against the use of the

word BECNATE by the defendant No.2 on the products

being manufactured and/or sold by it. Since defendant No.1

is only the Managing Director of defendant No.2, the

plaintiff is not entitled to any relief against him. As far as

defendant No.3 is concerned, no cause of action against it

has been proved by the plaintiff nor was any relief against

defendant No.3 pressed during arguments. The relief of

rendition of account was also not pressed during

arguments.

            As      regards   the   packing   being    used     by     the

defendants for         selling the products         BECNATE-C         and

BECNATE-N on a comparison of those packagings with the

packagins being used by the plaintiffs, I am unable to take a

view that the packagings being used by the defendants are

deceptively similar or identical to the packagings being used

by the plaintiffs. The packaging of the plaintiffs in respect of

BETNOVATE-N is in green colour, whereas the packaging

being used by the defendants in respect of BECNATE-N is

pre-dominantly in white colour. There is a globe on the

packaging of the defendants which is not found on the

packaging of the plaintiffs. The names of compounds given

on the packagings of the plaintiff are different from the

names of the compounds given on the packagings of the

defendants. The name GlaxoSmithKline is printed in white

colour on a green triangle in the packaging of the plaintiffs.

Nothing like that is found on the packaging of the

defendants in respect of BECNATE-N. The name GSK has

been prominently printed In orange colour on the

packagings of the plaintiffs. There is no such feature on the

packaging of the defendants. The get up, lay out and colour

scheme of the packagings of the defendants appear to be

substantially different from those of the packagings of the

plaintiffs. The packagings of the plaintiff in respect of

BETNOVATE-C are in yellow colour with red triangles on it.

The packaging of the defendants in respect of BECNATE-C

is in yellow and brown colour with no triangle on the

packaging. The word GSK and GlaxoSmithKline have been

printed in white colour on the packaging of the plaintiffs in

respect of BETNOVATE-C. On the other hand, Systochem

in yellow colour has been printed on the packaging of the

defendants in respect of BECNATE-C. The names of the

manufacturers have been prominently written in the

packaging of the plaintiff as also in the packaging of the

defendants and are in fact in bigger letters on the packing of

the defendants. The names of the compounds which have

been prominently written on the packaging of both the

parties are altogether different and have been written in

different colours. The name of compounds on the packaging

of the plaintiff is in capital letters, whereas that on the

packaging of the defendant is primarily in small letters. The

same is the position with respect to the name BETNOVATE-

C on the packagings of the plaintiff and the name

BECNATE-C on the packagings of the defendant, except for

the letter „B‟ on the packaging of the defendant. In these

circumstances and also considering that use of the mark

BECNATE is being injuncted by the Court, there is no need

of injuncting the defendants from using the packagings

Ex.P-1 and P-2 which are the packagings they were using

for selling BECNATE-N and BECNATE-C.

22. A decree for permanent injunction is hereby

passed in favour of the plaintiff and against defendant No.2

restraining defendant No.2 from selling, offering for sale or

advertising any product using the name BECNATE or any

other name similar to the trademark BETNOVATE of the

plaintiffs. Defendant No.2 is also directed to destroy all the

packagings, cartons, bill boards and other packing material

bearing the name BECNATE whether with or without

product, in the presence of an authorized representative of

the plaintiff‟s company within 30 days from today. The suit

against defendant Nos. 1 and 3 is dismissed. Considering

all the facts and circumstances of the case, there shall be

no order as to costs.

Decree sheet be prepared accordingly.

(V.K. JAIN) JUDGE

DECEMBER 22, 2010 'sn'/bg