Delhi High Court
M/S Scan Biotek India & Another vs Smt. Brijlata Prop. Of M/S Scan ... on 29 January, 2010
Author: S.Ravindra Bhat
* IN THE HIGH COURT OF DELHI AT NEW DELHI
DECIDED ON: 29.01.2010
+ CS (OS) 2043/2007
I.A. No.11891/2007
M/S SCAN BIOTEK INDIA & ANOTHER ..... Plaintiffs
Through: Mr. Ajay Verma with
Mr. Guran Bhattacharya and Ms. Swati Gupta,
Advocates.
versus
SMT. BRIJLATA PROP. OF M/S SCAN BIOTECH INDIA ..... Defendant
Through: None.
CORAM:
MR. JUSTICE S. RAVINDRA BHAT
1.
Whether the Reporters of local papers YES
may be allowed to see the judgment?
2. To be referred to Reporter or not? YES
3. Whether the judgment should be YES
reported in the Digest?
MR. JUSTICE S.RAVINDRA BHAT (OPEN COURT)
% The plaintiffs seek permanent injunction, damages and order or delivery up against the
defendants for the latter's use of the trademark "BOLRAN" and the use of the tradename
"SCAN BIOTEK INDIA".
2. The defendant was served in the Suit and counsel had appeared on defendant's behalf on
23.10.2008. The suit and the pending applications were listed subsequently on 26.2.2009,
15.5.2009 and 31.7.2009. On the latter date of hearing there was a appearance on behalf of the
defendant. However, no written statement had been filed. The suit was again listed on
16.12.2009. By the said date of hearing also, the defendant has not filed any written statement.
Even as on date, there is no written statement and the defendant never sought extension of time
that could have been granted under the Code for this purpose. In the circumstances, the Court is
of the opinion that having regard to the pleadings and material, it is an appropriate case for
invoking the powers under the provisions of Order-8, Rule-10 CPC and proceeding to dispose of
the matter.
3. The brief facts of the case are that the plaintiffs claim to be a pharmaceutical products
manufacturing concern. The first plaintiff - SCAN BIOTEK INDIA is a registered partnership
firm since 6.8.2003. The second plaintiff - Scan Biotech Ltd. was incorporated sometime in
December, 2003. It is stated that the drug formulation "Bolran" is widely marketed by the
second plaintiff in Ukraine. The trademark "BOLRAN" is, however, owned by the first plaintiff
in India. It submits that the registration in the said mark was obtained under the Trademarks Act
w.e.f. 14.11.2003 in class-5 of the schedule to the Act.
4. The plaintiffs' grievance in the suit is that the defendant M/s Scan Biotech India uses an
identical trademark BOLRAN in respect of the same drug formulation and markets it in Ukraine.
It is stated that the son of the defendant's proprietor was originally the plaintiff's employee and
after his death in 2005, the defendant, purports to have opened a concern and filed a suit against
the plaintiff claiming injunction.
5. It is submitted that the plaintiffs' firm is registered with the appropriate authorities i.e.
Drug Controller; the plaintiffs rely upon an export import license issued on 31.3.2003 and its
membership with the drug Drug Export Promotion Council - registration of which was granted
on 6.8.2003. Copies of the said certificates have been placed on record. Similarly, copies of the
trademark registration certificate w.e.f. 14.11.2003 in class-5 favouring first plaintiff have been
placed on the record. In support of the user of the trademark BOLRAN as well as to evidence
the used of the name SCAN BIOTEK INDIA and SCAN BIOTECH LIMITED, the plaintiffs
rely upon the registration certificate issued by the Trademark Office as well as the licenses and
documents issued by the drug authorities and the import and export license issued by Drug
Export Promotion Council. It is submitted that the plaintiffs usage of the registered mark
BOLRAN is exclusive for Ukraine and such use has not been restricted in any manner in terms
of Section 47 (2) (a) of the Trademarks Act.
6. The plaintiffs submit that the use of the near identical trade name "SCAN BIOTECH
INDIA" in India by the defendant is calculated to cause confusion amongst the consumers - in
this case in Ukraine in respect of the same product i.e. BOLRAN for which it owns trademark
registration.
7. The Court has considered the materials on record as well as the averments. They clearly
establish that the plaintiff No.1 is a registered trademark proprietor of BOLRAN w.e.f.
September, 2003. Both the plaintiffs are known as SCAN BIOTEK. The defendant has not
refuted these allegations despite service of summons; it has not even chosen to file any written
statement in spite of service after more than a year and three months. In fact, the defendant has
remained unrepresented on the last few dates of hearing as well as today. In the circumstances,
the Court is of the opinion that the plaintiff has established from the materials on record, and the
averments, supported by affidavit, that it is the owner of registered trademark BOLRAN. It is
also established that the defendant is seeking to unauthorizedly use the said mark in relation to
the said product. The defendant, in addition, is using the plaintiff's corporate name SCAN
BIOTEK INDIA and SCAN BIOTECH LIMITED with little or no variations. This is bound to
cause confusion and amounts to infringement in terms of Section 29 (5) of the Trademarks Act
which reads as follows: -
"A registered trade mark is infringed by a person if he uses such
registered trade mark, as his trade name or part of his trade name,
or name of his business concern or part of the name, of his
business concern dealing in goods or services in respect of which
the trade mark is registered."
Having regard to the above discussion, the Court is of the opinion that the plaintiff has
established infringement of its trademark BOLRAN as well as infringement in terms of Section
29 (5) by the defendant.
8. Accordingly, the defendant, its partners, servants, distributors or anyone acting on its
behalf are hereby restrained by a decree of injunction, from using the mark SCAN BIOTECH
INDIA or any other confusingly or deceptively similar trade name that would tend to confuse it
with those of the plaintiff. They are similarly restrained by a decree of permanent injunction
from marketing or selling any products under the mark BOLRAN in relation to pharmaceutical
goods or any other confusingly or deceptively similar mark.
9. The Suit is decreed in the above terms with costs. Counsel's fee is hereby quantified @
Rs.50,000/- (Rs. Fifty thousand). All the pending applications are also disposed of.
(S. RAVINDRA BHAT)
JUDGE
JANUARY 29, 2010
/vd/
