Pfizer Products Inc & Anr vs Vijay Shah & Ors.
2010 Latest Caselaw 5398 Del

        THE HIGH COURT OF DELHI AT NEW DELHI

%                   Judgment Reserved on: 23.11.2010
                    Judgment Pronounced on: 29.11.2010

+          CS(OS) No. 2244/2007

PFIZER PRODUCTS, INC & ANR                       .....Plaintiff

                          - versus -

VIJAY SHAH & ORS.                                .....Defendant

Advocates who appeared in this case:
For the Plaintiff: Ms. Aarshia Behl, Adv.
For the Defendant:

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 grant of permanent injunction,

rendition of accounts and damages. Plaintiff No. 1 is a

wholly owned US subsidiary of Pfizer Inc., whereas plaintiff

No.2 Pfizer Limited is the Indian Subsidiary of Pfizer Inc.

Pfizer is a large multinational pharmaceutical company

which enjoys a global reputation for the high quality and

efficacy of its product. The research and development

budged of Pfizer was estimated at about US$ 7.5 billion in

the year 2004 and it manufactures a number of

pharmaceuticals products, including vitamin, supplements,

antibiotics and cardiovascular products. COREX is one of

the top selling products of the plaintiff and is a highly

sought after drug for treatment of cough and in allergic or

infective conditions of the respiratory passage. This product

is being sold in India since 1964 and the mark COREX is

registered in India since 1963 in Class 5 vide Trademark No.

213825. The trade mark is owned by plaintiff No.1 Pfizer

Product Inc.

2. Defendant No.1 is the Managing Director of

defendant No.2 Stallion Laboratories Pvt. Ltd. It is alleged in

the plaint that recently the plaintiffs came to know that

defendant No.2 was manufacturing and marketing a cough

syrup under the mark SOREX which is similar to the mark

of the plaintiff-company. It is further alleged that the

product being manufactured and sold by defendant No.2

has an identical label, packaging and get up. The product is

being manufactured by defendant No.2 and marketed by

defendant No.3. The defendants, according to the plaintiffs,

have thus adopted a mark which is deceptive similar to their

registered mark COREX and are thereby trying to ride upon

the goodwill and reputation of the plaintiffs. It is also alleged

that there is likelihood of the customers getting induced to

believe that the product offered by the defendants was of the

same quality as the products of the plaintiff-companies are

and they may also believe that the defendants have some

connection or association with the plaintiff-companies or

have licensed or authorized the product being sold by the

defendants under the trademark SOREX. The plaintiffs

have, therefore, sought injunctions, restraining the

defendants, their officers, directors, agents, franchises,

licencees, etc. from the manufacturing, marketing or

advertising any product under the mark SOREX or any

other mark which is identical or deceptively or confusingly

similar to plaintiff No.1's registered trademark COREX.

They have also sought injunction against reproduction

and/or use of plaintiff No.1's trade dress comprised of get

up, lay out, colour scheme and arrangement of features in

product packaging for its syrup COREX. They have also

sought rendition of accounts for the profit earned by the

defendants by infringing plaintiff's trademark and by

passing off their goods as the goods of the plaintiff. They

have also sought damages amounting to Rs 20,02,000/-

from the defendants.

3. Defendant Nos.1 and 2 did not come forward to

contest the suit. Defendant No.3, however, filed written

statement, contesting the suit. It is alleged in the written

statement of defendant No.3 that there are vast difference in

their product and the product of the plaintiff-companies

with respect to the product, bottle, cap, printing, colour

combination, contents on the label, packing, size of bottle

and colour of liquid, etc. The following differences in the

product of the plaintiffs and the product of the defendants

have been pointed out in the written statement:-

(a) The name of the plaintiffs' product is COREX. On

the other hand the defendant' products name is SOREX and

the same is not registered.

(b) The product (liquid in bottle) or the COREX is

pinkish in colour while the colour of the product (liquid in

bottle) is brownish in colour.

(c) On the cap of the bottle of the COREX the name of

the manufacture i.e. "Pfizer" is printed in white with blue

background while on the cap of the SOREX the name of the

marketing agent i.e. the defendant No.3 is written as

"Petrosolv" which is printed in black with silver background.

(d) On the side of the cap of bottle of COREX arrow

mark with word TURN in capital words is printed in blue ink

to show how to open the cap of the bottle, while on the side

of the cap of the bottle SOREX arrow mark in cross of the

bottle with word "TO BREAK SEAL AND TO

OPEN_(INSCREW)__THIS WAY" is printed in black ink.

(e) On the cap of the COREX there is a straight line

going upwards in blue colour. On the other hand there is

no such line appearing on the cap of the SOREX.

(f) On the side of the cap of the bottle of COREX the

word "E" is printed in blue ink. On the other hand there is

no such word printed on the side of the cap of SOREX.

(g) The bottle of the COREX is available in all the sizes

however the bottle of the SOREX was only available in 100

ml bottles.

(h) On the first part of the label on COREX bottle, logo

of the COREX is printed. However on the first part of the

label of the SOREX bottle no logo is printed.

(i) On the third part of the label of COREX bottle the

name is printed as Rx COREX * in black ink while on the

third part of the bottle of the SOREX the name is printed as

NRx SOREX in Violet ink.

(j) On the bottom of the label of COREX it is written

in box in red ink "For sale in India only". On the other

hand on the bottom of the label of SOREX bottle it is written

in black "SHAKE WELL BEFORE USE". Thus there is a

huge difference in the cap and also in the label of both the

products.

4. It is also stated in the written statement of

defendant No.3 that SOREX is a narcotic,

prescription drug for which prescription of a doctor is a

must. It has also been claimed in the written statement

that production of SOREX was stopped long back and,

therefore, its marketing was also stopped from July, 2007.

5. Defendants 1 and 2 were proceeded ex parte vide

order dated 24th March, 2008, whereas defendant No.3 was

proceeded ex-parte on August, 26, 2008 after it had filed

written statement.

6. The plaintiffs have filed affidavit of Ms Anamika

Gupta constituted attorney of the plaintiff-companies in

support of their case. In her affidavit, Ms Anamika Gupta

has supported, on oath, the case set up in the plaint and

has stated that plaintiff's product under the mark COREX is

being manufactured in India since 1964 and plaintiff No.1 is

the registered proprietor of the trademark COREX, by

virtue of trademark Registration No. 213825 in respect of

medical preparation being an expectorant. She has also

stated that defendant No.2 is engaged in the business of

manufacturing pharmaceutical products, whereas

defendant No.3 is marketing the products manufactured by

defendant No.2. She has further stated that in October,

2007, the plaintiffs received information regarding

manufacturing and sale of SOREX and came to know that

this product is being manufactured by defendant No.2 and

marketed by defendant No.3. According to her, not only the

product SOREX has a visual, structural and phonetic

similarity to the plaintiffs trademark COREX, but it also has

an identical get up, lay out, arrangement of words and

colour scheme as that of plaintiff product COREX.

7. Ex. P-2 is the copy of the certificate issued by

Trademark Registry, Government of India, whereby COREX

was registered as the trademark of CHAS.PFIZER &

COMPANY Inc. in respect of medicinal preparation being an

expectorant w.e.f. 15th February, 1963. It was not disputed

by defendant No.3 in the written statement filed by it that

COREX is the registered trademark of CHAS.PFIZER in

India.

8. The case of the plaintiff against the defendants is

based upon infringement of their registered trade mark as

well as on passing off. Section 28 of Trade Marks Act, 1999

gives to the registered proprietor of the trade mark the

exclusive right to the use of the trade mark in relation to the

goods or services in respect of which the trade mark is

registered and to obtain relief in respect of infringement of

the trade mark in the manner provided by this Act. In a

case based on infringement of this statutory right it is

necessary for the plaintiff to prove that his registered trade

mark has been used by the defendant, though no such use

is required to be established in an action for passing off. It

is also a settled proposition of law that if the defendant

resorts to colourable use of a registered trade mark such an

act of the defendant would give rise to an action for passing

of as well as for infringement. In an action based upon

infringement of a registered trade mark if the mark used by

the defendant is visually, phonetically or otherwise so close

to the registered trade mark of the plaintiff that it is found

to be an imitation of the registered trade mark, the statutory

right of the owner of the registered trade mark is taken as

infringed.

9. Ex.P-3 is the photograph of the product of the

plaintiff-company, whereas Ex.P-4 is the photograph of the

product of the defendant-company. A comparison of the

two products reveals the following similarities in the

product being manufactured by the plaintiff and the

product being manufactured by defendant No.2 and

marketed by defendant No.2:-

(i) the colour scheme of the label, affixed on the bottles is

identical, dark blue, light blue and white being the colour

used in both the labels; (ii) the get up of the two labels is

identical; (iii) there is a broad dark blue strip/portion

followed by a narrow light blue strip and white lower portion

in both the labels; (iv) design of the font used on the two

labels appears to be identical (v) the colour of the bottles is

brown for both the products (vi) the name of

manufacturer/marketer has been printed on the top in both

the labels (vii) the description of the drug, given on the two

labels, is absolutely identical being anti-allergic, anti-tussive

and for dry cough, and (viii) the placement of MRP, Batch

No., manufacturing date and expiry date is on the left side

in both the labels.

10. In a case of passing off, however, if the defendant

is able to establish that on account of packaging, get up and

other writing on his goods or on their packaging, it is

possible to clearly distinguish his goods from the goods of

the plaintiff, he may not be held liable.

11. It is difficult to dispute that the SOREX is

phonetically so close and similar to the word COREX that it

may not be possible for an ordinary buyer of a cough

expectorant to distinguish the product of the plaintiff from

the product of the defendant.

12. I have considered the differences identified in the

written statement of defendant No.3. I find that the

differences brought out by defendant No.3 are rather trivial

and are not sufficient to enable a customer of average

intelligence to distinguish the cough syrup being

manufactured and sold by the plaintiff under the name

COREX from the cough syrup being manufactured and sold

by the defendants under the name SOREX.

13. The defendants, while adopting the name for their

product, need to act honestly and bona fidely and not with a

view to encash upon the goodwill and reputation of the

plaintiff-company. A fraudulent or deceptive copying of the

trademark owned by another person also amounts to a false

misrepresentation to the public which needs to be protected

against such misrepresentation. A competitor cannot usurp

the goodwill and reputation of another by adopting a mark

similar to the established mark of its competitor and

thereby cause injury to the reputation and business of that

person. With the passage of time, a certain reputation

comes to be associated with a brand name on account of the

quality of the product sold under that brand and/or the

investment made by the owner of that brand in brand

building and advertising. Any attempt on the part of

another person to enrich upon the brand value generated by

another person needs to be curbed by the Court as and

when the aggrieved party approaches the Court in this

regard.

14. The question as to whether the two competing

marks are so similar as to be likely to deceive or cause

confusion has to be approached from the point of view of a

man of average intelligence and imperfect recollection and

not from the point of view of an educated person who is well

placed in life. The Courts also need to ensure that there is

no confusion in the mind of the consumer as to the source

of the product which he is buying. The customer needs to

be assured that he buys the same product which he prefers

and identifies by its name. From the view point of the

manufacturer of the product also, it is necessary for him to

ensure that his business interests are not harmed by

another manufacturer, by clever manipulations and

machinations, such as colourable use of a name or device

by his competitor.

15. We cannot be oblivious to the fact that despite

statutory requirements, the chemist and druggist in our

country do not hesitate in selling drugs such as cough

syrups and expectorant, without insisting upon prescription

by a medical practitioner, even if such a prescription is

statutorily required. Drug such as cough syrups are

available over the counter and without production of a

medical prescription, not only in metropolitan cities, but

only in small towns and villages. The persons living in

small towns and villages and possessing average intelligence

may not like to take the trouble of meticulously examining

the label of the cough syrup which they find in the shop

when the names of the two products are phonetically similar

and the packaging of the product and other distinguishing

features, if any, are not adequate to enable him to

distinguish the product which he finds in the shop with the

product which he intends to purchase. Considering the

phonetic similarity between the name COREX and SOREX

and a number of similarities in the packaging and label and

the products being manufactured and sold by the plaintiffs

as well as the products being manufactured and sold by the

defendants, both being cough syrups, there is a strong

likelihood of customer possessing an average intelligence

and particularly those living him in small towns and villages

buying the product of the defendants on the assumption

that they were buying the product of the plaintiff, which is

reputed and well-known cough syrup.

16. It was observed by Supreme Court in Cadila

Health Care Ltd. vs. Cadila Pharmaceuticals Ltd.

2001 PTC 541 (SC), 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 medicines, but the compositions are different. It

was also observed that it is not uncommon that because of

lack of competence or otherwise, mistakes can arise,

specially where the trademarks are deceptively similar. It

was also noted by the Court that while examining such

cases in India, what has to be kept in mind is that the

purchaser of such goods 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 made sound phonetically the

same.

17. The quality of the product of the defendants may

not be as good as the quality of the product of the plaintiff.

If that be so, the customer who buys the product of the

defendants in the belief that he is buying the quality

product of the plaintiffs discovers that the product

purchased by him is not of expected quality and has not

given him the relief which he expected on consuming it, he

may form an opinion that the quality of the product of the

plaintiffs has gone down. If that happens, it may adversely

affect not only the reputation but also the business interests

of the plaintiffs.

18. For the reasons given in the preceding paragraphs,

I am of the considered view that the plaintiff is entitled to

injunction against the manufacture, sale and distribution of

cough syrup of the defendants under the name SOREX or

any other name/mark deceptively similar to the registered

mark COREX of the plaintiff. Since the label used by the

defendants for selling their product SOREX is deceptively

similar to the label, being used by the plaintiffs for selling

their product COREX and unless stopped, it is likely to

create confusion and deception in the mind of the purchaser

by inducing them to believe that they are buying the

product of the plaintiff-company, it is necessary to grant

injunction against use of that label. Though it has been

claimed in the written statement of defendant No.3 that the

production as well as marketing of cough syrup under the

name SOREX has since been stopped, the possibility of the

defendants resuming the production and sale of their

product under the name SOREX or some other mark

deceptively similar to the mark of the plaintiffs is a strong

probability in case the injunction is not granted to the

plaintiffs. Injunction is granted accordingly in favour of the

plaintiff and against the defendant.

19. Though the plaintiffs have also sought rendition of

account for the profits earned by the defendants by

infringing their trademark and passing off their goods as the

goods of the plaintiff, this relief was not pressed during

arguments. The plaintiffs, however, pressed for grant of

damages to them. However, considering that the plaintiffs

have not proved any actual damage to them and even

otherwise it is not possible to work out the profits earned by

the defendants and the damages sustained by the plaintiffs

on account of use of the mark SOREX by the defendants,

the plaintiffs are not entitled to actual damages. However,

since the defendants have adopted a mark similar to the

registered trademark of the plaintiff and they have been

manufacturing and selling the cough syrup under that mark

and also with a view to deter the defendants from indulging

in similar acts in future, it is necessary that some punitive

damages are awarded to the plaintiffs. I, therefore, award

punitive damages in the sum of Rs 1 lac to the plaintiff

against the defendants 2 and 3. As far as defendant No.1 is

concerned, he being the only Managing Director of

defendant No.2, the plaintiff is not entitled to any relief

against him.

ORDER

The suit against defendant No.1 is hereby dismissed.

Defendant Nos. 2 and 3 are hereby restrained from

manufacturing, selling and distributing cough syrup under

the name SOREX or any other name/mark deceptively

similar to the registered mark COREX of the plaintiffs. They

are also restrained from using the label Ex.P-4 or any other

label deceptively similar to the label Ex.P-3 of the plaintiffs.

They are also directed to pay punitive damages, amounting

to Rs 1 lac to the plaintiffs. If the amount of damages is not

paid within four weeks, they will also pay interest on that

amount at the rate of 9% per annum from the date of this

judgment. There shall be no order as to costs. Decree sheet

be prepared accordingly.

(V.K. JAIN) JUDGE

NOVEMBER 29, 2010 BG