Delhi High Court

Glaxo Group Ltd. & Anr. vs Sunlife Sciences Pvt. Ltd. on 6 October, 2010

Author: V.K.Shali

*             IN THE HIGH COURT OF DELHI AT NEW DELHI

+                         CS(OS) NO. 331/2010


                                    Date of Decision : 06.10.2010

GLAXO GROUP LTD. & ANR.                            ......       Plaintiffs
                     Through:              Mr.Manav           Kumar,
                                           Advocate.


                                Versus


SUNLIFE SCIENCES PVT. LTD.                    ......        Defendant
                       Through:            Mr.Inderdeep     Singh,
                                           Advocate.


CORAM :
HON'BLE MR. JUSTICE V.K. SHALI


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
       in the Digest ?                                       YES

V.K. SHALI, J.

IA No. 2399/2010 (u/O 39 Rules 1 and 2 CPC)

1. This order shall dispose of an application bearing IA

no.2399/2010.

2. Briefly stated the facts of the case are that the plaintiff no.1

M/s Glaxo Group Ltd. & Anr. is the company incorporated

under the laws of United Kingdom having its registered

office at Glazi Wellcome House, Berkeley Avenue,

Greenford, Middlesex UB6, ONN, United Kingdom.

Mr.Rahul Sethi is the constituted attorney of plaintiff no.1

and is duly authorized to verify pleadings and institute the

present suit.

3. Plaintiff no.2 M/s Smithkline Beecham Ltd. is a company

organized and existing under the laws of United Kingdom

having its registered office at 980, Great West Road,

Brentford, Middlesex TW8 9GS, United Kingdom.

Mr.Rahul Sethi is the constituted attorney of plaintiff no.2

and is duly authorized to verify pleadings and institute the

present suit.

4. Plaintiff no.3 M/s Glaxo Smithkline Pharmaceuticals Ltd.

(hereinafter referred to as 'GSK Pharma') is a company

incorporated under the Indian Companies having its

registered office at Dr.Annie Besant Road, Worli, Mumbai-

400030. Mrs.Sree.K.Patel, Vice President, Legal and

Corporate Affairs, of plaintiff no.3 is the duly authorized to

sign and verify the pleadings and institute the present suit

on behalf of plaintiff no.3.

5. All the three plaintiffs are the members of the Glaxo

Smithkline group of companies which is part of the

company. They have filed the present suit for permanent

injunction restraining infringement of the trademark,

passing off, infringement of copyright, damages, delivery up

against a company by the name of M/s Sun Life Sciences

Pvt. Ltd. having its office at 104, Shanti Sadan, Serpentine

Road, Kumara Park, West, Bangalore-560202.

6. The allegations in brief are that the plaintiff is a well-

known pharmaceutical company which has invented

various trade names under which it sells its

pharmaceutical formulations. In the instant case, they

are claiming that they have invented three well-known

trademarks known as BETNOVATE and BETNOVATE-C,

CROCIN and ZINETAC/ZANTAC. It is alleged that the

defendants in a deceptive manner have been getting and

adopting the said trademarks and the trade dress and are

marking their pharmaceutical formulations by the brand

name of B-NATE-C, CORSUN and ZEETAK which is

deceptively similar in not only color scheme and get up and

layout but also phonetically, so as not only to violate the

statutory rights of the plaintiff but also cause confusion in

the minds of the general public by selling deceptively

similar products.

7. The defendants have filed their written statement as well

as reply to Order 39 Rule 1 and 2 CPC, by virtue of which

the plaintiff during the pendency of the present suit had

prayed for ad interim stay against the defendants during

the pendency of the suit.

8. That briefly stated the arguments which were advanced on

behalf of the plaintiff for grant of ad interim stay against

the defendants were based on the following submissions:-

(i) It was claimed by the plaintiff that they had invented

all the three trademarks which are registered and

protected for several years. Their validity during this

period has remained unchallenged and consequently,

the same cannot be challenged or questioned in the

present infringement proceedings by the defendants.

(ii) That while considering the application for grant of ad

interim injunction, the Court has to take into account

the cardinal principal that the trademark or the trade

dress of the plaintiff is to be seen as a whole in

comparison to the impugned trademark or the trade

dress which is stated to be violating the statutory

rights of the plaintiff.

(iii) The splitting of the trade mark in the case of

infringement is not permissible except in cases where

the trademark has any significance pertaining to the

ailment in question for which it gives treatment or the

compound or the basic element in question.

(iv) While considering the balance of equities of the

respective sides, the compelling public interest will

outweigh the considerations which may be set up as

a defence by the defendants. If from the facts of a

given case, it is shown that there is malafide adoption

and no explanation for adoption is given by the

defendants in an infringement case, the injunction

must follow.

9. The learned counsel for the defendants in support of his

case had refuted the contention of the plaintiffs by urging

that there is no similarity between the trademarks of the

plaintiff and the defendants. It was stated that the

spellings as well as trade dress, visually and phonetically

appear to be different. The second submission urged by

the learned counsel was regarding the maintainability of

the very suit itself.

10. It was contended by the learned counsel that the defendant

was that the suit has not been properly instituted and

therefore, if the suit itself has not been properly instituted

and is liable to be rejected then the very question of grant

of ad interim stay in favour of the plaintiff would not arise.

Reliance in this regard was placed by the plaintiff on a

judgment of the Division Bench of this Court in case titled

Electric Construction and EQU. Co. Ltd. Vs. Jagjit

Works 30 (1986) DLT 525 wherein it has been held that

the power of attorney which is relied by a company must

be not only notarized but also have an authentication from

the notary before a presumption under Section 85 of the

Evidence Act could be drawn in favour of the validity of the

power of attorney authorizing the valid institution of the

suit.

11. The second limb of the argument advanced by the learned

counsel for the defendant was that the admittedly the case

of the plaintiff is that the defendant is having its office in

Banaglore and the pharmaceutical preparations which are

stated to be manufactured and sold by the defendant are

not having any circulation in Northern part of India much

less in Delhi and therefore, this Court does not have the

jurisdiction to try and decide the present suit.

12. I have considered the respective submissions of the learned

counsel for the parties. I have also gone through the

judgments which have been cited by the respective sides.

13. First the two questions pertaining to the institution of the

suit and the jurisdiction are taken.

JURISDICTION

14. Section 134 (2) of the Trade Marks Act reads as under:-

"134. Suit for infringement, etc. to be instituted before District Court--

(1) xxxxxxxxxxxxx

(2) For the purpose of clauses (a) and (b) of sub- section (1), a "District Court having jurisdiction" shall, notwithstanding anything contained in the Code of Civil Procedure, 1908 (5 of 1908) or any other law for the time being in force, include a District Court within the local limits of whose jurisdiction, at the time of the institution of the suit or other proceeding, the person instituting the suit or proceeding, or, where there are more than one such persons any of them, actually and voluntarily resides or carries on business or personally works for gain."

15. A perusal of the aforesaid provision would show that in

case of registered trademark, the plaintiff, who is alleging

infringement of its trademark has been given a right to

institute the suit at a place where it is doing business

which under normal Civil Law under Section 20 CPC is at

the place where the defendant resides, works for gain or

carries on business or where the cause of action in whole

or in part has arisen. To that extent, the aforesaid Section

is a modification or addition or can be read as a proviso to

normal law conferring the jurisdiction on a Court.

16. In the instant case, the plaintiff company has stated that

they are carrying on business in Delhi and therefore, the

suits has been instituted in Delhi. Merely because the

defendant is contending that its office itself in Bangalore

does not mean that the present Court will not have the

jurisdiction when it is specifically alleged in the plaint that

the drugs/pharmaceutical formulations are being sold by

the defendant are available in the city of Delhi. I therefore,

feel that this is only a technical objection. Even otherwise,

by virtue of Section 134 (2) of the Trade Marks Act as the

plaintiff has an office in Delhi therefore this Court has the

jurisdiction to try the present suit.

17. The Supreme Court in case titled Sangram Singh Vs.

Election Tribunal AIR 1955 SC 425 has laid down that

technicalities of law should not supersede the substantive

rights of the parties which is equally applicable to the facts

of the present case.

18. The second objection which is raised by the defendant is

that the suit has not been validly instituted as the power of

attorney is neither notarized nor is the same authenticated.

In this regard, I have gone through the documents which

have been placed by the plaintiff in support of its case and

all the three power of attorneys which are relied upon by

the plaintiff are duly notarized before a notary coupled with

the notarial certificate. If that be so, then by virtue of

Section 85 of the Evidence Act unlike judgment of Electric

Construction (supra) which is sought to be relied by the

defendant, there is a prima facie presumption regarding

the validity of the power of attorney and the same can be

read 'in favour of the plaintiff that the suit has been

instituted by the duly authorized person. In addition to

this, the facts of the case which have been relied upon in

Electric Construction company case (supra) by the

defendant are distinguishable from the facts of the present

case. In the case which is reported, there was an adjudication

of the dispute on merits after the parties had adduced their

respective evidence while as in the instant case, the

application under Order 39 Rules 1 and 2 CPC is being

considered. At the time of consideration of the application

under Order 39 Rules 1 and 2 CPC, the Court has to take a

prima facie view of the matter. Therefore, taking the

prima facie view of the matter, I feel that the documents,

which are the power of attorney, duly notarized, having

certificate of a notary public and therefore, is good enough

to show that the plaintiff who are three in number have

duly instituted the suit. There is another angle of the

matter from which the matter can be viewed. This is, that

even if the power of attorney is assumed to be defective in

nature, it is at best an irregularity and can be rectified by

the party later on. Reference in this regard can be made in

case of United Bank of India Vs. Naresh Kumar's case &

Ors. 1996 (6) SCALE 764.

19. In case titled Haryana Financial Corp. & Anr. Vs.

Jagdamba Oil Mills & Anr., AIR 2002 SC 834, the

Supreme Court has very categorically laid down that while

applying the law enunciated in the particular case, the

Court should not act mathematically and the law which is

laid down in the reported case should not be applied like

theorems. The facts of the reported judgment in Electric

Construction company case (supra) must be seen in the

light of these facts. The reasons for distinguishing the

facts of that case have been given herein before, which was

primarily the nature of the suit as well as the fact that the

said suit was being decided finally on merits while as in the

instant case Court has to decide the application under

Order XXXIX Rules 1 and 2 CPC only at this stage.

20. In addition to this, the Apex Court in Sangram Singh vs.

Election Tribunal [AIR1955SC425] observed that:

"A code of procedure is procedure, something designed to facilitate justice and further its ends : not a Penal enactment for punishment and penalties; not a thing designed to trip people up. Too technical construction of sections that leaves no room for reasonable elasticity of interpretation should therefore be guarded against (provided always that justice is done to both sides) lest

the very means designed for the furtherance of justice be used to frustrate it."

21. Keeping in view the aforesaid facts I feel that these two

objections are primarily raised by the defendant in

resisting the interim order and they are without any merit

and same are accordingly dismissed.

22. Next question which arises for consideration is whether the

plaintiff is able to satisfy the three requirements for grant

of an ad-interim injunction. There are three well known

conditions, namely, whether the plaintiff has a prima facie

case, whether the balance of convenience is in its favour

and whether it will suffer an irreparable loss in case an ad

interim injunction is not granted.

23. The defendant has not raised any despite about the fact

that the three trade marks namely BETNOVATE-C,

CROCIN AND ZINETAC/ZANTAC are the the trade marks

invented by the plaintiff at different times in the past years.

These marks have, on account of their past user, attained

some distinctiveness and are identified with the plaintiffs.

The plaintiff in its plaint has given details of its adoption in

different years over the past four decades along with the

registration nos. from the Indian Trade Mark Registrar. It

has also shown the details of couple of cases of Indian

Courts to buttress its claim that these trade names have

been recognized by the Courts to be associated with the

plaintiff and have been duly protected by them.

24. The trade mark CROCIN was adopted worldwide by the

plaintiffs in the year 1963 and in the year 1996, in India.

The trade mark ZANTAC has been adopted in India in the

year 1978 and ZINETAC in 1983. The trade mark

BETNOVATE-C was adopted worldwide and in India in

1963. The said trademarks are registered vide registration

numbers ZINETAC/ZANTAC (382567, 441253, 340194),

BETNOVATE (219258) and CROCIN (389215, 389216,

451516, 451517, 474068, 59939, 75346, 937161, 713184,

713191, 71385, 713186, 713183). The validity of the trade

marks cannot be questioned in the infringement

proceedings and more so when it is old and established

and well known trademarks. All these trademarks are

totally invented trademarks by the plaintiffs and after their

persistent user for the last more than four decades, the

said trademarks have become highly distinctive to be

identified with the plaintiff's products. The said trade

marks are enforced by this Court in various proceedings

and the products bearing the said trademarks are

purchased by the respective consumers as household

drugs. Such kind of inherent distinctiveness in the

trademarks coupled with staggering and voluminous user

makes it evident that the said trademarks are highly

distinctive to the plaintiffs and none else.

25. Reliance in this regard placed on AIR 1963 MADRAS 12(V

50 C 4) and Glaxo Group Limited & Ors. Vs. Vipin

Gupta & Ors. Cited as 2006(33) PTC 145 (Del.).

26. The defendants have also copied the color scheme, getup

and layout of the plaintiffs' products which are essential

feature of the plaintiffs' products. Kindly see the judgment

cited as

A. CARDINAL PRINCIPLE THAT THE MARK HAS TO BE SEEN AS A WHOLE

Further it is established principle of the trade mark law that while comparing the infringement, the trade mark must be seen as a whole and the Court will only follow the exceptional cases wherein the trade mark comprises of generic element and distinctive element which includes part of the name of the salt or ailment and try to gauge the similarity to the other part of the trademark just like in the case of MERONUM VS.

MEROMOR wherein the Court dissected MERO and tried to find similarity in the NUM wherein the Court held that they are not similar. Likewise, in the case of TEMODAR wherein the active ingredient was TEMOZOLOMIDE. The Court dissected between TAR and DAR which they were unable to find. Be that it may as an exception to that the Court will ordinarily follow the cardinal principle that the mark has to be seen as a whole and will not deviate from this principle unless the circumstances regarding name of ailment or salt at present. Reliance in this regard placed on Corn Products Refining Co. Appellants Vs. Shangrila Food Products Limited, Respondents cited as AIR 1960 SC 142(V 47 C 25). Thus, on the basis of documents placed on the record it can be conveniently said that in case the mark as a whole is seen then there should be no difficulty in holding that the produce of defendant is deceptively poor imitation of the plaintiff's product.

B. SPLITTING OF THE TRADE MARK IN THE CASE OF TRADEMARK INFRINGEMENT IS IMPERMISSIBLE EXCEPT IN CASES WHERE THE TRADE MARK HAS ANY SIGNIFICANCE PERTAINING TO THE AILMENT IN QUESTION OR THE COMPOUND OR THE BASIC ELEMENT IN QUESTION.

The next question which requires consideration is whether the splitting of trade marks is permissible or not. The three trade marks BETNOVATE-C, ZINETAC/ZANTAC and CROCIN of the plaintiffs are invented trademarks. The invented trademarks are not amenable to splitting and only case where the trade mark is split are in case of ailments /the drug is intended to cure or if the drug has any other feature which is related to the name of the element/basic ingredient/salt which is in question. In the present case, the trademark BETNOVATE has no connection with that of the salt and it has got the trappings of the invented

trademark. Likewise, in CROCIN and ZINETAC/ZANTAC as against the marks CROCIN and ZEEZINETAC.

 The word TEMODAR has been derived from the active salt TEMOZOLOMIDE 2010(42) PTC 772 (Del.) (DB) - Schering Corporation & Ors. Vs. Alkem Laboratories Ltd.

In the present case, we are concerned with the invented trademarks. The said test of splitting of the trade mark cannot come in the way of establishing infringement. In case of CROCIN, the ailment which it cures is fever or pain which has not connection or significance with that of CROCIN. The active ingredient in the CROCIN is Paracetamol which has no significance or connection with that of any salt. Likewise, BETNOVATE is derived from the salt BETAMETHASONE VALERATE AND CLIOQUINOL which has no significance or connection with that of the brand BETNOVATE. It was the contention of the defendants that BETNOVATE has been derived from betamethasone valerate and cloquinol. It is incongruous to state that such contention can succeed as betamethasone valerate and clioquinol are poles apart from BETNOVATE. If one of the features which is there from the salt then the same may be dissected to see another feature. But, in the present case, if we take BETAMETHASONE and reads BETNOVATE, one could not gauge any derivation from betamthasone valerate and clioquinol and it is only after seeing the product BETNOVATE-C. It is only after seeing the product of the platiniff that B-NATE-C has come into existence. Likewise, ZINETAC/ZANTAC is Ranitidine meant for acidity. Seeing from any standpoint, be it from the name of the ailment or from the name of salt or from the name of chemical compound all the three trademarks are prima

facie invented ones and they are completely copied by the defendants without any justification. Thus, the contention of the learned counsel for the defendant that the B Nate, Betnovate the salt does not seem to be correct.

C. COMPELLING PUBLIC INTEREST WILL OUTWEIGH AND WILL PREVAIL.

The present suit is related to the pharmaceutical drugs which are widely circulated and sold throughout India and worldwide and are popular brand names BETNOVATE-C, ZINETAC/ZANTAC and CROCIN. The confusion amongst the consumers is not merely inconvenient but the consumption of spurious drug may lead to life threatening circumstances and the confusion amongst the consumers is against the public interest doctrine. In the present case of pharmaceuticals not merely the plaintiffs and the defendants are parties but the public interest which outweighs everything is also participant in the proceedings. Such are the observations which are made by the Hon'ble Supreme Court wherein the Apex Court has indicated that the Court should follow stringent view in case of pharmaceutical drugs. Reliance is placed on the case titled Cadila Health Care Limited Vs. Cadila Pharmaceuticals Ltd. (2001) 5 SC Cases 73. From the above, it is clear that the defendants defense so far as their adoption is concerned is not bonafide. There is no explanation which has been put forth by the defendants for such bonafide adoption of the trade marks which violates three intellectual property rights of the plaintiffs. Rather this is is prima faice evidence that the defendant wants to encash the reputation of the plaintiff's product.

It has been laid down by the Apex Court in the case of Midas Hygiene Industries Vs. Sudhir

Bhatia & Ors. cited as 2004(28) PTC 121 SC that in case of infringement where there is deliberate and mala fide adoption without any justification, the injunction must follow."

27. Keeping in view the aforesaid facts and circumstances, I

am of the view that the plaintiff has got prima facie very

good case and that the balance of convenience is also in

favour of the plaintiff and that irreparable loss will be

caused to the plaintiff in case the defendants are not

restrained by way of an ad interim injunction from using

the deceptively similar trademarks/trade dress in respect

of BETNOVATE, CROCIN AND ZINETAC.

28. I accordingly, by virtue of the present order, restrain the

defendant from manufacturing, selling, trading the three

pharmaceutical preparations ZEETAK, B-NATE-C AND

CORSUN and also from using deceptively similar trade