Ranbaxy Laboratories Limited vs M/S Intas Pharmaceuticals Ltd. & ...
2011 Latest Caselaw 4056 Del

         THE HIGH COURT OF DELHI AT NEW DELHI
%           Judgment Reserved on: 9th August, 2011
            Judgment Pronounced on: 23rd August, 2011

+           IA No. 10148/2009 (u/O 39 R 1&2 CPC) in
            CS(OS) 1457/2009

Ranbaxy Laboratories Limited              ..... Plaintiff
               Through: Mr. Rajiv Nayyar, Sr. Advocate
               with Mr. N.Singh, Advocate

                         versus

M/s Intas Pharmaceuticals Ltd. & Ors.  ..... Defendant
               Through: Mr. Sudhir Chandra, Sr.
               Advocate with Ms. Megha Mehta Agrawal,
               Advocate for D-1

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. The plaintiff is a large pharmaceutical company

manufacturing and marketing a number of medicinal

products including a drug for urinary tract infection, which

it is selling under the registered trademark „NIFTRAN‟. The

word „NIFTRAN‟ is alleged to be a coined, unique and an

invented word. The compound used in the drug „NIFTRAN‟

is Nitrofurantoin. The plaintiff had a sale of Rs.30.4 million,

Rs.42.9 million and Rs.11.47 million in the year 2007, 2008

and first quarter of the year 2009 respectively from

„NIFTRAN‟ alone. It claims to have incurred approximate

expenses of Rs.5.6 million, Rs.5.2 million and Rs.2.7 million

respectively during the aforesaid period.

The defendant No.1 is manufacturing and

marketing a drug under the trademark „NIFTAS‟ which is

alleged to be similar/identical with the trademark „NIFTRAN‟

of the plaintiff. „NIFTAS‟ also is prescribed in the treatment

of urinary tract infection. The case of the plaintiff is that

the trademark „NIFTAS‟ has been adopted by the defendant

with the intention of encashing upon the goodwill and

reputation in the trademark „NIFTRON‟ and is bound to

cause confusion and deception amongst the purchasing

public in the trade, which would be induced into believing

that the products being sold by the defendant also

originates from the plaintiff company. IA No. 10148/2009

has been filed by the plaintiff seeking interim injunction

against use of the mark „NIFTAS‟ by defendants during

pendency of the suit.

2. Defendant No. 1 has contested the suit and has

claimed that the trademarks „NIFTRAN‟ and „NIFTAS‟ are

based on the drug NITROFURANTOIN, the words „NIFTRAN‟

and „NIFTAS‟ representing the molecule or drug represented

by the names and no one can claim a monopoly over these

names. It is also alleged that suffix in the marks „NIFTRAN‟

and „NIFTAS‟ are altogether different phonetically as well as

visually and represent the names of the manufacturing

companies, i.e. "RANBAXY" AND "INTAS" respectively. It is

claimed that the adoption of the mark "INTAS" is in line

with defendant‟s policy to use the word "TAS" as a suffix in

most of its products. It is also claimed that the suit suffers

from the vice of delay, laches and estoppels since the

plaintiff became aware of defendant‟s product in April,

2009. It is claimed that the defendant applied for

registration of the trademark „NIFTAS‟ in March, 2008 and

launched the drug in the marked on 23 rd January, 2009.

The defendant has also pointed out that the product of the

plaintiff is a hard gelatin capsule, whereas the product of

the defendant is a sustained release tablet; the product of

the plaintiff is packed in a plastic bottle containing 20

capsules, whereas the product of the defendant is sold in

aluminum foil. It is also alleged that since it is launched in

January, 2009, „NIFTAS‟ had a sale of Rs 70.18 lakh till the

date written statement was filed on 20th November, 2008

3. It is an admitted case that the trademark

„NIFTRAN‟ of the plaintiff as well as „NIFTAS‟ of defendant

No. 1 are their respective registered trademarks. Defendant

No.1 applied for registration of the trademark „NIFTAS‟

claiming user since February 29, 2008 based upon the

preparatory steps undertaken by it towards creation of

„NIFTAS‟ logos and artwork. Defendant No.1 has placed on

record the copy of the invoice dated 29.02.2008 whereby it

paid design charges for the logo design NIFTAS to ONE

Advertising and Communication Services Limited. The

application of defendant No.1 was advertised in trademark

Journal No.1414 dated 16.04.2009, to which no objection

was filed. The registration was accordingly granted to

defendant No.1 on 03.05.2010 with effect from 10.03.2008.

4. Section 28(3) of the Trade Marks Act, 1999 to the

extent it is relevant provides that where two or more

persons are registered proprietors of trademarks, which are

identical with or nearly resemble each other, the exclusive

right to the use of any of those trademarks shall not (except

so far as their respective rights are subject to any conditions

or limitations entered on the register) be deemed to have

been acquired by any one of those persons as against any

other of those persons merely by registration of the

trademarks.

5. Thus, no infringement on the part of defendant

No.1 is made out on account of use of the trade mark

„NIFTAS‟ by it and the case of the plaintiff is based on

passing off alone. In a case of infringement, if it is found

that the defendant has adopted the essential features of the

registered trade mark of the plaintiff, he would be liable

even if he is able to establish that on account of packaging,

get up and other writings on his goods or on the container

in which the goods are sold by him, it is possible to clearly

distinguish his goods from the goods of the plaintiff. On the

other hand in a case of passing off if it is shown that on

account of these factors it is very much possible for the

purchaser to identify the origin of the goods and thereby

distinguish the goods of the defendant from the goods of the

plaintiff, the defendant may not be held liable. As observed

by the Supreme Court in Cadila Health Care Ltd. vs.

Cadila Pharmaceuticals Ltd., AIR 2001 SC 1952, in a case

of passing off what has to be seen is the similarity between

the competing marks and whether there was likelihood of

causing confusion. It is an undisputed proposition of law

that actual confusion/deception is not required in a case of

passing off and what has to be seen is whether there is a

likelihood of confusion and deception on account of

similarity of the two marks.

6. As observed by Supreme Court in Wander Limited

versus Antox India Private Limited 1990(Suppl.)SCC 727,

in a passing off action, the right of the plaintiff is against

the against the conduct of the defendant which leads to or

is intended or calculated to lead to deception. Passing-off is

said to be a species of unfair trade competition or of

actionable unfair trading by which one person, through

deception, attempts to obtain an economic benefit of the

reputation which another has established for himself in a

particular trade or business. The action is regarded as an

action for deceit. The tort of passing-off involves a

misrepresentation made by a trader to his prospective

customers calculated to injure, as a reasonably forseeable

consequence, the business or goodwill of another which

actually or probably, causes damages to the business or

good of the other trader.

7. In Cadila Health Care Ltd. (supra), 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.

8. A comparison of the product of defendant No.1

with the product of the plaintiff would show the following

major dissimilarities:-

(a) The product of the plaintiff is sold in plastic bottle

whereas the product of the defendant is sold in Alu-

Alu strips (blister packaging).

(b) The product of the plaintiff is sold in capsule form

whereas the product of defendant No.1 is sold in

tablet form.

(c) The product of the plaintiff is a conventional

product whereas that of defendant No.1 is a

sustained release product.

(d) The price of the bottle of the plaintiff is Rs.190/-

whereas the price of the strip of defendant No.1 is

Rs.90/-.

9. It is an admitted fact that „NIFTAS‟ as well as

„NIFTRAN‟ are meant for curing urinary tract infection and

are scheduled „H‟ drugs only which can be sold only on

prescription of a doctor. It can hardly be disputed that

despite legal requirement of selling schedule H drugs only

against prescriptions by a doctor, this rule in our country is

observed more in breach and such drugs are freely available

across the counter, even without product of a medical

prescription. Even a person assuming he is a man not very

much conversant with English language, possesses average

intelligence and has imperfect recollection, approaches a

chemist for purchase of „NIFTRAN (drug of the plaintiff), he

may either handover the medical prescription to the chemist

or he may orally give the name of the medicine required by

him. If the customer gives a prescription of „NIFTRAN‟ to

the chemist, it is extremely unlikely that he would sell

„NIFTAS‟ to him, instead of „NIFTRAN. Such an act on the

part of the chemist would amount to cheating the customer

and in the ordinary course, a chemist is not likely to indulge

into such an illegal act. Of course, if he does not have

„NIFTRAN‟ with him, he may offer „NIFTAS‟ or any other

substitute of „NIFTRAN‟ to the customer but in that case, he

would tell the customer that he does not have „NIFTRAN‟

and was offering a substitute of „NIFTRAN‟ to him, the basic

compound of both the drugs being one and the same.

Moreover, in case the customer has earlier purchased

„NIFTRAN‟, he is not likely to accept „NIFTRAN‟ from the

chemist even if he does not know English language since,

the difference between the packaging of „NIFTAS‟ and

„NIFTRAN‟ coupled with the fact that „NIFTRAN‟ is sold as

capsule whereas „NIFTAS‟ is sold as a tablet by itself would

make him aware that the drug being sought to be sold to

him by the chemist was not the drug which he intends to

purchase. If, however, the customer is not carrying a

medical prescription, and orally tells chemist that he wants

to purchase „NIFTRAN‟ there is very little likelihood of the

chemist misunderstanding the name of the drug and

mistaking „NIFTRAN‟ as „NIFTAS. If the chemist has

„NIFTRAN‟ as well as „NIFTAS‟ with him, he would have no

reason to pass on „NIFTAS‟ as „NIFTRAN to the customer. If

he does not have „NIFTRAN‟ in his stock, he is likely to ask

the customer whether a substitute of the drug would be

acceptable to him, instead of passing off „NIFTAS‟ as

„NIFTRAN‟, without disclosing it to the customer. If the

customer agrees, he may sell not only INTAS, but any other

substitute as well, depending upon what is available with

him, and in which drug he is getting a higher commission.

But, then, there is not passing off, as the customer knows

that he is not buying „NIFTRAN‟, but, is buying a substitute.

If the customer is well conversant with English language, it

is not at all possible for the chemist to pass off „NIFTAS‟ to

him as „NIFTRAN‟, since the vital difference between

„NIFTRAN‟ and „NIFTAS‟ cannot be missed by him, even if he

has not purchased the drug in the past.

10. If the drug is ordered by a hospital, there is no

reasonable likelihood of „NIFTAS‟ being passed off as

„NIFTRAN‟ since the nurses and doctors in the hospital are

always in a position to distinguish the drug not only on

account of difference in the name, but also on account of

packaging, price of the drugs and the form in which they are

sold. If the medicine is ordered by a hospital to a chemist

on telephone, even then, considering the phonetically

dissimilarity between the two marks, the chemist is not

likely to misunderstand „NIFTRAN‟ as „NIFTAS‟ and in any

case, when the drug is received by the hospital, it is not

likely to accept „NIFTAS‟ in case it has ordered for supply of

„NIFTRAN‟.

11. Yet another possibility, though rather is that the

patient is not at all conversant with English language, does

not visit the doctor and is prescribed medicine on telephone,

or he visits the doctor, but is not given a written

prescription, and he goes to the chemist to buy the

medicine. In my view, even to such a customer, the chemist

is not likely to pass of „NIFTAS‟ as „NIFTRAN‟, since it would

amount to heating him. In any case, if the chemist is to

cheat him by passing of a substitute of „NIFTRAN‟, he is

likely to sell him a cheap substitute rather than the product

of a large and reputed company like defendant No. 1, since

he is likely to make higher profit on sale of a cheap

substitute; and English being an alien language to the

customer, he just cannot make out what is being sold to

him. To my mind, there is very little likelihood of the

customer himself pronouncing „NIFTAS‟ as „NIFTRAN‟, to the

chemist. In fact, considering the nature of the medicine and

the ailment for which it is prescribed, there is very little

chance of the medicine being advised, without the patient

visiting the doctor, and in that case, he will get a written

prescription, which he will take to the chemist. A doctor

may possibly advise this medicine, on telephone, to a well-

educated patient, but he will not do it to a person, who is

not proficient in English and cannot write down the

medicine, when advised on telephone. If the patient is well-

educated, there is no reasonable possibility of his mistaking

„NIFTRAN‟ as „NIFTAS‟. Such a patient will not only note

down the spelling, but would also compare it with the

product sold to him.

12. The mark „NIFTAS‟ and „NIFTRAN‟, in my view,

cannot be said to be phonetically or visually similar. The

only similarity in the two marks is use of the letters "NIFT"

which are common to both of them, but the pronunciation

of „NIFTAS‟ is altogether different from that of „NIFTRAN‟.

Visually also, „NIFTAS‟ and „NIFTRAN‟ cannot be said to be

similar marks.

13. In an affidavit filed on 03rd August, 2011,

defendant No. 1 has claimed that there are many drugs in

the market other than „NIFTRAN‟ and „NIFTAS‟, which have

„NIF‟ as prefix or suffix. These drugs include „NIFTY‟

manufactured by Wanbury and „NIFUTIN‟ by IPCA Labs.

There is no evidence of the plaintiff having sought any

injunction against use of the trademarks „NIFUTIN‟ by IPCA

Labs and „NIFTY‟ by Wanbury. As noted earlier, defendant

No. 1 applied for registration of the trademark „NIFTAS‟,

claiming user since 10th March, 2008 and the proposed

trademark was advertised in Trade Mark Journal on 16th

April, 2009. Admittedly, no objection was filed by the

plaintiff against the registration of the trademark „NIFTAS‟

in favour of the plaintiff. There is no explanation from the

plaintiff for not opposing the registration of the mark

„NIFTAS‟ in respect of the same drug which it had been

selling under the trade name „NIFTRAN‟. The inaction on the

part of the plaintiff gives rise to the inference that it was not

really bothered about use of the trademark „NIFTAS‟ by

defendant No. 1, „NIFTY‟ by Wanbury and „NIFUTIN‟ by IPCA

Labs. It would be appropriate to note here that „NIFTY‟ was

launched in October, 2008, whereas „NIFUTIN‟ was

launched in August, 2010.

14. The case of defendant No. 1 is that the drug

„NIFTAS‟ was launched by it in January, 2009 and,

therefore, having been filed in August, 2009, the suit suffers

from laches, delay and estoppel on the part of the plaintiff,

which is fatal to grant of interlocutory injunction. In support

of his contention in this regard, the learned counsel for the

defendant No. 1 has relied B.L. And Co. And Others vs

Pfizer Products Incl. 2001 PTC 797 (DEL) (DB), where a

Division Bench of this Court quoted the following extract

from THE LAW OF PASSING OFF by Christopher Wadlow:

"Delay in applying for interlocutory reliefs is a very serious matter. As a rule of thumb, delay of up to about a month, or perhaps six weeks, generally has no adverse effect on an inter partes application and delay of up to twice that period need not be fatal if it can be explained and the plaintiff's case is otherwise strong. On an ex parte

application even delay of a few days can be critical. Unjustified delay of more than a few months is almost always fatal to the plaintiff's case, even though delay of this order has no effect on the plaintiff's rights at trial. Unlike many of the issues which can arise on motion, the existence of delay does not normally admit or much argument. Delay, if present, is therefore a short, safe and simple basis for refusing relief. This means that applications for interlocutory injunctions in which there is significant delay are unlikely even to get as far as a hearing, and those that do are quite likely to be refused without going into the merits or the balance of convenience."

15. He has also relied upon Power Control

Appliances vs Sumeet Machines Pvt. Ltd 1995 PTC 165,

wherein Supreme Court extracted the following observations

made in the case of K.E. Mohammed Aboobacker v.

Nanikram Maherchand and another 1957 (II) Madras Law

Journal 573:

"It is necessary that an application for interlocutory injunction should be made immediately after the plaintiff becomes aware of the infringement of the mark. Improper and unexplained delay is fatal to an application for interlocutory injunction. The interim injunction will not be granted if the plaintiff has delayed interfering until the defendant has built up a large trade in which he has notoriously used the mark."

The legal notice to defendant No. 1 is alleged to

have been given by the plaintiff for the first time on 20th

April, 2009 though the case of the defendant No. 1 is that

the notice received by it for the first time was of 26th May,

2009. The plaint does not disclose the exact date when the

plaintiff came to know about launch of the drug „NIFTAS‟ by

the defendant, though it has been alleged in para 23 of the

plaint that the cause of action first arose in April, 209 when

the plaintiff learnt about the offending activities of the

defendant. Assuming that the plaintiff came to know of the

launch of this drug only in April, 2009, though the case of

defendant No. 1 is that being a large company and having a

large market force, the plaintiff must have become aware of

launch of „NIFTAS‟ as soon as it was introduced in the

market in January, 2009, there is delay of more than three

months in filing the present suit; the same having been filed

only on 10th August, 2009. There is no explanation from the

plaintiff as to why it did not come to the Court for grant of

injunction soon after sending the notice dated 20 April,

2009 to defendant No. 1. This delay, coupled with the other

facts and circumstances of the case, including the material

difference in the packaging, price and form of the drug and

the phonetic dissimilarity between the mark „NIFTAS‟ and

„NIFTRAN‟, in my view, is sufficient to deny ad interim

injunction to the plaintiff.

16. Another reason which persuades me to deny

injunction to the plaintiff is that more than two years have

already passed since this suit was instituted. In the facts

and circumstances of this case, the Court did not deem it

appropriate to grant any ex parte injunction to the plaintiff.

The sale of „NIFTAS‟ by defendant No. 1 which was Rs 70.18

lakh when the written statement was filed, had increased to

Rs 6.86 crore on 03rd August, 2011, as is stated in the

affidavit of Mr C.K. Yagnik (Head Legal of defendant No.1-

company). In the facts and circumstances of this case, it

would not be appropriate to grant injunction against use of

the trademark „NIFTAS‟ at this stage, particularly when the

learned senior counsel appearing for defendant No. 1 fairly

stated, during the course of arguments, that defendant No.

1 was ready to keep accounts of the sales made and profit

earned by defendant No. 1 from the manufacture and sale of

the drug „NIFTAS‟ and was also willing for a fast-track trial

of the case by appointing a Local Commissioner at the cost

of defendant No. 1, to record evidence of the parties in a

time-bound manner.

17. The learned counsel for the plaintiff has relied

upon Wyeth Holdings Corp vs Sun Pharmaceuticals 2004

(28) PTC Page 423( Bom). In that case the plaintiff was using

the mark PACITANE, whereas the defendant was using the

mark PARKITANE. Both the products were medicinal

preparation for treatment of Parkinson‟s disease. Noticing

that in the two marks, one has the prefix PAC, whereas the

other had the prefix PARK, suffix being the same in both the

cases, the Court was of the view that the mark PARKITANE

was deceptively similar to the mark PACITANE. A perusal of

the judgment does not indicate that the trademark being

used by the defendant in that case was a registered

trademark. Moreover, the mark PACITANE definitely

appears to be phonetically similar to the PARKITANE. This

judgment, therefore, is of no help to the plaintiff.

18. The learned counsel for the plaintiff has also relied

upon the decision of this Court in the case of Wyeth

Holdings in support of his contention that mere delay to

initiate legal proceedings would not disentitle the plaintiff to

the interim injunction. A perusal of the judgment would

show that the plea taken in the case of Wyeth was of

infringement of the trademark, whereas the case of the

plaintiff before this Court is essentially based on passing off,

since the trademarks of both the parties are registered

trademarks. Moreover, in the case of Wyeth, though the

defendant had applied for registration of their trademark, it

could not have been in the knowledge of the plaintiff since it

was not published. However, in the case before this Court

not only the mark of the defendant No. 1 was duly

published in Trademark Journal and even the drug was

introduced in the market in January, 2009, but, the suit

came to be filed only in August, 2009.

19. In his compilation, the learned counsel for the

plaintiff has also referred to Novartis AG vs CREST

Pharma Pvt Ltd & Ors, 2009 (41) PTC Page 57, Corn

Product Refining Co vs Shangrila Foods Products Ltd,

AIR 1960 SC Page 142, Wyeth Holdings Corp vs Sun

Pharmaceuticals, 2004 (28) PTC Page 423( Bom), Pfizer

Pharmaceuticals vs Intas Pharmaceuticals, 110 (2004)

DLT Page 732, Anglo French Drugs Co vs MS Belco

Pharma, AIR 1984 P & H 430, Ranbaxy Labs Ltd vs Dua

Pharmaceuticals, 1988 PTC 273, Alcon Lab (I) Pvt Ltd vs

Ajanta Pharma Ltd, 2009 (39) PTC 489 (Bom),

Strassenburg Pharmaceuticals Ltd vs Himalaya Drug Co

& Ors, 2002 (24) PTC 441 (Cal), Indian Shaving Products

Ltd vs Gift Pack & Ors, 1998 PTC (18) Pg 698, Wyeth

Holdings Corp & Ors vs Burnet Pharmaceuticals, 2008

(36) PTC 478 (Bom), Midas Hygiene Ind Pvt Ltd vs Sudhir

Bhatia & Ors, 2004 (28) PTC 121 SC, Swarn Singh vs M/s

Usha Industries, 1986 PTC 287 (Del), Century Traders vs

Roshan Lal Duggal & Co, AIR 1978 Del 250, Consolidated

Food Corp vs Brandon & Co, AIR 1965 BOM 35,

Amritdhara Pharmacy vs Satydeo Gupta, PTC ( Supp) (2)

Page 1 (SC).

20. In the case of Novartis AG (supra), the trademark

of the plaintiff was SECEF, whereas the mark of the

defendant was CECEF and the two marks found to be

deceptively similar, particularly on account of phonetic

similarity. In the case of Corn Products (supra), the

plaintiff‟s mark was GLUCOVITA, whereas the mark of the

defendant was GLUVITA and there was strong phonetic

similarity in the two marks. Moreover, in that case, the

defendant had applied for registration of the mark GLUVITA,

whereas in the case before this Court, the defendant No. 1

has not only been granted registration of the mark „NIFTAS‟,

it has actually been using the same. In the case of Pfizer

Pharmaceuticals (supra), plaintiff‟s mark was LIPITOR,

whereas the defendant‟s mark was LIPICOR and the two

marks were phonetically similar. In the case of Anglo

French Drugs Co (supra), the mark of the plaintiff was

BEPLEX, whereas the mark of the defendant was BELPLEX,

again a case of phonetic similarity. Similar was the position

in the case of Ranbaxy (supra), where the mark of the

plaintiff was CALMPOSE whereas the mark of the defendant

was CALMPROSE. The case of Alcon Lab (I) Pvt Ltd (supra)

was the case of infringement. The case of Strassenburg

Pharmaceuticals (supra) was a case of infringement as well

as passing off and the plaintiff was using the mark EFACID,

whereas the defendant was using EFCID-CA. Unlike the

case before this Court, the trademark of the defendant was

not a registered trademark. In the case of Indian Shaving

Products Ltd (supra), the plaintiff was using the trademark

DURACELL ULTRA, whereas the defendant was using the

mark ULTRA, thereby borrowing whole of the 2nd word used

by the plaintiff as its trademark. In the case of Wyeth

(supra), the plaintiff‟s mark FOLVITE, whereas the

defendant had applied for registration of the mark FOLV, by

lifting the first four letters of the trademark of the plaintiff.

The case of Midas Hygiene Ind Pvt (supra) was the case of

passing off as well as of infringement. The mark of the

plaintiff was LAXMAN REKHA, whereas the mark of the

defendant was MAGIC LAXMAN REKHA. The mark of the

defendant thus incorporated the whole of the mark of the

plaintiff in that case. In the case of Swarn Singh, (supra)

both the parties were using the same mark USHA though in

respect of different products. In the case of Century

Traders (supra), both the parties were using the mark

RAJARANI with the only difference that the defendant had

put a hyphen between RAJARANI. In the case of

Amritdhara Pharmacy, (supra), the plaintiffs mark was

AMRITDHARA, whereas the mark of the defendant was

LAXMANDHARA and both the marks, therefore, were

phonetically similar.

None of these judgments was actually referred

during arguments. In any case, I do not find any such

proposition of law in any of these judgments which would

persuade me to take a view favourable to the plaintiff.

21. It was also contended by the learned counsel for

the plaintiff that defendant No. 1 is also selling the same

drug under another trademark. This, to my mind, would

make no difference to the merits of the case since the use of

the other mark was started by defendant No. 1 only after

receipt of notice from the plaintiffs and appears to be a

precautionary step to build an alternative mark in case the

plaintiff is able to obtain an injunction against use of the

mark „NIFTAS‟.

22. For the reasons given in the preceding paras,

defendant No. 1 is directed to keep complete and accurate

account of the sales and profit made by it from the drug

sold under the name „NIFTAS‟. The accounts since launch of

the drug till 31st March, 2011 will be filed by defendant No.

1 within two weeks, whereas the accounts for the

subsequent financial year(s) would be filed within three

months of the closing of the financial year. It is also

directed that defendant No. 1 will not launch drug in

question in packaging other than „ALU-ALU‟ (blister pack),

without prior permission of the Court. No other injunction

is granted to the plaintiff.

The application stands disposed of in terms of this

order.

CS(OS) 1457/2009

The following issues are framed on the pleadings of

the parties:-

1. Whether this Court has territorial jurisdiction to

try the present suit? OPP

2. Whether defendant No. 1 is passing off its product

as that of the plaintiff by using the trademark „NIFTAS‟?

OPP

3. Whether the plaintiff is entitled to the injunction

claimed by it? OPP

4. Whether the plaintiff is entitled to rendition of

accounts, claimed by it? OPP

5. Whether the plaintiff is entitled to delivery up of

the infringing packaging material, etc.? OPP

6. Relief.

No other issue arises or is claimed

Affidavit by way of evidence be filed within two

weeks. Shri Brajesh Kumar, former Additional District &

Sessions Judge is appointed as Local Commissioner to

record the evidence of the parties. The fee of the Local

Commissioner is fixed at Rs 50,000/-, which shall be paid

by defendant No.1.

The parties are directed to appear before the Local

Commissioner on 19 th September, 2011 for fixing the dates

for cross-examination of the witnesses of the plaintiff.

(V.K. JAIN) JUDGE AUGUST 23, 2011 vn/'sn'/bg