Delhi High Court
Pfizer Products, Inc. vs G.S. Pharmaceuticals Pvt. Ltd & ... on 12 August, 2013
Author: Jayant Nath
* IN THE HIGH COURT OF DELHI AT NEW DELHI
Date of decision: 12.08.2013
+ CS (OS) 1376/2011
PFIZER PRODUCTS, INC. ... Plaintiff
Through Mr. Sahil Sethi, Adv.
Versus
G.S. PHARMACEUTICALS PVT. LTD & ANR. ... Defendant
Through None.
CORAM:
HON'BLE MR. JUSTICE JAYANT NATH
JAYANT NATH, J.
1. In the present suit the defendants are ex parte. They were duly served
and proceeded ex parte vide order dated 19.7.2012. Learned counsel
for the plaintiff gives up prayer 'b'. He submits that regarding prayer
'c' some nominal damages may be awarded.
2. The plaintiff has filed the present suit seeking a decree for permanent
and mandatory injunction for infringement of registered Trade Mark
by the Defendant and for claiming all rights in their registered Trade
Mark.
3. It is the contention of the plaintiff that the plaintiff is a global research
oriented pharmaceutical company. The plaintiff contends to be
world's leading healthcare company doing business in four segments-
pharmaceutical, consumer, nutritional and animal.
4. It is the contention of the plaintiff that in the year 1998, they launched
their product 'VIAGRA' (Sildenafil Citrate) for the treatment of male
erectile dysfunction. A copy of the U.S. Food and Drug
Administration approving their new drug has been placed on record. It
is the contention of the plaintiff that their registered trade mark
'VIAGRA' is a coined word and has no denotative meaning. The
plaintiff further contends that as part of their marketing strategy, the
plaintiff adopted a unique and unusual colour and shape for its
product, namely, a distinctive blue diamond- shaped tablet. A sample
of the product has been placed on record. The plaintiff asserts that the
unique and distinctive combination of blue colour and diamond shape
of its product is an inherently distinctive trade dress. Further, the
plaintiff contends that the consuming public and the trade associate
this trade dress as a product of the plaintiff company.
5. The plaintiff states that its product VIAGRA has attracted enormous
media attention, has been published in magazines, newspapers in
India and internationally and has also been discussed in popular TV
programs. The plaintiff contends that their product has also been
discussed at length in a number of medical books, journals and
magazines. It is the contention of the plaintiff that due to the large
publicity and marketing it had a reputation and goodwill in relation to
their trade mark VIAGRA even before the launch of the product in
India on 18th December, 2005. The annual sales of the impugned
product starting from 1998 to 2010 running into billions are provided
in para 7 of the plaint.
6. It is the contention of the plaintiff that their trade mark VIAGRA has
been registered or is pending registration in more than 150 countries
and the distinctive three- dimensional blue diamond-shaped tablet is
also a registered trade mark in various countries details of which are
provided in para 9 of the plaint. The plaintiff states that 'VIAGRA' is
a registered trade mark in India since 18.07.1996 as given in para 8 of
the plaint. True copy of the Registration Certificate is placed on
record and has been continuously and uninterruptedly in India since
2005.
7. It is the contention of the plaintiff that defendant no. 1 appears to be
an entity engaged in the business of manufacturing and selling
pharmaceutical products and defendant no. 2 appears to be an entity
responsible for marketing pharmaceuticals manufactured by defendant
no. 1. It is the contention of the plaintiff that in April, 2011, the
plaintiff discovered that a mark 'V-GRA' was used for a sildenafil
citrate product, which is an identical product with same uses as that of
defendants product VIAGRA.
8. The plaintiff contends that not only the defendants have used the mark
'V-GRA' which is confusingly similar to plaintiff's registered trade
mark VIAGRA but defendants have also adopted a tablet colour and
shape that is deceptively similar to the trade dress of the plaintiff. It is
the contention of the plaintiff that the defendants sought to establish a
connection or association with the plaintiff and to misappropriate the
reputation and goodwill of the plaintiff. The impugned product, along
with the box and blister packaging, purchased by the plaintiff, is
placed on record.
9. In view of the averments made in the plaint and the evidence by way
of affidavit filed by the plaintiff it is clear that the plaintiff's mark
VIAGRA is registered in India since 1986. The plaintiff is also the
proprietor of the said trademark by virtue of priority and adoption and
continuance of extensive use. The plaintiff has also proved that its
blue diamond-shaped tablet's trade dress is distinctive and the
plaintiff has rights in the same. The adoption of the mark V-GRA is
clearly deceptively similar to the plaintiff's deceptively similar
trademark VIAGRA. The adoption of the tablet, colour and shape by
the defendant which is deceptively similar to the plaintiff's inherently
distinctive blue diamond shaped tablet, trade dress is also in violation
of the rights of the plaintiff.
10.In view of the above, a decree is passed in favour of the plaintiff and
against the defendant for permanent injunction restraining the
defendants, their directors, distributors etc. from manufacturing,
marketing, offering for sale etc. or advertising etc. under the mark V-
GRA or any other mark which is identical to or deceptively similar to
the plaintiff's trademark VIAGRA or from using a tablet of colour
and shape i.e. deceptively similar to the trade dress of the plaintiff's
product i.e. the distinctive blue diamond shape tablet trade dress.
Decree of Rs.5 lacs as damages is also passed in favour of the plaintiff
and against the defendant. The plaintiff shall also be entitled to costs.
JAYANT NATH, J.
AUGUST 12, 2013
sh
