Merck Kgaa And Anr. vs Eaco Labs Ltd.
2013 Latest Caselaw 885 Del

F-3A
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*    IN THE HIGH COURT OF DELHI AT NEW DELHI

+      CS(OS) 1203/2008

       MERCK KGaA AND ANR.               ..... Plaintiffs
                   Through: Ms. Anju Aggarwal, Advocate.

                     versus

       EACO LABS LTD.                                     ..... Defendant
                    Through: None.

%                                 Date of Decision: 21st February, 2013.

CORAM:
HON'BLE MR. JUSTICE MANMOHAN
                                 JUDGMENT

MANMOHAN, J (Oral):

1. Present suit has been filed for permanent injunction to restrain infringement and passing off of plaintiffs' mark IMABEQ as well as rendition of accounts, damages and delivery. The prayers in the plaint are reproduced hereinbelow:-

"a. a decree for permanent injunction restraining the defendants, by himself, his servants, agents assigns etc. from manufacturing, selling, offering for sale, advertising, directly or indirectly dealing in pharmaceutical preparations under the trademark IMA or any other trade mark identical, deceptively and/or confusingly similar to the trade mark IMABEQ so as to infringe plaintiffs' trade mark Registration no.1300766.

b. A decree for permanent injunction restraining the defendants, by himself, his servants, agents, assigns, etc. from manufacturing selling, offering for sale, advertising, directly or indirectly dealing in

pharmaceutical and medicinal preparations under the trade mark IMA or any other trade mark identical, deceptively and/or confusingly similar to the trade mark IMABEQ of the plaintiff as may lead to passing off their business for those of the Plaintiffs. c. A decree for delivery of all the infringing goods as complained of herein and all blocks, dies and all such articles employed by Defendants in applying the trademark IMA to the offending goods to an authorized representative of the plaintiffs for destruction/erasure.

d. An order for rendition of accounts of profit illegally earned by the defendant and a decree for an amount so found due or in the alternative, a decree of Rs. 20 lacs towards damages including conversion damages may be passed in favour of the plaintiffs and against the defendant.

       e.      An order for costs in the proceedings.
       f.     Any other order as this Hon'ble Court deems fit and proper in
       the facts and circumstances of this case."

2. Learned counsel for the plaintiffs fairly states that she is confining her prayers only to prayers (a), (b) and (e) of the plaint.

3. The relevant facts of the present case are that the plaintiff No. 1 is the registered proprietor for the trademark IMABEQ vide registration no. 1300766 dated 05th August, 2004 in class 5 for Pharmaceutical and Medicinal preparations. Plaintiff No. 2 is the Indian Subsidiary of plaintiff no. 1 which has been using the trademark IMABEQ in India.

4. On 25th October, 2005, defendant filed an application with the Trademark Registry for using the mark IMA with respect to pharmaceutical products.

5. It is stated that the plaintiffs came to know about the defendant's intention to use the trademark IMA through the defendant's advertisement in Trademark Journal No. 1378 regular dated 16th October, 2007 which has

been filed along with list of documents at page No. 38.

6. Upon the present suit being filed, this Court on 25th January, 2010 granted ad-interim injunction and restrained the defendant, its partners, officers, agents and assigns from manufacturing or selling its product under the trademark IMA or any other name deceptively similar to the plaintiffs' trademark IMABEQ.

7. On 25th January, 2010, the defendant was proceeded ex parte.

8. Thereafter the plaintiffs filed evidence by way of affidavit of Mr. H.U. Shenoy who was working as Company Secretary with the plaintiff No. 2-company. In his evidence, the witness exhibited seven documents.

9. During the course of arguments, learned counsel for the plaintiffs relied upon the judgment of the Bombay High Court in Anglo-French Drugs and Industries Ltd. Vs. Eisen Pharmaceutical Company Pvt. Ltd., 1998 PTC 18 as well as this Court's judgment in Glaxo Group Ltd. & Anr. Vs. R.A.S. Mani Iyer & Anr., 2004(2) CTMR 13 (Delhi).

10. Upon a perusal of the evidence on record including the documentary evidence, this Court is of the view that the plaintiffs have proved their case. It is pertinent to mention that whatever evidence has been led by the plaintiffs in the present case has gone unrebutted and unchallenged.

11. This Court has also perused judgments in Anglo-French Drugs and Industries Ltd. (supra) as well as Glaxo Group Ltd. & Anr. (supra) and is of the opinion that the ratio in the aforesaid decisions is squarely applicable to the facts of the present case.

12. Consequently, a decree of permanent injunction is passed and the defendant, by itself, her servants, agents assigns etc. are restrained from manufacturing, selling, offering for sale, advertising, directly or indirectly

dealing in trademark IMA or any other trade mark identical, deceptively and/or confusingly similar to IMABEQ. The defendants are also restrained by a permanent injunction from infringing and passing off its preparation under the trademark IMA or IMABEQ.

13. The suit is decreed in terms of prayers (a), (b) and (e) of the plaint. The Registry is directed to draw up the decree sheet accordingly.

MANMOHAN, J FEBRUARY 21, 2013 js