Delhi High Court
Merck Kgaa And Anr. vs Mrs. Kusumben K. Bhagat Et.Al. on 10 January, 2013
Author: Manmohan
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* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(OS) 1202/2008
MERCK KGaA AND ANR. ..... Plaintiffs
Through Ms. Anju Aggarwal, Advocate
versus
MRS. KUSUMBEN K. BHAGAT et.al. . ..... Defendants
Through None
% Date of Decision: 10th January, 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 EMADINE 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 ENAMIDE or any
other trade mark identical, deceptively and/or confusingly similar
thereto;
b. A decree for permanent injunction restraining by himself his
servants, agents, or otherwise from manufacturer, selling, offer for
sale, advertising, directly or indirectly dealing in Pharmaceutical
and Medical Preparation under the Trademark ENAMIDE or any
other Trademark deceptively and or confusingly similar thereto, so
as to cause act of passing off of their preparation and for those of
the plaintiff.
c. A decree for delivery of all the impugned goods as
complained of herein and all blocks, dies and all such articles
employed by Defendants in applying the trademark ENAMIDE and
get up 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."
2. Learned counsel for the plaintiffs fairly states that she is confining her
prayers only to prayers (a) and (b) of the plaint.
3. The relevant facts of the present case are that the plaintiff no. 1 is the
registered proprietor for the trademark EMADINE vide registration no.
628838 dated 24th May, 1994 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 EMADINE in India since 1998.
4. On 22nd August, 2005, defendant filed an application with the
Trademark Registry for using the mark ENAMIDE with respect to
pharmaceutical products.
5. It is stated that the plaintiffs came to know about the defendant's
intention to use the trademark ENAMIDE through the defendant's
advertisement in Trademark Journal no. 1383 regular dated 1st January, 2008
which has been filed along with list of documents at page no. 40.
6. Upon the present suit being filed, this Court on 3rd July, 2008
restrained the defendant, its partners, officers, agents and assigns from
manufacturing or selling its product under the trademark ENAMIDE or any
other name deceptively similar to the plaintiffs' trademark EMADINE.
7. On 4th May, 2009, the defendant was proceeded ex-parte as none had
appeared for the defendant despite service. By the aforesaid order, ex-parte
injunction order dated 3rd July, 2008 was made absolute.
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 ten 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 herself, her servants, agents assigns etc. are restrained from
manufacturing, selling, offering for sale, advertising, directly or indirectly
dealing in trademark ENAMIDE or any other trade mark identical,
deceptively and/or confusingly similar to EMADINE. The defendants are
also restrained by a permanent injunction from passing off its preparation
under the trademark ENAMIDE or EMADINE.
13. The suit is decreed in terms of prayers (a) and (b) of the plaint. The
Registry is directed to draw up the decree sheet accordingly.
MANMOHAN, J
JANUARY 10, 2013
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