Delhi High Court
Pfizer Products, Inc vs Mittal Nathalal Patel & Ors. on 6 August, 2014
$~22.
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Date of Decision : August 06, 2014
+ CS(OS) 3271/2012
PFIZER PRODUCTS, INC ..... Plaintiff
Through : Mr.Julian George, Adv.
versus
MITTAL NATHALAL PATEL & ORS. ..... Defendants
Through : Mr.Rajeshwar H., Adv.
CORAM:
HON'BLE MR. JUSTICE G.S.SISTANI
G.S.SISTANI, J. (Oral)
1. Plaintiff has filed the present suit for permanent injunction
restraining infringement of Trademark 'VIAGRA', passing off,
rendition of accounts, delivery up and damages against the
defendants.
2. Summons in the suit and notice in the application were issued on
16.11.2012. Defendants entered appearance on 17.12.2012 and
sought time to file the written statement. As the Defendants did
not file the written statement, on 1.4.2013, costs of Rs 10,000
was imposed on Defendants and their application under Order
VIII Rule 1 CPC was allowed. On 24.9.2013 it was submitted by
counsel for the Defendants that Defendants have discontinued
manufacturing and marketing the products under the
Trademark/name 'FILAGRA' and parties were exploring the
possibility of a settlement. None appeared for Defendants on
11.7.2014 and on 22.07.2014 counsel for the Defendant made a
statement that she has not received any instructions from the
Defendants. Counsel for the plaintiff prays that the defence of
the defendant be struck off and a decree may be passed. Since no
written statement has been filed despite opportunities granted nor
cost imposed vide order dated 1.4.2013 paid, the defence of the
defendant is struck off and the plaintiff is entitled to a decree
under Order VIII Rule 10 CPC.
3. The Plaint is duly supported by the affidavit of Ms Anamika
Gupta, Constituted Attorney of the Plaintiff. It has been averred
in the plaint that the plaintiff is a wholly owned subsidiary of
Pfizer Inc and the term Plaintiff shall hereinafter include Pfizer
Inc, its subsidiaries, affiliates and sister concerns. It is also been
averred that the Plaintiff is a global research-oriented
pharmaceutical company and has been responsible for
discovering and developing innovative, value-added products
that improve the quality of life of people around the world and
help them enjoy longer, healthier and more productive lives. It
has further been averred that the Plaintiff, as one of the world's
leading healthcare companies, markets several drugs that are sold
under different brand names owned exclusively by the Plaintiff.
The Plaintiff has invested enormous sums of money in its
aforesaid activities and in the process has created a global
reputation for the high quality and efficacy of its pharmaceuticals
and that the Plaintiff has the four business segments -
pharmaceutical, consumer, nutritional and animal --and its
products are available in more than 150 countries.
4. Further, as per the Plaint, in the year 1998, the Plaintiff launched
VIAGRA (Sildenafil Citrate), a revolutionary product for the
treatment of male erectile dysfunction (hereinafter referred to as
'ED'). A copy of the approval letter dated March 27, 1998,
which was issued to the Plaintiff by the U.S. Food and Drug
Administration [FDA], approving its new drug VIAGRA and a
list of the drugs approved in March 1998 made available to the
public by the FDA wherein VIAGRA have been filed along with
the plaint. It may be noted that the Plaintiff's trademark
"VIAGRA" is a fanciful and coined word having no denotative
meaning.
5. It has further been averred in the plaint that as a part of its
marketing strategy, the Plaintiff decided to adopt a unique and
unusual colour and shape for its VIAGRA product, namely, a
distinctive blue diamond-shaped tablet and, consequently, the
unique and distinctive combination of blue colour and diamond
shape of the Plaintiff's VIAGRA product is an inherently
distinctive trade dress (hereinafter the "blue diamond-shaped
tablet trade dress"). The consuming public and the trade associate
the blue diamond tablet trade dress as a product of the Plaintiff
Company alone.
6. It has also been averred that the product VIAGRA has attracted
enormous media attention, including both a cover story in the
Newsweek magazine and discussions in popular TV programs.
The FDA approval in the U.S. in March 1998 was also widely
covered in the media, including front-page coverage in the New
York Times the following day and feature articles in other major
publications such as USA Today. It has further been averred that
by virtue of this extensive publicity and the post-approval
advertising and promotion of Plaintiff, the trademark "VIAGRA"
has become famous and well known throughout the world as
designating and connoting the Plaintiff's brand of oral therapy
for ED.
7. It has further been averred in the plaint that the Indian magazine
'Business Week' dated August 4 2003, carried a research paper
produced by Interbrand, regarding a survey conducted by them
upon the Top 100 brands in the world. The Plaintiff featured at
the 28th position of the said list. It has also been averred that the
comments next to the Plaintiff's name are "A master acquirer and
marketer, it leveraged a stable of top selling drugs that includes
LIPITOR and VIAGRA, the world's sales leader". The
Interbrand survey carried in the Business Week August 9 - 16,
2004 edition, places the Plaintiff at the 29th position, with the
following words describing the company and its products: "The
pharma industry's powerhouse, with 11 products each expected
to top $ 1 Billion in annual sales this year.' The same survey
valued the Pfizer brand at US $ 10.635 Billion for the year 2004.
It has further been averred that the same survey of the year 2005
and 2006 places the Plaintiff at the 31st and 38th position,
respectively.
8. It has also been averred in the plaint that apart from extensive
coverage in the Indian press, the trademark "VIAGRA" has also
been extensively covered in many major international magazines,
which are widely circulated and read in India as well. It has
further been averred that the product VIAGRA has been
discussed at length in a number of medical books, journals and
magazines including Newsweek, Fortune, Money, Business
Week, Forbes, The Associated Press, Dow Jones News Service,
The Times of London, Financial World, New York Times, and
USA Today. These books, journals and magazines are also
circulated and read by persons, including medical professionals,
in India. It has also been averred that the overwhelming
reputation and goodwill in relation to the trademark "VIAGRA"
had therefore spilled over into India even prior to launch of the
VIAGRA product in India, on 18th December, 2005. The
documents/extracts reflecting the reputation and goodwill of the
Plaintiff's trademark "VIAGRA" have been filed along with the
plaint.
9. Further, as per the plaint the annual worldwide sales figures of
VIAGRA till the filing of this suit are as follows:
YEAR Worldwide Revenues
million US Dollars
1998 (Year 1) 788 million
1998 (Year 2) 1.016 billion
2000 (Year 3) 1.344 billion
2001 (Year 4) 1.518 billion
2002 (Year 5) 1.735 billion
2003 (Year 6) 1.879 billion
2004 (Year 7) 1.678 billion
2005 (Year 8) 1.645 billion
2006 (Year 9) 1.657 billion
2007 (Year 10) 1.764 billion
2008 (Year 11) 1.934 billion
2009 (Year 12) 1.892 billion
2010 (Year 13) 1.928 billion
2011 (Year 14) 1.981 billion
It
RUNNING TOTAL 22.759 billion has been
averred
in the plaint that the aforesaid figures are taken from the Annual
Reports of the Plaintiff.
10. It has further been averred in the plaint that the trademark
"VIAGRA" has been registered and/or is pending registration in
more than 150 countries around the world and the plaintiff's
trademark "VIAGRA" is registered in India, since 18.07.1996,
details of which are as under:
Trade Mark Registration Class Goods
Number
VIAGRA 710135 5 Pharmaceutical
compound for
I treating erectile
dysfunction
t
has been averred in the plaint that the said registration has been
renewed within time and is valid and subsisting. The legal
proceeding certificate pertaining to the trademark "VIAGRA"
has been filed along with the plaint.
11. Further, as per the Plaint, the Plaintiff has filed an application
for the registration in India as a trademark of the 3-dimensional
blue diamond-shaped tablet, and the same is pending registration.
In addition, the distinctive 3-dimentional blue diamond-shaped
tablet is a registered trademark in the following countries:
Algeria, Argentina, Australia, China, Colombia,
Cyprus, Czech Republic, Ecuador, Egypt, El Salvador,
Guatemala, Hungary, Indonesia, Israel, Latvia, Libya,
Malta, Mexico, Morocco, Nicaragua, O.A.P.I.,
Panama, Paraguay, Philippines, Romania, Russia,
Saudi Arabia, Slovak Republic, Slovenia, South
Africa, South Korea, Taiwan, Ukraine, United Arab
Emirates, United States, and Venezuela. Copies of the
aforesaid registration certificates are filed along with
the present proceedings.
Whereas, trade mark applications are pending in respect of
the 3-dimensional blue diamond-shaped tablet in the following
countries:
Benelux, Brazil, Canada, Croatia, Dominican
Republic, Estonia, India, Japan, Malaysia, Thailand
and Tunisia.
12. It has further been averred in the plaint that since 2005, the
trademark "VIAGRA" and the distinctive blue diamond-shaped
tablet trade dress have continuously and uninterruptedly been
used by the Plaintiff in India and the same are recognized by
consumers and the trade as a product originating from the
Plaintiff alone. In addition, the Plaintiff has vigilantly initiated
appropriate proceedings to defend its statutory and common law
rights in the mark "VIAGRA" and the distinctive blue diamond-
shaped tablet trade dress, and Indian courts have upheld the
statutory and common law rights of the Plaintiff in the same.
13. Further, as per the plaint, in April 2012, the Plaintiff was alerted
to trademark application nos. 2315090 and 2315091 for labels
containing the mark "FILAGRA" in class 5, filed without any
territorial restrictions, in the name of the Defendant No. 1. Upon
conducting investigations, the Plaintiff learnt that the Defendant
No.1 is manufacturing and selling sildenafil citrate products
under the mark FILAGRA, through the Defendant No.2 entity.
The Plaintiff further learnt that the Defendant No. 2 is carrying
out the aforesaid activity in active concert with the Defendant
No. 3.
14. It has been averred in the plaint that earlier in August 2011, the
Plaintiff instituted suit proceedings, being CS (OS) No. 2027 of
2011, alleging trademark infringement and passing off against
the Defendant No.3, which was manufacturing and selling
sildenafil citrate products under the mark "VILAGRA" and had
also imitated the blue diamond shaped tablet trade dress of the
Plaintiff's VIAGRA. The suit was thereafter, settled between the
Plaintiff and the Defendant No. 3 and decreed through order
dated 14th December 2012, in terms of the joint application under
Order 23 Rule 3 of the Code of Civil Procedure, 1908, filed in
the said suit. It has further been averred that the Defendant No.3
has breached the decree of permanent injunction passed in CS
(OS) 2027 of 2011, by manufacturing/marketing the product
FILAGRA, in connivance with the Defendant No.1 and 2. Copies
of the compromise application and the order dated 14th
December, 2012 passed in CS (OS) 2027 of 2011 have been filed
along with the plaint.
15. It has further been averred in the plaint that the Plaintiff
addressed a legal notice dated 16th June, 2012, to the Defendant
No.2 through its counsels, calling upon the Defendant No. 2 to
cease and desist from infringing the trademark rights of the
Plaintiff. The Plaintiff also addressed a legal notice dated 21st
June, 2012, informing the Defendant No. 3 that its act of aiding
and abetting the infringing activities of the Defendant No.2
amounts to contempt of the decree passed by this Hon'ble Court
in CS (OS) 2027 of 2011 and also infringes the trademark rights
of the Plaintiff. Although the Defendant No. 3 admitted to its
involvement in the manufacture/marketing of the impugned
product FILAGRA, through its reply dated 3rd July, 2012, it
disclaimed any similarity in the nature of the product FILAGRA
with the Plaintiff's product VIAGRA. The Plaintiff through its
response dated 17th July, 2012, informed the Defendants that
both the Plaintiff's product VIAGRA and the Defendants'
FILAGRA are identical in nature as they contain the same active
ingredient, i.e. sildenafil citrate.
16. Further, as per the plaint, the Plaintiff further proposed to settle
the dispute amicably on the Defendants' furnishing undertakings
on their respective letterheads, stating that they shall forthwith
cease and desist from manufacturing/marketing their products
under the mark FILAGRA or any other mark deceptively similar
to the Plaintiff's trademark VIAGRA and not to adopt a tablet
colour and shape identical/similar to the distinctive blue diamond
shaped tablet trade dress of the Plaintiff's VIAGRA. The
Defendants however, in their reply dated 14th September, 2012,
baselessly insisted on an independent laboratory testing of the
products VIAGRA and FILAGRA. It became evident from the
unreasonable stand taken by the Defendants that they have no
real intention of settling this matter amicably.
17. I have heard counsel for the plaintiffs and carefully perused the
plaint which is duly supported by an affidavit as also the
documents which have been placed on record. Despite time
granted, the defendants have chosen not file the written statement
to controvert the averments made in the plaintiff. The plaintiffs
Trademark 'VIAGRA' is registered in India since 18.7.1996 and
stands registered in more than 150 countries. Plaintiffs have been
able to establish that since 2005, the Trademark 'VIAGRA' has
continuously and uninterruptedly been used by the plaintiff in
India and the same are recognized by consumers and the trade as
a product originating from the plaintiff alone. On the basis of
wide coverage received by the product of the plaintiff sold under
the trademark "VIAGRA", in many major Indian and
international magazines, medical books, journals etc, and also on
the basis of enormous turnover generated by the plaintiffs for
years under the trademark VIAGRA, the plaintiffs have been
able to prove that they have built up an unparallel reputation and
goodwill with respect to their trademark "VIAGRA".
18. In the case of Mind Gym Ltd.v. Mindgym Kids Library Pvt. Ltd
CS (OS) 1029/2013, decided on 21.03.2014, plaintiffs who were
carrying on business under the trade mark 'MIND GYM' sought
permanent injunction against the defendants restraining them
from infringing and/or passing off the plaintiff's rights by using
the trademark 'MINDGYM' as part of latter's corporate
name/trademark. Following observations were made by the
court:
"9........
(ii) In the case of Evergreen Sweet House Vs. Ever Green
and Ors., 2008 (38) PTC 325 (Del), it was observed as
under:
15. A mark, is said to be deceptively similar to
another (Section 2(1) (h), Trademarks Act, 1999) if it
so nearly resembles that other mark as to be likely to
deceive or cause confusion. Section 29(1) deals with
a situation where the defendant uses a mark, which is
identical or deceptively similar to that of the plaintiff,
in respect of the same goods or services, and in such
manner that it is likely that such use is taken as being
an use as a trademark. This amounts to infringement.
To fall within Section 29(1), the defendant's use of
the mark must be so that it is likely that the public
assumes that the said mark is used as a trademark.
Section 29(2) deals with three situations; one where
the defendants mark is identical to that of the plaintiff
and in respect of similar goods. Two, where the
marks are similar and in respect of goods which are
identical or similar. Three, the marks as well as the
goods are identical. Infringement does not take place
if only one of the three ingredients are satisfied; the
plaintiff has to prove that use by the defendant is
likely to cause confusion on the part of the public or
is likely to have an association with the registered
mark.
[Emphasis Supplied]
19. Having regard to the documents on record and comparing the
impugned trademark of Defendant 'FILAGRA', I am of the view
that the impugned Trademark of Defendant is deceptively similar
to the Plaintiff's well known trademark 'VIAGRA'. The
Defendant No. 3 merely replaced the alphabet 'V' in its earlier
restrained trademark VILAGRA with the alphabet 'F', which
does not in any way alter the overall similarity as compared to
the Plaintiff's well-known trademark 'VIAGRA'. The
Defendants have not only adopted a mark which is phonetically
as well as visually similar to the Plaintiff's trademark
"VIAGRA", but have also adopted a tablet colour and shape for
its product FILAGRA that is virtually identical to the trade dress
of VIAGRA, i.e., the distinctive blue diamond-shaped tablet
trade dress. In light of the adoption of a virtually identical mark
including virtually identical tablet colour and shape, the
Defendants' product FILAGRA would be easily mistaken or
passed off as the Plaintiff's product VIAGRA.
20. Also the malafides of the Defendants are writ large from the fact
that Defendant no. 3, despite of being restrained by the decree
passed in CS (OS) No. 2027 of 2011, is manufacturing/marketing
a product under the mark FILAGRA, which is virtually identical
to its earlier restrained mark VILAGRA, in active concert with
the Defendant No. 1 and the Defendant No. 2. Also, the manner
in which the Defendants have copied and imitated the Plaintiff's
blue diamond-shaped tablet trade dress clearly reflects that the
Defendants believe, recognize and acknowledge the reputation
and goodwill of Plaintiff and have made every effort to come as
close as possible to the Plaintiff's product VIAGRA for their
identical/similar sildenafil citrate tablets. Thus, plaintiffs have
established that the Defendants are causing infringement of rights
in the Trademark of the plaintiffs.
21. The plaintiff has also claimed damages on account of illegal
activities of the defendant along with delivery up of the goods
bearing the impugned trade mark, or any other deceptively
similar mark. The plaintiff has also prayed for rendition of
accounts of profits earned by the defendant on account of use of
the impugned trade mark.
22. In the case of Time Incorporated v. Lokesh Srivastava and Anr.,
2005 (30) PTC 3 (Del) apart from compensatory damages of Rs.5
lakhs, punitive damages have also been awarded. It would be
useful to reproduce paras 7 and 8 of the said judgment, which are
as under :-
"7. Coming to the claim of Rs.5 lacs as punitive and
exemplary damages for the flagrant infringement of the
plaintiff's trade mark, this Court is of the considered view
that a distinction has to be drawn between compensatory
damages and punitive damages. The award of compensatory
damages to a plaintiff is aimed at compensating him for the
loss suffered by him whereas punitive damages are aimed at
deterring a wrong doer and the like minded from indulging
in such unlawful activities. Whenever an action has criminal
propensity also the punitive damages are clearly called for
so that the tendency to violate the laws and infringe the
rights of others with a view to make money is curbed. The
punitive damages are founded on the philosophy of
corrective justice and as such, in appropriate cases these
must be awarded to give a signal to the wrong doers that law
does not take a breach merely as a matter between rival
parties but feels concerned about those also who are not
party to the lis but suffer on account of the breach. In the
case in hand itself, it is not only the plaintiff, who has
suffered on account of the infringement of its trade mark
and Magazine design but a large number of readers of the
defendants' Magazine 'TIME ASIA SANSKARAN' also
have suffered by purchasing the defendants' Magazines
under an impression that the same are from the reputed
publishing house of the plaintiff company.
8. This Court has no hesitation in saying that the time has
come when the Courts dealing actions for infringement of
trade marks, copy rights, patents, etc. should not only grant
compensatory damages but award punitive damages also
with a view to discourage and dishearten law breakers who
indulge in violations with impunity out of lust for money so
that they realize that in case they are caught, they would be
liable not only to reimburse the aggrieved party but would
be liable to pay punitive damages also, which may spell
financial disaster for them. In Mathias v. Accor Economi
Lodging Inc, the factors underlying the grant of punitive
damages were discussed and it was observed that one
function of punitive damages is to relieve the pressure on an
overloaded system of criminal justice by providing a civil
alternative to criminal prosecution of minor crimes. It was
further observed that the award of punitive damages serves
the additional purpose of limiting the defendant's ability to
profit from its fraud by escaping detection and prosecution.
If a tortfeasor is caught only half the time he commits torts,
then when he is caught he should be punished twice as
heavily in order to make up for the reason that it is very
difficult for a plaintiff to give proof of actual damages
suffered by him as the defendants who indulge in such
activities never maintain proper accounts of their
transactions who they know that the same are objectionable
and unlawful. In the present case, the claim of punitive
damages is of Rs.5 lacs only which can be safely awarded.
Had it been higher even this court would not have hesitated
in awarding the same. The Court is of the view that the
punitive damages should be really punitive and not flee bite
and quantum thereof should depend upon the flagrancy of
infringement." [See also Hero Honda Motors Limited v.
Rafiq Memon [2012 (52) PTC 449 (Del.)]; Gora Mal Hari
Ram Ltd. Vs. Ashique Exports [2012 (50) PTC 428 (Del.)];
Relaxo Rubber Limited and Anr. Vs. Selection Footwear
and Anr. [1999 PTC 578]."
23. I am also of the view that the plaintiff has been able to establish
a case for grant of damages. There is a larger public purpose
involved to discourage such parties from indulging in such acts
of deception and, thus, even if the same has a punitive element, it
must be granted. R.C. Chopra, J. has very succinctly set out in
Time Incorporated's case (supra) that punitive damages are
founded on the philosophy of corrective justice.
24. For the reasons stated above, the plaintiff has made out a case for
grant of decree as prayed in the plaint. Accordingly, the order
dated 06.08.2014 is confirmed and the suit is decreed in favour of
the plaintiff and against the defendants. Punitive damages against
Defendant No. 3 to the tune of Rs 4.00 lacs.
25. Decree sheet be drawn up accordingly.
(G.S.SISTANI)
JUDGE
AUGUST 06, 2014
dkb
