M/S Obsurge Biotech Ltd vs M/S Goodman Gilmans Life Sciences ...
2014 Latest Caselaw 6475 Del

*      IN THE HIGH COURT OF DELHI AT NEW DELHI

%                                Order delivered on: 4th December, 2014

+                             CS (OS) No. 2535/2012

       M/S OBSURGE BIOTECH LTD                                    ..... Plaintiff
                        Through                        Mr. Vikram Bhatia, Adv

                              versus

        M/S GOODMAN GILMANS LIFE SCIENCES PVT LTD & ANR.
                                            ....Defendants
                        Through       None

       CORAM:
       HON'BLE MR.JUSTICE MANMOHAN SINGH

MANMOHAN SINGH, J.

1. The plaintiff has filed a suit for permanent and mandatory injunction and damages for infringement of trademark, passing off, delivery up and rendition of accounts etc. against the defendants. Along with the suit, plaintiff also filed an application under Order 39 Rule 1 and 2 CPC being I.A.No. 15108/2012.

2. The suit along with said interim application was listed before Court on 22nd August, 2012. After hearing, detailed ex-parte order was passed restraining the defendants, its servants, agents, franchisees, representatives etc. from manufacturing, selling, distributing its medicinal preparation under the name of OSTILAX which is deceptively similar to the plaintiff's product OSLAX.

3. Upon service of interim order, the defendant appeared. However, no written statement was filed and accordingly the right to

file the written statement was closed vide order dated 7th November, 2013. In the meanwhile, the plaintiff also filed an application under Sections 2(b), 11& 12 of the Contempt of Courts Act, 1971 read with Section 151 CPC being CCP No.1/2013.

4. The original documents were filed by the plaintiff but no admission/denial of the said documents was conducted by the defendants. Even the defendants chose not to appear when the matter was taken up for the said purpose.

5. The case set up by the plaintiff in the plaint is that the plaintiff is a leading and renowned pharmaceutical company and is engaged in a very well established and highly reputed business of manufacturing and selling of medicines for human consumption through channel of distributors spread all across the country.

6. It is averred that plaintiff is a leading marketer, exporter and supplier of allopathic medicine, tablets, capsules, liquids, ointments and injections from India with various famous and well known brands and is a well recognized company in pharmaceutical and medicinal field.

7. The plaintiff is the registered proprietor of various other well known trademarks for medicinal and pharmaceutical preparations under Class 5 including a medicine (osmotic laxative) to treat constipation selling under the registered trademark OSLAX, details of which are given in para 6 of the plaint.

8. The plaintiff adopted the distinctive trademark OSLAX in February, 2007 and since then, the plaintiff has been continuously and exclusively using the trademark.

9. It is alleged that the word/trademark OSLAX has been coined and derived by the plaintiff from its end use/treatment of a specific disorder. The first two letters "OS" of the word Osmotic and the first three letters "LAX" of the word "Laxative" are joined together and coined as a distinctive trademark OSLAX.

10. The plaintiff's trademark has been promoted through advertisements in a well known pharmaceutical journal "Drug Today" all across the country and the annual promotional expenses of the plaintiff under the trademark OSLAX for the years 2007-2012 has been given in Para 14 of the plaint.

11. It is averred that by virtue of enviable reputation and goodwill the trademark OSLAX has acquired valuable recognition in India and the members of the public at large identify and associate OSLAX with the plaintiff.

12. It is the case of the plaintiff against the defendants that during the survey of the medicines in the market in Bhojeepura, Bareilly, Uttar Pradesh on 5th June, 2012, the plaintiff came across a medicinal product in a bottle bearing brand OSTILAX which is phonetically, linguistically, confusingly and deceptively similar to the plaintiff's registered trademark OSLAX. Thereafter the plaintiff on enquiry came to know that the defendant No.1 is marketing and selling and defendant No.2 is manufacturing an almost identical

position drug (for treatment of constipation) under the mark OSTILAX at various places in India.

13. It is alleged that the plaintiff on carrying out the public search of the defendant's trademark on Trademark Registry website, came to know that one Shri Chaman Singh Rana an ex-employee of the plaintiff while still in the service of the plaintiff company on 1st December, 2011 submitted an application bearing No. 2242748 in Class 5 for registration of the mark OSTILAX which is at 'Formalities Check Pass' stage as evident from the status report available on website of the trademark registry. Simultaneously, Shri Chaman Singh Rana also incorporated defendant No.1 company of which he is the main promoter.

14. It is further alleged that Shri Chaman Singh Rana being well aware of the sale, reputation and goodwill of the plaintiff's registered brand/medicine OSLAX and while acting in connivance with the defendant Nos. 1 and 2 with malafide intentions to cause harm to the plaintiff has adopted the registered mark of the plaintiff and has used the same by adding only two letters i.e. 'TI' in the plaintiff's well reputed brand/medicine OSLAX.

15. It is stated that the comparative analysis of both the medicines i.e. plaintiff's OSLAX and defendant's OSTILAX has been given in para 7 of the plaint which demonstrates that the name of the brand/medicine OSTILAX of the defendants and that of the plaintiff's trademark OSLAX are phonetically and structurally identical and indistinguishable from each other. It is further stated that the placement of name of the salt on the label, printing font i.e.

placement of first letter 'O' in capital and rest of the letters in small caps, the colour of the solution of the medicine (sea green), the font/style of writing the trademark, nature of the product (medicine), form of the medicine available in the market, the class of persons using the medicine (patients), the mode of selling medicines of the defendants' mark OSTILAX is same as that of the plaintiff's trademark OSLAX.

16. It is stated that the plaintiff sent a legal notice dated 11th June, 2012 upon the defendants to cease and desist from manufacturing any medicinal goods under the trademark OSTILAX or any other trademark deceptively similar to the plaintiff's trademark OSLAX and to surrender all the goods including labels, bottles, cartons, blocks, stationary or any other item bearing the brand/trademark OSTILAX. On the receipt of the legal notice of the plaintiff, the defendants vide replies dated 21st June, 2012 and 15th June, 2012 denied the factum of infringement of the plaintiff's trademark OSLAX.

17. It is averred that the defendants have adopted the mark OSTILAX so as to trade upon the reputation and goodwill accruing to the plaintiff and to earn undue profits. It has been contended that since the consumers (patients) at large associates the trade name and trademark OSLAX exclusively with the plaintiff, the defendants' use of deceptively similar/identical trademark OSTILAX will invariably deceive the patients and public into a belief that the medicines of the defendants are those of the plaintiff and the defendants are associated with the plaintiff in some manner.

18. Having gone through the averments made in the plaint and material placed on record, it is clear that the trademark OSTILAX used by the defendants is deceptively similar to plaintiff's trademark OSLAX. The plaintiff has been able to make out a strong case of infringement of trademark and passing off. The defendants despite of service of summons failed to file the written statement. They also did not appear before Court to contest the matter. Thus, it is a fit case in which this Court must exercise its discretion to pronounce judgment under the provision of Order 8 Rule 10 CPC.

19. Accordingly, the suit of the plaintiff is decreed in terms of prayer clause A to C. The other relief of rendition of accounts/damages is declined in absence of evidence.

20. Decree be drawn accordingly.

21. Plaintiff is entitled to costs.

(MANMOHAN SINGH) JUDGE DECEMBER 04, 2014