Merck Kgaa & Anr vs Abhinav And Ashok Trading As ...
2014 Latest Caselaw 1644 Del

          *IN THE HIGH COURT OF DELHI AT NEW DELHI

%                                      Date of decision: 27th March, 2014.

+       CS (OS) 1547/2009 & I.A. No.10713/2009 (u/O 39 R-1&2 CPC)

       MERCK KGAA & ANR                                   ..... Plaintiffs.
                  Through:              Mr. Arvind Nayar, Ms. Suryajyoti
                                        Singh Paul and Mr. Sushant K.
                                        Thakur, Advs.

                                    Versus

    ABHINAV AND ASHOK TRADING AS
    PHARMAFFILIATES HEALTH CARE                              ..... Defendant.
                  Through: None.
CORAM :-
HON'BLE MR. JUSTICE RAJIV SAHAI ENDLAW

1.

The suit has been instituted by the plaintiffs for permanent injunction

restraining the defendant from manufacturing and selling or dealing in

medicines for human purposes under the trademark CARBOPHAR or any

other trademark identical or deceptively similar to the trademark

CARBOPHAGE of the plaintiffs, and for ancillary reliefs of delivery-up,

rendition of accounts and damages, pleading:

(i) that the Plaintiff No. 1 is a company existing under the laws of

Germany;

(ii) that the Plaintiff No. 2 Merck Limited is a subsidiary of the

plaintiff no. 1 having its registered office at Mumbai and also

at L-2, J.R. Complex, Gate No. 4, Village Mandoli, New Delhi

- 110093;

(iii) that the Plaintiff No. 1 sells its products under its various

trademarks directly or through Plaintiff No. 2, its Indian

subsidiary;

(iv) that the Plaintiff No. 1 is an old, well known, reputed and

established company since the past 150 years, engaged in the

manufacture of a wide range of pharmaceutical and medicinal

preparations;

(v) that the Plaintiff No. 1 is a registered proprietor of the

trademark CARBOPHAGE duly registered in India under

registration no. 872238 dated August 1999, in Class 5 under

the Trade Marks Act, 1999 in respect of pharmaceutical

preparations for the treatment of the cardiovascular systems;

(vi) that sometime towards in April, 2009 it first came to the

knowledge of Plaintiff No. 1 by virtue of advertisement in the

Trade marks Journal no. 1408 dated January 16, 2009 at page

no. 576 that the Defendant has adopted the trademark

CARBOPHAR with respect to its medicines for human

purpose preparation;

(vii) that the Plaintiff No. 1 has duly filed an opposition to the

trademark application no. 1593912 of the Defendant at the

trade Marks Registry;

(viii) that the Defendant has adopted the trademark CARBOPHAR

in relation to medicines for human purpose which is

confusingly and deceptively similar to the registered trademark

CARBOPHAGE of the Plaintiff;

(ix) that the Defendant has deliberately adopted the trademark

CARBOPHAR which is structurally identical to the Plaintiffs‟

trademark so as to create confusion in the trade and purchasing

public and pass off its preparations as those of the Plaintiffs.

2. Summons of the suit and notice of the application for interim relief

were issued but no interim relief has been granted as yet.

3. The defendant filed written statement defending the suit on the

following grounds:

(i) denying that the plaintiff no. 1 is the registered proprietor of

the trademark "CARBOPHAGE" and pleading that the alleged

copy of the certificate of registration of the mark

"CARBOPHAGE" filed by the plaintiffs along with the plaint

is not in the name of the plaintiffs;

(ii) that the trademark, get-up, placement, design, prices,

packaging, purpose of such medicine, salt combination etc, of

the two competing trademarks is completely different and one

can by no stretch of imagination be confused that both the

competing trademarks are visually, phonetically and

structurally similar and the products sold there-under are

distinctly packed with altogether different packaging, font,

colour combination, name and address of manufacturer;

(iii) that while the medicine of the defendant is used as a vitamin

and mineral substitute, the tablets of the plaintiff is used by the

Diabetes patients;

(iv) that the defendant has named its product „CARBOPHAR‟ by

combining „CARBO‟ taken from one of its ingredients

„Carbonyl Iron‟ and „PHAR‟ from the initial four words of

name of the firm i.e. „Pharmaffiliates Healthcare‟;

(v) that the two medicines when compared as a whole are

completely different and distinct and for this reason only the

plaintiffs, at the time of filing for an ex-parte ad interim

injunction, deliberately did not place on record the two

competing products;

(vi) that the defendant is now placing on record the sample

packaging of the plaintiffs and the defendants products for

scrutiny which would clearly show that the defendant did not

attempt to copy the product of the plaintiffs;

(vii) that the defendant has been granted a licence for the

manufacturing and marketing of the pharmaceutical product

„CARBOPHAR‟ by the office of the Drug Controller under the

provisions of the Drugs and Cosmetics Act, 1940.

4. Needless to state that the plaintiff filed replication denying the

contents of the written statement of the Defendant and reiterating the case

in the plaint but need is not felt to advert thereto.

5. The following issues were framed in the suit on 15th October, 2012:

"(i). Whether the plaintiff no. 1 is the proprietor of the trademark „CARBOPHAGE‟ duly registered in India under the registration No. 872238, dated August, 1999

in class 5 in respect of pharmaceutical preparations for the treatment of the cardiovascular systems ? OPP

(ii) Whether defendant has infringed the trademark „CARBOPHAGE‟ of the plaintiffs? OPP

(iii) Whether the plaintiffs are entitled to a decree of permanent injunction restraining the defendant from using the trademark „CARBOPHAR‟ or any other mark deceptively or confusingly similar to „CARBOPHAGE‟? OPP

(iv) Whether the plaintiffs are entitled to a decree of mandatory injunction directing the defendant to deliver all the impugned goods and dyes for destruction having the mark „CARBOPHAR‟? OPP

(v) Whether the plaintiffs are entitled to a decree of rendition of accounts directing the defendant to render accounts of the profits made by it using the trademark „CARBOPHAR‟? OPP

(vi) Whether the plaintiffs are entitled to the award of damages and compensation, as prayed for? OPP

(vii) Whether this court has no territorial jurisdiction to entertain the suit? OPD

(viii) To what relief, if any, are the plaintiffs entitled? OPP "

6. The defendant thereafter stopped appearing and was finally

proceeded against ex-parte on 30th August, 2013 and remains ex parte. The

plaintiffs, in their ex parte evidence have filed the affidavits by way of

examination-in-chief of Mr. Vikas Gupta, Head- Legal & General Counsel

of Merck Limited, Vijay Kumar Verma, Medical Representative of Merck

Limited and Mr. Vishal Kath, Area Sales Manager of Merck Limited and

tendered, inter-alia, the following documents in evidence:

(I) Original Legal Certificate of the said trademark, exhibited as

PW1/6;

(II) Copy of the trademark license/registered user agreement dated

20.03.2008, exhibited as PW 1/7;

(III) Original invoices for the trademark CARBOPHAGE is

exhibited as PW 1/8;

(IV) Original packaging for the medicine for the trademark

CARBOPHAGE is exhibited as PW 1/9;

(V) Copy of the cutting of the Journal of Advertisement of the

defendant‟s trademark Application No. 1593912 is exhibited

as PW 1/10;

(VI) True copy of the Opposition filed by the Plaintiff No. 1 dated

13.04.2009 is exhibited as PW1/11.

7. The defendant along with its written statement filed a copy of the

receipt of application for registration of the trademark „CARBOPHAR‟ and

coloured photocopies of packaging material and product of the plaintiff and

the defendant.

8. On the basis of the ex parte evidence led and after examining the two

products as filed by the defendant and considering that the defendant

appears to be no more interested, I am satisfied that the plaintiff has

become entitled to the relief sought of injunction.

9. The Supreme Court in Cadila Health Care Ltd. Vs. Cadila

Pharmaceuticals Ltd. (2001) 5 SCC 73 has laid down the tests which are

to be applied while dealing with an action for infringement or passing off,

especially in cases relating to medicinal products. The Supreme Court held

that the real question to be decided in such cases is to see how a purchaser,

who must be looked upon as an average man of ordinary intelligence,

would react to a particular trademark, what association he would form by

looking at the trademark, and in what respect he would connect the

trademark with the goods which he would be purchasing. It was further

held that a critical comparison of the two names may disclose some points

of difference but an unwary purchaser of average intelligence and imperfect

recollection would be deceived by the overall similarity of the two names

having regard to the nature of medicine he is looking for with a somewhat

vague recollection that he had purchased a similar medicine on a previous

occasion with a similar name. The Supreme Court held that:-

32. Public interest would support lesser degree of proof showing confusing similarity in the case of trade mark in respect of medicinal product as against other non-medicinal products. Drugs are poisons, not sweets. Confusion between medicinal products may, therefore, be life threatening, not merely inconvenient. Noting the frailty of human nature and the pressures placed by society on doctors, there should be as many clear indicators as possible to distinguish two medicinal products from each other. It is not uncommon that in hospitals, drugs can be requested verbally and/or under critical/pressure situations. Many patients may be elderly, infirm or illiterate. They may not be in a position to differentiate between the medicine prescribed and bought which is ultimately handed over to them. This view finds support from McCarthy on Trade Marks, 3rd Edition, para 23.12 of which reads as under:

"The tests of confusing similarity are modified when the goods involved are medicinal products. Confusion of source or product between medicinal products may produce physically harmful results to purchasers and greater protection is required than in the ordinary case. If the goods involved are medicinal products each with different effects and designed for even subtly different uses, confusion among the products caused by similar marks could have disastrous effects. For these reasons, it is proper to require a lesser quantum of proof of confusing similarity for drugs and medicinal preparations. The same standard has been applied to medical products such as surgical sutures and clavicle splints."

10. Applying the said test even though there are differences in the

packaging of the plaintiffs and the defendant‟s products, I find that the

plaintiffs have made out a case for grant of permanent injunction

restraining the defendant from manufacturing and selling or dealing in

medicines for human purposes under the trademark CARBOPHAR or any

other trademark identical or deceptively similar to the trademark

CARBOPHAGE. However, neither have the plaintiffs led any evidence as

to the loss if any suffered nor, in the facts, is a case for award of damages

made out.

11. The suit is thus decreed in terms of prayers (a) & (b) in the plaint.

The defendant having given up the contest to the suit, no costs.

Decree Sheet be drawn up.

RAJIV SAHAI ENDLAW, J.

MARCH 27, 2014.

sk..