Bestochem Formulations (I) ... vs Alps Pharmaceuticals (Pvt.) Ltd. ...
2014 Latest Caselaw 5497 Del

*      IN THE HIGH COURT OF DELHI AT NEW DELHI

                               RESERVED ON : 1st OCTOBER, 2014
                               DECIDED ON : 5th NOVEMBER, 2014

+                         CS (OS) 1917/2009

       BESTOCHEM FORMULATIONS (I) LIMITED ..... Plaintiff
                          Through :   Mr.Surinder Singh, Advocate.


                          VERSUS

       ALPS PHARMACEUTICALS (PVT.) LTD. & ORS.
                                                          ..... Defendants
                          Through :   None.


       CORAM:
       HON'BLE MR. JUSTICE S.P.GARG

S.P.GARG, J.

1. The plaintiff has instituted the present suit for permanent

injunction to restrain the defendants from infringing the trademark and

passing off their goods as that of defendants. Briefly the facts pleaded in

the plaint are :

2. The plaintiff company - Bestochem Formulations (I) Ltd. is a

company duly incorporated and registered under the Companies Act. It is

a well known organization in the field of manufacturing, sale and

distribution of pharmaceuticals and medicines since 18.09.1985. It enjoys

a very high reputation for its products because of excellent quality and

efficiency. Its total turnover runs into crores of rupees. The plaintiff is

proprietor of more than 150 brands in its portfolio. It operates all over

India in various States. The plaintiff has given details of the sales for the

year 1998-99 to 2007-08 in para (6) of the plaint.

3. Further case of the plaintiff is that well known trademark

"COLISPAS" was adopted and used by the plaintiff and its predecessors

in business since the year 1986. Mankind Pharma, one of the members of

the group companies of the plaintiff adopted the trademark "COLISPAS"

containing medicinal product „Mefenamic Acid and Dicyclomine HIC

tablets‟ which are the active ingredients of the medicine of subject matter.

From August, 1986 till November, 1997, Mankind Pharma extensively,

continuously and openly used the said trademark during the course of

trade. By virtue of award dated 06.02.1995 passed in suit No.174 of 1995

the rights of the trademark "COLISPAS" were granted in favour of the

plaintiff company. The award was duly accepted and became the Rule of

the Court by virtue of Order dated 11.11.1997. The sale under the

trademark "COLISPAS" from 1990 till 2009 has been depicted in para

(11) of the plaint. It is averred that the plaintiff and its predecessors in

business are the honest and bona fide adopter, originator, inventor and

true owner and lawful proprietor of the said trademark "COLISPAS" in

respect of medicines and pharmaceutical preparations. An application for

registration of the trademark "COLISPAS" under application No.514909

dated 10.08.1989 was filed but was abandoned due to non-prosecution.

The plaintiff has filed a fresh application for registration of the trademark

in its name claiming the use since 1986 and it is pending for disposal

before the Registrar of Trademarks. Being a prior adopter, regular and

extensive user for more than 23 years, the plaintiff has acquired enviable

goodwill, reputation and common law rights over the trademark

"COLISPAS".

4. Further case of the plaintiff is that on 05.02.2009, it wrote a

letter to the office of the Drug Licensing & Controlling Authority,

Uttrakhand and apprised them about the illegal use of the trademark

"COLISPAS" by defendants No.1 & 2. However, no action was initiated.

On 27.04.2009, the plaintiff issued a cease and desist notice to defendant

No.2. On 15.05.2009, the defendants through their attorney replied it and

demanded certain information which was given by letter dated

24.06.2009. It is alleged that the defendants have adopted the identical

trademark "COLISPAS" for the medicinal preparations knowingly that it

is owned and used by the plaintiff and its predecessors. The adoption and

use by the defendants is an attempt to create confusion and deception

amongst the purchasing public. The defendants‟ trademark "COLISPAS"

is virtually identical to the plaintiff‟s trademark. It is an imitation of the

plaintiff‟s old and reputed trademark. The mark has been adopted to

tarnish the goodwill and reputation of the plaintiff and is in violation of

common law rights. Hence the present suit.

5. Ex-parte restraint order was granted in favour of the plaintiff

by an order dated 13.10.2009. Defendants No.1 & 2 did not appear despite

service and were proceeded ex-parte. Appearance was put on behalf of the

defendant No.3 who initially contested the claim of the plaintiff.

However, subsequently, plaintiff and defendant No.3 settled the dispute

and it was disposed of by an order dated 01.03.2012 after recording

defendant No.3‟s statement, whereby he undertook not to use the

trademark "COLISPAS" in respect of any pharmaceutical medical

preparations or for any other goods.

6. The plaintiff produced its ex-parte evidence by way of

affidavit dated 02.10.2009 (Ex.PW1/A). Mr.Vijay Prakash (PW-1)

appeared in the witness-box and proved the averments of the plaint in the

affidavit (Ex.PW1/A). He also proved various documents Ex.PW-1/1 to

Ex.PW-1/8 in support of his case.

7. I have heard the learned counsel for the plaintiff and have

examined the file. The evidence filed by the plaintiff has gone unrebutted

and unchallenged. The contents of the plaint have been proved by PW-1

(Mr.Vijay Prakash) and there are no valid reasons to disbelieve the

statement. From the unchallenged testimony of the plaintiff, it can be

concluded that the use of trademark "COLISPAS" being adopted and used

by the plaintiff for the last more than 23 years in relation of the medicines

and pharmaceutical preparations by the defendants for their products is

bound to cause confusion and deception in the mind of the customers. No

justification has been shown by the defendants No.1 & 2 for the use of

similar trademark of the plaintiff for its medicinal products which has

distinctive character and composition. It is stated that the salt used by the

plaintiff in its products is Mefenamic Acid, Dicyclomine Hydrochloride :

colour - Tartrazine (Ex.PW-1/9), whereas the salt used by the defendants

in their products is Dicyclomine HCL, Paracetamo : colour Tartrazine

(Ex.PW-1/10).

8. The plaintiff‟s ex-parte evidence has established bona fide

use of the trademark "COLISPAS" by them since long. The defendants

No.1 & 2‟s use of the identical trademark "COLISPAS" without their

approval for medicinal products amounts to infringement of the plaintiff‟s

trademark "COLISPAS". The rival marks are deceptively similar and are

likely to cause confusion in the mind of unwary purchasers. The

purchasers are not expected to be well-versed with the chemical

compositions of the medicinal preparations. Adverse inference is to be

drawn against the defendants who opted not to contest the suit and offer

any plausible justification for user of the mark "COLISPAS".

9. The next aspect to be considered is the issue of damages on

account of infringement of trademark of the plaintiff and also for loss of

sales and reputation. The defendants have deliberately stayed away from

the present proceedings as a result of which an enquiry into the accounts

of the defendants for determination of the charges cannot take place.

10. In „Microsoft Corporation vs. Deepak Raval‟, MIPR 2007 (1)

72, this Court observed that in our country the Courts are becoming

sensitive to the growing menace of piracy and have started granting

punitive damages even in cases where due to absence of defendant, the

exact figures of sale made by them under the infringing copyright and / or

trademark, exact damages are not available. The justification given by the

Court for award of compulsory damages was to make up for the loss

suffered by the plaintiff and deter a wrong doer and like-minded from

indulging in such unlawful activities.

11. In „Larsen and Toubro Limited vs. Chagan Bhai Patel‟,

MIPR 2009 (1) 194, this Court has observed that it would be encouraging

the violators of intellectual property, if the defendants notwithstanding

having not contested the suit are not burdened with punitive damages.

12. In „Time Incorporated vs. Lokesh Srivastava and anr.‟, 2005

(30) PTC 3 (Del) while awarding punitive damages ` 5 lacs in addition to

compensatory damages also of ` 5 lacs, R.C.Chopra, J. observed that it

was time the Courts dealing actions for infringement of trade marks,

copyrights, patents, etc. should not only grant compensatory damages but

also award punitive damages 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.

13. Considering the facts of the present case, on the basis of the

evidence placed on record, it has been established that the defendants

indulged in passing off the goods with the mark "COLISPAS" to the

public at large without taking permission from the plaintiff. Since, they

have chosen not to appear, it may not be of any use to pass a decree of

rendition of accounts. The plaintiff will nevertheless be entitled to the

damages in the light of the judicial dicta observed in Times Incorporated

(supra) and the other cited cases. The defendant No.3 has already settled

the dispute with the plaintiff. No compensation / damages were claimed

from him at that time.

14. In the light of above discussion, I am of the view that the

plaintiff has proved its case against the defendants No.1 & 2 and is

entitled for the decree prayed for. Accordingly, the suit is decreed with

costs in favour of the plaintiff and the defendants No.1 & 2 and their

representatives are restrained from manufacturing, selling, trading and

marketing medicinal and pharmaceutical products under the trademark

"COLISPAS" or any other identical / similar mark. The plaintiff shall also

be entitled to damages to the tune of ` 1 lac.

15. Decree-sheet be prepared accordingly.

(S.P.GARG) JUDGE NOVEMBER 05, 2014 / tr