Delhi High Court
Merck Kgaa And Anr. vs Emil Pharmaceutical Inds. Pvt. ... on 28 November, 2014
Author: S. P. Garg
* IN THE HIGH COURT OF DELHI AT NEW DELHI
RESERVED ON : 13th NOVEMBER, 2014
DECIDED ON : 28th NOVEMBER, 2014
+ CS (OS) 1811/2012
MERCK KGAA AND ANR. ..... Plaintiffs
Through : Mr.C.M.Lall, Advocate with
Mr.Anuj Nair & Mr.Nancy Roy,
Advocates.
VERSUS
EMIL PHARMACEUTICAL INDS. PVT. LTD ..... Defendant
Through : None.
CORAM:
HON'BLE MR. JUSTICE S.P.GARG
S.P.GARG, J.
1. The plaintiffs have filed the present suit for permanent
injunction restraining infringement of trademark and rendition of
accounts, damages and delivery up, etc. against the defendant with the
following prayers :
"a. A decree for permanent injunction restraining the
Defendant, by himself, his servants, agents, assigns, etc.
from manufacturing, selling, offering for sale, advertising,
directly or indirectly dealing in pharmaceutical and
medicinal preparations under the trade mark "COZOLE"
or any other trade mark identical, deceptively and/or
confusingly similar to the trademark "COSOME" so as to
infringe plaintiffs' trademark registration No. 147029.
b. A decree for delivery of all the impugned products
as complained of herein above and all blocks, dies and all
such articles employed by Defendants in applying the
trademark "COZOLE" to the offending goods to an
authorized representative of the Plaintiffs for
destructions/erasure.
c. 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 ` 20,05,000/-
towards damages compensation including conversion
damages may be passed in favour of the Plaintiffs and
against the Defendant."
2. As per the averments made in the plaint, the plaintiff No.1 is
a reputed pharmaceutical company established over the past 300 years and
is engaged in the manufacture and marketing of a wide range of
pharmaceutical and medicinal preparations. Plaintiff No.2 is its Indian
subsidiary. It is averred that the plaintiff No.1 is the registered proprietor
of the trademark "COSOME" under registration No.147029 dated
20.01.1951 in respect of the pharmaceutical preparations under the
provisions of the Trade Marks Act, 1999. Plaintiff No.2 has significant
sale of its pharmaceutical preparations "COSOME" as depicted in para
No.8 of the plaint.
3. It is pleaded that the defendant is also engaged in the
manufacture and sale of pharmaceutical and medicinal preparations. In
October, 2003, the plaintiffs came to know that defendant had adopted the
trademark "COZOLE" with respect to its medicinal preparations through
its advertisement in the Trade Marks Journal. (The plaintiff No.1 has filed
an opposition to the said trademark application at the Trade Marks
Registry.) It is averred that the defendant by use of deceptively and
confusingly similar trademark "COZOLE" intends to deceive the trade
and public into a belief that the preparations are those of the plaintiffs.
The use of trademark "COZOLE" by the defendant amounts to an
infringement of registration No.147029 (COSOME) of the plaintiffs.
4. None appeared on behalf of the defendant despite process
issued. By an order dated 15.04.2013, the defendant was proceeded ex-
parte. In IA No.11391/2012, the defendant, its servants, agents, assigns,
etc. were restrained from using trademark "COZOLE" or any other
deceptively similar trademark as that of the plaintiffs.
5. The plaintiffs have filed the evidence by way of affidavit of
Mr.Vikas Gupta which is exhibited as Ex.PW-1/A. He has proved the
documents Ex.P-1/1 to Ex.P-1/11. PW-2 is Vishal Kath, who has filed his
affidavit Ex.PW-2/A.
6. I have heard the learned counsel for the plaintiffs and have
examined the file. The evidence of PW-1 (Vikas Gupta) and PW-2 (Vishal
Kath) has remained unchallenged and unrebutted. They have proved the
averments in the plaint and documents Ex. P-1/1 to Ex.P-1/11. Adverse
inference is to be drawn against the defendant for not appearing and
contesting the present suit. No justification has been offered by the
defendant for use of mark "COZOLE" which is deceptively and
confusingly similar to the registered trademark "COSOME" of the
plaintiffs without their permission. PWs have testified that the trademark
"COZOLE" used and adopted by the defendant, is deceptively and
confusingly similar to the plaintiffs‟ trademark.
7. The foremost thing to be considered is whether rival marks
are deceptively similar and are likely to cause confusion in the mind of
unawary purchasers. The purchasers are not expected to be well-versed
with the chemical compositions of the medicinal preparations. It is well
settled that while considering whether a mark is likely to deceive or to
cause confusion, the question has to be approached from the point of view
of a man of average intelligence and imperfect recollection.
8. In „Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd.',
2001 (5) SCC 73, the Supreme Court after considering a large number of
judgments of Foreign Courts and Indian Courts cautioned that strict
measures to prevent confusion and lesser degree of proof is required for a
Plaintiff to prove infringement in pharmaceutical cases if the marks are
similar. In para 35, the Supreme Court observed as under :
"35. Broadly stated, in an action for passing-off on the
basis of unregistered trade mark generally for deciding the
question of deceptive similarity the following factors are to
be considered :
(a) The nature of the marks i.e. whether the marks are word
marks or label marks or composite marks i.e. both words
and label works.
(b) The degree of resembleness between the marks,
phonetically similar and hence similar in idea.
(c) The nature of the goods in respect of which they are used
as trade marks.
(d) The similarity in the nature, character and performance
of the goods of the rival traders.
(e) The class of purchasers who are likely to buy the goods
bearing the marks they require, on their education and
intelligence and a degree of care they are likely to exercise
in purchasing and/or using the goods.
(f) The mode of purchasing the goods or placing orders for
the goods.
(g) Any other surrounding circumstances which may be
relevant in the extent of dissimilarity between the competing
marks."
9. In the instant case, the defendant‟s mark in respect of medical
preparations "COZOLE" is phonetically and visibly similar to the
registered trademark of the plaintiffs i.e. "COSOME". It can be concluded
that the defendant‟s mark is bound to create confusion in the mind of the
public at large.
10. It is, therefore, evident that the defendant has infringed the
registered trademark of the plaintiffs‟ and has passed of his goods as those
of the plaintiffs.
11. The suit of the Plaintiffs is accordingly decreed in terms of
prayers „a‟ and „b‟ of the prayer clause in the plaint with cost.
12. At the time of hearing, the reliefs of damages and rendition
of accounts were given up by the learned counsel for the Plaintiffs.
13. The suit of the Plaintiffs is decreed in above terms.
14. Decree sheet be drawn accordingly.
(S.P.GARG)
JUDGE
NOVEMBER 28, 2014 / tr
