Merck Kgaa And Anr. vs La Lifescience Pvt. Ltd
2014 Latest Caselaw 6278 Del

*     IN THE HIGH COURT OF DELHI AT NEW DELHI

                            RESERVED ON : 13th NOVEMBER, 2014
                             DECIDED ON : 28th NOVEMBER, 2014

+                         CS (OS) 2709/2011
      MERCK KGAA AND ANR.                                 ..... Plaintiffs
                          Through :    Mr.C.M.Lall, Advocate with
                                       Mr.Anuj Nair & Mr.Nancy Roy,
                                       Advocates.
                          VERSUS

      LA LIFESCIENCE 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, his servants, agents etc. from manufacturing, selling, offering for sale, advertising directly or indirectly dealing in pharmaceutical and medicinal preparations under the trade mark "LAFLAM" or any other trade mark deceptively and/or confusingly similar to the registered trademarks "EXFLAM" and "EMFLAM" under registration Nos. 471455 & 467598.

b. A decree for delivery of all the infringing goods as complained of herein above, all blocks, dies and all such articles employed by Defendants in applying the trademark "LAFLAM" to the offending goods to an authorized representative of the Plaintiff 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 to in the alternative, a decree of ` 20,00,000/- towards damages 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 preparations. Plaintiff No.2 is its Indian subsidiary. It is

averred that the plaintiff No.1 is the registered proprietor of the trademark

"EXFLAM" under registration No.471455 dated 28.04.1987 and of

"EMFLAM" under registration No.467598 dated 13.02.1987 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 "EXFLAM" and "EMFLAM" as depicted in para No.13 of

the plaint.

3. It is pleaded that the defendant is also engaged in the

manufacture and sale of pharmaceutical and medicinal preparations. In

December, 2010, the plaintiff No.1 came to know that defendant had

adopted the trademark "LAFLAM" with respect to its medicinal

preparations by virtue of the advertisement of application No.1885758.

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 "LAFLAM" intends

to deceive the trade and public into a belief that the preparations are those

of the plaintiffs. A notice dated 16.12.2010 was served upon the defendant

which was received back undelivered. The use of trademark "LAFLAM"

by the defendant amounts to an infringement of registration Nos.471455

(EXFLAM) and 467598 (EMFLAM) of the plaintiffs.

4. None appeared on behalf of the defendant despite process

issued. Finally, the defendant was served by way of publication. By an

order dated 21.01.2014, the defendant was proceeded ex-parte. In IA

No.17407/2011, the defendant was restrained from using any mark by the

name of "LAFLAM" which is deceptively similar to the trademark of the

plaintiffs or any such other mark or depiction or carton as was being used

by 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.PW-1/1 to PW-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. 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

"LAFLAM" which is deceptively and confusingly similar to the registered

trademarks "EXFLAM" and "EMFLAM" of the plaintiffs without their

permission. PWs have testified that the trademark "LAFLAM" 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 "LAFLAM" in

respect of medical preparations is phonetically and visibly similar to the

registered trademarks of the plaintiffs i.e. "EXFLAM" and "EMFLAM".

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