Delhi High Court

Merck Kgaa And One Another vs Hasmukh N Thakkar on 10 October, 2014

*      IN THE HIGH COURT OF DELHI AT NEW DELHI

                                            Pronounced on: 10th October, 2014

+      CS(OS) 2067/2011
       MERCK KGAA AND ONE ANOTHER                                   ..... Plaintiffs
                             Through:     Mr. Subhash Bhutoria, Advocate with
                                          Mr. Anuj Nair, Advocate

                             versus

       HASMUKH N THAKKAR                                      ..... Defendant
                   Through:               Ex-parte

       CORAM:
       HON'BLE MR. JUSTICE G.P. MITTAL


G.P. MITTAL,J.

1. This suit for permanent injunction restraining infringement of trade

mark and rendition of accounts, damages and delivery up, etc. was

filed by the Plaintiffs against the Defendant with the following

prayers:-

"a. A decree for permanent injunction restraining the Defendant's, by himself, his servants, agents etc. From manufacturing, selling, offering for sale, advertising directly or indirectly dealing in pharmaceutical and medicinal preparations under the trade mark ECEFLAM+ or any other trade mark deceptively and/or confusingly similar to the registered trademarks EXFLAM of the Plaintiff under Trade Mark Registration no.471455 and EMFLAM under registration no.4675968.

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 trade mark EXEFLAM+ 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 Rs.20,05,000/- towards damages including conversion damages may be passed in favour of the Plaintiff and against the Defendant."

2. As per the averments made in the Plaint, Plaintiff no.1 is a reputed

pharmaceutical company established in the passed over 300 years and

is engaged in manufacture and marketing of wide range of

pharmaceutical preparations.

3. Plaintiff no.2 is its Indian subsidiary. It is averred that the Plaintiff

no.1 is the registered proprietor of the trademark EMFLAM under

registration no. 467598 dated 13.02.1987 in respect of the

pharmaceutical and medicinal preparation.

4. Plaintiff no.1 is also the registered proprietor of trademark EXFLAM

under registration no. 471455 dated 28.04.1987 in respect of the

pharmaceutical preparation under the provisions of the Trade Marks

Act, 1999. Plaintiff no.2 has significant sale of its pharmaceutical

preparation EXFLAM and EMFLAM as stated in para 11 of the plaint.

5. According to the Plaintiffs sometime in August, 2010, the Plaintiff

no.1 came to know that the Defendant has adopted the trademark

ECEFLAM+ in respect of his pharmaceutical and medicinal

preparations and so as to create an impression amongst the purchasing

public and trade that the product of the Defendant actually originates

from the Plaintiffs or there is some kind of association and/or nexus

between the Plaintiffs and the Defendant company.

6. Thus, the Plaintiffs filed a suit with the prayers as stated earlier.

7. The Defendant preferred not to contest the suit despite service through

publication and was thus, ordered to be proceeded ex-parte. In ex-

parte evidence, the Plaintiffs filed an Affidavit of Mr. Vijay Kumar

Verma and an Affidavit of Mr. Vishal Khat, who corroborated the

averments made in the Plaint and testified that the trademark

ECEFLAM+ has been used and adopted by the Defendant which is

deceptively and confusingly similar to the registered trade mark

EXFLAM and EMFLAM of the Plaintiffs.

8. I have heard learned counsel for the Plaintiffs.

9. 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. In Amritdhara Pharmacy v. Satya Deo Gupta, AIR 1963

SC 449, while referring to Corn Products Refining Co. v. Skangrila

Food Products Ltd., (1960) (1) SCR 968 ,in paras 7 and 8, the

Supreme Court held as under:-

"7. .......... As we said in Corn Products Refining Co. v. Skangrila Food Products Ltd. [ (1960) (1) SCR 968] the question has to be approached from the point of view of a man of average intelligence and imperfect recollection. To such a man the overall structural and phonetic similarity-of the two names "Amritdhara" and "Lakshmandhara" is, in our opinion, likely to deceive or cause confusion. We must consider the overall similarity of the two composite words "Amritdhara" and "Lakshmandhara". We do not think that the learned Judges of the High Court were right in saying that no Indian would mistake one for the other. An unwary purchaser of average intelligence and imperfect recollection would not, as the High Court supposed, split the name into its component parts and consider the etymological meaning thereof or even consider the meaning of the composite words as "current of nectar" or "current of Lakshman". He would go more by the overall structural and phonetic similarity and the nature of the medicine he has previously purchased, or has been told about, or about which has otherwise learnt and which he wants to purchase. Where the trade relates to goods largely sold to illiterate or badly educated persons, it is no answer to say that a person educated in the Hindi language would go by the etymological or ideological meaning and see the difference between "current of nectar" and "current of Lakshman". "Current of Lakshman" in a literal sense has no meaning; to give it meaning one must further make the inference that the "current or stream" is as pure and strong as Lakshman of the Ramayana. An ordinary Indian villager or townsman will perhaps know Lakshman, the story of the Ramayana being familiar to him; but we

doubt if he would etymologise to the extent of seeing the so- called ideological difference between "Amritdhara" and "Lakshmandhara". He would go more by the similarity of the two names in the context of the widely known medicinal preparation which he wants for his ailments.

8. We agree that the use of the word "dhara" which literally means "current or stream" is not by itself decisive of the matter. What we have to consider here is the overall similarity of the composite words, having regard to the circumstance that the goods bearing the two names are medicinal preparations of the same description. We are aware that the admission of a mark is not to be refused, because unusually stupid people, "fools or idiots", may be deceived. 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 the 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......."

10. 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.