Pfizer Products Inc. & Ors. vs M/S Seeko Biotics
2015 Latest Caselaw 5121 Del

*      IN THE HIGH COURT OF DELHI AT NEW DELHI

%                                   Order delivered on: 17th July, 2015

+                       CS (OS) No.1471/2011

       PFIZER PRODUCTS INC. & Ors.         ..... Plaintiffs
                        Through Ms. Shilpa Gupta, Adv.

                        versus

       M/S SEEKO BIOTICS                            ..... Defendant
                              Through     Defendant ex-parte.

       CORAM:
       HON'BLE MR.JUSTICE MANMOHAN SINGH

MANMOHAN SINGH, J.

1. The plaintiffs have filed the suit for permanent injunction restraining infringement of registered trademark, passing off, delivery up, rendition of accounts of profits and damages against the defendant.

2. The product that is relevant to the present proceedings is DOLONEX, which is a highly sought after drug for the treatment of rheumatic disorders, gout, postoperative pain, juvenile idiopathic arthritis and/or musculoskeletal conditions.

3. The plaintiffs have used the trademark "DOLONEX" on pharmaceutical products continuously since at least the year 1989 in India. The mark "DOLONEX" is a fanciful and coined word having no denotative meaning and is accordingly an inherently distinctive mark. The mark "DOLONEX" is a registered trademark since 17th September, 1957. The trademark "DOLONEX" was first adopted in

India by Dumex Private Limited. Thereafter, the trade mark "DOLONEX" was assigned in favour of Pfizer Corporation through an Assignment Deed dated 30th June, 1959. The said Assignment was duly recorded with the Registrar of Trademarks on 17th December, 1962. It is submitted that Pfizer Corporation thereafter assigned the trademark "DOLONEX" to the plaintiff No. 1, Pfizer Products Inc., through an Assignment Deed dated 4th March, 2002. A request on Form TM 24 under the Trade Marks Act, 1999 was filed with the Trade Marks Registry, Mumbai, on 24th June, 2010, for registering the plaintiff No. 1 as the subsequent owner of the trademark "DOLONEX" on the basis of the Deed of Assignment dated 4th March 2002 from Pfizer Corporation to the plaintiff No. 1, Pfizer Products Inc. The said request is pending with the Trade Marks Registry, Mumbai. Consequently, the plaintiff No. 1 is the proprietor of the trademark "DOLONEX" by virtue of priority in adoption, continuous and extensive use, widespread advertising and the tremendous reputation accruing thereto in the course of trade.

4. Apart from its common law rights, the plaintiff No.1 is also the proprietor of the registered mark "DOLONEX", by virtue of trademark registration, details of which has been mentioned in para 6 of the plaint.

5. The plaintiff No. 2 has been authorized by the plaintiff No. 1 to use the trademark "DOLONEX" in India. The aforesaid trademark, which has been renewed from time to time, is valid and subsisting. Due to the knowledge of and recognition by the relevant sections of the consuming public on account of the extensive sale and reputation

of DOLONEX, the said trademark has come to be exclusively identified and associated with the plaintiffs.

6. It is claimed by the plaintiffs that the product marketed and sold under the trademark "DOLONEX" has also been discussed at length in a number of medical books, journals and magazines including the Indian Journal of Internal Medicine in the years 1991 and 1996. These books, journals and magazines are circulated and read by persons, including medical professionals in India.

7. It is submitted by the plaintiffs that the defendant is manufacturing, marketing and selling a pharmaceutical product named "DOLONAK", a name which is deceptively and confusingly similar to the plaintiffs' trademark "DOLONEX". It is submitted that the impugned product manufactured, marketed and sold by the defendant under the mark "DOLONAK" not only uses a trademark that has a visual, structural and phonetic similarity to the plaintiffs' trademark "DOLONEX", but also has an identical get up, lay out and arrangement of words as that of the plaintiffs' product under the trademark "DOLONEX". In fact, the trade dress of the defendant's product, namely packaging of its product "DOLONAK", is an unimaginative, slavish reproduction and imitation of the packaging of plaintiffs' product DOLONEX.

8. It submitted that the defendant's product "DOLONAK" contains the same active ingredient as that of the plaintiffs' product under the trademark "DOLONEX", namely, piroxicam. In the pharmaceutical industry marks/brands are sometimes created using references to or suggestions of the active ingredient of the product. However, in the present case, the plaintiffs' product under the trademark "DOLONEX"

has not derived its name from the active ingredient of the product, i.e., piroxicam, and consequently, the trademark "DOLONEX" is a coined word and therefore inherently distinctive.

9. It is submitted that the defendant has not only adopted a deceptively and confusingly similar mark "DOLONAK" to that of the plaintiffs' trademark "DOLONEX", but is also manufacturing, marketing and selling pharmaceutical products under the mark "DOLONAK" for the treatment of rheumatic disorders, postoperative pain, primary dysmenorrhoea, juvenila idiopathic arthritis and/or musculoskeletal conditions. Pertinently, DOLONEX is also used to treat rheumatic disorders, postoperative pain, primary dysmenorrhoea, juvenile idiopathic arthritis and/or musculoskeletal conditions. Apart from having adopted a deceptively similar mark, the defendant has, indeed, tried to ride upon the goodwill and reputation of the plaintiffs by using the impugned mark in respect of identical products.

10. Neither any written statement was filed nor was the defendant appeared despite service. The defendant was proceeded ex-parte by order dated 7th February, 2012.

11. At the first instance, the plaintiffs filed ex-parte evidence by way of affidavit of Ms. Anamika Gupta, D/o Mr. D. K. Gupta. As she left the plaintiffs' company, a new representative was appointed as recorded in the order dated 20th December, 2013.

12. Thereafter, the plaintiffs filed evidence by way of affidavit of Mr. Samir Kazi, S/o Mr. Salauddin Kazi.

13. The following documents were proved:-

(i) A copy of the Power of Attorney authorizing the deponent Mr. Samir Kazi to sign, verify and institute the proceedings which has been exhibited as Ex.PW-1/1;

(ii) Office Copy of Form TM-24 has been exhibited as Ex.PW-

1/2;

(iii) Copy of the assignment deed has been exhibited as Ex.PW-

1/3;

(iv) An original copy of the legal proceedings certificate has been exhibited as Ex.PW-1/4;

(v) Copies and extracts of select journals featuring the plaintiff's trademark DOLONEX has been exhibited as Ex.PW-1/5;

(vi) Plaintiffs' and defendant's products has been exhibited as Ex.PW-1/6 and Ex.PW-1/7 respectively.

14. The plaintiffs submit that they are likely to continue to suffer incalculable and irreparable loss, damage and injury to their business, goodwill and reputation on account of the illegal activities of the defendant if the defendant is not restrained from continuing with its unlawful conduct.

15. Accordingly, the plaintiffs have proved their case on merits. The evidence of the plaintiffs has gone unrebutted and there is no cross- examination of the plaintiffs' witness.

16. Therefore, the suit of the plaintiffs is decreed and a decree for permanent injunction is passed restraining the defendant from:-

(i) Manufacturing, marketing, offering for sale, selling, exporting, importing or advertising products, directly or indirectly, under the mark "DOLONAK", or any other mark which is identical to or deceptively and confusingly similar to the plaintiffs'

trademark "DOLONEX", and from doing any other thing amounting to infringement of the plaintiffs' registered trade mark "DOLONEX";

(ii) Manufacturing, marketing, offering for sale, selling, exporting, importing or advertising products, directly or indirectly, under the mark "DOLONAK" by using the get up, lay out, arrangement of words and features in the plaintiffs' product packaging for DOLONEX, thereby infringing the plaintiffs' trade dress.

(iii) Manufacturing, marketing, offering for sale, selling, exporting, importing or advertising products, directly or indirectly, under the mark "DOLONAK" and/or using the get up, lay out, arrangement of words and features in the plaintiffs' product packaging for DOLONEX, or using a trade dress which is an imitation of the plaintiffs' trade dress, or using the mark "DOLONAK", and/or any other mark/s, which is identical to or deceptively and confusingly similar to the plaintiff No. 1's trade mark "DOLONEX", and from doing any other thing, directly or indirectly, amounting to passing off.

17. With regard to the relief of damages as claimed by the plaintiffs in para 18(vi), the plaintiffs are claiming for punitive damages. Law pertaining to punitive damages is quite settled. This Court has previously granted both exemplary and punitive damages against the defendants in ex-parte matters of similar nature. In Time Incorporated Vs. Lokesh Srivastava & Anr., 2005 (30) PTC 3 (Del.) while awarding punitive damages of Rs. 5 lakhs in addition to compensatory damages also of Rs. 5 lakhs, Justice R.C. Chopra

observed that "time has come when the Courts dealing in actions for infringement of trademarks, 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 violation with impunity out of lust for money, so that they realise 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."

18. Further, this Court in Microsoft Corporation Vs. Rajendra Pawar & Anr., 2008 (36) PTC 697 (Del.) decided on 27th July, 2007 has held "Perhaps it has now become a trend of sorts, especially in matters pertaining to passing off, for the defending party to evade court proceedings in a systematic attempt to jettison the relief sought by the plaintiff. Such flagrancy of the defendant's conduct is strictly deprecatory, and those who recklessly indulge in such shenanigans must do so at their peril, for it is now an inherited wisdom that evasion of court proceedings does not de facto tantamount to escape from liability. Judicial process has its own way of bringing to tasks such erring parties whilst at the same time ensuring that the aggrieved party who has knocked the doors of the court in anticipation of justice is afforded with adequate relief, both in law and in equity. It is here that the concept of awarding punitive damages comes into perspective."

19. In view of the settled law, the plaintiffs are entitled to punitive damages as well as cost of the proceedings. Under this head, a sum of Rs.3,00,000/- is granted in favour of the plaintiffs.

20. Under these circumstances, the suit of the plaintiff is decreed in terms of prayer 18(i) to (iii), (vi) and (vii). The other reliefs are not pressed.

21. Decree be drawn accordingly.

(MANMOHAN SINGH) JUDGE JULY 17, 2015