Delhi High Court
Walter Bushnell Pvt. Ltd.& Ors. vs Wonder Products & Ors on 30 June, 2015
Author: Manmohan
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* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(OS) 96/2014
WALTER BUSHNELL PVT. LTD.
& ORS. ..... Plaintiffs
Through: Mr. Amarjit Singh, Advocate
versus
WONDER PRODUCTS & ORS ..... Defendants
Through None
% Reserved on : 25th May, 2015
Date of Decision : 30th June, 2015
CORAM:
HON'BLE MR. JUSTICE MANMOHAN
JUDGMENT
MANMOHAN, J:
1. Present suit has been filed for infringement of registered trade mark,
passing off and other ancillary relief(s).
2. It is stated that as of 3rd February, 1997 the plaintiff No.1 is the
registered proprietor of trade mark DROTIN under number 732349 in
Clause 5 in respect of medicinal and pharmaceutical preparation.
3. In the plaint it is averred that the plaintiffs have adopted and used the
trade mark DROTIN since 1997.
4. The medicinal preparation under the trade mark DROTIN are being
manufactured by plaintiff No.2 and plaintiff No.3 under a licence from
plaintiff No.1. It is stated in the plaint that the trade mark DROTIN has
extensively been used in the course of trade and has acquired enviable
goodwill and reputation.
5. It is further stated that on account of priority in adoption, use and
registration, the plaintiffs have acquired common law rights to the exclusive
use of the trade mark DROTIN. The said rights are duly protected under the
provisions of Trade Marks Act, 1999 (for short "Act, 1999").
6. Learned counsel for the plaintiffs stated that the defendants had
dishonestly adopted a deceptively similar trade mark DRORIT in respect of
medicinal and pharmaceutical preparation. Plaintiff found an application No.
2269687 in Class 5 for the trade mark DRORIT was advertised in Journal
dated 2nd September, 2013. The plaintiffs filed opposition to the said
application and also filed the present suit.
7. By order dated 15th January, 2014, this Court restrained the
defendants, by way of ex parte interim injunction, from manufacturing,
selling, advertising directly or indirectly the pharmaceutical preparation
under the impugned trade mark DRORIT.
8. The defendants were duly served. The suit was decreed against
defendant No.4 by the order dated 18th March, 2014. Though the defendant
Nos. 1,2,3 sought time to file the written statement, yet they did not file the
same. Accordingly, the said defendants were proceeded ex parte by order
15th April, 2014.
9. The plaintiffs have filed their evidence by way of affidavit of
Mr. Surender Kumar Jangir as PW 1 and Mr. Bharat Bhushan as PW 2. The
plaintiffs have proved the documents establishing their common law as well
as statutory rights in the trade mark DROTIN in particular the drug licences,
sale invoices, manufacturing licence, registration certificate etc. The
statement of sales is contained in the certificate, issued by the Chartered
Accountant, a copy of which is Ex.PW1/8. Specimen of the plaintiffs'
product and defendants' infringing product is Ex.PW1/9.
10. In addition, the plaintiffs have relied upon various orders in which the
plaintiffs' rights in the trade mark DROTIN have duly been protected by the
courts. Ex.PW1/10 is the order passed by the Intellectual Property Appellant
Board (IPAB) whereby the plaintiffs succeeded in getting the registration of
trade mark DROT rectified. Ex.PW1/11 is the order passed by Bombay
High Court dismissing the writ petition challenging the order of IPAB.
Other ex parte orders or the decrees passed in favour of the plaintiffs are
Ex.PW1/13 (trade mark DROTIS), PW1/14 (trade mark DROTOVIN),
PW1/15 (trade mark DROTON), PW1/16 (trade mark DROTIS) and
PW1/17 (trade mark DROTEE).
11. In the opinion of this Court, the use of the trade mark DRORIT
constitutes an act of infringement as well as passing off. The trade mark
DRORIT is deceptively similar to the trade mark DROTIN and is used in
respect of same goods, i.e., pharmaceutical preparations. Under Section 28
of the Act, 1999 the plaintiffs have exclusive statutory right to the trade
mark DROTIN and restrain the use of any identical or deceptively similar
mark in respect of the same or similar goods constituting an act of
infringement under Section 29 of the Act, 1999.
12. The plaintiffs have proved themselves to be the prior adopters and
users of the trade mark DROTIN. The defendants have neither denied the
averments made in the plaint nor filed any written statement. Accordingly,
the averments made in the plaint are deemed to have been admitted under
Order 8 Rule 5 of the CPC.
13. On the question of deceptive similarity of competing marks, a
Coordinate Bench of this Court in Walter Bushnell Pvt. Ltd. and others vs.
Miracle Life Sciences and Anr., (2014) 213 DLT 119 passed a detailed
interim order in I.A. 1871/2013 wherein after taking into consideration the
law on the subject, the defendants were restrained from using the trade mark
DROTAMOL.
14. Furthermore, the Supreme Court in Cadila Health Care Ltd. vs.
Cadila Pharmaceutical Ltd. (2001) 5 SCC 73, after considering large
number of judgments laid down the principles for deciding the question of
deceptive similarity of competing marks. The test laid down by the
Supreme Court is fulfilled in the present case.
15. Consequently, present suit is decreed in terms of the prayers made in
paragraph 32(i) & (ii) of the plaint along with costs. Registry is directed to
prepare a decree sheet accordingly.
MANMOHAN, J
JUNE 30, 2015
rn/sn
