Staar Surgical Company vs Care Group India & Anr.
2016 Latest Caselaw 5657 Del

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*       IN THE HIGH COURT OF DELHI AT NEW DELHI
13.
+                          CS (OS) 3164/2015

        STAAR SURGICAL COMPANY                         ..... Plaintiff
                     Through: Mr. Sanjay Singh and Mr. D.K. Yadav,
                     Advocates.

                           versus


        CARE GROUP INDIA & ANR.                     ..... Defendants
                     Through: Mr. D.K. Rustagi and Ms. Medha Arya,
                     Advocates.


        CORAM: JUSTICE S. MURALIDHAR

                           ORDER

% 30.08.2016

IA No. 22150 of 2015 (under Order XXXIX Rules 1 and 2 CPC) & IA No. 24468/2015 (under Order XXXIX Rule 4 CPC)

1. IA No. 22150 of 2015 under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908 („CPC‟) is by the Plaintiff and IA No. 24468/2015 under Order XXXIX Rule 4 of the CPC is by Defendant No.1. The background to these applications is that the Plaintiff, Staar Surgical Company, is a company duly organised and existing under the laws of the State of Delaware having its registered office in California, USA. The Plaintiff states that it has been carrying on trade and business of manufacturing, worldwide marketing and sales of implantable lenses for eyes and delivery systems. The plaintiff claims to be solely dedicated to

ophthalmic surgery for over 25 years and the designs, develops and manufactures and markets implantable lenses for the eye and delivery systems. The Plaintiff claims to have patented and licensed the first foldable intraocular lens (IOL) for cataract surgery. The Plaintiff also claims to have invented and designed a new eye lens and got it patented in different jurisdictions. The Plaintiff also states to have adopted the trade mark Visian ICL and/or ICL for its aforesaid products since 1990.

2. It is stated that the Plaintiff has been using the trade mark ICL with a prefix or suffix but that the essential portion of the trade mark is always ICL. It started selling products bearing the said trade mark outside the USA in 1996. It is stated that biocompatible Collarmer lens material is used to make the Plaintiff‟s product which is then implanted behind the iris and in front of the patients natural lens to treat refractive errors such as myopia, hyperopia, and astigmatism. It is stated that the lenses of this design are generally called „phakic lOLs‟ or „phakic implants‟ because they work along with the patients natural lens rather than replacing it.

3. The Plaintiff claims to be selling its product in more than 60 countries. Its product has been stated to have been implanted in more than 5 lakhs eyes worldwide. 80% of its revenue is stated to be generated outside USA. It is stated that the Plaintiff‟s policy of safety is not only limited to human beings but environment also.

4. The Plaintiff is stated to have commenced its business operations in India in 2010 and has gradually expanded its business by making an extensive presence in India. It is stated to be operating its business in New Delhi,

Chennai and Mumbai.

5. In para 14 of the plaint, the Plaintiff has set out the details of the patent applications made by it for various types of lenses and the status of the said patent applications. It is stated that owing to continuous and ubiquitous use of the trade mark Visian ICL/ICL, the said mark is exclusively associated with the Plaintiff and is distinctive of the Plaintiff‟s products. In para 17 of the plaint, the worldwide registration and pending trademark applications filed in India and other countries are set out. As far as India is concerned all of the Plaintiff‟s applications for Visian ICL/ICL and Design and ICL per se are stated to be pending.

6. The Plaintiff‟s case is that its trade mark has acquired goodwill in India as well as in the global market. Its volume of sales year-wise worldwide and marketing expenses are set out in paras 27 and 28 of the plaint.

7. The case of the Plaintiff is that the Defendants are engaged in the business of manufacturing and marketing of similar implantable lenses for eyes as that of the Plaintiff. The Defendants are stated to have adopted and started using the trade mark IPCL in respect of manufacturing, selling and exporting of intraocular lenses manufactured and marketed by it. It is stated that while Defendant No.1 manufactures, sells and exports its product, Defendant No.2 is the distributor.

8. The case of the Plaintiff is that the Defendants have adopted an identical/deceptively similar trade mark/label IPCL in relation to the impugned goods and business. It is, according to the Plaintiff, similar in

each and every aspect including phonetically, visually, structurally, in its basic idea and in its essential features. According to the Plaintiff the Defendants have merely inserted „P‟ in between the said trademark/label ICL of the Plaintiff. Therefore, it is claimed that the Defendants have passed off and continued to pass off their mark as that of the Plaintiff which is harming the goodwill and reputation of the Plaintiff. It is claimed to be in violation of the Plaintiff‟s proprietary rights in the trade mark/label ICL in respect of its goods.

9. Accordingly, the present suit was filed for passing off and an interim order was passed by this Court on 20th October 2015 restraining the Defendants from manufacturing, marketing, exporting, using, selling, offering for sale, advertising or displaying directly or indirectly or dealing in any other manner or mode in implantable eye lenses, surgical ocular implants, instruments for implanting surgical ocular implants regarding refractive surgery and all allied and cognate goods under the under the impugned trade mark/label IPCL or any other trade mark/label identical with or deceptively similar to plaintiffs said trade mark/label Visian ICL and/or ICL.

10. The Defendants filed FAO (OS) No. 675 of 2015 which came to be disposed of by the Division Bench by an order dated 14 th December 2015 noting the fact that the Defendants had filed IA No. 24468/2015 under Order XXXIX Rule 4 CPC for vacating the order dated 20th October 2015.

11. In their application the Defendants point out that the research and development was undertaken by Defendant No.1, popularly known as Care

Group India, to develop its products which are manufactured and marketed by it beginning with 1987. It is stated that the intra ocular lenses available at that time was at an unaffordable price of Rs.1200 to Rs.1500 per piece and that the Defendant No.1 worked at reducing it to less than Rs.200 per piece.

12. The Defendants point out that the use of IPCL as a trade mark has been since 2013. However, the Plaintiff‟s application for registration of ICL was subsequently made on 11th June 2015. The Defendant on their part applied for registration of the trade mark in April 2013 and also got registration certificate on the said mark on 8th February 2014 and all this was in the knowledge of the Plaintiff who did not choose to object to the registration. It is further pointed out that the colour scheme, packing of the Defendant for its IPCL product i.e. implantable Phekic Lense are very different from that of the Plaintiff. It is denied that ICL is a dominant part of the mark of the Plaintiff. It is pointed out that Plaintiff‟s own application made in June 2015 constituted an admission that "Visian ICL" and "ICL" are two different trademarks. It is pointed out that there is no similarity or deception in trademarks ICL or IPCL, at least for „Phekic Lens‟ which are not bought by consumers or patients directly but on recommendation of an Ophthalmologist or Surgeon.

13. The Defendants have also given a comparative table of pricing. The Visian ICL product is sold at Rs.29,000 whereas the Defendant‟s product is sold at Rs.8,000 as far as Monofocal (less than-8.0D) is concerned. The product Toric of the Plaintiff is sold at Rs.42,000 and that of the Defendant at Rs.26,000. Monofocal (less than -9.0D) is sold by the Plaintiff at

Rs.29,000 under the mark Visian ICL whereas by the Defendant under the mark IPCL at Rs. 17,000.

14. This Court has heard the learned counsels for the parties.

15. As far as the tests for passing off is concerned, the law has been well settled and summarised in National Sewing Thread Co. Ltd. v. James Chadwick & Bros. Ltd. [1953] 4 SCR 1028 as under:

"The real question to decide in such cases is to see as to how a purchaser, who must be looked upon as an average man of ordinary intelligence, would react to a particular trade mark, what association he would form by looking at the trade mark, and in what respect he would connect the trade mark with the goods which he would be purchasing."

16. In Corn Products Refining Company v. Shangrila Food Products Limited [1960] 1 SCR 968, the Court emphasised that "in deciding a question of similarity between two marks, the mark has to be considered as a whole." In Amritdhara Pharmacy v. Satya Deo [1963] 2 SCR 484 it was held as under:

"For deceptive resemblance two important questions are: (1) who are the persons whom the resemblance must be likely to deceive or confuse, and (2) what rules of comparison are to be adopted in judging whether such resemblance exists. As to confusion, it is perhaps an appropriate description of the state of mind of a customer who, on seeing a mark thinks that it differs from the mark on goods which he has previously bought, but is doubtful whether that impression is not due to imperfect recollection. (see Kerly on Trade Marks, 8th Edition, p. 400)."

17. In Durga Dutt Sharma v. N.P. Laboratories [1965] 1 SCR 737 a

distinction is drawn between an action for infringement and an action for passing off. It was explained that "the use by the Defendant of the trade mark of the Plaintiff is not essential in an action for passing off, but is the sine qua non in the case of an action for infringement. No doubt, where the evidence in respect of passing off consists merely of the colourable use of a registered trade mark, the essential features of both the actions might coincide in the sense that what would be a colourable imitation of a trade mark in a passing off action would also be such in an action for infringement of the same trade mark."

18. It is further explained that in the case of infringement "if the essential features of the trade mark of the Plaintiff have been adopted by the defendant, the fact that the get-up, packing and other writing or marks on the goods or on the packets in which he offers his goods for sale show marked differences, or indicate clearly a trade origin different from that of the registered proprietor of the mark would be immaterial; whereas in the case of passing off, the defendant may escape liability if he can show that the added matter is sufficient to distinguish his goods from those of the Plaintiff."

19. The Court has been shown both the packets in which the implantable lenses are sold by the Plaintiff and the Defendants respectively.

20. The packing of the Plaintiff‟s product is as under:

21. Whereas the packing of the Defendants' product is as under:

22. The Court is prima facie unable to agree with learned counsel for the

Plaintiff that as far as the Plaintiff‟s mark appearing on its packing is concerned, ICL is an essential part of the mark as depicted by it. When viewed as a whole, the colour scheme, the get-up, the manner of arrangement of the letters in both the marks make them distinct and different. Even at a glance it is difficult to accept that an average Ophthalmologist who is prescribing these lenses for implantation is going to mistake the product of the Defendants for that of the Plaintiff or vice-versa since there are sufficient distinguishing features to avoid any deception or confusion. The colour and the size of the font, the shape of the letters, the positioning, the overall colour scheme, and even the actual words used in combination are some of these. The difference in the price is one other factor but certainly not necessarily the critical distinguishing factor.

23. Learned counsel for the Plaintiff places extensive reliance upon the decision of the Supreme Court in Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. (2001) 5 SCCC 73 and in particular in para 28 which dealt with medicinal products and emphasised that "exacting judicial scrutiny is required if there is a possibility of confusion over marks on medicinal products because the potential harm may be far more dire than that in confusion over ordinary consumer products." In the said decision it was pointed out that even doctors are not immune from mistakes even if it was a Schedule L product which had to be prescribed.

24. The Court is conscious that the product in question is a medicinal product in the sense that it is IOL lens which is meant for implantation. An average person who goes for any such lens is not expected to note the

distinguishing features. It cannot be sold without a prescription. The prescription has to be by a qualified Ophthalmologist. It is not in dispute that the first „consumer‟ is in fact the Ophthalmologist. It cannot be prescribed even by a General Physician since the product is for a particular use that can be prescribed only by a specialist. IOLs cannot be bought over the counter in a medical store. The Court is not satisfied that such Ophthalmologist will be deceived or confused into prescribing the Defendants‟ product for the Plaintiff‟s product or vice versa.

25. Another important feature is that the Defendants‟ mark is a registered mark and subsists as such. Learned counsel for the Plaintiff states that the Plaintiff has applied for cancellation of said mark. It will be for the Plaintiff to pursue such application in accordance with law. However, as far as the present applications are concerned this is an additional factor that weighs in favour of the Defendants.

26. The tests for passing off explained by the Supreme Court in the above decisions are not satisfied in the present case. The Court is, therefore, of the view that there is no justification for continuing the interim order dated 20th October 2015 in favour of the Plaintiff. It is accordingly vacated.

27. The Defendants will nevertheless account for the sales of their products made during the pendency of these proceedings and produce accounts as and when required as may be ordered by the Court. It is further clarified that the observations made in this order are prima facie and limited to the purpose of deciding these two applications. The Court finally deciding the matter will arrive at an independent view based on the evidence led by the parties.

28. With the above observations, IA No. 22150 of 2015 filed by the Plaintiff is dismissed and IA No. 24468/2015 filed by the Defendant No.1 is allowed.

IA No. 588 of 2016 (under Order XXXIX Rule 2A CPC)

29. In view of the dismissal of IA No. 22150 of 2015 filed by the Plaintiff and the vacation of the interim order dated 20th October 2015, this Court is not inclined to entertain the present application. It is dismissed as such.

CS (OS) 3164/2015

30. The suit be re-numbered as a commercial suit.

31. The suit be listed before the Joint Registrar („JR‟) on 24th October 2016 for admission and denial of documents in terms of the Commercial Courts Act.

32. List before Court on 6th December 2016 for framing of issues.

S.MURALIDHAR, J AUGUST 30, 2016 dn