Delhi High Court
Abbott Healthcare Pvt. Ltd. vs M/S. Fizark Healthcare & Anr. on 28 February, 2017
$
* IN THE HIGH COURT OF DELHI AT NEW DELHI
Reserved on: 16th February, 2017
Pronounced on: 28th February, 2017
+ CS (OS) 3799/2014
ABBOTT HEALTHCARE PVT. LTD. ..... Plaintiff
Through: Ms. Astha Joshi, Advocate
versus
M/S. FIZARK HEALTHCARE & ANR. ..... Defendants
Through: Ex parte
CORAM:
HON'BLE MR. JUSTICE R.K.GAUBA
JUDGMENT
1. This civil suit raises the issue of infringement of plaintiff‟s
trademark „ESGIPYRIN‟, registered as trademark no.293710 in Class
05 on 1st January, 1974, initially in the name of Suhrid Geigy Limited
(SGL), the said company having later changed its name to S.G.
Chemicals and Pharmaceuticals Limited (SGCPL) eventually merging
with Ambala Sarabhai Enterprises Limited (ASE) forming, in due
course, a joint venture (JV) company called Compact Pharma Private
Limited, converting into Compact Pharma Limited and later changing
its name to Sarabhai Piramal Pharmaceuticals Limited in whose
favour the said registered trademark was assigned by ASE by virtue of
assignment agreement dated 03.10.1997, the JV company having since
merged with Nicholas Piramal India Limited (now named as Piramal
Enterprises Limited), the plaintiff being the assignee of the said
trademark in terms of assignment agreement dated 8th September,
2010 executed by the last said proprietor of the trademark (Piramal
Healthcare Limited), and having applied, on 21st February, 2011, the
said assignment of the trademark to be noted by the trademark
registry.
2. By the present suit, the plaintiff alleged infringement of its
trademark by the defendants, also statedly passing off their similarly
placed pharmaceutical product under the mark „EASIPYRIN‟.
Besides seeking prohibitory injunction against infringement and
passing off, the plaintiff also having alleged breach of its copyright by
the defendants on the averments that they have adopted deceptively
similar packaging for its tartrazine (yellow) tablets sold by the plaintiff
in the form of a unique yellow front strip prominently displayed in
silver font in a black box on the silver foil backside and orange colors
bearing a unique design (being outline of men in different postures)
with the lag line "the potent dual acting analgesic anti inflammatory",
seeking prohibitory injunction against such imitation of the packaging,
trade dress, etc., in addition to prayer for order for delivery up of all
goods, dyes, blocks, labels, printed matter, etc. (as infringe the
intellectual property rights) for purposes of destruction/erasure and
damages for the losses incurred claimed in the sum of Rs.20 lacs.
3. The plaintiff and the first defendant are described as companies
engaged in the business of manufacture and sale of pharmaceutical
products. The products sold under the trademark „ESGIPYRIN‟ by the
plaintiff is described as diclofenac sodium and paracetamol
preparations", the said preparation being an extremely popular and
widely distributed anti inflammatory analgesic drug. The product of
the defendants sold under the impugned trademark „EASIPYRIN‟ is
similarly placed medicinal preparation, also described as one
containing "diclofenac sodium and paracetamol tablets", both being
non-steroidal anti-inflammatory drugs (NSAID) used to relieve pain
and reduce inflammation.
4. In the suit, the plaintiff demonstrated the deceptive similarity of
the packaging of the two competing products as under:-
Comparison Plaintiff's Defendants'
product product
Trade Mark:
The mark of both the
ESGIPYRIN EASIPYRIN
plaintiff and defendants are
identical except few
products of defendants are
sold in similar yellow
coloured blister packaging.
Front side of strips
Exterior carton (box)
packaging:
Both products are packed
in a box with identically
orange-white colour
scheme, layout and design
Back side of strips
5. The plaintiff‟s claim in the suit was based on the averments that
the introduction of the defendants‟ infringing product came to its
knowledge in October, 2014 giving rise to a cause of action, the
trademark „EASIPYRIN‟ and the packaging with trade dress as
mentioned above having been adopted by the defendants intentionally
to ride on the goodwill and reputation of the plaintiff and to exploit the
same and derive unfair advantage.
6. The defendants were served with summons but failed to put in
appearance or contest and consequently were set ex parte by order
dated 17.07.2015.
7. The plaintiff having been called upon to lead ex parte evidence
examined Ms. Tejal Mundkur (PW-1) its Manager - Legal and
authorized signatory. She deposed on the strength of her affidavit
Ex.PW-1/A. By the said affidavit, the plaintiff‟s witness has proved
the registration of trademark „ESGIPYRIN‟ in Class 05 vide
trademark no.293710 as of 22nd January, 1974 (Ex.PW-1/4). The
uncontested and uncontroverted evidence of PW-1 has also proved on
record the assignment of the said registered trademark eventually in
favour of the plaintiff. The plaintiff‟s witness further proved the
necessary facts concerning the impugned product of the defendants
sold under the mark „EASIPYRIN‟ in strips and packaging (Ex.PW-
1/8 and PW-1/9) which depict the deceptive similarity with the one of
the plaintiff‟s product sold under the registered trademark
„ESGIPYRIN‟ (Ex.PW-1/6 and PW-1/7).
8. A comparison of the plaintiffs registered trademark with the
defendants‟ mark itself is sufficient to record satisfaction that the
plaintiff‟s grievances are genuine and well founded. Both the marks
are phonetically similar in relation to identical medicinal preparations.
Since the plaintiff‟s trademark has been in prior use, the defendants
having not entered appearance so as to plead that it has any
registration with regard to mark under which it is selling its product or
to raise any other valid defences available in law, the use of the
impugned mark by the defendants, in the given facts and
circumstances, must be held to be infringing the trademark of the
plaintiff‟s use with regard to similar goods. The stark similarity of the
packaging and trade dress is also proved by the plaintiff‟s evidence to
which there has been no contest whatsoever.
9. Thus, while a case for prohibitory injunction has been brought
home, it must be observed that there being no evidence brought on
record with regard to existence of any such goods, dyes, blocks, labels
or printed matter of the defendants as may require to be directed to be
delivered up for destruction, or to assess the losses incurred for fair
and reasonable damages awardable to be computed, reliefs on the
other counts do not deserve to be granted.
10. In the result, the suit is partly decreed with costs. A permanent
injunction is granted in favour of the plaintiff and against the
defendants, their directors, partners, proprietors, officers, servants,
agents and representatives from manufacturing, selling and offering
for sale, advertising or doing any other act whatsoever, including the
use of blister strip or packaging/trade dress, in relation to the
medicinal preparation under the trademark „EASIPYRIN‟ or any other
deceptively similar mark thereby:-
(a) infringing the plaintiff‟s trademark registration
no.293710 in Class 05 for the mark „ESGIPYRIN‟;
(b) passing off their goods or business as that of
plaintiff; or
(c) in packaging or using trade dress which is deceptive
imitation or substantive reproduction of that of the
plaintiff‟s product.
11. Decree sheet shall be drawn up accordingly.
(R.K. GAUBA)
JUDGE
FEBRUARY 28, 2017
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