Kerala High Court
Arun Krishnan M vs M/S. Cure And Care Therapeutics on 29 May, 2024
IN THE HIGH COURT OF KERALA AT ERNAKULAM
PRESENT
THE HONOURABLE MR. JUSTICE G.GIRISH
WEDNESDAY, THE 29TH DAY OF MAY 2024 / 8TH JYAISHTA, 1946
FAO NO.117 OF 2022
AGAINST THE ORDER DATED 29.08.2022 IN I.A.NO.2/2021 IN OS
NO.5 OF 2021 OF ADDITIONAL DISTRICT COURT - II, MANJERI /
II ADDITIONAL MACT, MANJERI
APPELLANT/RESPONDENT/DEFENDANT:
ARUN KRISHNAN M.
AGED 38 YEARS
RESIDING AT T.C. 29/202, KRISHNA VILAS, LAKSHMI VILAKAM
LANE, THENGAPURA ROAD, PETTAH P.O., THIRUVANANTHAPURAM
DISTRICT, PIN - 695024
BY ADVS.
ALEX.M.SCARIA ; BEAS K. PONNAPPAN
SARITHA THOMAS ; SAHL ABDUL KADER
ALEN J. CHERUVIL ; G.SREEKUMAR (CHELUR)
SANJITH KUMAR R. ; P.B.KRISHNAN (SR.)(K/1193/1994)
RESPONDENT/PETITIONER/PLAINTIFF:
M/S. CURE AND CARE THERAPEUTICS
ROOM NO. 4/563 (21), KTK COMPLEX, OPP. GOVT. HOSPITAL,
PALAKKAD ROAD, PERINTHALMANNA AMSOM, MALAPPURAM
DISTRICT, PIN. 679332, REPRESENTED BY ITS PARTNER
SUDHEESH PALAT, AGED 41 YEARS, S/O KARUNAKARAN,
RESIDING AT PALAT HOUSE, MUNDAKKAD, VALLIKUNNU P.O.,
KADALUNDI NAGARAM (VIA), KADALUNDI AMSOM, MALAPPURAM
DISTRICT, PIN - 673314
BY ADVS.
T.M.RAMAN KARTHA ; MANJU R. KARTHA(M-546);
M.S.SOUJATH(K/85/2006); REVATHY M.A.(K/001160/2022);
GREESHMA T.G.(K/002281/2022); SNEHA BRIGIT
PRINCE(K/282/2023)
THIS FIRST APPEAL FROM ORDERS HAVING COME UP FOR HEARING
ON 20.05.2024, THE COURT ON 29.05.2024 DELIVERED THE
FOLLOWING:
2
F.A.O.No.117/2022
G.GIRISH, J.
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F.A.O.No.117 of 2022
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Dated this the 29th day of May, 2024
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JUDGMENT
The order passed by the Additional District Judge-II,
Manjeri in I.A.No.2/2022, a petition filed under Order XXXIX
Rules 1 and 2 of the Code of Civil Procedure in
O.S.No.5/2021, restraining the defendant in the said suit by
a temporary injunction from manufacturing and offering for
sale medicinal and pharmaceutical preparations under the
trade mark 'CILNICUE' and from passing off the defendent's
goods as that of the plaintiff by using any name/mark similar
to 'CILNICURE', is under challenge in this appeal.
2. For the sake of convenience, the parties are
referred hereafter in their capacities as 'plaintiff' and
`defendant' respectively. The plaintiff obtained trademark
registration in respect of the pharmaceutical product with
trade name 'CILNICURE' on 08.08.2017. The above item is
said to be a drug used for the treatment of blood pressure.
The defendant obtained trademark registration on
07.09.2021 in respect of the pharmaceutical product with
trade name 'CILNICUE', which is also said to be used for the
treatment of blood pressure. Alleging that there is
infringement of trade mark and passing off by the defendant
by resorting to unfair trade practice, the plaintiff instituted
the suit for the relief of permanent prohibitory injunction
restraining the defendant from manufacturing and offering
for sale medicinal or pharmaceutical preparations under the
trademark 'CILNICUE', or any other mark deceptively similar
to the plaintiff's registered trademark 'CILNICURE', and also
from passing off the defendant's goods as that of the plaintiff
by using any name or mark similar to 'CILNICURE'. An
interim application was also filed by the plaintiff for
restraining the defendant by a temporary injunction till the
disposal of the suit upon the same terms as stated above.
The defendant appeared and filed counter to the injunction
application contending that the trademark name 'CILNICUE'
was adopted by them by adding the prefix 'CILNI' from the
content of the product 'CILNIDIPINE' and suffixing 'CUE' from
the name of his organisation 'CUE LABS' which deals with the
manufacture of more than 36 products of medicines which
are marketed mainly at Thiruvananthapuram, Kollam,
Pathanamthitta and Thrissur Districts. The defendant further
contended that the plaintiff is not entitled for the injunction
prayed for since the defendant has obtained trademark
registration for his product 'CILNICUE' after complying with
all the legal formalities. According to the defendant, the
names 'CILNICURE' and 'CILNICUE' are verbally different
from each other, and there is no scope for any confusion
leading to passing off or infringement of trademark right.
3. The learned Additional District Judge, after hearing
both sides, arrived at the finding that the parameters of prima
facie case, balance of convenience and comparative hardship
favoured the plaintiff, and accordingly granted the temporary
injunction as per the order which is under challenge in this
appeal.
4. Heard the learned counsel for the
appellant/defendant and the learned counsel for the
respondent/plaintiff.
5. The learned counsel for the defendant argued that
the order under challenge is prima facie not sustainable due
to the failure of the learned Additional District Judge to have
the documents relied on in the order, exhibited and
mentioned in an appendix which ought to have been annexed
to the said order. It is thus pointed out that the impugned
order is inherently defective and liable to be set aside at the
threshold.
6. It is true that the impugned order does not refer to
the documents relied on as exhibits, and nor does the said
order contain any appendix showing the documents relied on
under the relevant category as exhibits for the plaintiff,
exhibits for the defendant or as court documents. On the
other hand, in paragraph Nos.7, 9 and 11, the learned
Additional District Judge has referred to various records as
produced by the parties, without caring to get those
documents provisionally marked and indexed. Though the
above defect is sufficient for a remand of this case to the trial
court with a direction to comply Rule 181 and Rule 186 of the
Civil Rules of Practice, and to pass orders afresh, I do not
venture to adopt the above course since the facts borne out
of the said records are more or less undisputed, and the
plaintiff has produced the copies of those records in this
appeal as Annexures-R1(a), R1(b) and R1(d).
7. Adverting to the maintainability of injunction order
as against a registered trademark, when the issue involved is
passing off, the learned Additional District Judge observed in
the impugned order that the trademark 'CILNICUE' coined by
the defendant, is deceptively similar to the trademark
'CILNICURE' being used by the plaintiff. It is further observed
in the impugned order that the product of the plaintiff is in
market since 2013, whereas, the trademark of the defendant
was registered only in the year 2021. The above aspects are
revealed from Annexures-R1(a), R1(b), R1(c) and R1(d),
though the said records are not exhibited in the impugned
order. Referring to the prior registration and use of the
tradename 'CILNICURE' by the plaintiff, the trial court
observed in the impugned order that the use of the
tradename 'CILNICUE' by the defendant can cause passing
off and infringement of the right of the plaintiff since the
product of the plaintiff is on market since 2013. It is upon the
above premises that the trial court allowed the injunction
application moved by the plaintiff and passed the order under
challenge.
8. In Cadila Health Care Ltd. v. Cadila
Pharmaceuticals Ltd. [AIR 2001 SC 1952], the Apex
Court carved out the following factors to be considered for
deciding the question of deceptive similarity in an action for
passing off on the basis of unregistered trademark :
"(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 resemblance between the
marks, phonetically similar and hence similar in idea.
(c) The nature of the goods in respect of which
they are used as trademarks.
(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.
(f) The mode of purchasing the goods or placing
orders for the goods, and
(g) Any other surrounding circumstances which
may be relevant in the extent of dissimilarity between
the competing marks."
9. As far as the present case is concerned, clauses (a)
to (f) enumerated in the aforesaid decision of the Apex Court
are clearly attracted due to the use of the word mark
'CILNICUE' by the defendant, though the defendant has got
trademark registration for the same, after four years from the
trademark registration obtained by the plaintiff for the
product 'CILNICURE'. The degree of resemblance of the
above two trademarks is very high, and phonetic similarity is
also of the higher level so that there is every possibility of a
customer getting misguided. As already stated above, both
the above pharmaceutical products are said to have been
used for the treatment of blood pressure, and hence, any
mistaken consumption of the medicine is likely to cause injury
and complications. It is to be noted that the chances of
pharmacists misreading the prescription written by doctor,
cannot be ruled out since the only difference in the names of
the drug is the absence of the letter 'R' in 'CILNICUE', which
does not make any marked phonetic dissimilarity. Taking into
account of the above peculiar facts and circumstances, the
trial court cannot be found fault with for granting the
temporary injunction sought for by the plaintiff.
10. The learned counsel for the defendant pointed out
that the product 'CILNICUE' is marketed only in
Thiruvananthapuram, Kollam, Pathanamthitta and Thrissur
Districts, and hence, the trade of the defendant in the above
regard would no way affect the trade of the plaintiff, which is
mainly concentrated at Malabar area. The above contention
of the defendant is no excuse for refusing the temporary
injunction order sought for by the plaintiff. It is not possible
to expect that the defendant will not expand his trade and
business to the Districts, north of Thrissur. Nor could it be
said that the plaintiff should confine their business to Malabar
area to avoid the risk of passing off due to the subsequent
registration of a trademark, by the defendant, deceptively
similar to the trademark of the plaintiff. Thus, there is
absolutely no merit in the argument advanced by the learned
counsel for the defendant in the above regard.
11. As a conclusion to the above discussion, I find no
reason to interfere with the impugned order passed by the
learned Additional District Judge, and hence, the appeal fails.
In the result, the appeal is hereby dismissed. No costs.
Sd/-
G.GIRISH, JUDGE
jsr/vgd
PETITIONER'S ANNEXURES
ANNEXURE A1 TRUE COPY OF THE PLAINT IN OS. NO 5 OF
2021 DATED 07/10/2021 ON THE FILES OF
HONOURABLE DISTRICT COURT, MANJERI.
ANNEXURE A2 TRUE COPY OF THE I.A. NO. 2 OF 2021 IN
OS. NO 5 OF 2021 DATED 07/10/2021 ON THE
FILES OF HONOURABLE DISTRICT COURT,
MANJERI
ANNEXURE A3 TRUE COPY OF THE COUNTER STATEMENT IN
I.A. NO. 2 OF 2021 IN OS. NO 5 OF 2021
DATED 25/11/2021 ON THE FILES OF
HONOURABLE DISTRICT COURT, MANJERI.
RESPONDENT'S ANNEXURES
ANNEXURE R1(A) TRUE COPY OF THE JOURNAL PUBLICATION OF
THE APPLICATION FOR REGISTRATION OF THE
TRADE MARK DT. 20.03.2017
ANNEXURE R1(B) TRUE COPY OF THE CERTIFICATE OF
REGISTRATION OF TRADE MARKS DT.8.8.2017
ANNEXURE R1(C) TRUE COPY OF THE JOURNAL PUBLICATION DT.
19.4.2021 OF THE APPLICATION FOR
REGISTRATION OF THE TRADE MARK OF THE
APPELLANT
ANNEXURE R1(D) TRUE COPY OF THE CERTIFICATE OF
REGISTRATION OF TRADE MARKS DT.7.9.2021
