Madras High Court
M/S.Dabur India Limited vs Bison Laboratories Private ... on 22 June, 2021
C.S.No.919 of 2001
IN THE HIGH COURT OF JUDICATURE AT MADRAS
DATED : 22.06.2021
CORAM
THE HONOURABLE MR.JUSTICE R.SUBRAMANIAN
C.S.No.919 of 2001
M/s.DABUR INDIA LIMITED,
Having its Registered Office at
8/3, Asaf Ali Road,
New Delhi – 110 002.
A Company registered under the Companies Act, 1956,
having its Office at
Balsara House,
43, Nagindas Master Road,
Fort, Mumbai – 400 011.
...Plaintiff
.Vs.
1.BISON LABORATORIES PRIVATE LIMITED,
Represented by its Managing Directors,
34, Krishnapuram Street,
Choolaimedu,
Chennai – 600 094.
2.K.M.Thomas,
Proprietor of Bison Laboratores,
34, Krishnapuram Street,
Choolaimedu,
Chennai – 600 094. ... Defendants
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C.S.No.919 of 2001
Plaint filed under Order IV Rule 1 of the Original Side Rules read
with Order VII Rule 1 of the Code of Civil Procedure and Sections 105
and 106 of the Trade and Merchandise Marks Act, 1958 praying for a
judgment and decree of
a) perpetual injunction restraining the defendants whether by
themselves or their respective servants or agents or assigns or otherwise
hwosoever from infringing the registered trade marks “ODOPIC” of the
plaintiff in any way and from selling or offering for sale or marketing any
of the defendants products under the said trade mark “ODOSOL” or any
mark deceptively or confusingly similar to or in colourable imitation of
the plaintiff's said registered trade mark ODOPIC.
b) perpetual injunction restraining the defendants, whether by
themselves or by their servants or agents or assigns or otherwise
howsoever from passing off or attempting to pass off or causing,
enabling or assisting others to pass off the products not of the plaintiff as
and for the products of the plaintiffs by use in connection therewith or in
course of trade the said word or trade mark “ODOSOL” or any word
name or mark being a substantial reproduction or colurable imitation of
the plaintiff's trade marks ODOPIC and/ or ODOMOS and/ or ODONIL.
c) delivery up or destruction upon oath of all cleaning preparations
bearing the trade mark “ODOSOL” together with all the cartons, labels,
stamps stationery price lists, literature, advertising materials, blocks,
scripts, dies, and all other materials bearing the infringing trade mark
“ODOSOL” and instruments used for printing the same or any mark
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C.S.No.919 of 2001
deceptively similar to or in colourable imitation of the plaintiff's trade
mark ODONIL and/ or ODOMOS and/ or ODOPIC in the possession,
custody or control of the defendants and verification upon oath that the
defendants have no such further materials in their possession, custody or
control.
d) decree directing the defendants to render a true and faithful
account in respect of the infringed products sold by the defendants.
e) for payment of damages of the amount so found to have been
suffered by the plaintiff and a decree for the amount found upon such
enquiry and
f) for costs of the suit.
For Plaintiff : Mr.H.Karthik Seshadri
For Defendants : Mr.Rahul M.Shankar
for Mr.A.A.Mohan
********
JUDGMENT
The prayer in the suit reads as follows:-
The plaintiff prays for a judgment and decree of
(a) perpetual injunction restraining the defendants whether by
themselves or their respective servants or agents or assigns or otherwise
hwosoever from infringing the registered trade marks “ODOPIC” of the
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C.S.No.919 of 2001
plaintiff in any way and from selling or offering for sale or marketing any
of the defendants products under the said trade mark “ODOSOL” or any
mark deceptively or confusingly similar to or in colourable imitation of
the plaintiff's said registered trade mark ODOPIC.
(b) perpetual injunction restraining the defendants, whether by
themselves or by their servants or agents or assigns or otherwise
howsoever from passing off or attempting to pass off or causing,
enabling or assisting others to pass off the products not of the plaintiff as
and for the products of the plaintiffs by use in connection therewith or in
course of trade the said word or trade mark “ODOSOL” or any word
name or mark being a substantial reproduction or colurable imitation of
the plaintiff's trade marks ODOPIC and/ or ODOMOS and/ or ODONIL.
(c) delivery up or destruction upon oath of all cleaning
preparations bearing the trade mark “ODOSOL” together with all the
cartons, labels, stamps stationery price lists, literature, advertising
materials, blocks, scripts, dies, and all other materials bearing the
infringing trade mark “ODOSOL” and instruments used for printing the
same or any mark deceptively similar to or in colourable imitation of the
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C.S.No.919 of 2001
plaintiff's trade mark ODONIL and/ or ODOMOS and/ or ODOPIC in
the possession, custody or control of the defendants and verification
upon oath that the defendants have no such further materials in their
possession, custody or control.
(d) decree directing the defendants to render a true and faithful
account in respect of the infringed products sold by the defendants.
(e) for payment of damages of the amount so found to have been
suffered by the plaintiff and a decree for the amount found upon such
enquiry and
(f) for costs of the suit.
2. Though the written statement has been filed and issues have
been framed, it is seen from the records that there is an injunction
operating against the defendants restraining them from using the mark
ODOSOL. The said injunction has been in force for nearly 20 years
now.
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C.S.No.919 of 2001
3. Mr.Rahul M.Shankar, learned counsel representing the counsel
for the defendants would submit that the records in their office would
show that the defendants have ceased to use the mark ODOSOL for
considerable time and infact he took time to report such non-usage on
22.04.2021. Today, when the matter is listed, the counsel would submit
that there is no response from the defendants to the communications
addressed to them by the office of the counsel seeking instructions on
further proceedings in the suit.
4. A perusal of the records of the suit and the fact that there was an
order of injunction would really lead to the inference that the defendants
have no real prospect of successfully defending the claim as the mark of
the plaintiff ODOPIC is the registered trade mark and it cannot be said
that the mark used by the defendants viz., ODOSOL is materially
different from the mark ODOPIC.
5. Applying the tests laid down by the Hon'ble Supreme Court in
Parle Products Private Limited Vs. J.P. & Co., Mysore reported in
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C.S.No.919 of 2001
AIR 1972 SC 1359, I find that the case of the plaintiff that there is a
deceptive similarity between the two marks is just. In view of the same,
the suit is decreed granting the prayer for permanent injunction
restraining the defendants from infringing the registered trade mark of
the plaintiff ODOPIC and offering for sale or marketing any of the
defendants products under the said trade mark “ODOSOL” or any mark
deceptively or confusingly similar to or in colourable imitation of the
plaintiff's said registered trade mark ODOPIC.
6. In fine, the prayers (a) and (b) are granted as prayed for.
Mr.Karthik Seshadri, learned counsel appearing for the plaintiff would
submit that he is not pressing the prayers (c), (d) and (e). The parties will
bear their respective costs.
22.06.2021
dsa
Index : No
Internet : Yes
Non-speaking order
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C.S.No.919 of 2001
List of the witnesses examined on the side of the plaintiff:
PW1 – Dinesh Shah
List of Exhibits marked on the side of the plaintiff :
Sl. Exhibits Description Dated
No.
1 Ex.P1 Board Resolution 29.01.2008
2 Ex.P2 Certified copy of order in C.P.No.469 of 08.09.2006
2006 with C.A.No.677 of 2006
3 Ex.P3 Registration of Trade mark ODOPIC -
4 Ex.P4 Renewal certificate -
5 Ex.P5 Trade Mark certificate of ODONIL -
6 Ex.P6 Renewal certificate -
7 Ex.P7 Form TM-12 addressed to Trade mark -
series Registry
8 Ex.P8 Form TM-24 addressed to Trade mark -
series Registry
9 Ex.P9 Registration of Trade mark ODOMOS -
10 Ex.P10 Renewal certificate -
11 Ex.P11 Form TM-24 addressed to Trade mark -
series Registry
12 Ex.P12 Registration Certificate of ODOPIC -
13 Ex.P13 Renewal certificate -
14 Ex.P14 True copy of the Trade Mark certificate -
relating to Trade Mark No.251697
15 Ex.P15 Renewal certificate -
16 Ex.P16 Certificate of validity of trade mark -
17 Ex.P17 Registration of renewal -
18 Ex.P18 Registration of trade mark ODMOS -
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C.S.No.919 of 2001
Sl. Exhibits Description Dated
No.
19 Ex.P19 Notarized copy of certificate of trade mark -
No.303048
20 Ex.P20 Certified true copy of application for grant -
of trade mark ODONIL in Russia
21 Ex.P21 Copy of the registration certificate of Trade -
Mark No.102135
22 Ex.P22 Certified true copy of the intimation -
regarding filing of application before
National Intellectual Property office of
Srilanka for ODONIL
23 Ex.P23 Certified true copy of the intimation
regarding filing of application before
National Intellectual Property office of
Srilanka for ODOPIC
24 Ex.P24 Certified copy of the letter 10.05.2006
25 Ex.P25 Certified copy of the letter 13.03.2005
26 Ex.P26 Certified copy of the letter 17.01.2005
27 Ex.P27 ODOPIC bar lable -
28 Ex.P28 ODOPIC scouring powder lable -
29 Ex.P29 ODONIL air freshener (Mogra) lable -
30 Ex.P30 ODONIL air freshener (Jasmine) lable -
31 Ex.P31 ODONIL air freshener (Lavender) lable -
32 Ex.P32 ODONIL air freshener (Rose) lable -
33 Ex.P33 ODONIL moth repellant (Jasmine) lable -
34 Ex.P34 ODONIL moth repellant (Mogra) lable -
35 Ex.P35 ODONIL moth repellant (Rose) lable -
36 Ex.P36 ODONIL moth repellant (Lavender) lable -
37 Ex.P37 ODONIL moth repellant (Lemon fresh) -
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C.S.No.919 of 2001
Sl. Exhibits Description Dated
No.
lable
38 Ex.P38 ODONIL moth repellant (Country spice) -
lable
39 Ex.P39 ODONIL moth repellant (Old English -
Lavender) lable
40 Ex.P40 ODONIL moth repellant (NAF-Guard) -
lable
41 Ex.P41 ODOMOS mosquito repellant cream lable -
42 Ex.P42 ODOMOS mosquito coils lable -
43 Ex.P43 ODOMOS mosquito mats lable -
44 Ex.P44 Lawyer's notice 24.09.2001
45 Ex.P45 Lawyer's reply notice 01.10.2001
46 Ex.P46 Rejoinder 19.10.2001
47 Ex.P47 Further reply 06.11.2001
48 Ex.P48 Notice of 1st Annual General Meeting -
49 Ex.P49 Notice of 2nd Annual General Meeting -
50 Ex.P50 10 Annual Report 2005-06 -
51 Ex.P51 Agreement 28.06.2002
52 Ex.P52 Certified copy of Agreement 31.05.1999
53 Ex.P53 Certified copy of Agreement 02.07.1999
54 Ex.P54 True copy of Agreement 15.12.1999
55 Ex.P55 Certified copy of the Agreement 31.03.2000
56 Ex.P56 Certified copy of the Agreement 15.12.1999
57 Ex.P57 True copy of Agreement 30.09.1999
58 Ex.P58 True copy of Agreement 11.05.2000
59 Ex.P59 True copy of Agreement 30.09.1999
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C.S.No.919 of 2001
Sl. Exhibits Description Dated
No.
60 Ex.P60 True copy of Agreement 21.06.2000
61 Ex.P61 True copy of Agreement 30.09.1999
62 Ex.P62 True copy of Agreement 04.11.2000
63 Ex.P63 22nd Annual Report 1999-2000 -
64 Ex.P64 22nd Annual Report 1999-2000 -
65 Ex.P65 28th Annual Report 2005-2006 -
List of the witnesses examined on the side of the defendants: Nil
List of Exhibits marked on the side of the defendants: Nil
22.06.2021
dsa
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C.S.No.919 of 2001
R.SUBRAMANIAN, J.
dsa
C.S.No.919 of 2001
22.06.2021
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