Madras High Court
Til Healthcare Private Limited vs Bio Conic Remedies on 6 April, 2022
O.A.Nos.78 to 82 of 2022 in C.S.(Comm. Div.)No.24 of 2022
IN THE HIGH COURT OF JUDICATURE AT MADRAS
DATE D : 06.04.2022
CORAM
The Hon'ble Mr. Justice SENTHILKUMAR RAMAMOORTHY
Original Application Nos.78 to 82 of 2022
and
C.S.(Comm.Div,)No.24 of 2022
TIL Healthcare Private Limited
Rep. By its Authorised Representative
Mrs.Shabeena Thahseen, AVP Regulatory Affairs
Tagros House, 3rd Floor, New No.4(Old No.10),
Club House Road, Anna Road,
Chennai – 600 002. ... Applicant/Plaintiff
(in all Original Applications)
vs.
1.Bio Conic Remedies
Partnership firm,
Rep. By Mr.Shripal Jain
No.66/67, Gondpur,
Industrial Estate, HIPSIDC,
Paonta Sahib District,
Sirmour – 173 025
Himachal Pradesh.
Also at
101, A – Wing, Nilkanth Building,
Opp. Pushp Vinod Building,
S.V.Road, Borivali(West) Mumbai – 400 092.
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O.A.Nos.78 to 82 of 2022 in C.S.(Comm. Div.)No.24 of 2022
2.Nucrest Pharma Private lIMITED,
Rep. By its Dirctor, Vikram Ashok Panjwani
303, 3rd Floor, AHCL Homes,
Near Shimpoli Telephone Exchange,
New Link Road Borivali(W),
Mumbai – 400 09, Maharashtra.
3.Channel Pharmaceuticals Limited,
Rep. By its Director,
Sir Nnamdi Henry Obi,
No.1, Nimo Street, Fegge Onitsha,
Anambra – 434232. Nigeria. ... Respondents/Defendants
(in All Original Applications)
PRAYER IN O.A.NOs.78 to 82 OF 2022: These Original Applications are
filed under Order XIV Rule – 8 of O.S. Rule and Order 39 Rule 1 & 2 of the
Code of Civil Procedure, 1908, praying to an ad interim injunction
restraining the Respondents, their partners, their employees, officers,
servants, agents, and all others acting for and on their behalf from
manufacturing, selling, distributing, exporting, advertising, offering for sale,
any products and in any other manner, directly or indirectly, dealing with
any products under label mark or any other similar/identical mark to the
Applicant's registered trademark ''APETAMIN label'' amounting to an
infringement of the applicant registered trademark No.4145473 in Class 5;
(b) an ad interim injunction restraining the Respondents, their partners,
their employees, officers, servants, agents, and all others acting for and on
their behalf from manufacturing, selling, distributing, exporting,
advertising, offering for sale, any products and in any other manner, directly
or indirectly, dealing with any products under label mark amounting to
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O.A.Nos.78 to 82 of 2022 in C.S.(Comm. Div.)No.24 of 2022
passing off; (c) an ad interim injunction restraining each of the
Respondents, its partners, directors, proprietors, subsidiaries, affiliates,
franchisees, officers, servants, agents, distributors, stockists, representatives,
licensees and any one acting for or on their behalf directly or indirectly, as
the case may be, from using the trade dress or in any manner whatsoever,
and from selling, offering for sale, advertising, manufacturing, mentioning
on their websites dealing in any manner whatsoever or otherwise using the
lay-out and/ or color combination of the trade dress or get-up almost
identical to the Applicant's trade dress amounting to passing off its trade
dress; (d) an ad interim injunction restraining each of the Respondents, its
partners, directors, proprietors, subsidiaries, affiliates, franchisees, officers,
servants, agents, distributors, stockists, representatives, licensees and any
one acting for or on their behalf directly or indirectly, as the case may be
from performing any actions, especially using artistic works identical to
Applicant's original artistic work amounting to infringement of copyright
therein; and (e) an ad interim injunction restraining the Respondents, their
partners, their employees, officers, servants, agents and all other acting for
and on their behalf from using impugned mark and trade dress in any of the
websites, domain names, social media platforms, mobile application and
other intermediaries in any language.
.
For Applicants : Mr.M.S.Bharath
(for all Applications)
For Respondents : Mr.P.V.Balasubramaniam
for M/s.BFS Legal for R-2.
(for all Applications)
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O.A.Nos.78 to 82 of 2022 in C.S.(Comm. Div.)No.24 of 2022
COMMON ORDER
These applications are filed to restrain alleged infringement of the
applicant's registered trademark and copyright and to prevent alleged
passing off. The applicant asserts that it manufactures and markets an
appetite stimulant with multi-vitamins under the name APETAMIN, and that
it is the registered proprietor of the APETAMIN label mark comprising the
said words on an orange background with checks and square or rectangle
shaped blocks in different colours, which is used thereon and in relation
thereto. It is stated that this label mark is in use from the year 2002. It is
also stated that the application for registration was filed on 12.04.2019, and
that the registration is valid up to 12.04.2029.
2. The applicant states that the first respondent/defendant also
manufactures appetite stimulants with multivitamins. The second
respondent/defendant is an exporter of such products to the third
respondent/defendant, which is an importer based in Nigeria. By drawing
reference to the labels of the applicant vis-a-vis that of the
respondents/defendants, it is contended that the use of the label mark with
the words ALPHA APETI PLUS against an orange background, with checks
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O.A.Nos.78 to 82 of 2022 in C.S.(Comm. Div.)No.24 of 2022
and square or rectangle shaped blocks in different colours by the
respondents/defendants constitutes both infringement and passing off. In
particular, the applicant asserts that its label mark comprises 3 features,
namely, the use of the orange background, checked pattern and square and
rectangle shaped blocks in different colours. When seen in combination, it
is asserted that these features are distinctive and that the subsequent
adoption of the same features, especially in combination, by the
respondents/defendants is dishonest, deceptively similar and infringing.
3. In this regard, the applicant relies upon Section 56 of the
Trademarks Act 1999 (the Trademarks Act) which incorporates a legal
fiction by which the application in India of a mark to goods exported from
India would constitute use of the trademark in India in relation to the
relevant goods for any purpose for which such use is material under the
Trademarks Act. With reference to the facts of the case, the applicant
asserts that the undisputed position is that the first and second
respondents/defendants applied the impugned mark - i.e. a label consisting
of the words, ALPHA APETI PLUS, on an orange background with checks
and square or rectangle shaped blocks in different colours - to an appetite
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O.A.Nos.78 to 82 of 2022 in C.S.(Comm. Div.)No.24 of 2022
stimulant within India. Therefore, the legal fiction is triggered and it is
tantamount to the use of an infringing mark within India. As a corollary, the
applicant is entitled to remedies under Section 29 of the Trademarks Act. In
support of these contentions, the applicant relies upon the following
judgments:
(i) UFO Contemporary, Inc v. Creative
Kids Wear (India) Pvt. Ltd and Others, 2020 (84)
PTC 461(Delhi).
(ii) Wockhardt Limited v. Eden
Healthcare Pvt. Ltd, 2014(58) PTC 14 (Bombay)
(iii) Cadila Pharmaceuticals Limited v.
Sami Khatib, 2011(47) PTC 69 (Bombay)
(iv) Kirorimal Kashiram Marketing and
Agencies Private Limited v. Sachdeva and Sons
Industries Pvt. Ltd. 2009 (39) PTC 142 (Delhi).
4. Although notices were served on all the respondents, only the
second respondent entered appearance. The second respondent refutes the
contentions of the applicant on multiple grounds. By way of preamble, the
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O.A.Nos.78 to 82 of 2022 in C.S.(Comm. Div.)No.24 of 2022
second respondent submits that appetite stimulants are banned in India
amongst several other countries. Therefore, the products in question are not
sold in India either by the applicant / plaintiff or by the respondents /
defendants. The next contention is that the second respondent exports the
goods exclusively to the third respondent/ defendant in Nigeria, and the
third respondent/defendant has a registered copyright in respect of the
design, i.e. in respect of the packaging depicted at page 2 of the second
respondent's typed set, in Nigeria. Consequently, it is contended that the
export of the product by using a label, which has IPR protection in Nigeria
cannot be construed as infringing the applicant's trademark. The next
contention of the third respondent is that the suit is improperly instituted in
as much as the board resolution only authorizes the authorized signatory to
submit documents on behalf of the company before the Registrar of
Trademarks in India. To put it differently, the second respondent asserts that
the institution of the suit before this Court by Mrs.Shabeena Thahseen, AVP
Regulatory Affairs, of the applicant is not duly authorized by the applicant.
5. In support of the contention that the applicant is not entitled to
interim relief, the second respondent relies heavily on the judgment of this
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O.A.Nos.78 to 82 of 2022 in C.S.(Comm. Div.)No.24 of 2022
Court in Crompton Greaves Limited v. Salzer Electronics (2011)3 CTC 453
(SJ) (Crompton Greaves). In particular, the second respondent relies upon
paragraphs 26 to 29, 31, 34, 35, 36 and 38 of the said judgment to contend
that the application of a mark in India to goods meant for export is protected
from the charge of infringement provided the importer has IPR protection in
respect thereof in the relevant jurisdiction. The second respondent pointed
out that the judgment of the learned Single Judge was affirmed in appeal in
Crompton Greaves Limited v. Salzer Electronics, 2011(48) PTC 27
(Madras) (DB). The second respondent also pointed out that these
judgments were placed before the learned Single Judge of this Court in
M/s.Meenakshi Overseas LLC v. M/s.V.V.V. & Sons Edible Oils Limited,
order dated 01.02.2019 in A.No.1948 of 2018 in C.S.No.726 of 2017, and
that the learned Single Judge refused to countenance submissions seeking to
distinguish Crompton Greaves on facts on the ground that the said judgment
had interpreted Section 56 of the Trademarks Act. The second respondent
also relied upon the judgment in Britannia Industries v. ITC Limited
2017(70) PTC 66 and, in particular, paragraphs 23 to 25 of the judgment
wherein the Court concluded that colour combinations stand on a different
footing from a trademark or trade name because colours and combinations
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thereof are not inherently distinctive. By analogy, the second respondent
asserted that the colour “orange” is not distinctive and was deployed
because the base colour of the product in question is orange.
6. The second respondent also asserted that the cease and desist
notice was issued to the predecessor-in-interest of the second respondent, a
proprietary concern, on 16.11.2020, and that the present suit and these
interim applications were filed after considerable delay. Consequently, it
was contended that the applicant is not entitled to interim relief. In
conclusion, it was pointed out that the second respondent is an exporter,
which has not exported products bearing the impugned label for about 3
years.
7. By way of a brief rejoinder, the applicant asserted that the
judgment in Crompton Greaves is distinguishable on facts in as much as
there was privity of contract between the plaintiff and the first defendant in
that case. It was also pointed out that the impugned mark therein was not
visible unless the external cover was removed and that those facts had a
material bearing on the outcome. With regard to the board resolution, the
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O.A.Nos.78 to 82 of 2022 in C.S.(Comm. Div.)No.24 of 2022
applicant pointed out that it is a curable error and should not come in the
way of the grant of interim relief. As regards the contention on delay and
laches, the applicant relied upon Midas Hygiene Industries P. Ltd and
others v. Sudhir Bhatia and Others (2004)3 SCC 90 and, in particular,
paragraph 5 thereof, and Hindustan Pencils Pvt. Ltd. v. India Stationery
Products Co. and Others 1989(9) PTC 61 (Delhi) and, in particular,
paragraph 40 thereof to contend that interim injunctions should not be
declined merely on the ground of delay in instituting actions for
infringements.
8. The limited question that arises for consideration is whether the
applicant is entitled to interim injunctions either in respect of infringement
or passing off. Before delving into the other contentions, the objection on
the ground of lack of authorisation is dealt with. The lack of specific
approval in favour of the authorised signatory is a defect, which is capable
of ratification because it is within the power of the board of directors of the
applicant to ratify the same, including with retrospective effect. In my view,
any technical defect, which is capable of ratification, does not preclude the
consideration of applications for interlocutory relief.
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O.A.Nos.78 to 82 of 2022 in C.S.(Comm. Div.)No.24 of 2022
9. Since the case turns heavily on Section 56 of the Trademarks
Act, the said provision is extracted below:
"56. Use of trade mark for export trade and
use when form of trade connection changes.
(1) The application in India of trade mark to
goods to be exported from India or in relation to
services for use outside India and any other act done in
India in relation to goods to be so exported or services
so rendered outside India which, if done in relation to
goods to be sold or services provided or otherwise
traded in within India would constitute use of a trade
mark therein, shall be deemed to constitute use of the
trade mark in relation to those goods or services for any
purpose for which such use is material under this Act or
any other law.
(2) The use of a registered trade mark in
relation to goods or services between which and the
person using the mark any form of connection in the
course of trade subsists shall not be deemed to be likely
to cause deception or confusion on the ground only that
the mark has been or is used in relation to goods or
services between which and the said person or a
predecessor in title of that person a different form of
connection in the course of trade subsisted or subsists."
10. By relying on this provision, the applicant contended that the
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O.A.Nos.78 to 82 of 2022 in C.S.(Comm. Div.)No.24 of 2022
application of the mark to the product in India by the first and second
respondents/ defendants constitutes use of the mark in relation to the
relevant goods for all material purposes under the enactment. Before
proceeding further, it is relevant to record that the applicant does not allege
infringement as regards the word mark and that the grievance is focused on
the label mark. The second respondent does not dispute that the mark was
applied to the relevant goods in India. Therefore, on a textual reading of
Section 56(1), it appears that the legal fiction incorporated therein applies to
the facts of this case. The consequences thereof would be that there is
deemed use of the mark as per Section 2(2)(c) of the Trade Marks Act. Since
such use is admittedly in course of trade, if there is infringement by the
application of the mark, the applicant would be entitled to the same
remedies as are available to products sold in India. Both Section 29(6)(c)
and the judgments cited by the applicant point in the same direction. The
second respondent relied on Crompton Greaves to contend that it is not
liable for infringement or passing off because the product in question is
intended exclusively for export to the third respondent in Nigeria, and the
third respondent has a registered design copyright in respect of the label in
question. In Crompton Greaves, this Court dealt with a case wherein the
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O.A.Nos.78 to 82 of 2022 in C.S.(Comm. Div.)No.24 of 2022
plaintiff had engaged the services of the first defendant therein to
manufacture goods for export purposes and in connection therewith to apply
the plaintiff's logo, CG, on such goods. Subsequently, it appears that the
second defendant therein engaged the services of the first defendant therein
to manufacture products for export to the second defendant by applying the
second defendant's registered trademark MCG thereto, which such second
defendant had registered in the UK under the applicable trademark
legislation. In that factual contact, by an interim order, this Court refused to
grant interim relief to the plaintiff therein. In course of deciding the
application, the Court examined both Section 56 and Section 30(2)(e). It
should be noticed that Section 30(2)(e) prescribes that a registered
trademark is not infringed by its use by a registered proprietor of a mark in a
situation where two or more trademarks, which are identical or which nearly
resemble each other, have been registered. On the facts of this case, the
admitted position is that the respondents/defendants do not have a registered
trademark in India or elsewhere. As such, whether directly or by analogy,
the respondents/defendants are not entitled to protection under Section
30(2)(e) of the Trademarks Act.
11. While on this issue, it should be borne in mind that these are
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O.A.Nos.78 to 82 of 2022 in C.S.(Comm. Div.)No.24 of 2022
proceedings instituted in India by the registered proprietor of a trademark in
India, inter alia, alleging infringement of such trademark in India. As stated
earlier, the applicant is entitled to invoke Section 56(1) because the
impugned mark was admittedly applied to products within India. By
contrast, in case the first or second respondents/defendants had exported the
goods to Nigeria and applied the mark there, Section 56 would not be of any
assistance to the applicant. In my view, once it is concluded that Section 56
applies, the critical aspect to be considered is whether the respondents
infringed the applicant's registered trademark or whether the sale of the
products in question constitute passing off. This question is considered
next.
12. For such purpose, the marks in question should be compared.
In matters of this nature, the Court is required to postulate a person of
average intelligence and imperfect recollection and examine the registered
mark and the impugned mark from the perspective of such
person. The marks in question are set out below:
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O.A.Nos.78 to 82 of 2022 in C.S.(Comm. Div.)No.24 of 2022
If the marks in question are compared from the above perspective, it is
noticeable that the registered label mark of the applicant consists of three
elements which should be looked at collectively or in combination. These
three elements are: the orange colour, the checks and the square or
rectangular blocks in different colours, which are distinctive when seen in
combination. The first and second respondents have adopted a label which
also uses these three elements, and this label was adopted subsequently.
When viewed as a whole, the two marks appear to be deceptively similar.
Therefore, the impugned label prima facie infringes the proprietary interest
of the applicant.
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O.A.Nos.78 to 82 of 2022 in C.S.(Comm. Div.)No.24 of 2022
13. With regard to the relief of passing off, such relief is distinct
from the relief of infringement in as much as it is founded on the tort of
deceit. Thus, the likelihood of deception is central thereto. Section 27 (2) of
the Trademarks Act recognises the common law remedy of passing off as an
exception to the rule that statutory rights under the Trademarks Act are not
available in respect of unregistered trademarks. In this case, the second
respondent states that the products in question are exclusively intended for
export to a particular customer, namely, the third respondent in Nigeria. The
applicant has not pointed out any instance of sale in India. In those
circumstances, the applicant has not prima facie satisfied the more stringent
requirements for grant of interim relief in respect of passing off. Although
the applicant relied on at least two judgments to contend that the legal
fiction under Section 56 of the Trade Marks Act extends to the common law
remedy of passing off in view of the use of the expression “or any other
law” at the tail of sub-section (1) thereof, the question whether the common
law remedy extends by legal fiction to sale in Nigeria by virtue of Section
56 of the Trademarks Act is left open for adjudication in course of final
disposal.
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O.A.Nos.78 to 82 of 2022 in C.S.(Comm. Div.)No.24 of 2022
14. Accordingly, there shall be an order of interim injunction
restraining the respondents from using the impugned mark in India on the
products ALPHA APETI PLUS in course of export to Nigeria or otherwise.
The applications for passing off and copyright infringement are dismissed.
15. In fine, O.A.No.82 of 2022 is allowed as prayed for.
O.A.Nos.78 to 81 are dismissed.
16. List A.No.585 of 2022 and the suit on 25.04.2022.
06.04.2022
rna/rrg
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O.A.Nos.78 to 82 of 2022 in C.S.(Comm. Div.)No.24 of 2022
SENTHILKUMAR RAMAMOORTHY,J
rna/rrg
O.A.Nos.78 to 82 of 2022
and A.No.585 of 2022
in C.S.(Comm.Div.) No.24 of 2022
06.04.2022
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