Madras High Court
M/S.Apex Laboratories Pvt. Ltd vs M/S. Knoll Healthcare Pvt Ltd on 19 June, 2025
Author: Senthilkumar Ramamoorthy
Bench: Senthilkumar Ramamoorthy
2025:MHC:1419
C.S.(Comm.Div.) No.355 of 2020
IN THE HIGH COURT OF JUDICATURE AT MADRAS
Judgment Reserved on 15.04.2025
Judgment Pronounced on 19.06.2025
CORAM
THE HONOURABLE MR.JUSTICE SENTHILKUMAR RAMAMOORTHY
C.S (Comm. Div.) No.355 of 2020 &
O.P.(TM) Nos.1 & 2 of 2023
C.S.(Comm. Div.) No.355 of 2020
M/s.Apex Laboratories Pvt. Ltd.
29, III Floor, SIDCO Garment Complex,
Guindy, Chennai 600 032,
rep. by its Authorised Signatory,
D.Jude F.L.S.Durai Pandian ... Plaintiff
vs.
M/s. Knoll Healthcare Pvt Ltd
M-17, Pharma Tower, Badli Industrial Area,
New Delhi-110 042. ... Defendant
O.P.(TM) No.1 of 2023
M/s. Knoll Healthcare Pvt Ltd
M-17, Pharma Tower, Badli Industrial Area,
New Delhi-110 042. ... Petitioner
1
https://www.mhc.tn.gov.in/judis ( Uploaded on: 20/06/2025 12:51:10 pm )
C.S.(Comm.Div.) No.355 of 2020
vs.
1. M/s.Apex Laboratories Private Limited,
29, III Floor, SIDCO Garment Complex,
Guindy, Chennai-600 032.
2. The Registrar of Trade Marks,
Office of the Trade Marks Registry,
Intellectual Property Rights Building,
Industrial Estate, SIDCO RMD,
Godown Area, G.S.T. Road, Guindy,
Chennai-600 032. ... Respondents
O.P.(TM) No.2 of 2023
M/s.Apex Laboratories Pvt. Ltd.
29, III Floor, SIDCO Garment Complex,
Guindy, Chennai-600 032,
rep. by its Authorised Signatory
D.Jude F.L.S.Durai Pandian. ... Petitioner
vs.
1. M/s. Knoll Healthcare Pvt Ltd
M-17, Pharma Tower, Badli Industrial Area,
New Delhi-110 042.
2. The Registrar of Trademarks,
Office of the Trademarks Registry,
Boudhik Sampada Bhawan,
Plot No.32, Sector 14, Dwarka,
New Delhi-110 078. ... Respondents
2
https://www.mhc.tn.gov.in/judis ( Uploaded on: 20/06/2025 12:51:10 pm )
C.S.(Comm.Div.) No.355 of 2020
PRAYER in C.S.(COMM.DIV) No.355 of 2020: Plaint filed under
Order VII Rule 1 CPC and Order IV Rule 1 of the Original Side Rules
read with Sections 27, 28, 29, 134, 135 of the Trade Marks Act, 1999
and Sections 51, 55, 62 of the Copyrights Act, 1957, prays to grant a
judgment and decree on the following terms:
(a) a permanent injunction restraining the Defendant, by itself,
its partners, men, servants, agents, distributors, stockiest,
representatives or any one claiming through or under them from in
any manner infringing the plaintiff's registered trademark
ZINCOVIT under No.487453 in Class 5 and other registered
trademarks by using trademark ZINOLVITA or any other trademark
deceptively similar to the plaintiff's registered trademark or in any
other manner whatsoever;
(b) a permanent injunction restraining the Defendant, by itself,
its partners, men, servants, agents, distributors, stockiest,
representatives or any one claiming through or under them from in
any manner committing acts of copyright infringement by using, in
the course of trade, labels/artistic works which are a substantial
reproduction of Plaintiffs' registered copyright under Nos.A-
54243/1997 & A-112789/2017 and other registered copyrights in
colour scheme, get up and layout for their ZINOLVITA for any
tables, syrup, drops etc., or in any other manner whatsoever;
3
https://www.mhc.tn.gov.in/judis ( Uploaded on: 20/06/2025 12:51:10 pm )
C.S.(Comm.Div.) No.355 of 2020
(c) a permanent injunction restraining the Defendant, by itself,
its partners, men, servants, agents, distributors, stockiest,
representatives or any one claiming through or under them from iun
any manner passing off and/ or enabling others to pass off the
Defendant's products under the trademark ZINCOVITA as and for
the plaintiffs' products by manufacturing, selling, or offering to sell,
distributing, displaying, printing, stocking, using, advertising their
products with a trademark and/or label or artistic work that is
identical in colour scheme get up and layout with that of the
plaintiff's ZINCOVIT trademark or artistic work or in any other
manner whatsoever;
(d) the Defendant be ordered to surrender to Plaintiffs for
destruction of all products, labels, cartons, dyes, blocks, moulds,
screen prints, packing materials and other materials bearing the
trademark ZINOLVITA label or any mark deceptively similar to
plaintiffs' trademark and artistic work ZINCOVIT label;
(e) a preliminary decree be passed in favour of the Plaintiff
directing the Defendant to render account of profits made by use of
trademark and copyrights in the artistic work ZINOLVITA label and
a final decree be passed in favour of the Plaintiff for the amount of
profits thus found to have been made by the Defendant after the
latter have rendered accounts;and
4
https://www.mhc.tn.gov.in/judis ( Uploaded on: 20/06/2025 12:51:10 pm )
C.S.(Comm.Div.) No.355 of 2020
(e) for costs of the suit.
PRAYER in O. P.(TM) No.1 of 2023: Original Petition (Trademark)
filed under Sections 47 & 57 of the Trademarks Act, 1999, prays that
this Court be pleased to rectify/cancel the Registration of Trade mark
impugned Trade Mark “ZINCOVIT” under No.487453 dated
16.03.1988 in class 05 by imposing a condition or limitation regarding
exclusive right to the word ZINC as APEX LABORATORIES LTD. V.
ZUVENTUS HEALTH CARE LTD., reported in
MANU/TN/9346/20006.
PRAYER in O. P.(TM) No.2 of 2023: Original Petition (Trademark)
filed under Sections 57 & 125 of the Trademarks Act, 1999, prays that
this Court be pleased to remove/expunge/rectify the entry relating
to registration no.2795619 in class 5 and award costs in favour of the
applicant.
For Petitioner/Plaintiff /
1st Respondent : Mr. R.Sathish Kumar
in OP(TM) No.2 of 2023 Ms. Meha Varshini M.R.
in C.S.(CommDiv) No.355 of 2020
in OP(TM) No.1 of 2023
For Petitioner/Defendant/
1st Respondent : Ms. Gladys Daniel
in OP(TM) No.1 of 2023 for M/s. C. Daniel
in C.S.(CommDiv) No.355 of 2020
in OP(TM) No.2 of 2023 : Mr. C. Samivel, SPC
in both OPs
5
https://www.mhc.tn.gov.in/judis ( Uploaded on: 20/06/2025 12:51:10 pm )
C.S.(Comm.Div.) No.355 of 2020
**********
COMMON JUDGMENT
The civil suit was filed in November, 2020 seeking relief in
respect of alleged trade mark infringement, copyright infringement
and passing off. By order dated 09.07.2021 in A.Nos. 415 and 416 of
2021, this Court granted leave to the plaintiff to file a rectification
petition to be heard along with the suit. On that basis, the plaintiff
also filed a petition, OP(TM) No.2 of 2023, to rectify the register by
removing the entry relating to Trade Mark No.2795619 for the trade
mark 'ZINOLVITA' from the Register of Trade Marks. Similarly, vide
order dated 30.11.2021, the defendant was granted leave to file a
rectification petition to be adjudicated along with the suit. Pursuant
thereto, the defendant filed a petition, OP(TM).No.1 of 2023, to
rectify the register by imposing a condition or limitation regarding
exclusive right to the word 'zinc' in Trade Mark No.487453 for the
trade mark 'ZINCOVIT'. The suit and the two rectification petitions
are being disposed of by this common judgment.
https://www.mhc.tn.gov.in/judis ( Uploaded on: 20/06/2025 12:51:10 pm )
C.S.(Comm.Div.) No.355 of 2020
Pleadings and issues in suit and rectification petitions
2. In the plaint, the plaintiff asserts that it carries on business
relating to pharmaceutical and nutraceutical products. It is further
stated that the plaintiff adopted the trade mark ZINCOVIT in the
year 1988 and used the trade mark since 1990. Pursuant to an
application for registration of the said trade mark under TM
A.No.487453 in Class 5, it is stated that the registration was granted
with effect from 16.03.1988 and that such registration is valid until
the year 2029. According to the plaintiff, the unique label adopted for
products was registered as an artistic work in the Register of
Copyrights under No.A-54243/1997 for ZINCOVIT syrup. The
plaintiff also asserts that it has obtained registrations for the artistic
work in the 7 colour strip labels, which are used for ZINCOVIT
syrup, ZINCOVIT drops and ZINCOVIT tablets, as depicted at
paragraph 7 of the plaint. By setting out the sales turnover from sale
https://www.mhc.tn.gov.in/judis ( Uploaded on: 20/06/2025 12:51:10 pm )
C.S.(Comm.Div.) No.355 of 2020
of products bearing the trade mark ZINCOVIT from the financial
year 1990-91 to 2020-21, the plaintiff asserts that the turnover is
substantial.
3. In paragraph 14 of the plaint, the plaintiff further states that
it became aware of the sale of the defendant's products bearing the
impugned trade mark ZINOLVITA in November, 2020. It is further
stated that the plaintiff discovered on enquiry that the defendant
manufactures and markets its products using a label similar to the 7
colour label of the plaintiff. According to the plaintiff, the defendant's
trade mark and packaging is phonetically and visually identical to
that of the plaintiff. The suit was filed in these facts and
circumstances.
4. In the written statement, the defendant states that it
manufactures and markets pharmaceutical products. In course of
business, it is stated that the defendant adopted the trade mark
https://www.mhc.tn.gov.in/judis ( Uploaded on: 20/06/2025 12:51:10 pm )
C.S.(Comm.Div.) No.355 of 2020
ZINOLVITA, and has used the trade mark without any interruption.
It is further stated that the defendant changed the carton/label for
tablets and syrups under the trade mark ZINOLVITA. Upon making
such change, it is stated that there is no visual similarity between the
rival products. By way of preliminary objection, the defendant
contends that the suit for infringement is not maintainable on account
of Section 28(3) and 30(2)(e) of the Trade Marks Act, 1999 (the TM
Act). The defendant further states that the plaintiff's trade mark
ZINCOVIT is a portmanteau of the words 'zinc' and 'vitamin'.
Therefore, it is stated that the plaintiff is not entitled to prevent others
from using the word 'zinc', which is common to the trade/publici
juris. In paragraph 13 of the written statement, the defendant has set
out a list of registered or pending trade mark applications containing
the element 'zinc' in the name.
5. Based on the above pleadings, on 24.02.2023, the following
issues were framed:
https://www.mhc.tn.gov.in/judis ( Uploaded on: 20/06/2025 12:51:10 pm )
C.S.(Comm.Div.) No.355 of 2020
“i. Whether the plaintiff is entitled for a
permanent injunction to restrain the defendant
from using its registered Trade Mark
ZINOLVITA vide TM.No.2795619 in Class 5 on
the strength of the plaintiff registered Trade Mark
ZINCOVIT vide TM.No.487453 in Class 5?;
ii. Whether the use of the trade mark ZINOLVITA
together with the altered trade dress would
amount to passing off?;
iii. Whether the plaintiff and the defendant are
entitled to plead invalidity of the registrations of
the respective trade mark ZINCOVIT vide
TM.No.487453 and ZINOLVITA vide
TM.No.2795619 in Class 5.”
6. As stated earlier, the defendant filed OP (TM) No.1 of 2023 to
rectify the register of trade marks by imposing a condition or
limitation with regard to the element 'zinc' in the plaintiff's trade
mark. In the petition, the defendant reiterates that ZINCOVIT is a
portmanteau of the words 'zinc' and 'vitamin'. Consequently, it is
stated that Section 13 of the TM Act is violated if exclusivity is
https://www.mhc.tn.gov.in/judis ( Uploaded on: 20/06/2025 12:51:10 pm )
C.S.(Comm.Div.) No.355 of 2020
claimed over the names of chemical elements or international non-
proprietary names such as zinc. The defendant also relies upon the
judgment of the Division Bench in Apex Laboratories Ltd. v. Zuventus
Health Care Ltd., MANU/TN/9346/2006 ('Apex Laboratories'), to
contend that zinc is publici juris. After referring to a list of registered
trade marks containing the element zinc and the packaging of other
products containing the element zinc as part of the brand, the
petitioner has requested that a condition or limitation be imposed by
rectifying the register relating to the entry of Trade Mark No.487453.
7. In the counter statement, the plaintiff reiterates the contents
of the plaint with regard to the adoption of the trade mark
ZINCOVIT and the creation of artistic works containing the word
ZINCOVIT. Thereafter, the plaintiff has set out the defendant's tablet
and syrup cartons before contending that the rectification petition of
the defendant is a counter blast to the suit and the rectification
petition of the plaintiff. The plaintiff further states that Section 13 of
https://www.mhc.tn.gov.in/judis ( Uploaded on: 20/06/2025 12:51:10 pm )
C.S.(Comm.Div.) No.355 of 2020
the TM Act does not prohibit the registration of a trade mark
containing a combination of several elements, including a chemical
compound. After further asserting that the trade mark ZINCOVIT is
not publici juris, the plaintiff has prayed for dismissal of the
rectification petition of the defendant. The defendant filed a reply
statement refuting the allegations in the counter statement and
reiterating those in the rectification petition.
8. On the basis of these pleadings, on 14.12.2023, the following
issues were framed:
“1. Whether the trade mark ZINCOVIT is either
inherently distinctive or has acquired
distinctiveness?
2. Whether the first respondent is entitled to the
exclusive use of the words ZINC and VIT by
virtue of the trade mark ZINCOVIT under Trade
Mark No.487453?
3. Whether the registration under Trade mark
No.487453 in Class 5 for the trade mark
ZINCOVIT is liable to be rectified by imposing a
https://www.mhc.tn.gov.in/judis ( Uploaded on: 20/06/2025 12:51:10 pm )
C.S.(Comm.Div.) No.355 of 2020
condition or limitation regarding exclusive right
to the use of the elements ZINC and VIT in the
trade mark ZINCOVIT?
4. Whether the petitioner is entitled to the relief
claimed?
5. Whether the parties are entitled to any other
relief?”
9. In its rectification petition, after reiterating the assertions in
the plaint, the plaintiff states that the impugned trade mark was used
by the defendant only from the year 2010. Since the petitioner is both
the prior user and prior registrant of the trade mark ZINCOVIT, the
petitioner states that the entry relating to the deceptively similar
trade mark ZINOLVITA was made without sufficient cause. After
further asserting that the rival marks are used in relation to identical
products, the plaintiff states that such use is likely to cause confusion
and deception among consumers.
10. In the counter statement, the defendant asserts that its trade
https://www.mhc.tn.gov.in/judis ( Uploaded on: 20/06/2025 12:51:10 pm )
C.S.(Comm.Div.) No.355 of 2020
mark ZINOLVITA is unique and is not a dictionary word. It is
further stated that its mark is both visually and phonetically
dissimilar to the plaintiff's trade mark. After further asserting that
ZINCOVIT consists of the elements 'zinc' and 'vit', the defendant
states that the plaintiff cannot claim any monopoly.
11. On the basis of these pleadings, the following issues were
framed on 14.12.2023:
1. Whether the trade marks ZINCOVIT and
ZINOLVITA are deceptively similar?
2. Whether the use of the trade mark ZINOLVITA
is likely to cause confusion among the public?
3. Whether the entry relating to the trade mark
ZINOLVITA under Trade Mark No.27955619 in
Class 5 was made without sufficient cause or is
otherwise liable to be removed from the register?
4. Whether the petitioner is entitled to the relief
claimed?
5. Whether the parties are entitled to any other
relief?
https://www.mhc.tn.gov.in/judis ( Uploaded on: 20/06/2025 12:51:10 pm )
C.S.(Comm.Div.) No.355 of 2020
12. Evidence was recorded in common in both the rectification
petitions and the suit. The plaintiff examined Mr. D. Jude F.L.S. Durai
Pandian as PW1. In course of the examination-in-chief of PW1, 17
documents were exhibited as Exs.P1 to P17. PW1 was cross-examined
by learned counsel for the defendant. The defendant examined
Mr.Nishanth Gupta as DW1. In course of the examination-in-chief of
DW1, 6 documents were exhibited as Exs.D1 to D6. DW1 was cross-
examined by learned counsel for the plaintiff.
Counsel and their contentions:
13. Mr. R.Sathish Kumar, learned counsel, advanced arguments
on behalf of the plaintiff. Ms. Gladys Daniel, learned counsel,
advanced arguments on behalf of the defendant. Both parties also
filed written arguments.
14. The first submission of learned counsel for the plaintiff was
https://www.mhc.tn.gov.in/judis ( Uploaded on: 20/06/2025 12:51:10 pm )
C.S.(Comm.Div.) No.355 of 2020
that the mark ZINCOVIT was adopted by the plaintiff in March, 1988
and an application for registration was filed on 'proposed-to-be-
used' basis in respect of Trade Mark No.487453 on 16.03.1988 for the
word mark ZINCOVIT in class 5 relating to pharmaceutical
medicinal preparations. By referring to Ex.P2, which is the legal use
certificate, learned counsel submitted that the history relating to the
proprietorship of the plaintiff is set out in such certificate. With
regard to use of the trade mark, learned counsel referred to and
relied upon Ex.P11 containing gate passes and invoices. He pointed
out that the earliest invoice is dated 04.08.1990. He also submitted
that the plaintiff advertised its products by referring to Ex.P12 (media
clipping and promotional material). By referring to Exs.P6 to P9,
learned counsel contended that copyright registrations were obtained
in respect of artistic works/labels relating to the sale of syrup, drops
and tablets containing the word ZINCOVIT and the 7 colour strip as
also the fruits and vegetables device.
15. Learned counsel next contended that Section 13 of the TM
https://www.mhc.tn.gov.in/judis ( Uploaded on: 20/06/2025 12:51:10 pm )
C.S.(Comm.Div.) No.355 of 2020
Act only applies to a single chemical element or single chemical
compound and not to a combination. Even assuming without
admitting that the plaintiff's trade mark is not inherently distinctive,
learned counsel submitted that the trade mark acquired
distinctiveness through long use after registration in the year 1988. In
support of this contention, he relied upon Section 32 of the TM Act.
The next contention of learned counsel for the plaintiff was that the
defendant's adoption of the trade mark ZINOLVITA and the labels
relating thereto was not honest. By comparing the plaintiff's label
with that of the defendant at the time of institution of the suit,
learned counsel submitted that the defendant evidently copied not
only the word mark but also the plaintiff's label. In this connection,
learned counsel referred to and relied upon the answers of DW1 to
questions 11 to 23 and pointed out that DW1 was unable to explain
the reason for adoption of the trade mark ZINOLVITA. With specific
reference to answer 33, learned counsel submitted that DW1 could
not remember the date from which the trade mark was used in spite
https://www.mhc.tn.gov.in/judis ( Uploaded on: 20/06/2025 12:51:10 pm )
C.S.(Comm.Div.) No.355 of 2020
of stating that he finalised the trade mark.
16. Learned counsel proceeded to submit that the search report
(Ex.D4) does not constitute evidence of use of trade marks containing
the element zinc. By referring to questions 51 to 67 and the answers
thereto, learned counsel submitted that DW1 was unable to
substantiate the answer that more than 50 products from and out of
Ex.D4 are available in the market. In fact, he pointed out that DW1
admitted that cartons, invoices, etc. relating to such products were
not filed by the defendant. In support of the contention that the
adoption by the defendant was dishonest, with reference to question
68, learned counsel pointed out that DW1 merely stated that it was
the defendant's wish to use two different cartons for the syrup in
Ex.P16 and the tablets in Ex.P15.
17. In support of these contentions, learned counsel referred to
and relied upon the following judgments:
https://www.mhc.tn.gov.in/judis ( Uploaded on: 20/06/2025 12:51:10 pm )
C.S.(Comm.Div.) No.355 of 2020
(i) Corn Products Refining Company v. Shangrila Food Products
Ltd, AIR 1960 SC 142 ('Corn Products'), particularly paragraph 13
thereof.
(ii) F. Hoffman-La Roche and Co. Ltd. v. Geoffery Manners ad Co.
Private Limited, AIR 1970 SC 2062 ('Hoffman-La Roche'), particularly
paragraphs 16 and 17 thereof.
(iii) Shyam Investments v. Masti Health and Beauty Pvt. Ltd., 2020
SCC Online Mad 2326, particularly paragraph 36 and 68 thereof.
(iv) P.M. Palani Mudaliar and Co. v. M/s.Jansons Exports,
M/s.Asher & Company, 2017 SCC OnLine Mad 1090, particularly
paragraph 20 thereof. ('Palani Mudaliar').
(v) Sun Pharmaceutical Industries Limited v. Kivi Labs Ltd., 2024-I-
MLL-476.
(vi) Godfrey Philips India Ltd. v. Girnar Food & Beverages P Ltd.,
(2004) 5 SCC 257, particularly paragraph 4 thereof.
(vii)S.Syed Mohideen v. Sulochana Bai, MANU/SC//0576/2015,
particularly paragraph 22 thereof.
https://www.mhc.tn.gov.in/judis ( Uploaded on: 20/06/2025 12:51:10 pm )
C.S.(Comm.Div.) No.355 of 2020
(viii) Dr.Reddy's Laboratories Limited v. Smart Laboratories Pvt.
Ltd., 2023 DHC 8214.
(ix) Ticona Polymers, Inc v. Registrar of Trademarks, 2023 SCC
OnLine Del 1234, particularly paragraphs 11-18 thereof.
(x) Sun Pharma Laboratories Ltd. v Lupin Ltd. & another, 2018 SCC
Online Del 7310, particularly paragraph 28 thereof.
18. Ms. Gladys Daniel vehemently resisted these contentions.
Her first submission was that the changed label of the defendant is
clearly distinguishable from the plaintiff's label. As regards the
rationale for adoption of the trade mark ZINOLVITA, she submitted
that it is derived from the elements zinc and vitamin in combination
with Knoll, which is the name of the defendant company. Her next
contention is that ZINCOVIT is a weak mark because it is derived
from the names of the ingredients, zinc and vitamin. Consequently,
she contended that even minor differences can defeat an
infringement action. After pointing out that the defendant's trade
https://www.mhc.tn.gov.in/judis ( Uploaded on: 20/06/2025 12:51:10 pm )
C.S.(Comm.Div.) No.355 of 2020
mark ZINOLVITA was registered on 01.10.2017, learned counsel
submitted that the impugned trade mark has been used for a
considerable period of time. By referring to the judgment of the
Hon'ble Supreme Court in Hoffman-La Roche, learned counsel
contended that it was held that vit is a common abbreviation for
vitamin. By referring to the judgment of the Division Bench of this
Court in Apex Laboratories, learned counsel submitted that it was held
that zinc is common to the trade and that, therefore, ZINCOVIT and
ZINCONIA are not deceptively similar. She next relied upon the
order in O.A.Nos.618 to 620 of 2018 in C.S.No.433 of 2018 to contend
that ZINCOACT was held to be dissimilar to ZINCOVIT. By relying
on Section 144 of the TM Act, learned counsel contended that trade
usage, such as the practice of deriving trade marks from the
ingredients, the names of target diseases and the like, should also be
taken into consideration while deciding these matters.
19. Learned counsel next contended that the plaintiff only filed
https://www.mhc.tn.gov.in/judis ( Uploaded on: 20/06/2025 12:51:10 pm )
C.S.(Comm.Div.) No.355 of 2020
the registration certificate (O2 certificate) while instituting the suit.
Later, without obtaining leave of this Court, the legal use certificates
(Ex.P2 to P5) were substituted for the registration certificates. On this
issue, learned counsel referred to and relied upon the answers of
PW1 to questions 3 to 18 and 21 to 25. By also referring to the
answers of PW1 to questions 28 and 29, learned counsel submitted
that PW1 admitted that the changed label of the defendant does not
resemble the plaintiff's label. By referring to questions 33, 34 and 40
and the answers of PW1, learned counsel submitted that PW1
admitted that the products of the plaintiff and defendant contain
'zinc' and 'vitamin'. With regard to use by the defendant, learned
counsel referred to the invoices in the additional typed set in OP(TM)
No.1 of 2023 to contend that the defendant has used the trade mark
from the year 2014. In support of these contentions, learned counsel
referred to and relied upon the following judgments:
(1) USV Limited v. Systopic Laboratories Limited and Others,
MANU/TN/0001/2004
https://www.mhc.tn.gov.in/judis ( Uploaded on: 20/06/2025 12:51:10 pm )
C.S.(Comm.Div.) No.355 of 2020
(2) Astrazeneca UK Ltd. and others v. Orchid Chemicals and
Pharmaceuticals Ltd. MANU/DE/8684/2006
(3) McCain International Limited v. Country Fair Foods Limited and
Another, [1981] R.P.C.69.
(4) Nestle's Products (India) Ltd. v. P.Thankaraja and another, AIR
1978 MAD 336.
20. In view of the change of label and the admission of PW1
that the changed label does not resemble the plaintiff's label, learned
counsel submitted that the action for copyright infringement is liable
to be dismissed. She also submitted in this regard that the passing off
action is liable to be rejected on account of added material. With
regard to post registration distinctiveness as per Section 32 of the TM
Act, learned counsel submitted that there are many other registered
marks containing the element 'zinc'. By further submitting that the
plaintiff did not take any steps to prevent dilution, she submitted that
the plaintiff cannot make any claim to acquired distinctiveness. She
https://www.mhc.tn.gov.in/judis ( Uploaded on: 20/06/2025 12:51:10 pm )
C.S.(Comm.Div.) No.355 of 2020
concluded her submissions by stating that the sale of products
bearing the impugned mark was not restrained pending suit and that
the defendant has used the mark for about 11 years.
21. By way of rejoinder, learned counsel for the plaintiff made
the following submissions:
(1) ZINCOVIT is an invented word, which is not found in
dictionaries.
(2) The trade mark is applied to nutritional supplements which
are consumed upon being prescribed by medical doctors.
(3) Even assuming that the trade mark was not inherently
distinctive, it has acquired distinctiveness.
(4) The change in label does not come to the aid of the
defendant with regard to the deceptive similarity of the rival trade
marks.
(5) Legal use certificates are not different documents. In any
case, the plaintiff had filed the legal use certificate at the time of
https://www.mhc.tn.gov.in/judis ( Uploaded on: 20/06/2025 12:51:10 pm )
C.S.(Comm.Div.) No.355 of 2020
institution of the suit and only the renewal certificate was filed later.
(6) The search report is insufficient to establish use and no
evidence of use of the trade marks mentioned in the search report
was placed on record by the defendant.
22.Learned counsel referred to and relied upon the following
judgments:
(i) Blue Hill Logistics Private Ltd. v. Ashok Leyland Limited and
Dilip Chhabria Design Private Limited, 2011 (4) CTC 417.
(ii) Bata India Limited v. Chawla Boot House and Another, (2019) 78
PTC 505
(iii) Cipla Limited v. Sun Pharmaceutical Industries Limited, 2022
(91) PTC 352
(iv) Heinz Italia v. Dabur, 2007(6) SCC 1.
Discussion, Analysis and Conclusion:
https://www.mhc.tn.gov.in/judis ( Uploaded on: 20/06/2025 12:51:10 pm )
C.S.(Comm.Div.) No.355 of 2020
23. As is evident from the above narration, issues were framed
separately in the suit and in each rectification petition, but evidence
was recorded in common. The issues in the suit and in the
rectification petition of the plaintiff are connected and
interdependent. Therefore, connected issues are combined and
answered.
Issue No.1 in OP(TM) No. 1 of 2023
24. This issue relates to whether the trade mark ZINCOVIT is
either inherently distinctive or has acquired distinctiveness. Along
with this issue, the defences raised by the defendants on grounds of
publici juris and acquiescence are also considered. The TM Act defines
a trade mark in Section 2(1)(zb) as under:
“(zb) 'Trademark' means a mark capable of being represented
graphically and which is capable of distinguishing the goods or
services of one person from those of others and may include
shape of goods, their packaging and combinations of colours...“
From the above definition, it is evident that distinctiveness is an
https://www.mhc.tn.gov.in/judis ( Uploaded on: 20/06/2025 12:51:10 pm )
C.S.(Comm.Div.) No.355 of 2020
essential requirement for a trade mark inasmuch as the mark should
be capable of distinguishing the goods or services of the person
claiming proprietorship from those of others. Put differently, if a
mark does not satisfy this requirement, it will not qualify as a trade
mark for purposes of the TM Act. As a consequence, the proprietor
of such mark would not be entitled to the benefits of registration
under Sections 28 and 29 thereof. Hence, the determination as to
whether the plaintiff's mark is distinctive is central to the
adjudication of this dispute.
25. The plaintiff contended that the mark ZINCOVIT was
adopted in March, 1988 and that the plaintiff applied for registration
on 'proposed to be used' basis on 16.03.1988 in Class 5 relating to
pharmaceutical and medicinal preparations. Learned counsel for the
defendant advanced the contention that only the O2 certificate was
filed at the time of institution. The record discloses, however, that the
legal use certificate was filed and that only the renewal thereof was
https://www.mhc.tn.gov.in/judis ( Uploaded on: 20/06/2025 12:51:10 pm )
C.S.(Comm.Div.) No.355 of 2020
filed in course of trial. In any event, on this tenuous ground, it cannot
be concluded that the plaintiff is not the registered proprietor of the
trade mark ZINCOVIT. The admitted position is that the mark is
applied to pharmaceutical preparations containing both zinc and
vitamin. Shortly after applying for registration, the plaintiff states
that the mark was applied to pharmaceutical preparations. As
evidence of such assertion, the plaintiff relied on Ex.P11, which
contains gate passes and invoices collectively. The earliest invoice in
Ex.P11 is dated 04.08.1990. Invoices from 1990 to 2023 have been
placed on record by the plaintiff. These invoices relate to tablets,
capsules and syrups under the trade mark ZINCOVIT.
26. Learned counsel for the defendant contended that the
plaintiff's trade mark falls within the scope of Section 13 of the TM
Act. Section 13 of the TM Act is as under:
“13. Prohibition of registration of names of
chemical elements or international non-
proprietary names.-No word-
https://www.mhc.tn.gov.in/judis ( Uploaded on: 20/06/2025 12:51:10 pm )
C.S.(Comm.Div.) No.355 of 2020
(a) which is the commonly used and
accepted name of any single chemical element or
any single chemical compound (as distinguished
from a mixture) in respect of a chemical substance
or preparation, or
(b) which is declared by the World Health
Organisation and notified in the prescribed
manner by the Registrar from time to time, as an
international non-proprietary name or which is
deceptively similar to such name,
shall be registered as a trade mark any such
registration shall be deemed for the purpose of
section 57 to be an entry made in the register
without sufficient cause or an entry wrongly
remaining on the register, as the circumstances
may require.”
Clause (a) of Section 13 deals with commonly used and accepted
names of any single chemical element or any single chemical
compound in respect of chemical substance or preparation. The
pharmaceutical preparation of the plaintiff consists of not only the
chemical element zinc, but also vitamins. Since it is neither the name
https://www.mhc.tn.gov.in/judis ( Uploaded on: 20/06/2025 12:51:10 pm )
C.S.(Comm.Div.) No.355 of 2020
of a single chemical element nor of a single chemical compound, the
trade mark ZINCOVIT does not fall within the scope of Section 13.
27. The question as to whether the trade mark ZINCOVIT is
either inherently distinctive or has acquired distinctiveness falls for
consideration next. Trade marks are classified into about five
categories: invented, arbitrary, suggestive, descriptive, and generic. A
trade mark is said to be inventive, when it uses words or other
elements which are not found in the dictionary and which are not
otherwise in use. If the word exists but has no relation whatsoever to
the goods or services in respect of which it is used, such trade mark is
considered arbitrary. If the trade mark suggests but does not describe
the qualities, characteristics or nature of the goods, it is considered
suggestive. If the trade mark describes the nature, quality or
characteristic of the goods or services, it is considered descriptive. If
the trade mark describes a product or service category, it is
considered generic. Descriptive and generic marks are not permitted
https://www.mhc.tn.gov.in/judis ( Uploaded on: 20/06/2025 12:51:10 pm )
C.S.(Comm.Div.) No.355 of 2020
to be registered as per Section 9 of the TM Act unless such mark had
acquired distinctiveness on the date of application. Invented,
arbitrary or suggestive marks are considered as inherently distinctive
and are entitled to registration.
28. Because the plaintiff's trade mark is derived from the
elements zinc and vitamin, the trade mark ZINCOVIT, which merely
adds the vowel 'o' by placing it between zinc and vit, which is an
abbreviation of vitamin, cannot be considered as inherently
distinctive. In this regard, learned counsel for the plaintiff contended
that even proceeding on the assumption that it is not inherently
distinctive, it has acquired distinctiveness. This aspect is dealt with
next.
29. Section 32 of the TM Act, which deals with acquired
distinctiveness, is as under:
“32. Protection of registration on ground of
https://www.mhc.tn.gov.in/judis ( Uploaded on: 20/06/2025 12:51:10 pm )
C.S.(Comm.Div.) No.355 of 2020
distinctiveness in certain cases.- Where a trade
mark is registered in breach of sub-section(1) of
section 9, it shall not be declared invalid if, in
consequence of the use which has been made of it,
it has after registration and before commencement
of any legal proceedings challenging the validity of
such registration, acquired a distinctive character
in relation to the goods or services for which it is
registered. “
Even if a trade mark were to be registered in breach of sub-section (1)
of Section 9, Section 32 prescribes that it shall not be declared invalid
if the trade mark had acquired a distinctive character in relation to
the goods or services for which it is registered, after registration but
before the commencement of legal proceedings challenging the
validity of such registration. As noticed earlier, the plaintiff's
registration of the word mark ZINCOVIT is with effect from
16.03.1988. The challenge to the registration, albeit limited in scope, is
by way of OP(TM) No.1 of 2023, which was filed on 05.07.2023.
Therefore, it becomes necessary to consider whether the plaintiff's
trade mark has acquired distinctiveness between 16.03.1998 and
https://www.mhc.tn.gov.in/judis ( Uploaded on: 20/06/2025 12:51:10 pm )
C.S.(Comm.Div.) No.355 of 2020
05.07.2023.
30. As discussed earlier, as evidence of use, the plaintiff
exhibited invoices collectively as Ex.P11. While the earliest invoice is
dated 04.08.1990, the latest invoice on record is dated 31.03.2023.
Effectively, invoices evidencing sale of products bearing the trade
mark ZINCOVIT for a period of about 33 years have been placed on
record. In addition, the plaintiff has placed on record media clippings
and other promotional materials bearing the trade mark ZINCOVIT
as Ex.P12. At paragraph 9 of the plaint, the annual sales turnover of
products bearing the trade mark ZINCOVIT for financial years 1991-
92 to 2020-21 have been set out. The said details are also set out at
paragraph 12 of the proof affidavit of Mr.D.Jude F.L.S.Durai Pandian,
who was examined as PW1. It should be noticed that the plaintiff did
not file a certificate from a chartered accountant to establish the sales
turnover. The oral evidence in the proof affidavit was, however, not
questioned in course of cross-examination. Hence, it is concluded
https://www.mhc.tn.gov.in/judis ( Uploaded on: 20/06/2025 12:51:10 pm )
C.S.(Comm.Div.) No.355 of 2020
that the evidence relating to turnover stands proved. Such evidence
discloses that the turnover was Rs.89,56,556/- in financial year 1990-
91 and that the sales turnover increased thereafter. In financial year
2022-23, PW1 states that the turnover was in excess of Rs.255 crore.
On the basis of the evidence adduced by the plaintiff, I conclude that
the plaintiff's trade mark has acquired distinctiveness through use
over a period of about 33 years.
31. Learned counsel for the defendant, however, contended that
there are several pharmaceutical products in the market containing
the element zinc. In support of this contention, the defendant relied
upon a search report dated 01.08.2021 (Ex.D4). By relying upon the
judgment of the Hon'ble Supreme Court in Corn Products, learned
counsel for the plaintiff submitted that the production of the search
report is insufficient to establish that the trade mark has become
publicis juris. By relying on the judgment of the Division Bench of this
Court in Palani Mudaliar, he further submitted that use by others
https://www.mhc.tn.gov.in/judis ( Uploaded on: 20/06/2025 12:51:10 pm )
C.S.(Comm.Div.) No.355 of 2020
should exceed use by the registered proprietor to establish the
defence of publicis juris. On perusal of the search report, it appears
that the report contains a list of marks with the status thereof. The
status varies from 'registered', 'abandoned', 'removed' or 'opposed'.
32. Undoubtedly, the marks bearing the status 'abandoned' or
'removed' should be completely disregarded. As regards the marks
showing the status as 'registered', it was necessary for the defendant
to adduce further evidence that such marks are being used. DW1 was
questioned about the search report. The relevant questions and
answers are set out below:
“Q58: Approximately, how many trademarks are
there in Ex.D4?
A: Approximately 300.
Q59: Are you telling that all the 300 trademarks
are available in the market?
A: No. Most of them.
Q60: Approximately what is the number of such
products available in the market?
https://www.mhc.tn.gov.in/judis ( Uploaded on: 20/06/2025 12:51:10 pm )
C.S.(Comm.Div.) No.355 of 2020
A: I think it will be more than 50.
Q61: Have you produced any document to show
that such products around 50 are available in the
market?
A:No.”
As is evident from the answers to questions 60 and 61, DW1 stated
that more than 50 products mentioned in Ex.D4 are available in the
market, but admitted that the defendant had not produced any
documents to show that such products are indeed available in the
market. In these circumstances, the defendant cannot sustain the
defence of the plaintiff's trade mark being common to the trade or
publicis juris merely by relying on Ex.D4.
33. The defendant also pleaded that the plaintiff acquiesced in
the use of the impugned trade mark by the defendant. This
contention is raised on the basis that the defendant has used the
impugned mark continuously for a long period. In response, the
plaintiff pleads that it became aware of the sale of products bearing
https://www.mhc.tn.gov.in/judis ( Uploaded on: 20/06/2025 12:51:10 pm )
C.S.(Comm.Div.) No.355 of 2020
the impugned mark in November 2020 and that the plaintiff filed the
suit in the same month. In order to sustain the defence of
acquiescence under Section 33 of the TM Act, the defendant should
establish that the plaintiff stood by for a continuous period of at least
five years after being aware of the defendant's use. In the absence of
any evidence to that effect, this defence cannot be sustained.
Issue Nos.2 and 3 in OP(TM) No.1 of 2023
34. Issue No.2 relates to whether the plaintiff is entitled to the
exclusive use of the words zinc and vitamin by virtue of the trade
mark ZINCOVIT under trade mark No.487453. Issue No.3 relates to
whether Trade Mark No.487453 is liable to be rectified by imposing a
condition or limitation regarding exclusive right to use the elements
'zinc' and 'vit' in trade mark 'ZINCOVIT'. While answering the issue
relating to distinctiveness, it was concluded that the trademark
ZINCOVIT has acquired distinctiveness in the post registration
period. As a consequence, the plaintiff is entitled to protect its
https://www.mhc.tn.gov.in/judis ( Uploaded on: 20/06/2025 12:51:10 pm )
C.S.(Comm.Div.) No.355 of 2020
registration against any marks identical or deceptively similar
thereto. Without doubt, the plaintiff cannot assert any exclusivity
with regard to the words zinc or vitamin or even the abbreviation of
vitamin i.e. 'vit'. Learned counsel for the defendant relied on the
judgment of the Hon'ble Supreme Court in Hoffman-La Roche to
contend that 'vit' is a common abbreviation of vitamin. This
contention is liable to be accepted. The plaintiff, however, does not
assert the exclusive right to use 'Vit' or 'Zinc'. Instead, the plaintiff
asserts that ZINCOVIT is distinctive and that no other person is
entitled to use any mark deceptively similar thereto.
35. Section 17 of the TM Act provides that the registration of a
mark confers on the proprietor the exclusive right to the use of the
trade mark as a whole. In the specific context of the trade mark
ZINCOVIT, by virtue of Section 17(1) of the TM Act, the plaintiff can
only assert exclusive right to the trade mark 'ZINCOVIT' and not to
either 'zinc' or 'vit' separately. The exception is if the elements of a
https://www.mhc.tn.gov.in/judis ( Uploaded on: 20/06/2025 12:51:10 pm )
C.S.(Comm.Div.) No.355 of 2020
trade mark are separately registered, which is not the case here.
Such elements, in any case, being the name of a chemical element and
the abbreviation of vitamin cannot be separately registered.
Therefore, the condition or limitation sought to be incorporated by
the defendant in the plaintiff's registration is unnecessary because the
statute prescribes the said condition or limitation. Issue Nos.2 and 3
in OP(TM) No. 1 of 2013 are disposed of as above.
Issue Nos.1 and 2 in OP (TM) No.2 of 2023
36. Issue Nos.1 and 2 in the plaintiff's rectification petition is
whether the trade mark 'ZINCOVIT' and 'ZINOLVITA' are
deceptively similar and whether the use of the trade mark
'ZINOLVITA' is likely to cause confusion among the public. These
issues are at the core of this dispute and the answer thereto will
determine the result of the litigation. Learned counsel for the
defendant relied on the judgment of the Division Bench of this Court
in Apex Laboratories to contend that the Division Bench held that
https://www.mhc.tn.gov.in/judis ( Uploaded on: 20/06/2025 12:51:10 pm )
C.S.(Comm.Div.) No.355 of 2020
'ZINCOVIT' and 'ZINOLVITA' are not deceptively similar. She also
relied upon the order in O.A.Nos.618 to 620 of 2018 in C.S.No.433 of
2018 to contend that this Court held ZINCOACT was not similar to
ZINCOVIT. She further submitted that trade usage is a relevant
factor as per Section 144 of the TM Act. After pointing out that the
trade marks in the pharmaceutical industry are commonly derived
from the names of ingredients or target diseases, she submitted that
the defendant's trade mark is distinguishable and is not likely to
result in confusion or deception.
37. Learned counsel for the plaintiff, on the other hand,
contended that Apex Laboratories was a decision in an interlocutory
application, and that the dispute was settled out of Court by the
parties. The contention that it is common practice in the
pharmaceutical industry to derive the names of the trade mark from
the names of active pharmaceutical ingredients or from the names of
the target diseases is a matter of common general knowledge and
https://www.mhc.tn.gov.in/judis ( Uploaded on: 20/06/2025 12:51:10 pm )
C.S.(Comm.Div.) No.355 of 2020
judicial notice may be taken thereof. As a consequence, trade marks
derived in the manner above-mentioned are relatively weaker. When
a suit for infringement is founded on such marks, unless the
defendant's trade mark closely resembles that of the plaintiff, the
plaintiff may not be entitled to relief.
38. The plaintiff instituted the suit upon noticing the
defendant's label in the market. At that juncture, the plaintiff's syrup
carton was as under:
https://www.mhc.tn.gov.in/judis ( Uploaded on: 20/06/2025 12:51:10 pm )
C.S.(Comm.Div.) No.355 of 2020
The defendant's syrup carton was as under:
https://www.mhc.tn.gov.in/judis ( Uploaded on: 20/06/2025 12:51:10 pm )
C.S.(Comm.Div.) No.355 of 2020
As is self-evident from the above depictions, the plaintiff was using
the trade mark 'ZINCOVIT' along with the device of fruits and
vegetables. The defendant was using the trade mark 'ZINOLVITA'
along with a nearly identical device of fruits and vegetables.
Therefore, this Court granted an interim injunction to the plaintiff.
39. Thereafter, the defendant modified the label and adopted
the label set out below for the syrup:
https://www.mhc.tn.gov.in/judis ( Uploaded on: 20/06/2025 12:51:10 pm )
C.S.(Comm.Div.) No.355 of 2020
In effect, the word mark ZINOLVITA was retained, but the devices
on the label were changed.
40. The above discussion leads to the conclusion that the
adoption of the label by the defendant in the first instance was not
honest and appears to be with a view to capitalize on the reputation
of the plaintiff. After being restrained from using such label by this
Court, the plaintiff agreed to change the label, but did not
discontinue use of the word mark.
41. The question whether there is deceptive similarity should
be examined from the perspective of a person of average intelligence
and imperfect collection. If such person is likely to be deceived or
confused including by way of trade connection by the use of the
mark ZINOLVITA, an injunction should follow. Learned counsel for
the defendant submitted that the defendant's mark, if pronounced
correctly, consists of three syllables Zy-Nol-Vita. Therefore, she
https://www.mhc.tn.gov.in/judis ( Uploaded on: 20/06/2025 12:51:10 pm )
C.S.(Comm.Div.) No.355 of 2020
submitted that the marks are not phonetically, visually or structurally
similar. This contention is misconceived because correct
pronunciation by the consumer of average intelligence and imperfect
recollection cannot be the basis for adjudicating deceptive similarity.
It is quite likely that a large section of the relevant public would de-
emphasise 'Zy' and pronounce the defendant's mark as ZYNOL-
VITA.
42. The plaintiff is undoubtedly the prior user and prior
registrant since the registration was in the year 1988 and evidence of
use is available from year 1990. By comparison, the defendant's
registration was in the year 2014 and use followed. In my view, when
viewed as a whole, the similarities between the marks is likely to lead
to deception or confusion. This conclusion is reinforced by the fact
that both the marks are used in respect of identical products. As
discussed earlier, the manner of original adoption by the defendant
also plays a role in arriving at this conclusion. Issue Nos. 1 and 2 in
OP(TM) No.2 of 2023 is disposed of on these terms.
https://www.mhc.tn.gov.in/judis ( Uploaded on: 20/06/2025 12:51:10 pm )
C.S.(Comm.Div.) No.355 of 2020
Issue No.3 in OP(TM) No.2 of 2023 and Issue No.1 in the suit
43. Issue No.3 in OP(TM) No.2 of 2023 is whether the entry
relating to the defendant's trade mark ZINOLVITA under TM
No.2795619 was made without sufficient use or is otherwise liable to
be removed from the register. Issue No.1 in the suit relates to
whether the plaintiff is entitled to a permanent injunction to restrain
the defendant from using the impugned trade mark ZINOLVITA.
Since these issues are interrelated, they are considered and disposed
of jointly.
44. While determining Issue No.1 in OP(TM) No.2 of 2023, it
was earlier concluded herein that the trade marks 'ZINCOVIT' and
'ZINOLVITA' are deceptively similar and that the use of the
impugned mark 'ZINOLVITA' is likely to cause confusion among the
public. In view of such deceptive similarity, the Registrar of Trade
Marks ought to have declined the request for registration under
https://www.mhc.tn.gov.in/judis ( Uploaded on: 20/06/2025 12:51:10 pm )
C.S.(Comm.Div.) No.355 of 2020
Section 11 of the TM Act. Because the registration was granted in the
teeth of Section 11 of the TM Act, the entry relating to TM No.2795619
was made without sufficient cause. Consequently, a case is made out
to rectify the register by removing the entry relating to the impugned
mark.
45. Once the registration is held to be invalid and liable to be
rectified, the defences under Section 28(3) and 30(2)(e) fall apart. As a
corollary, the plaintiff is entitled to a permanent injunction. The
defendant has been using the impugned mark for several years and it
is possible that there is a ready-to-sell inventory in the pipeline. As
regards such inventory, a carve-out is necessary for about four
months to enable liquidation thereof.
Additional Issue relating to copyright
46. Although no issue was framed, the plaintiff has prayed for a
https://www.mhc.tn.gov.in/judis ( Uploaded on: 20/06/2025 12:51:10 pm )
C.S.(Comm.Div.) No.355 of 2020
permanent injunction in relation to registered copyright Nos.A-
54243/1997 and A-112787/2017 and other registered labels. The
registration certificates in respect of the above mentioned
registrations have been exhibited as Exs.P6 and P9 respectively. Such
registrations are in respect of the following registered artistic works:
https://www.mhc.tn.gov.in/judis ( Uploaded on: 20/06/2025 12:51:10 pm )
C.S.(Comm.Div.) No.355 of 2020
https://www.mhc.tn.gov.in/judis ( Uploaded on: 20/06/2025 12:51:10 pm )
C.S.(Comm.Div.) No.355 of 2020
47. Out of the above labels, the plaintiff has discontinued use of
the label depicted in Ex.P9. As noticed earlier, the defendant had
adopted a label containing the device of fruits and vegetables and
later discontinued use of such label. The label currently in use by the
defendant was exhibited as Ex.D3. This label cannot be construed as
a copy of the plaintiff's label. Nonetheless, in view of the earlier label
of the defendant, which was a copy of the plaintiff's label, it is
necessary to restrain the defendant from copying the labels presently
used by the plaintiff and forming a part of Exs.P6 to P9, including by
resuming use of the label depicted in Ex.P16.
https://www.mhc.tn.gov.in/judis ( Uploaded on: 20/06/2025 12:51:10 pm )
C.S.(Comm.Div.) No.355 of 2020
Issue No.2 in the suit:
48. Issue No.2 in the suit relates to whether the use of the mark
ZINOLVITA with the altered trade dress would amount to passing
off. As noticed earlier, the defendant changed the label after an order
of interim injunction was issued. The defendant, however, retained
the word mark ZINOLVITA. Such mark was earlier held herein to be
deceptively similar to the plaintiff's trade mark ZINCOVIT. The
plaintiff has placed on record evidence of use for about 33 years. The
oral evidence with regard to the sales turnover is set out in the proof
affidavit of PW1. The turnover was Rs.89,56,556/- in the first year of
use i.e. 1990-91. The defendant adopted the impugned trade mark in
the year 2014. By the year of adoption of the defendant's trade mark,
the plaintiff's sales turnover was Rs.145,61,20,502/-. The plaintiff had
also manufactured and marketed the goods bearing the trade mark
ZINCOVIT for about 25 years by then. The evidence on record leads
to the conclusion that the plaintiff had acquired significant reputation
https://www.mhc.tn.gov.in/judis ( Uploaded on: 20/06/2025 12:51:10 pm )
C.S.(Comm.Div.) No.355 of 2020
and goodwill. The use of a deceptively similar trade mark constitutes
a misrepresentation to the public. By the use of such trade mark, the
plaintiff alleges that it incurred losses and has prayed for rendition of
accounts and a decree for profits. Thus, all elements to establish the
claim of passing off stand proved by the plaintiff.
Issue Nos.4 and 5 in OP(TM) Nos.1 and 2 of 2023 and Issue No. 3 in
the suit
49. Issue Nos.4 and 5 in OP(TM) No.1 and 2 of 2023 and Issue
No. 3 in the suit relate to the relief to be granted to the parties. The
plaintiff has established that it is entitled to the reliefs claimed in
clauses (a) to (e) of the plaint. The plaintiff has also established that it
is entitled to the relief of rectification in OP(TM) No.2 of 2023. The
relief requested in OP (TM) No.1 of 2023 is declined, as stated earlier,
by holding that the defendant's concern is effectively allayed by
Section 17 of the TM Act. As the successful party, the plaintiff is
https://www.mhc.tn.gov.in/judis ( Uploaded on: 20/06/2025 12:51:10 pm )
C.S.(Comm.Div.) No.355 of 2020
entitled to costs. The defendant shall pay an aggregate sum of
Rs.4,00,000/- as costs to the plaintiff towards court fees, lawyer's fee
and other expenses.
50. In the result:
(i) The suit is decreed in terms of prayers (a) to (e) of paragraph
35 of the plaint subject to the qualification that the defendant is
permitted to liquidate the existing inventory of ready-to-sell products
bearing the impugned mark, whether directly or through its
distributors, wholesalers and retailers, within four months from the
date the web copy of this judgment is uploaded. This exception is
subject to the condition that the defendant files an affidavit in the
registry of this Court under copy to the plaintiff within two weeks
from the date the web copy of this judgment is uploaded providing
details of such ready-to-sell inventory. In addition, the defendant is
directed to pay a sum of Rs.4,00,000/- as costs to the plaintiff.
https://www.mhc.tn.gov.in/judis ( Uploaded on: 20/06/2025 12:51:10 pm )
C.S.(Comm.Div.) No.355 of 2020
(ii) OP(TM) No.1 of 2023 is disposed of by holding that Section
17 of the Trade Marks Act, 1999 imposes conditions relating to a
trade mark consisting of more than one element and that no further
condition or limitation is necessary.
(iii) OP(TM) No.2 of 2023 is allowed by directing the removal of
the entry relating to TM No.2795619 in Class 5 from the Register of
Trade Marks. This exercise shall be completed within one month
from the date of receipt of a copy of this judgment.
19 .06.2025
Index : Yes /No
Internet : Yes /No
Speaking/
Non-Speaking order : Yes/ No
Neutral Citation : Yes/ No
kal
https://www.mhc.tn.gov.in/judis ( Uploaded on: 20/06/2025 12:51:10 pm )
C.S.(Comm.Div.) No.355 of 2020
Plaintiff's witness:
Mr.Jude F.L.S.Durai Pandian - P.W.1
Defendant's witness:
Mr.Nishant Gupta - D.W.1
Documents exhibited by the plaintiff:
Exhibits Documents
Ex.P1 The original board resolution dated 19.07.2023. (The
counsel for the defendant has objected that the
deponent is not authorised to give evidence)
Ex.P2 The legal use certificate of the trademark
registration certificate of the plaintiff under
No.487453 in class 5 for ZINCOVIT. (The counsel
for the defendant objects on the ground that the O2
certificate had been filed along with the plaint. The
https://www.mhc.tn.gov.in/judis ( Uploaded on: 20/06/2025 12:51:10 pm )
C.S.(Comm.Div.) No.355 of 2020
Exhibits Documents
O2 certificate is not for use in legal proceedings.
The plaintiff cannot mark a totally different
certificate at the time of evidence without proper
leave of the court. Objection on contents of the
document. Unrelated document which has been
filed)
Ex.P3 The photocopy of the letter from the Director of
drugs control to the plaintiff dated 26.04.2012.
(original is produced, compared and returned to
the plaintiff's counsel) (marked subject to proof and
relevancy)
Ex.P4 The legal use certificate of the trademark
registration certificate of the plaintiff under
No.2158593. (The counsel for the defendant objects
on the ground that the O2 certificate had been filed
along with the plaint. The O2 certificate is not for
use in legal proceedings. The plaintiff cannot mark
a totally different certificate at the time of evidence
without proper leave of the court. Objection on
contents of the document. Unrelated document
which has been filed.)
Ex.P5 The legal use certificate of the trademark
registration certificate of the plaintiff under
No.2158594. (The counsel for the defendant objects
on the ground that the O2 certificate had been filed
along with the plaint. The O2 certificate is not for
use in legal proceedings. The plaintiff cannot mark
a totally different certificate at the time of evidence
without proper leave of the court. Objection on
contents of the document. Unrelated document
which has been filed.)
https://www.mhc.tn.gov.in/judis ( Uploaded on: 20/06/2025 12:51:10 pm )
C.S.(Comm.Div.) No.355 of 2020
Exhibits Documents
Ex.P6 The photocopy of the copyright registration
certificate under no.A-112788/2014. (original is
produced, compared and returned to the plaintiff's
counsel)
Ex.P7 The photocopy of the copyright registration under
no.A-115854/2014. (original produced, compared
and returned to the plaintiff's counsel)
Ex.P8 The photocopy of the copyright registration
certificate in favour of the plaintiff under No.A-
112789/2014 for the artistic work ZINCOVIT syrup.
(The counsel for the defendant objects on the
ground that the document is a photocopy. No
reason has been stated in the proof affidavit why
the original has not been filed and the photocopy is
sought to be marked. Objection on mode of proof
and contents of document.)
Ex.P9 The photocopy of the copyright registration
certificate in favour of the plaintiff under No.A-
54243/1997 for the artistic work ZINCOVIT syrup.
(The counsel for the defendant objects on the
ground that the document is a photocopy. No
reason has been stated in the proof affidavit why
the original has not been filed and the photocopy is
sought to be marked. Objection on mode of proof
and contents of document.)
Ex.P10 The photocopy of the food license obtained by the
plaintiff for ZINCOVIT. (The counsel for the
defendant objects on the ground that the document
is a photocopy. No reason has been stated in the
proof affidavit why the original has not been filed
and the photocopy is sought to be marked.
https://www.mhc.tn.gov.in/judis ( Uploaded on: 20/06/2025 12:51:10 pm )
C.S.(Comm.Div.) No.355 of 2020
Exhibits Documents
Objection on mode of proof and contents of
document.)
Ex.P11 The photocopy of the sample invoices for the sale
of ZINCOVIT syrup, drops, tablet by the plaintiff.
(The counsel for the defendant objects on the
ground that the document is a photocopy. No
acceptable reason has been stated in the proof
affidavit why the original has not been filed and the
photocopy is sought to be marked. Objection on
mode of proof and contents of document.)
Ex.P12 The photocopy of the media clippings and other
promotional material using the trademark
ZINCOVIT. (Original is produced, compared and
returned to the plaintiff's counsel.)
Ex.P13 The photocopy of the plaintiff's ZINCOVIT syrup
carton with the 7 coloured label. (The counsel for
the defendant objects on the ground that the
document is a photocopy. No reason has been
stated in the proof affidavit why the original has
not been filed and the photocopy is sought to be
marked. Objection on mode of proof and contents
of document.)
Ex.P14 The photocopy of the defendant's trademark
registration for ZINOLVITA. (The counsel for the
defendant objects on the ground that the document
is a photocopy. No reason has been stated in the
proof affidavit why the original has not been filed
and the photocopy is sought to be marked.
Objection on mode of proof.)
Ex.P15 The photocopy of the defendant ZINOLVITA tablet
https://www.mhc.tn.gov.in/judis ( Uploaded on: 20/06/2025 12:51:10 pm )
C.S.(Comm.Div.) No.355 of 2020
Exhibits Documents
carton with 7 colour label. (The counsel for the
defendant objects on the ground that the document
is a photocopy. No reason has been stated in the
proof affidavit why the original has not been filed
and the photocopy is sought to be marked.
Objection on mode of proof.)
Ex.P16 The photocopy of the photograph of the defendant
ZINOLVITA syrup carton with fruits and
vegetables label. (The counsel for the defendant
objects on the ground that the document is a
photocopy. No reason has been stated in the proof
affidavit why the original has not been filed and the
photocopy is sought to be marked. Objection on
mode of proof.)
Ex.P17 The original bill for purchase of the defendant
ZINOLVITA in Chennai
Documents exhibited by the defendant:
Exhibits Documents
Ex.D1 The served copy of the affidavit dated 20.032024.
Ex.D2 The judgment delivered by the Hon'ble Division
Bench of the High Court of Madras on 26.04.2006 in
the appeal between Apex Laboratories Limited and
Zuventus Health Care Limited as reported in
MANU/TN/9346/2006.
Ex.D3 The new label of the defendant.
Ex.D4 The search report dated 01.08.2021.
Ex.D5 The certified copy of the order in OA Nos.618 to 620
of 2018 in C.S.No.433 of 2018 passed by Hon'ble
https://www.mhc.tn.gov.in/judis ( Uploaded on: 20/06/2025 12:51:10 pm )
C.S.(Comm.Div.) No.355 of 2020
Exhibits Documents
High Court of Madras.
Ex.D6 The original authorization letter.
Section 65B affidavit is filed along with Ex.D4.
19.06.2025
kal
SENTHILKUMAR RAMAMOORTHY J.
kal
To
1. The Registrar of Trade Marks,
Office of the Trade Marks Registry,
Intellectual Property Rights Building,
Industrial Estate, SIDCO RMD,
Godown Area, G.S.T. Road, Guindy,
Chennai-600 032.
2. The Registrar of Trademarks,
Office of the Trademarks Registry,
Boudhik Sampada Bhawan,
Plot No.32, Sector 14, Dwarka,
New Delhi-110 078.
https://www.mhc.tn.gov.in/judis ( Uploaded on: 20/06/2025 12:51:10 pm )
C.S.(Comm.Div.) No.355 of 2020
Pre-delivery common judgment made in
C.S (Comm. Div.) No.355 of 2020 &
O.P.(TM) Nos.1 & 2 of 2023
19.06.2025
https://www.mhc.tn.gov.in/judis ( Uploaded on: 20/06/2025 12:51:10 pm )
