* HIGH COURT OF DELHI : NEW DELHI + IA No.11493/2007 in CS (OS) No.1991/2007 Judgment reserved on : 6th February, 2009 Judgment pronounced on : 6th March, 2009 % [ENTITY] ICOS LLC & Anr. Plaintiffs Through : Mr.[ENTITY], Adv. with Ms. [ENTITY], Adv. Versus [ENTITY]. Defendant Through : Mr. [ENTITY], Adv. Coram: HON'BLE MR. JUSTICE [ENTITY] 1. Whether the Reporters of local papers may Yes be allowed to see the judgment? 2. To be referred to Reporter or not? Yes 3. Whether the judgment should be reported Yes in the Digest? [ENTITY], J.
1. The plaintiffs have filed the suit for permanent injunction, infringement of trademark, passing off and rendition of accounts along with costs.
2. The Plaintiff No.1 is a limited liability Company existing under the laws of the State of Delaware, with its principal place of business at 1209, Orange Street, Wilmington, Delaware, USA. The Plaintiff No.2 is a subsidiary of Eli [ENTITY] & Co., USA and markets Plaintiff No.1s product in India.
3. The Plaintiffs allege that the Defendants has adopted the trade mark MCALIS which is deceptively similar to the Plaintiffs well known trade mark [ENTITY]. Also, the [ENTITY] Tablet Trade Dress including distinctive yellow almond shaped tablet with inscription C20 and distinctive [ENTITY] Swirl have been allegedly copied by the Defendants.
4. It is alleged that the Plaintiff No.1 is the owner of trade mark [ENTITY] worldwide, including India. Products under trade mark [ENTITY] are marketed and sold in Europe and North America by Plaintiff No.1 and in the rest of the world by Eli [ENTITY] & Co., USA. This company was founded in May, 1876 with the commitment of manufacturing pharmaceutical products of the highest possible quality. It employs more than 43,000 people worldwide and its products are available in more than 158 countries. In India, its subsidiary has been working since 1993 and employs over 500 people.
5. The Plaintiffs further allege that in September 1998, [ENTITY] and ICOS formed the Plaintiff No.1 for the purpose of developing, manufacturing, promoting and selling pharmaceutical preparations for the treatment of male erectile dysfunction. The active ingredient in these preparations is tadalafil, which has been patented in numerous countries worldwide by the Plaintiff No.1 and its members.
6. In July 2001, the Plaintiff No.1made public its decision to use the [ENTITY] trade mark to identify its innovative pharmaceutical product. The Plaintiff has filed a sample of some early media coverage of its [ENTITY] product. The Plaintiff developed a unique packaging with unusual artwork, referred to as the Cialis Swirl. A sample of the same has also been filed. The tablet sold under trademark [ENTITY] was given a unique and unusual shape of an almond and colour of light yellow.
7. The abovementioned product is now on sale in 57 countries. Since its introduction in 2003, the Plaintiffs have sold more than 25 million tablets of the [ENTITY] drug around the world.
8. The Plaintiff No.1s trademark [ENTITY] has been registered and/or is pending registration in more than 141 countries and has already been registered in 117 countries.
9. In India, the Plaintiff No.1 is the registered proprietor of the trade mark [ENTITY] and distinctive [ENTITY] tablet shape, the details are :-
Trademark No. Class Date Goods Cialis 1291814 5 22.06.2004 Pharmaceutical and Tablet medicinal preparations for with the the treatment of sexual alphabet C dysfunction; pharmaceutical and medicinal preparations for prevention of sexual dysfunction [ENTITY] 887649 5 22.11.1999 Pharmaceutical and medicinal preparations for the treatment of sexual dysfunction; pharmaceutical and medicinal preparations for prevention of sexual dysfunction. Cialis 1291990 5 23.06.2004 Pharmaceutical and Tablet medicinal preparations for Shape C the treatment of sexual 20 dysfunction; pharmaceutical and medicinal preparations for prevention of sexual dysfunction. [CASE NUMBER] 27.11.2002 Pharmaceutical and Swirl medicinal preparations for the treatment of sexual dysfunction; pharmaceutical and medicinal preparations for prevention of sexual dysfunction. C 20 1291813 5 22.06.2004 Pharmaceutical and medicinal preparations for the treatment of sexual dysfunction; pharmaceutical and medicinal preparations for prevention of sexual dysfunction.
10. It is stated in the plaint that by virtue of registration, the Plaintiff No.1 has exclusive right to use the aforesaid trade marks with regard to the goods in lieu of which they are registered. By virtue of [SECTION] of the said Act, original registration is prima facie evidence as to its validity.
11. As alleged by the plaintiff, the worldwide revenue in US Dollars of said product is as follows:-
2003- Over 200 million 2004- Over 550 million 2005- Over 740 million 2006- Over 970 million.
12. The contention of the plaintiffs is that the trade mark [ENTITY] has been featured in number of publications in India including Times of India, Indian Express and Hindu. By virtue of such extensive use started in January 2003 the trademark [ENTITY] and [ENTITY] Swirl with the trade dress of the tablet have become well known and closely associated with the goods of the plaintiffs. In India, the plaintiff No.2 has been granted marketing approval on 11 th September, 2003 by the Drug Controller General of India to import and market the drug and to launch the drug in India on or about 30th September, 2004.
13. The plaintiffs came to know about the defendants activities when the defendants application No.1386462 in Class 5 for registration of the trade mark MCALIS was published in the trademark Journal. The said application was duly opposed by the plaintiffs. It is further alleged in the plaint that the defendant has a website in the name of www.maidenpharma.com in which the product MCALIS and visual representation disclosed that the defendant has not only copied the similar trade mark [ENTITY] but has also copied the [ENTITY] Swril and trade dress of the tablet, therefore, the present suit has been filed. It is also alleged that the defendant is a habitual infringer of the brand name of other parties also. According to the plaintiffs the Plaintiff No.1 is the registered proprietor of the trade mark [ENTITY] and distinctive trade dress of [ENTITY] tablet and [ENTITY] swril device and since the defendant has blatantly copied the plaintiffs trade mark/trade dress of the tablet and swril device and, therefore, the defendant is guilty of infringing the registered trade mark as well as passing off their goods as that of the plaintiff. The contention of the plaintiffs is that the two trade marks [ENTITY] and MCALIS are deceptively similar and, therefore, it is a classic case of infringement of trade mark.
The defendant has raised the defence that the defendant had decided to produce the product MCALIS in the year 2004 after getting the approval of Drug Licensing Authority and that there is no similarity between the plaintiffs and defendants goods and there are large number of distinctive dissimilarities. The defendant is exporting its goods with due permission of the authorities.
INFRINGEMENT OF TRADE MARK
14. The action for infringement is a statutory remedy under [SECTION] of the [ACT] the person who is the registered owner of the trademark has the exclusive right to use the said mark and he can obtain relief in respect of infringement of trademark in the manner provided by this Act. As per [SECTION] of the [ACT] infringement is established if the other side uses either an identical with or deceptively similar mark to the registered trademark in such a manner as to render the use of the mark likely to be taken as being used as a trade mark. As per [SECTION] of the [ACT] registration is the prima facie evidence of validity. The definition of Trademark is given in [SECTION] which clearly indicates that any word in relation to goods for the purpose of indicating a connection in the course of trade can become a trademark.
15. It is well established law that the trademark of the defendant is to be compared as a whole. It is submitted that the registered trademark of the plaintiff cannot be split while comparing it with the trademark of the defendant.
16. In the case reported at [PRECEDENT] at page No.903 [PRECEDENT], it was observed as under:
"on registration of a trade mark the proprietor gets under [SECTION] the exclusive right to the use of such trade mark in relation to goods in respect of which the trade mark is registered and to obtain relief in respect of any infringement of such trademark."
17. Again, in the case reported at [PRECEDENT] at page 155 it was observed as under :
"When a person gets his trade mark registered he acquires valuable rights by reason of such registration."
18. Similar observation was made by the Apex Court in another case reported at [PRECEDENT] (para 28).
19. Also, in the case reported at [PRECEDENT]. it was observed as under :
"Statutory registration establishes prima facie case in favour of the plaintiff."
20. In the cases of [PRECEDENT]; and [PRECEDENT] page 12 head note [PRECEDENT], it was held that validity of the trademark cannot be challenged.
21. In the case of [PRECEDENT] at page 990 para 28, it was held by the Apex Court that only marks are to be compared in action for infringement and it is immaterial if the packing material used by both the parties are different.
22. In another case reported in [PRECEDENT], the Apex court on Page 458 and Para 9 has observed as under:-
"We agree that the use of the word dhara which literally means current or stream is not by itself decisive of the matter. What we have to consider is the overall similarity of the composite word, having regard to the circumstance that the goods bearing the two names are medicinal preparations of the same description A critical comparison of the two names may disclose some points of difference but an unwary purchaser of average intelligence and imperfect recollection would be deceived by the overall similarity of the two names "(pg 458 para 9).
SIMILARITY OF THE MARKS
23. In the case of [PRECEDENT] in para 8 it was held as under :
"8. According to Karlys Law of Trade Marks and Trade Names (9th Edn., para 838):
"Two marks, when placed side by side, may exhibit many and various differences, yet the main idea left on the mind by both may be the same. A person acquainted with one mark, and not having the two side by side for comparison, might well be deceived, if the goods were allowed to be impressed with the second mark, into a belief that he was dealing with goods which bore the same mark as that with which he was acquainted. Thus, for example, a mark may represent a game of football; another mark may show players in a different dress, and in very different positions, and yet the idea conveyed by each might be simply a game of football. It would be too much to expect that persons dealing with trade marked goods, and relying, as they frequently do, upon marks, should be able to remember the exact details of the marks upon the goods with which they are in the habit of dealing. Marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole. Moreover, variations in detail might well be supposed by customers to have been made by the owners of the trade mark they are already acquainted with for reasons of their own."
24. The main question in issue is if defendants mark MCALIS used in connection with the same goods is identical with or deceptively similar to the registered mark [ENTITY] of the plaintiffs or the said trademark MCALIS used by the defendant will thereby lead to the deception of the mark of the plaintiff. The following are the recent decisions given by the various High Courts on the similar situation of the matter:-
a. 1996 PTC 44 American Home Products Corpn. [PRECEDENT] - Plaintiff was the registered proprietor of the trademark ROLAC in respect of medicinal preparations. The defendants were selling analgesic tablets under the trademark TOROLAC. The counsel for the defendant contended that the prefix "TO" plays a very important role in judging the visual, phonetic or structural dissimilarity between the two marks and that the prefix "TORO" in emphatic and catchy and it distinguishes the defendants trademark TOROLAC from the registered trademark ROLAC. The Honble Court did not agree to the contentions of the defendant and Injunction was granted in favour of the plaintiff.
b. [PRECEDENT] - Plaintiff registered proprietor of the marks BEPLEX and BEPLEX-ZEE. Defendant adopted the mark ZEEPLEX. The counsel for the defendant contended that there are a large number of vitamin tablets in the market with the suffix "PLEX" and that this suffix has now become common to the trade. The Honble Court did not agree to the contentions of the defendant and Injunction was granted in favour of the plaintiff.
c. PTC (Suppl)(1) 600 [ENTITY]tul Chemical Industries Pvt Ltd vs Cibatul Ltd - Name CIBATUL forms part of the name of the plaintiff company. The name [ENTITY] forms part of the name of the defendant company. The defendant contended that the name [ENTITY] was invented as a result of the combination of two names - [ENTITY], the name of the daughter of the younger brother of the Managing Director and [ENTITY], the name of the son of the Managing Director. The Honble Court held that the two names are deceptively similar and the plaintiff was entitled to the relief as claimed by the plaintiff.
d. [PRECEDENT] [PRECEDENT] - Plaintiff adopted the mark LIPITOR. The defendant was using the mark LIPICOR. The counsel for the defendant contended that no case for interim injunction is made out since the word "LIPI" is a generic word common to the trade and stands adopted by many companies and that no one could have any exclusive monopoly over such words which have become "publici juris". He further contended that the words "TOR" and "COR" are not deceptively similar. The Honble Court observed that when similarity, whether visually or phonetically is judged and considered, the entire word has to be taken as whole and injunction was granted as there was deceptively similarity between the two marks. e. [PRECEDENT] - Plaintiff was the registered proprietor of the trademark ANALGON. The defendant adopted the mark PALGON. Injunction was granted.
[PRECEDENT]
- Plaintiff was the registered proprietor of the mark [ACT]. The defendant adopted the mark FISCO. The counsel for the defendant contended that the suffix "ISCO" is commonly used in the trade and therefore the same has become juris publics. He further contended there are a number of firms/ companies which are using phonetically similar trade names to the trademark [ACT] and that in view of the wide use of suffix "ISCO" by traders, the defendants cannot be stopped from using "ISCO" as their trade mark. The court rejecting the contentions raised by the defendant held that the defendant had infringed the registered mark of the plaintiff.
g. [PRECEDENT] - The respondent / plaintiff was the proprietor of the mark REGULIN and REGULIN FORTE. The appellant / defendant adopted the mark REGU - 30. The counsel for the appellant contended that the cartons are completely different and that there is no similarity between the words REGU- 30 used by the appellant and the words REGULIN FORTE used by the respondents. Held that the two marks were deceptively similar and the appeal was dismissed.
h. 2004 (1) CTMR 425 (Delhi) [PRECEDENT] - Plaintiff was manufacturing and marketing pharmaceutical preparations under the mark "M2 Tone". Defendant manufacturing and marketing medicinal preparations under the mark "MV Tone". The counsel for the defendant contended that the defendants product under the trademark "MVTONE" is only a tonic which could be sold over the counter whereas the product of the plaintiff under the trademark "M2TONE" is a product for Gynaecological problem and could be sold only upon a prescription given by the doctor. The Honble Court did not accept the contentions raised by the defendants and held that both marks were phonetically and visually similar and injunction was granted in favour of the plaintiff.
i. [PRECEDENT] - [ENTITY] and [ENTITY] held to be phonetically and visually similar.
j. [PRECEDENT] - The plaintiff was the registered proprietor of the trade mark BETALOC. The defendant adopted the trademark BETALONG. The counsel for the defendant contended that in coining its trade mark for its said product it took the word Beta as representing beta receptors and coined it with the word long representing the longer duration for which it blocks or controls the action of the said hormones of beta receptors. He further contended there are a number of similar products in the market which are sold under the trademark beginning with the word Beta. The Honble Court did not accept the contentions raised by the defendants and injunction was granted in favour of the plaintiff.
25. In view of the settled law, it is clear that there is a striking similarity and affinity of sound between the word [ENTITY] and MCALIS. I am satisfied that in case the defendant is allowed to use the trademark Mcalis, there will be a real danger of confusion between the two marks. The burden of proof always lies upon the party who alleges that the mark adopted is not likely to deceive or cause confusion. PUBLIC INTEREST
26. In the case of [PRECEDENT] it is observed by the Apex court as under:-
"Public interest would support lesser degree of proof showing confusion similarity in the case of trade mark in respect of medicinal product as against other non medicinal product. Drugs are poisons, not sweets. Confusion between medicinal products may, therefore, be life threatening, not merely inconvenient." (pg 317).
" Where medicinal products are involved, the test to be applied for adjudging the violation of trade mark law may not be at par with cases involving non medicinal products. A stricter approach should be adopted while applying the test of possibility of confusion of one medicinal product for another by the consumer The confusion as to the identity of the product itself could have direct effects on the public health" (pg 318).
27. In the case of Milment Oftho Industries Allegran Inc the Honble Supreme Court has held:-
" Nowadays the field of medicine is of an international character" (pg 588, para 9) "the ultimate test should be show is first in the market" The mere fact that the respondents have not been using the mark in India would be irrelevant if they were the first in the world market" (pg 589 para 10)."
DELAY, IF ANY
28. In the case of [PRECEDENT] it was held as under :
" in the case of infringement either of Trade Mark or of Copyright normally an injunction must follow. Mere delay in bringing action is not sufficient to defeat grant of injunction in such cases. The grant of injunction also becomes necessary if it prima facie appears that the adoption of the Mark as itself dishonest."
" glace at the cartons used by both the parties shows that in 1992 when the Respondent first started he used the mark LAXMAN REKHA in cartons containing colours red, white and blue. No explanation could be given as to why that carton had to be changed to look almost identical to that of the Appellant at a subsequent stage. This prima facie indicates the dishonest intention to pass off his goods as those of the Appellants."
29. The defendants have not placed any cogent evidence before this court in order to establish that they are using the trade mark MCALIS since the year 2004. I am of the considered view that the defendant has no justification whatsoever to adopt and use the deceptively similar trade mark with the swril device as well as the trade dress of the tablet. The defendant has also not disputed the fact that they have used the same in their website even after passing of the ad interim order. The conduct of the defendant under the said circumstances is totally malafide with the intention to deceive the public at large. At the same time the defendant has violated the ex parte ad interim order granted by this court on 5th October, 2007.
In the result, the ex parte ad interim injunction granted by this Court on 5th October, 2007 is made absolute.
[ENTITY], J March 06, 2009 sd/sa