CS(OS)No.2297/2007 Page 1 of 10 THE HIGH COURT OF DELHI AT NEW DELHI % Judgment Pronounced on: 31.05.2011 + CS(OS) No.2297/2007 PFIZER PRODUCTS INC. & ANR. …. Plaintiffs - versus - B.P.SINGH TYAGI & ANR. ... Defendants Advocates who appeared in this case: For the Plaintiff: Ms. Aarshia Behl, Adv. For the Defendants: None. CORAM:- HON’BLE MR JUSTICE V.K. JAIN 1. Whether Reporters of local papers may be allowed to see the judgment? No 2. To be referred to the Reporter or not? No 3. Whether the judgment should be reported No in Digest? V.K. JAIN, J. (ORAL) 1. This is a suit for grant of permanent injunction, rendition of accounts and damages. Plaintiff No. 1 is a wholly owned US subsidiary of Pfizer Inc., whereas plaintiff No.2 Pfizer Limited is the Indian Subsidiary of Pfizer Inc. Pfizer is a large multinational pharmaceutical company which enjoys a global reputation for the high quality and CS(OS)No.2297/2007 Page 2 of 10 efficacy of its product. The research and development budged of Pfizer was estimated at about US$ 7.5 billion in the year 2004 and it manufactures a number of pharmaceuticals products, including vitamin, supplements, antibiotics and cardiovascular products. COREX is one of the top selling products of the plaintiff and is a highly sought after drug for treatment of cough and in allergic or infective conditions of the respiratory passage. This product is being sold in India since 1964 and the mark COREX is registered in India since 1963 in Class 5 vide Trademark No. 213825. The trade mark is owned by plaintiff No.1 Pfizer Product Inc. 2. Defendant No.1 – B.P.Singh is the Managing Director of defendant No.2 – Omax Healthcare (Pvt. Ltd.). It is alleged in the plaint that recently the plaintiffs came to know that defendant No.2 was manufacturing and marketing a cough syrup under the mark OREX which is deceptively and phonetically similar to plaintiff’s mark COREX. On enquiry, the plaintiffs came to know that the defendants are manufacturing and marketing a cough syrup under the mark OREX which is similar to the mark of the plaintiff-company. The defendants, according to the CS(OS)No.2297/2007 Page 3 of 10 plaintiffs, have thus adopted a mark which is deceptive similar to their registered mark OREX and are thereby trying to ride upon the goodwill and reputation of the plaintiffs. It is also alleged that there is likelihood of the customers getting induced to believe that the product offered by the defendants was of the same quality as the products of the plaintiff-companies are and they may also believe that the defendants have some connection or association with the plaintiff-companies or have licensed or authorized the product being sold by the defendants under the trademark OREX. 3. The plaintiffs have, therefore, sought injunctions, restraining the defendants from manufacturing, marketing or advertising any product under the mark OREX or any other mark which is identical or deceptively or confusingly similar to plaintiff No.1’s registered trademark COREX. The plaintiffs have also sought rendition of accounts for the profit earned by the defendants by infringing plaintiff’s trademark and by passing off their goods as the goods of the plaintiff. They have also sought damages amounting to Rs 2,00,200/- from the defendants. 4. The defendants were served by publication but did CS(OS)No.2297/2007 Page 4 of 10 not put in appearance. They were proceeded ex-parte vide order dated 25.04.2011. 5. The plaintiffs have filed affidavit of Ms Anamika Gupta constituted attorney of the plaintiff-companies in support of their case. In her affidavit, Ms Anamika Gupta has supported, on oath, the case set up in the plaint and has stated that plaintiff’s product under the mark COREX is being manufactured in India since 1964 and plaintiff No.1 is the registered proprietor of the trademark COREX, by virtue of trademark Registration No. 213825 in respect of medical preparation being an expectorant. 6. In CS(OS) No.2244/2007 titled as Pfizer Products, Inc. and Anr. vs. Vijay Shah and Ors., decided on 29.11.2010, this Court had occasion to examine the right claimed by the plaintiffs in respect of the trade mark COREX. The trade mark, which the defendant in that suit was found using in respect of cough syrup was SOREX. This Court, inter alia observed as under:- “The case of the plaintiff against the defendants is based upon infringement of their registered trade mark as well as on passing off. Section 28 of Trade Marks Act, 1999 gives to the registered proprietor of the trade mark the exclusive right to the use of the trade mark in CS(OS)No.2297/2007 Page 5 of 10 relation to the goods or services in respect of which the trade mark is registered and to obtain relief in respect of infringement of the trade mark in the manner provided by this Act. In a case based on infringement of this statutory right it is necessary for the plaintiff to prove that his registered trade mark has been used by the defendant, though no such use is required to be established in an action for passing off. It is also a settled proposition of law that if the defendant resorts to colourable use of a registered trade mark such an act of the defendant would give rise to an action for passing of as well as for infringement. In an action based upon infringement of a registered trade mark if the mark used by the defendant is visually, phonetically or otherwise so close to the registered trade mark of the plaintiff that it is found to be an imitation of the registered trade mark, the statutory right of the owner of the registered trade mark is taken as infringed. In a case of passing off, however, if the Defendant is able to establish that on account of packaging, get up and other writing on his goods or on their packaging, it is possible to clearly distinguish his goods from the goods of the plaintiff, he may not be held liable. The Defendants, while adopting the name for their product, need to act honestly and bona fidely and not with a view to encash upon the goodwill and reputation of the plaintiff-company. A fraudulent or deceptive copying of the trademark owned by another person also amounts to a false misrepresentation to the public which needs to be protected against such CS(OS)No.2297/2007 Page 6 of 10 misrepresentation. A competitor cannot usurp the goodwill and reputation of another by adopting a mark similar to the established mark of its competitor and thereby cause injury to the reputation and business of that person. With the passage of time, a certain reputation comes to be associated with a brand name on account of the quality of the product sold under that brand and/or the investment made by the owner of that brand in brand building and advertising. Any attempt on the part of another person to enrich upon the brand value generated by another person needs to be curbed by the Court as and when the aggrieved party approaches the Court in this regard. The question as to whether the two competing marks are so similar as to be likely to deceive or cause confusion has to be approached from the point of view of a man of average intelligence and imperfect recollection and not from the point of view of an educated person who is well placed in life. The Courts also need to ensure that there is no confusion in the mind of the consumer as to the source of the product which he is buying. The customer needs to be assured that he buys the same product which he prefers and identifies by its name. From the view point of the manufacturer of the product also, it is necessary for him to ensure that his business interests are not harmed by another manufacturer, by clever manipulations and machinations, such as colourable use of a name or device by his competitor. We cannot be oblivious to the fact that despite statutory requirements, the CS(OS)No.2297/2007 Page 7 of 10 chemist and druggist in our country do not hesitate in selling drugs such as cough syrups and expectorant, without insisting upon prescription by a medical practitioner, even if such a prescription is statutorily required. Drug such as cough syrups are available over the counter and without production of a medical prescription, not only in metropolitan cities, but only in small towns and villages. The persons living in small towns and villages and possessing average intelligence may not like to take the trouble of meticulously examining the label of the cough syrup which they find in the shop when the names of the two products are phonetically similar and the packaging of the product and other distinguishing features, if any, are not adequate to enable him to distinguish the product which he finds in the shop with the product which he intends to purchase. Considering the phonetic similarity between the name COREX and SOREX and a number of similarities in the packaging and label and the products being manufactured and sold by the plaintiffs as well as the products being manufactured and sold by the Defendants, both being cough syrups, there is a strong likelihood of customer possessing an average intelligence and particularly those living him in small towns and villages buying the product of the Defendants on the assumption that they were buying the product of the plaintiff, which is reputed and well- known cough syrup. The quality of the product of the Defendants may not be as good as the quality of the product of the plaintiff. If that be so, the customer who buys the CS(OS)No.2297/2007 Page 8 of 10 product of the Defendants in the belief that he is buying the quality product of the plaintiffs discovers that the product purchased by him is not of expected quality and has not given him the relief which he expected on consuming it, he may form an opinion that the quality of the product of the plaintiffs has gone down. If that happens, it may adversely affect not only the reputation but also the business interests of the plaintiffs. 7. Ex.1/2 is the legal proceeding certificate filed by the plaintiff-companies which shows that CHAZ. PFIZER & CO. INC. is the manufacturer of the trade mark COREX in respect of medicinal preparation being an expectorant. It further shows that the registration was issued on 04.07.1964 and was renewed from time to time. 8. It is difficult to dispute that the mark OREX is phonetically so close and similar to the word COREX that it may not be possible for an ordinary buyer of a cough expectorant to distinguish the product of the plaintiff from the product of the defendant. In fact the defendants have left four out of the five words in the registered trade mark COREX of the plaintiff and have adopted those four words as its trade mark. 9. For the reasons given in the preceding paragraphs, I am of the considered view that the plaintiffs are entitled to CS(OS)No.2297/2007 Page 9 of 10 injunction against the manufacture, sale and distribution of cough syrup of the defendants under the name OREX or any other name/mark deceptively similar to the registered mark COREX of the plaintiff. 10. Though the plaintiffs have also sought rendition of account for the profits earned by the defendants by infringing their trademark and passing off their goods as the goods of the plaintiff, this relief was not pressed during arguments. The plaintiffs, however, pressed for grant of damages to them. However, considering that the plaintiffs have not proved any actual damage to them and even otherwise it are not possible to work out the profits earned by the defendants and the damages sustained by the plaintiffs on account of use of the mark OREX by the defendants, the plaintiffs are not entitled to actual damages. However, since the defendants have adopted a mark similar to the registered trademark of the plaintiff and they have been manufacturing and selling the cough syrup under that mark and also with a view to deter the defendants from indulging in similar acts in future, it is necessary that some punitive damages are awarded to the plaintiffs. I, therefore, award punitive damages in the sum of Rs 1 lac to the CS(OS)No.2297/2007 Page 10 of 10 plaintiff against the defendant No.2. 11. As far as defendant No.1 is concerned, he being the only Managing Director of defendant No.2, the plaintiff is not entitled to any relief against him. 12. The suit against defendant No.1 is hereby dismissed without costs. A decree for injunction is passed in favour of plaintiffs and against defendant No.2, restraining defendant No. 2 from manufacturing, selling and distributing cough syrup under the name OREX or any other name/mark deceptively similar to the registered mark COREX of the plaintiffs. Defendant No.2 is also directed to pay punitive damages, amounting to Rs 1 lac to the plaintiffs. If the amount of damages is not paid within four weeks, defendant No.2 will also pay interest on that amount at the rate of 9% per annum from the date of this judgment. There shall be no order as to costs. Decree sheet be prepared accordingly. (V.K. JAIN) JUDGE MAY 31 , 2011 ‘sn’/BG