- 1 - 14.nms.2577.10 s.2491.10 skt IN THE HIGH COURT OF JUDICATURE AT BOMBAY ORDINARY ORIGINAL CIVIL JURISDICTION NOTICE OF MOTION NO. 2577 OF 2010 IN SUIT NO. 2491 OF 2010 M/s. Suprim Pharma ..Plaintiff -Versus- Medi Surge Impex & Anr. ..Defendants .......... Mr.B.N.Pujari i/b Asian Patent Law for the Plaintiff. Mr.Avesh Kayser & Mr.K.S.Pachoo for the Defendants. .......... CORAM : S.J. VAZIFDAR, J. DATE : 8TH SEPTEMBER 2011. P.C. 1 This is an action for infringement in respect of the word mark ‘MILLENNIUM STUD-2000’ 2 The plaintiff appears to have filed an application for registration of the mark on 26th December 2000. The mark went on the register on 26th March 2007. There were, undoubtedly, business dealings between defendant nos.1 and 2 and the plaintiff. It appears that a part of the transaction between the parties is reflected in a loan licence agreement dated 7th September 1998 (Exhibit ‘B’ to the plaint). Defendant No.2-Amrut - 2 - 14.nms.2577.10 s.2491.10 Drug Research Lab Pvt. Ltd. manufactured the products in spray form and the plaintiff manufactured the product in another form. 3 The benefits which accrued to the parties was also stipulated therein. For the purpose of this Notice of Motion, it is important to note the contents of the letter dated 4th September 2000, addressed by the plaintiff to defendant no.2 which reads as under :- “We are thankful to you that you have permitted us to use your brand name MILLENIUM STUD 2000 for spray manufactured by you on loan licence for us. We agree that the said trade mark MILLENIUM STUD 2000 belongs to you and we also agree that we do not have any rights whatsoever for brand name MILLENIUM STUD 2000. We also agree that we can use this brand name MILLENIUM STUD 2000 as long as we are associated with you and we agree that we can not manufacture the goods bearing said brand name MILLENIUM STUD 2000 or other distinctly similar brand names at any other place than your factory at Tarapur. We also agree that we will obey rules and regulations of Drug & Cosmetics Act, 1940 & Rules thereunder with respect to MILLENIUM STUD 2000.” 4 The plaintiff’s stand in respect of this letter has been inconsistent. 5 In an opposition filed by the plaintiff in respect of an application for registration of the impugned mark, the plaintiff alleged that the above letter was a forgery by defendant no.2. The plaintiff has expressly stated that - 3 - 14.nms.2577.10 s.2491.10 the letter and the plaintiff’s signature are forged. It is further stated that the criminal complaint in that regard has been filed before the Magistrate’s Court. 6 In the plaint however, the plaintiff has not only not denied the authenticity of this letter, but has confirmed the same. Paragraph 7 of the plaint, in so far, as it refers to this letter reads as under : “The Plaintiff states that at initial stage in or about the year 2000 they commenced manufacturing the product at the facility of the Defendant No.2. The Plaintiff states that for commercial expediency and other convenience in the year 2000, the Plaintiff and the Defendant No.2 worked out arrangement to arrive at a mutual understanding of holding the trade mark in the manufacturers’ name, i.e. the Defendant No.2 herein, and the Plaintiff to remain as sole selling agent. The Plaintiff recorded the said understanding in its letter dated 04.09.2000 addressed to the Defendant No.2. Hereto annexed and marked Exhibit “D” is a copy of the said letter dated 04.09.2000. The Plaintiff also recorded the said understanding by affirming an affidavit dated 15.02.2002.” (emphasis supplied) 7 Even assuming that the impugned mark is deceptively similar to the plaintiff’s registered mark, in view of the plaintiff’s letter dated 4th September 2000, it would be difficult to grant any relief in an action for infringement and for passing off. 8 It is also pertinent to note that the cease and desist notice was issued on 27th January 2008. The defendant replied to it by a letter dated - 4 - 14.nms.2577.10 s.2491.10 2nd April 2008. In the said letter, the defendants have specifically referred to the letter dated 4th September 2000. Despite the same, the suit is filed after delay of eight years. This is not a question of mere delay. Considering the above facts especially the letter dated 4th September 2000, in my view, the plaintiff is not entitled to any relief. To say the least the plaintiff has a lot of explaining to do as regards the fact that there is an inconsistent stand taken by them in the opposition proceeding, and in these proceeding as regards the said letter. The Notice of Motion is dismissed. -