IN THE HIGH COURT OF GUJARAT AT AHMEDABAD APPEAL FROM ORDER No 236 of 1999 For Approval and Signature: Hon'ble MR.JUSTICE A.R.DAVE ============================================================ 1. Whether Reporters of Local Papers may be allowed : YES to see the judgements? 2. To be referred to the Reporter or not? : YES 3. Whether Their Lordships wish to see the fair copy : NO of the judgement? 4. Whether this case involves a substantial question : NO of law as to the interpretation of the Constitution of India, 1950 of any Order made thereunder? 5. Whether it is to be circulated to the Civil Judge? : NO -------------------------------------------------------------- PAM PHARMACEUTICALS Versus RICHARDSON VICKS INC. -------------------------------------------------------------- Appearance: MR RR SHAH for Petitioner MR KS NANAVATI for MR RM CHHAYA for Respondent No. 1 RULE SERVED for Respondent No. 3 -------------------------------------------------------------- CORAM : MR.JUSTICE A.R.DAVE Date of decision: 24/03/2000 ORAL JUDGEMENT Being aggrieved by an order dated 6.4.1999 passed below the Notice of motion in Civil Suit No. 854/99, the appellant-original defendant No. 1 has approached this court by way of this appeal from order. For the sake of convenience, the parties to the litigation have been referred to as they have been arrayed before the trial court. The appellant, defendant No. 1, has been aggrieved by the impugned order because, by virtue of the impugned order, during pendency of the suit, defendant No. 1 has been restrained from using mark 'VICAS' or any other mark, which is likely to infringe trade mark "VICKS" which is being used by the plaintiffs. Moreover, defendant No. 1 has also been restrained from manufacturing, selling or offering for sale, medicinal preparation and allied products using trade mark 'VICAS' or any other trade mark which might be deceptively similar to trade mark 'VICKS' of the plaintiffs. .RS 2 #. The facts giving rise to the litigation, as stated by the plaintiffs in their plaint, in a nutshell, are as under :- Plaintiff No. 1 is a corporation incorporated under the laws of the United States of America and the said plaintiff and its subsidiary companies are engaged in the business of manufacturing and marketing various medicinal products which are manufactured and sold under the trade mark 'VICKS' and plaintiff No. 1 is a proprietor of the said trade mark in India. So far as plaintiff No. 2 is concerned, it is a subsidiary company of plaintiff No. 1, which has been incorporated under the provisions of the Companies Act, 1956, in India and it is also engaged in the business of manufacturing and marketing of medicinal products under the trade mark `VICKS'. It is their case that plaintiff No. 2 is the originator and owner of copyright of artistic work and get up contained in label having dark and light green colour wherein the mark 'VICKS' has been written in a novel manner and cough drops manufactured by the plaintiffs are being sold under the name of 'VICKS'. Plaintiff No. 1 is using the mark 'VICKS' for last about 100 years in respect of the medicinal preparations prepared by it and plaintiff No. 2, which is the subsidiary company of plaintiff No. 1, is manufacturing the medicinal preparations including cough drops under the trade mark 'VICKS' in India since 1971. Trade mark 'VICKS' has been registered under the provisions of the Trade and Merchandise Mark Act, 1958 (hereinafter referred to as the 'Trade Mark Act'). The said mark has been registered at Regn. No. 328355 in Class V in respect of pharmaceutical, sanitary substances, infant foods, etc. It is the case of the plaintiffs that by use of the colour scheme adopted by them for the purpose of selling cough drops manufactured by them under the trade mark 'VICKS', they have tried to distinguish their product from the products which are being manufactured by other manufacturers. The label used by the plaintiffs for the purpose of sale of cough drops under trade mark 'VICKS' has been annexed to the plaint as Exh. 2/6. It has been submitted by the plaintiffs that their product 'VICKS' has got a very good reputation in the Indian market because of the superior quality of medicinal ingredients used by them in the cough drops manufactured by them. It has been also submitted by them that for the purpose of popularising their product in the market, they had been spending enormous amount on advertisements. It is their case that the product is being advertised throughout India including Gujarat, through the media like Doordarshan, Zee TV, ZEE Cinema, Star Plus, Star Movies and other local media which are being used for advertising different products. The plaintiffs have also submitted that they had spent approximately Rs. 23 crores during 1993-98 for advertising their products 'VICKS' and as a result thereof, sale of their 'Vicks' products had increased from Rs. 45 crores per annum to Rs. 66 crores per annum from 1993-94 to 1997-98. Thus, they have mainly submitted that they are the owners of trade mark 'VICKS' which is very popular in the entire country on account of its high quality of medicinal ingredients and advertisement campaigns carried out by the plaintiffs or their agents from time to time and the word 'VICKS' has been treated as one of the synonyms for cough drops. #. The plaintiffs had approached the City Civil Court, Ahmedabad, by filing Regular Civil Suit No. 854/99 because, somewhere in January 1999, as they had learnt that defendant No. 2 was offering for sale cough drops under trade mark 'VICAS' written in a manner similar to the manner in which their trade mark 'VICKS' was written. It has been submitted by them that defendant No. 1 is manufacturing cough drops under mark 'VICAS' and the said mark is deceptively similar to the mark of the plaintiffs' trade mark 'VICKS'. It has been alleged in the plaint that because of the similarity in the mark and get up used by defendant No. 1, the defendants are trying to see that the product 'VICAS' is passed off to unwary customers as 'VICKS' and thereby the defendants are selling goods inferior in quality to the customers with a dishonest intention which would amount to infringement of the trade mark of the plaintiffs. Thus, it has been alleged by the plaintiffs that the defendants are trying to pass off the inferior quality of goods for the superior type of goods manufactured by the plaintiffs under the trade mark 'VICKS' and they are also violating the statutory rights of the plaintiffs under the Trade Mark Act as well as the Copyright Act, 1957 . In the circumstances stated hereinabove, the suit has been filed by the plaintiffs with a prayer for a declaration that the defendants are not entitled to use the trade mark 'VICAS' and/or any other mark similar to the plaintiffs' trade mark 'VICKS' and any other artistic work similar to the artistic work of the plaintiffs and the defendants and their agents, servants etc. be permanently restrained from using the mark 'VICAS' or any other similar mark to the plaintiffs' trade mark 'VICKS'. It is the plaintiffs' case that defendant No. 1 is manufacturing cough drops under the mark 'VICAS' and defendant No. 2 is selling the same in the city of Ahmedabad. An averment has been made in the plaint to the effect that the product in question which is being manufactured by defendant No. 1 at Wadhwan is being sold in Ahmedabad by defendant No. 2. So as to substantiate the submissions and averments made in the plaint, the plaintiffs had prayed for appointment of a court commissioner so that the court commissioner can ascertain whether the averments and allegations made in the plaint by the plaintiffs were correct. Ultimately, the court commissioner appointed by the trial court had visited the shop of defendant No. 2 on 20.2.99 around 12.30 noon and had found that defendant No. 2 was selling cough drops named 'VICAS' manufactured by defendant No. 1. He reported to the trial court that he had found 11 jars, each jar containing 300 sachets of cough drops under mark 'VICAS' at the shop of defendant No. 2 In reply to the Notice of Motion filed by the plaintiffs, defendant No. 1 has filed its reply denying all the allegations and stating that defendant No. 1 is manufacturing cough drops under mark 'VICAS' since October 1998 and it had sold cough drops worth more than Rs. 17 lacs and it is having a very effective sales network of pharmaceutical preparation named 'VICAS' under distinctive label, colour scheme and get up and it has been also submitted in the reply that the suit label 'VICAS' is not the property of plaintiff No. 1 and plaintiff No. 2 is not the proprietor of the label or trade mark 'VICKS' and plaintiff No. 2 is also not using the trade mark 'VICKS'. It has been submitted that no action for infringement would lie against defendant No. 1. It has been specifically submitted that the registration of the plaintiffs' trade mark under No. 328355 dated 30.8.77 was in class V in the name of Richardson Marrel, Inc. (a corporation organised and existing under the law of the State of Belaware, U.S.A.) and the plaintiffs had suppressed certain material facts with regard to the ownership of the said label and the licence agreement and validity of the agreement which was executed between plaintiff No. 1 and plaintiff No. 2. Moreover, it has been submitted in the reply that plaintiff No. 1 is not using the label 'VICKS' whereas plaintiff No. 2 is not entitled to use the label 'VICKS' and no sort of relationship between plaintiff No. 1 and plaintiff No. 2 was shown by the plaintiffs as required under the law. It is also the case of defendant No. 1 that defendant No. 1 is having necessary licence to manufacture medicinal product in question under the mark 'VICAS' in a packing of a particular colour scheme and get up since 1.10.98 and it is selling the cough drops since 1.10.98 and by the time the suit was filed, the sale had exceeded Rs. 17 lacs. Moreover, defendant No. 1 is not selling the product in question in the city of Ahmedabad and it never sold the product to defendant No. 2 and therefore the City Civil Court, Ahmedabad had no jurisdiction to entertain the suit. Moreover, it is also contended that the application for injunction filed by the plaintiffs was not legal and was contrary to the provisions of the Trade Mark Act and Copyright Act and, therefore, the said application deserved to be dismissed. Moreover, even on the ground of misjoinder of causes, the suit should have been dismissed. Several other contentions have been raised in the written statement but mainly the contention of defendant No. 1 is with regard to the jurisdiction of the City Civil Court, Ahmedabad. It has been mainly submitted that the City Civil Court had no jurisdiction as no cause of action had arisen in the city of Ahmedabad before the suit was filed. For the first time and that too after filing the suit, the cough drops under trade name 'VICAS' were sold on 20.2.99 by defendant No. 2 whereas the suit was filed on 18.2.99. Thus, prior to 20.2.99, the product in question was not sold by any of the defendants in the city of Ahmedabad and therefore, the City Civil Court, Ahmedabad, had no jurisdiction to try the suit filed by the plaintiffs. It is also the case of defendant No. 1 that material document to show how the copyright was obtained by the plaintiffs was not shown to the court and therefore action under the provisions of the Copyright Act was not maintainable. According to defendant No. 1, both the marks are not similar and because of the distinctive features they have, it is not possible to pass off product of defendant No. 1 as the product of the plaintiffs. The averments made by the plaintiffs with regard to superior quality of their product are also not admitted by defendant No. 1. It is also the case of defendant No. 1 that the colour scheme and get up of the sachet of the cough drops in which the cough drops of the plaintiffs are being sold have become common to the trade and number of persons manufacturing cough drops are using either same or similar get up and colour scheme on the sachet used by them for the purpose of selling their cough drops. Moreover, the plaintiffs had made several changes in the get up of the sachet. In the circumstances, the plaintiffs have no exclusive right to use the colour scheme and get up for their trade and business. Defendant No. 1 has also raised an objection with regard to capacity of the signatories to the plaint and the injunction application. The contention of defendant No. 1 is that the signatories to the plaint and the injunction application were not authorised by the plaintiffs to file the suit or the injunction application and therefore also the suit is not maintainable. #. After hearing the concerned parties, the trial court has granted injunction in favour of the plaintiffs whereby defendant No. 1 has been restrained from manufacturing or selling its product "VICAS" by an order dated 6.4.99 and being aggrieved by the said order, defendant No. 1 has approached this court by way of the present appeal from order. The trial court has prima facie come to the conclusion that plaintiff No. 1 is the owner of the trade mark 'VICKS' and plaintiff No. 2, being a subsidiary company of plaintiff No. 1, engaged in the business of manufacturing and marketing the medicinal product in question under the trade mark 'VICKS', the plaintiffs have a right to use the mark 'VICKS' on the cough drops manufactured by plaintiff No. 2. With regard to the jurisdiction of the City Civil Court at Ahmedabad, the trial court has prima facie come to the conclusion that the City Civil Court, Ahmedabad has jurisdiction to try the suit under the provisions of sec. 105 of the Trade Mark Act because on the basis of the report filed by the court commissioner being Mark A/6, it was found that the cough drops manufactured by defendant No. 1 under the name 'VICAS' were being sold in the city of Ahmedabad. The trial court has also prima facie come to the conclusion while passing the interlocutory order that even under the provisions of sec. 62 of the Copyright Act, the court has jurisdiction to try the suit because the said section gives a discretion to the plaintiffs with regard to the place where the defendants can be sued and if the plaintiffs select Ahmedabad, the place where one of the plaintiffs is selling their product, namely, 'VICKS', it cannot be said that the City Civil Court has no jurisdiction. The trial court has observed that looking to the special provisions incorporated in sec. 62 of the Copyright Act, it is not obligatory on the part of the plaintiffs to file a suit where the defendant resides. As per the provisions of sec. 62 of the Copyright Act, a suit can be filed even where the plaintiff is doing his business. In view of the fact that as the product of the plaintiffs is also being sold in Ahmedabad, the trial court has come to the conclusion that the plaintiffs have a right to file a suit in the City Civil Court at Ahmedabad. The trial court has prima facie found that the get up of the sachet used by defendant No. 1 and the sachet used by the plaintiffs are quite similar. Looking to the facts of the case, the trial court has prima facie found that both the marks, i.e., 'VICKS' and 'VICAS' are written in such a manner that in normal circumstances an unwary customer would not be in a position to appreciate the difference between the two sachets and therefore on account of the phonetic and visual resemblance, the mark 'VICAS' used by defendant No. 1 is deceptively similar to the mark 'VICKS' used by the plaintiffs. The trial court has also prima facie found that the plaintiffs were in prior use of the copyright of the artistic work used on the sachet of the cough drops and looking to the facts stated hereinabove and the reasons stated in the impugned interlocutory order, the trial court has prima facie come to the conclusion at the interlocutory stage that defendant No. 1 has violated rights of the plaintiffs emanating from the provisions of the Trade Mark Act and Copyright Act and as the defendants are trying to pas off their goods as goods of the plaintiffs, the trial court, by an interlocutory order dated 6.4.99, has restrained the defendants from manufacturing or selling or otherwise dealing with the product under mark 'VICAS'. #. I have heard learned advocate Shri R.R. Shah appearing for the appellant - original defendant No. 1 and Sr. Advocate Shri K.S. Nanavati appearing for the respondents Nos. 1 and 2 - original plaintiffs. Though served, nobody has appeared for respondent No.3-original defendant No. 2. #. Ld. advocate Shri R.R. Shah appearing for the appellant has vehemently submitted that the impugned order passed by the trial court is not only unjust and improper but is also illegal for the reason that the trial court had no jurisdiction to entertain the suit. The sum and substance of the lengthy arguments advanced by the learned advocate is that the trial court has not looked into the fact that no cause of acton had arisen at the time when the suit was filed. According to him, the suit was filed on 18.2.99 and prior thereto the cough drops manufactured by defendant No. 1 under name `VICAS' had not been sold in the city of Ahmedabad. According to him, for the first time, the court commissioner found on 20.2.99 that defendant No. 2 was in possession of the cough drops under mark `VICAS' manufactured by defendant No. 1. As per his submission, the cause of action must precede the filing of the suit and therefore it ought to have been established that before 18.2.99 the defendants were manufacturing or selling cough drops under mark `VICAS' in a particular get up in the city of Ahmedabad. #. Moreover, it has been submitted by him that the suit is not maintainable on the ground of joinder of several causes of action. It has been submitted by him that one suit for different causes of action arising under different Acts is not maintainable and, therefore, the suit ought not to have been entertained. According to him, different suits ought to have been filed for ventilating grievances under the provisions of the Trade Marks Act, Copyright Act and for an action for passing off. #. The learned advocate has also advanced several technical objections pertaining to the procedural aspects. It has been submitted by the learned advocate that though there are two plaintiffs, the plaint was signed only by one person, namely, Shri Deepak Acharya. As the plaint was signed by only one person i.e. for only one of the two plaintiffs, an application dated 30.3.99 was submitted by the plaintiffs praying for a permission to the effect that Shri Deepak Acharya who had signed the plaint should be permitted to make necessary amendment in the plaint by making an endorsement that he was signing the plaint on behalf of both the plaintiffs. The said application was granted and in pursuance of the said order, necessary endorsement in the plaint was made. Though the trial court had granted permission only for making an amendment in the plaint, Shri Acharya had also made such an endorsement on the injunction application. Similarly, Shri Deepak Acharya had also made such an endorsement on the vakalatnama at a later point of time. According to the learned advocate, the endorsements made by Shri Acharya on the injunction application and his signing the vakalatnama without obtaining any permission from the trial court was improper and, therefore, the injunction application should have been considered as defective and therefore no order could have been passed on the said injunction application and as the trial court had passed an order below the injunction application, the order passed by the trial court on the injunction application dated 6.4.99 is bad in law and therefore it should be quashed and set aside. #. The learned advocate has also submitted that there is no infringement of registered trade mark 'VICKS' for the reason that 'VICKS' is a very common name in the U.S.A. and other European countries and as it is not an invented word, no proprietary right can be claimed in respect of the said term by the plaintiffs. Moreover, according to him, the words 'VICKS' and 'VICAS' are absolutely different, having different meanings and in normal circumstances, no person will be confused or deceived on account of dissimilarity between the said two words and, therefore, there cannot be any question with regard to infringement of the right of plaintiff No. 1. ##. It has also been submitted by him that on account of difference in name, get-up and colour scheme between both the products, namely, product manufactured by the plaintiffs and defendant No. 1, there cannot be any question with regard to passing off. No proof with regard to deception or confusion had been produced by the plaintiffs before the trial court to show that there was any case of deception or confusion and therefore also it cannot be said that defendant No. 1 was trying to pass off his goods as if they were the goods of the plaintiffs. ##. It has been further submitted by the learned advocate that there was no breach of any provision of the Copyright Act especially in view of the fact that the agreement between plaintiff No. 1 and plaintiff No. 2 with regard to permitting plaintiff No. 2 to use the colour scheme and get-up of the sachet was neither registered nor placed on record and in the circumstances, the court cannot take cognisance of the fact that plaintiff No. 1 had permitted plaintiff No. 2 to use the mark 'VICKS' with a particular colour scheme and get up. Moreover, for the purpose of establishing copyright, the plaintiffs ought to have placed on record the original work in respect of which the copyright was obtained by plaintiff No. 1. In the instant case, according to the learned counsel, a mechanically printed sachet was placed on record and such a sachet cannot be used to show that plaintiff No. 1 had any copyright in respect of the get up and colour scheme of the sachet which is used by the plaintiffs. ##. According to the learned advocate, there was no prima facie case for granting injunction in favour of the plaintiffs because the plaintiffs had not established breach of any of the provisions of the Copyright Act or the Trade Mark Act. According to him, there was no passing off. In the circumstances, there was no prima facie case in favour of the plaintiffs so as to interfere in the matter at an interlocutory stage by restraining defendant No. 1 from manufacturing or selling its product 'VICAS'. ##. It has been also submitted by him that no irreparable loss would be caused to the plaintiffs if defendant No. 1 is not restrained from manufacturing or selling its product under the mark 'VICAS' for the reason that in the event of the plaintiffs succeeding in the suit, they can be adequately compensated in terms of money because it was possible for the trial court to direct the litigants to produce the details about their sales, profits etc. in respect of the product in question. Such facts and figures could have rendered sufficient help to the trial court for determining the amount of compensation payable to the concerned party at the