1 mst IN THE HIGH COURT OF JUDICATURE AT BOMBAY ORDINARY ORIGINAL CIVIL JURISDICTION NOTICE OF MOTION NO.3425 OF 2009 IN SUIT NO.2445 OF 2009 Lupin Limited Plaintiff versus Three B Health Care Ltd. and another Defendants ... Sachin Joshi i/by India Law Services for plaintiff in support of Motion. Rahul Satish Dhote i/by Ms.Sunil & Co. for defendant no.2. ... CORAM : S.J.KATHAWALLA, J. DATE : 11th January 2011. PC : 1. On 25th September 2009 this Court after hearing the learned counsel for the plaintiffs recorded that the Court is prima facie satisfied that the defendants are infringing the trademark of the plaintiff and the copyright and artistic work of the plaintiff. Ad-interim relief was therefore, granted in terms of prayer clauses (a) to (c) of the Notice of Motion and the matter was directed to be placed for confirmation of the ad-interim relief on 12th October 2009. On 12th October 2009 none appeared for the defendants despite service. In view thereof, the order dated 25th September 2009 was continued up to 10th November 2009 and the matter was placed on 7th November 2009. On 7th November 2009 the learned advocate appearing on behalf of the defendants sought four weeks time to file his reply. The matter was, therefore, adjourned to 4th December 2009. However, the defendants did not file their affidavit-in- reply. On 8th December 2009, the Notice of Motion was made returnable in normal course and it was ordered that the ad-interim order shall continue pending the hearing and final disposal of the Notice of Motion. Till date i.e. even after more than a year, no reply has been filed to the Notice of Motion. The reason given is that the parties are trying to settle the matter. One of the main reasons for increasing arrears in Court 2 matters is that the parties are not completing their pleadings for years on one pretext or the other thereby seeking adjournments even at the stage of interlocutory proceedings. An attempt to settle the matter cannot be accepted as a ground for not filing an affidavit-in-reply to the Notice of Motion for more than one year. In view thereof, I have proceeded to hear the Notice of Motion. 2. The plaintiff company is carrying on business inter alia in the field of manufacture, marketing and export of medicinal and pharmaceutical preparations. The plaintiff has filed the present suit for infringement of its registered trademarks, infringement of the copyright subsisting in the label of HEPP FORTE (Label) and passing off committed by the defendants. The plaintiff is seeking interim reliefs inter alia of injunction restraining the defendant from manufacturing, selling, offering to sell, distributing and/or in any manner dealing in any goods more particularly medicinal and pharmaceuticals preparations bearing trademark "HAPPY FORTE" (word per se /Label) which is identical with and/or deceptively similar to the plaintiffs well-known trademarks "HEPP", "HEPP FORTE" and HEPP FORTE (Label)". 3. The plaintiff is the registered proprietor of the trademarks "HEPP", "HEPP FORTE" and "HEPP FORTE (Label)" registered under numbers 447864, 557464 and 557466 respectively in respect of the medicinal and pharmaceutical preparations specified in Class-5 of the Fourth Schedule of the Trade Marks Rules, 2002 (the Rules) to the Trade Marks Act, 1999 (the Act). The certified copies of the entries relating to the said trademarks are annexed as Exhibits-A, B and C to the plaint. The registration of the Trademarks has been renewed from time to time and is valid and subsisting. 4. According to the plaintiff the trademark "HEPP FORTE (Label)" is a distinctive trademark of the plaintiff. Its distinctive features include a honey comb design used in light orange colour all round the label. The words "HEPP" and 'FORTE" are depicted in small red or white circles upon the label. The uniqueness of the word HEPP being depicted on the 3 label/wrapper/carton lies in its being portrayed in small red dots/circles or pearls and the horizontal lines of the letters run across to the other side of the box. The word "FORTE" is depicted in a peculiar style, in small white color circles upon a reddish rectangle along with the word "HEPP" upon the carton/label/wrapper. These features are the substantial, striking and essential features of the entire label besides the other features which make the label distinctive. The plaintiff commissioned services of one Mr.Narendra Kamte of Merit Art to create an artistic work for the label of the plaintiff. Mr.Narendra Kamte of Merit Art created an artistic work for the label of the plaintiff under a contract for service for valuable consideration. According to the plaintiff, the plaintiff is the first owner of the copyright in the artistic work subsisting in the label of "HEPP FORTE" including the colour scheme, layout, get up, the hexagonal/honeycomb design appearing on the label and including the writing style of the words "HEPP FORTE" in the colours red, orange, black and white ("the said artistic work"). Mr.Narendra Kamte has executed a deed of assignment and assigned in favour of the plaintiff the said artistic work. A copy of the said artistic work is annexed as Exhibit-D to the plaint. 5. It is submitted on behalf of the plaintiff that they are using the trademark "HEPP" extensively, continuously and uninterruptedly since the year 1986 in India in respect of "medicinal and pharmaceutical preparations". The plaintiff further states that the products sold under the registered trademarks "HEPP FORTE" and "HEPP FORTE (Label)" were commercially introduced in or about the year 1991, consisting of the generic "Iron (III) Hydroxide Polymatose Complex". The plaintiff states that they have spent considerable time, effort and money to popularise the said trademarks "HEPP", "HEPP FORTE" and "HEPP FORTE (Label)". The plaintiff has made substantial sales of the product bearing the trademark HEPP, HEPP FORTE, HEPP FORTE (label). A specimen carton of the plaintiff's bearing the trademarks "HEPP", "HEPP FORTE" and "HEPP FORTE (Label)" is annexed as Exhibit-E to the plaint. 6. According to the plaintiff, the goods sold, supplied and/or offered for sale by the plaintiff bearing the trademarks "HEPP", "HEPP FORTE" and 4 "HEPP FORTE (Label)" have acquired a vast and enviable reputation by virtue of their intrinsic quality and superiority. Therefore, the trademark/ copyright "HEPP", "HEPP FORTE" and "HEPP FORTE (Label)" have come to be associated solely and exclusively with the plaintiff amongst traders and members of the public. A statement of sales turn over of the plaintiff's goods bearing the trademarks "HEPP", "HEPP FORTE" and "HEPP FORTE (Label)" for the last over ten years is annexed as Exhibit-F to the plaint. A statement of publicity expenses incurred by the plaintiff for the last over ten years is annexed as Exhibit-G to the plaint. 7. According to the plaintiff, in the first week of August 2009, the plaintiff came across almost an identical product manufactured by the first defendant, marketed by the second defendant under the impugned mark/ label "HAPPY FORTE" which mark is identical with and/or similar/ deceptively similar to the plaintiff's registered trademarks "HEPP", "HEPP FORTE" and "HEPP FORTE (Label)" which is used by the defendants in respect of identical product i.e. pharmaceutical products comprising of the same generic "Iron (III) Hydroxide Polymatose Complex". According to the plaintiff, the colour scheme, layout, get-up of the label, carton, wrapper used by the defendants is almost identical to the label, wrapper, carton used by the plaintiff. A copy of the defendants carton/label/box/wrapper is annexed as Exhibit-H to the plaint. It is submitted on behalf of the plaintiff that the defendants have copied the plaintiff's registered trademark "HEPP" and merely replaced the second letter/alphabet `E' appearing therein with the letter/alphabet `A' and added the letter `Y' at the end. The changes made in small size make the defendants word "HAPPY" appear like the plaintiff's trademark "HEPP". The plaintiff states that the defendant's products are available in Mumbai. 8. The learned advocate for the plaintiff has taken me through paragraph 20 of the plaint where it is explained/set out in detail as to how the defendants have copied all the essential features of the plaintiff's registered trademarks. The plaintiff has further submitted that the use of the label of the plaintiff by the defendants is a colourable imitation and/or substantial reproduction of the plaintiff's work and constitutes infringement 5 of the copyright of the label of the plaintiff. It is submitted on behalf of the plaintiff that considering the blatant adoption and use of an identical label/wrapper/ carton/box, the plaintiff has no choice left but to institute the present suit and apply for ad-interim/interim reliefs as prayed in the Notice of Motion. 9. I have considered the aforestated facts and submissions advanced by the learned advocate for the plaintiff. I have compared the specimen cartons of the plaintiff bearing the plaintiffs’ trademarks (Exhibit-E to the plaint) with the specimen carton of the defendant bearing the trademarks used by the first defendants (Exhibit-H to the plaint). I am more than prima facie convinced that the defendants are infringing the trademarks of the plaintiff and the copyright in the artistic work of the plaintiff. An ad- interim order in terms of prayer clauses (a) to (c) continues in favour of the plaintiff and against the defendants since 25th September 2009. The defendants have not only not moved the Court for setting aside the said ad-interim order but as set out earlier, have till date not filed the affidavit- in-reply to the Notice of Motion on the pretext that settlement talks between the parties are going on. The learned advocate for the defendant has not made any submissions before this Court. 10. In view thereof, the ad-interim orders dated 25th September 2009, 12th October 2009, 7th November 2009 and 8th December 2009 stand confirmed and the Notice of Motion is made absolute in terms of prayer clauses (a), (b) and (c) of the Notice of Motion. The defendants to file their written statement on or before 7th February 2011. Stand over to 9th February 2011 for directions. (S.J.KATHAWALLA, J.)