1 IN THE HIGH COURT OF JUDICATURE AT BOMBAY ORDINARY ORIGINAL CIVIL JURISDICTION NOTICE OF MOTION NO.2628 OF 2009 IN SUIT NO.1803 OF 2009 M/s.Suprim Pharma .. Plaintiffs Vs. Unitech Life Science and Anr. .. Defendants Mr.B.N.Poojary i/b M/s.Asian Patent Law for the plaintiffs CORAM : S.C.Dharmadhikari, J. DATE : September 20, 2010 P.C. : 1. This Notice of motion is seeking an injunction against the defendants their agents, servants, representatives and/or any persons claiming under or through them from infringing the trade mark MILLENIUM STUD 2000 “ ” and passing off their product or preparation as that of the plaintiffs so also for further reliefs. 2. The plaintiffs claim to be a partnership firm registered under the Indian Partnership Act, 1932. They are engaged in the business of manufacturing and/or marketing pharmaceutical product i.e. Local Anesthetic preparations and goods of similar description. 2 3. The defendant no.1 has its address in the cause title and the plaintiffs do not know its constitution but from the affidavit i.e. filed in reply it is stated that defendant no.1 and 2 have appointed jointly Shri I.G.Khandelwal as their constituted attorney, who has affirmed the affidavits and filed them in court and argued the matter in person. 4. The case of the plaintiff is that the defendant no.2 is a company incorporated under the Companies Act, 1956 having its registered office at the address mentioned in the cause title. Both companies are manufacturing and / or marketing pharmaceutical products being Local Anesthetic preparations or goods of similar description. 5. It is stated in para 3 of the plaint that in or about the year 2000, the plaintiffs commenced manufacturing activity under a loan license and what is sought to be relied upon is a license given by M/s.Amrut Drug Research Lab Pvt.Ltd in favour of the partners of the plaintiff. That license has been renewed and it is stated that the renewal is till 31.12.2007. 6. The plaint is affirmed and declared on 4.5.09. It is stated that the loan license agreement has been renewed from time to time but by different entity. 7. In para 4 of the plaint it is stated that the plaintiffs originally conceived and 3 honestly adopted a distinctive trade mark MILLENIUM STUD 2000 . “ ” After ascertaining that there is no mark identical with and / or similar thereto, they state that to the best of their ability, and even market inquiries revealed that there is no other pharmaceutical preparations particularly the Local Anesthetic preparations. Therefore, the plaintiffs honestly adopted the mark by filing application for its registration in Class 05 under the Trade Marks Act, 1999. They bona fide commenced use of the mark and their mark has been depicted in a particular manner and style. Even the external cartons, copies of which are annexed as Exhibit B-1 and B-2 would show ‘ ’ ‘ ’ that in representing their mark in a special manner, the plaintiffs have assigned prominence to the word STUD “ ”. 8. It is stated that the Registrar of Trade Marks advertised the plaintiffs mark before acceptance but there was no opposition and therefore, on 26.3.07, the plaintiffs mark has been registered in respect of pharmaceutical, ayurvedic, cosmetic included in Class 05 of the Schedule to the Trade Marks Act, 1999 and a certificate of registration was issued. It is stated that the trade mark is valid and subsisting. The plaintiffs have made the application for using the mark and thereafter from 2001 to 2009, they have been continuously using the mark which is annexed at Exhibit G to the plaint. According to ‘ ’ them, this would indicate that the goods have been extensively sold under this mark. Copies of the sales invoice are also annexed and therefore, the plaintiffs assert that they are prior users and in any event, one which is originally conceived and honestly adopted by them. 4 9. It is alleged that in March 2009, the plaintiffs came across the container of the defendants which showed that they have copied distinctive style of the plaintiffs by adopting and using the same mark STUD “ ” but they spell it as STUDD “ ”. Exhibit J is a photograph of the container which shows ‘ ’ that the defendants have imitated the special and particular manner of the trade mark adopted by the plaintiffs and intended to pass off of their goods as that of the plaintiffs. 10. Therefore, the plaintiffs cause the advocates notice to be issued, copy of which is Exhibit K to which a reply has been sent by the defendants ‘ ’ stating that they are the prior users and they have stated that M/s.United Life Science is carrying on their business of selling the Anesthetic Spray ‘ ’ with the name and style of SX-STUDD after obtaining the requisite ‘ ’ permission and licenses from the concerned Government Authority. It is stated that M/s.Vera Pharma P.Ltd i.e. defendant no.2 is manufacturing the product after issuance of all the requisite licenses in their favour and they have obtained the necessary information during the search report from the office of the Registrar of the Trade Marks. 11. In fact M/s.Unitech Life Science have published an advertisement in the Trade Mark Journal in respect of the trade mark of the defendant no.1. There was no opposition or objection received thereto. Therefore, it is stated that the user of the trade mark is in accordance with the honest 5 practices in commercial matters and there is no question of any unfair advantage or acting to the detriment of the plaintiffs. They have asserted that the trade mark SX-STUDD is not registered property of the defendant “ ” no.1 and in any event, the trade mark, wrapper box and its design of the product is not similar to that of the plaintiffs. For all these reasons, they indicated that they will not comply with the plaintiffs advocates notice. ’ 12. This is how the suit came to be filed and an application is made for interim relief in terms of the final relief of permanent injunction to restrain infringement and passing off. 13. The written statement has been filed on behalf of defendant nos.1 and 2, so also detailed affidavits. Parties do not dispute that the trade mark MILLENIUM STUD 2000 “ ” belongs to M/s.Amrut Drug Research Lab Pvt.Ltd, Tarapur, Dist.Thane. It is alleged that the plaintiffs are the sole selling agent for the product manufactured by M/s.Amrut Drug Research Lab Pvt.Ltd but they have no authority to file the present suit. 14. It is stated that the defendant no.1 is running the business in the name and style of M/s.Unitech Life Science and defendant no.2 is manufacturing the Anesthetic Spray with the name and style of SX-STUDD after ‘ ’ ‘ ’ obtaining the necessary permission. It is stated that the trade mark has been adopted in an honest manner after taking all the necessary precautions and safeguards. In such circumstances, there is no question of grant of any 6 interim injunction. Defendants have reiterated their stand in the letter (reply) dt.17.3.09 which was sent to the plaintiffs advocates notice. 15. Further reliance is placed on a decision in the case of Coca Cola Company of Canada Ltd. vs. Pepsi Cola reported in 1942 (59) Report of Patent and Trade Mark cases (RPC) 127. 16. As far as reply to the Notice of Motion is concerned, it is stated that the search was conducted at the Office of the Trade Mark Registry and several pending trade mark applications and registered trade mark with the suffix STUD ‘ ’ were found and consequently the defendants opted to use the trade mark SX-STUDD ‘ ’ with suffix STUDD ‘ ’. The suffix STUD is common to ‘ ’ the trade and no single person or entity can claim exclusive right to the same. 17. Further, it is stated that the defendants have filed a suit in the court of Civil Judge, Thane being a Regular civil suit No.434 of 2009 for declaration and injunction against the plaintiffs and copy of the plaint and injunction application is annexed at Exhibit 6 to the affidavit in reply. Thus, the plea ‘ ’ is that there is no question of any infringement and passing off in as much as it has been pointed out very clearly that the plaintiffs have no right or authority to prevent the defendants from using the trade mark SX-STUDD . ‘ ’ In any event, the trade mark, box and container is not similar to that of the plaintiffs. 7 18. One of the contentions raised is that the plaintiffs are not the first manufacturers / marketing agent to adopt the trade mark because the word is descriptive and commonly used by manufacturers and traders of Anesthetic Spray. It is stated that the trade mark STUD 100 ‘ ’ issued by a UK based company selling their anesthetic spray product globally. Further, the trade mark STUD D-LAY is used by one of the Indian company “ ” selling the same product globally. There is a trade mark STUD 1000 used ‘ ’ by Eclat Pharma and Aerosols Pvt.Ltd. Tal.Wada, Dist.Thane, selling their product throughout India. A copy of their carton and container is annexed at Exhibit 7 to the plaint. ‘ ’ 19. Therefore, it is stated that what the defendants are doing is using something which is common to the trade and the plaintiffs cannot be said to be originators or the first users. 20. Defendant no.2 has also filed an affidavit in reply through the same authorized signatory raising more or less identical contentions. A plea has been raised that the word STUD does not possess the basic attributes of a ‘ ’ trade mark due to its inherent generic nature and that the mark is not capable of registration by virtue of the provisions of sections 9(1) (a), (b) and (c) of the Trade Marks Act, 1999. 21. Rejoinder affidavit has been filed on behalf of the plaintiffs and it is stated 8 in para 4 of the rejoinder as under: 4. With reference to paragraph 03, I say and submit that the “ document at Ex. 1 to reply is not of any assistance to the ” ” defendants. The documents at Ex. 1 to the reply are not ” ” between the plaintiff and the defendants. The documents at Ex. 1 in no way creates any right, title or interest in favour ” ” of the defendants. It is submitted that at initial stage of commencement to use the mark MILLENIUM STUD 2000 “ ”, the plaintiff had manufacturing arrangement with M/s.AMRUT DRUG RESEARCH LAB PVT. LTD., PLOT NO.S/27, MIDC, Tarapur. For commercial expediency and other convenience, in the year 2000, the plaintiff and the said AMRUT DRUG RESEARCH LAB PVT.LTD. Arrived at an understanding of holding the trade mark in the manufacturers name and the plaintiff as sole selling ’ agent. To place on record the said understanding, the plaintiff addressed its letter dated 4th September, 2000 to the manufacturer M/s.AMRUT DRUG RESEARCH LAB. PVT.LTD, and affirmed an affidavit dated 15th February 2002 (Ex.1 to the reply). The manufacturer M/s.AMRUT DRUG RESEARCH LAB.PVT.LTD was unable to fulfill the requirements of the said understanding and the arrangement of manufacturing the product was continued under the Plaintiffs ownership on the ’ trade mark MILLENIUM STUD 2000 . The terms and/or “ ” 9 covenants contained in Ex.1 to the reply were not acted upon by M/s.Amrut Drug Research Lab.Pvt.Ltd.and the plaintiff. In or about September 2002 the plaintiff discontinued arrangement of manufacturing its product bearing MILLENIUM STUD 2000 “ ” by M/s.Amrut Drug Research Lab. Pvt.Ltd. And commenced manufacturing the said products through M/s.Rubicon Formulations Pvt.Ltd. At M-163, M.I.D.C. Area, Waluj, Aurangabad. Hereto annexed and marked Exhibit AA is a copy of the Drug License dated 30.09.2002 issued by the Jt.Commissioner (Aurangabad Divn.), Food and Drug Administration, (M.S.), Aurangabad. In or about July 2006, the trade mark application No.979250 dated 26.12.2000 made by the plaintiff for registration of trade mark MILLENIUM STUD 2000 was advertised before “ ” acceptance under Section 20(1) Proviso of the Trade Marks Act, 1999 in the Trade Marks Journal No.1348, Regular, dated 16.07.2006 (Exh. C to plaint). There was no opposition to the ’ ’ trade mark application even from M/s.Amrut Drug Research Lab.Pvt.Ltd.and on or about 26.03.2007, the trade mark MILLENIUM STUD 2000 “ ” was registered and certificate of registration (Exh. D to the plaint) was issued to the ” ” plaintiff. 10 It is submitted that none of the defendants is a party to documents at Ex.1 to reply. The defendants case is not of ’ deriving their mark from M/s.Amrut Drug Research Lab.Pvt.Ltd. In order to continue their illegal activities of infringement of trade mark and passing off goods, the defendants are not entitle to take shelter of these documents. It is reiterated that the document at Ex.1 to the reply are not of any assistance to the defendants to avert order of injunction of this Hon ble ’ Court.” 22. Copy of the loan license is annexed at Exhibit AA to the rejoinder ‘ ’ affidavit. After the matter was argued on the earlier occasion, the parties relied upon their respective stands. After some argument, the defendants agreed to give an undertaking in terms recorded by me in my order dated 1.9.10. Thereafter a written undertaking has been filed on 6.9.10 which has been taken on file. 23. On the last occasion, the matter was adjourned to enable the parties to come to some workable arrangement and the Authorized Signatory of the defendant has forwarded a letter to the plaintiffs advocate on 15.9.10 which reads thus: Following the instructions as given by the Hon ble High Court on “ ’ 13.09.2010, we the defendants have given instructions to our artist for 11 the proposed change of color scheme, the wrapper and the getup of our product known as SX-STUDD , an Anesthetic Spray. But, ‘ ” unfortunately, he is on leave due to Ganpati Festival and, therefore, it is not possible for us to send you our proposed art work on or before 20.09.2010. No alternate is left with us except to get adjournment of the matter from the Hon ble Court. ’ ” 24. Plaintiffs have relied upon a certificate of registration issued under section 23(2) and Rule 62 (1) bearing no.624479 Registering their trade mark 979250 in the name of Shreepal Mangalchand Jain and Balwant Maruti Patil, Trading as Suprim Pharma included in Class 5 which is issued on 26.3.07. The product in question is pharmaceutical product and the mark STUDD is ’ common to all the cartons and packages. The product is a Local Anesthetic preparation. The plaintiffs claim rights in the peculiar manner in which their mark is depicted with a particular style in which the picture of horse is shown and the words below the same are written. 25. The grievance is that the defendants are passing off their product as that of the plaintiffs by depicting their mark in the same style and manner. Their packages are more or less identical. Further, the manufacture of the defendants have been noted only in March 2009 whereas the plaintiffs user of the mark is from prior period i.e. 2000. However, defendant nos.1 and 2 filed an affidavit in reply wherein they seek to state that the word STUD ‘ ’ is commonly used with the same style and mark and picture of a horse is 12 an identical picture on all cartons. These marks are used and the products under their name are available in the market. Exhibit 7 to the affidavit in reply filed by defendant no.1 is one such package. In answer to this, what the plaintiffs have stated in rejoinder is that it is not aware of use of STUD/STUD-100/STUD-DELAY/STUD 1000 allegedly available in the market and in any event, the defendants are not entitled to adopt such unauthorized and illegal use to resist the injunction application. 26. It is stated that the defendants are not the persons using the mark by way of permitted use but they are using it during the course of the trade. Defendants use of the offending mark is a colourable imitation of the plaintiffs mark and is likely to be taken as being used as trade mark of the plaintiffs. Further, it is stated that the plaintiffs have not come across use of spray in respect of Anesthetic spray by any other person other than the defendant. 27. I have heard Mr.Poojary, the learned counsel appearing for the plaintiff and the learned Authorized Signatory / Competent Officer of the defendants at some length. Mr.Poojary stated that on the earlier occasion that the plaintiffs have initiated proceedings against one of the other users as well. From a perusal of the entire material at this interim stage all that I have to see is whether a prima facie case is made out by the plaintiffs and to what extent. As far as plaintiffs are concerned, they are stating that one M/s. Amrut Drug Research Lab Pvt.Ltd was the manufacturer of the product 13 and under a loan license the arrangement with them, the plaintiffs were authorized to manufacture and sell the product in question. Now that arrangement with Amrut Drug Research Lab Pvt.Ltd has come to an end and the plaintiffs have entered into an arrangement with some other company as has been stated in the relevant para of the affidavit in rejoinder and as will be clear from Exhibit AA thereto. ‘ ’ 28. Both the plaintiffs and defendants do not dispute the right of Amrut Drug Research Lab Pvt.Ltd as manufacturers of the product. All that the plaintiffs state is that they have devised a market which could be stated to be a label mark in relation to the product and, therefore, product is sold in the carton, exterior of which is also chosen by the plaintiffs on their own distinctly and the rights are claimed in relation thereof. 29. It is not necessary to go into the other aspects in detail but prima facie it is clear that the word STUD has been used by lot of manufacturers and ‘ ’ marketing agents in relation to the spary/Local Anesthetic. 30. From the material produced it is clear that the product in question is used as a spray to enhance sexual pleasure and there are number of manufacturers who claim to have manufactured and marketed it with an identical name. Further, those marketing and selling it also claim to have sold with the extraordinary packaging / design, which is more or less same as that of the plaintiffs and defendants. It is in such circumstances and 14 when the defendants do not dispute, at least prima facie, the right of the plaintiffs to market the product, so also, that there is a registration in favour of the plaintiffs and that the plaintiffs product is available in the market since the year 2000 the least that was expected of the defendants is to adopt a different and distinct packaging so that the products of both can be distinguished. The marks are in relation to pharmaceutical preparations and particularly the one involved in the matter, it is quite likely that the users will confuse the one with another. In other words, there is nothing which can enable the consumer to identify the products as being associated with one manufacturer or the other. The people buying the product would definitely associate it with somebody whose label and packing is in the market for a longer time. Therefore, prima facie case to the extent of passing off is made out. As far as infringement is concerned, the plaintiffs case is in some doubt. 31. It is in these circumstances that I had indicated to the defendants that if they are ready and willing to change their packaging and the colour scheme, wrapper and getup of their product that would take care of the plaintiffs apprehension at this prima facie stage. In other words, the plaintiffs right in relation to the colour scheme, wrapper and getup being made out, the balance of convenience to that extent is in their favour. 32. It is in such circumstances that some workable arrangement as not to cause loss to the plaintiff and defendants could have been arrived at by parties. 15 However, beyond filing an undertaking and the advocates letter, a distinctive and different colour scheme, wrapper and get up so as not to cause confusion to the ultimate consumer has not been placed before me. 33. In these matters, the element of public interest also cannot be ignored. Ultimately, the confusion i.e. likely to be caused by identical products available across the shelf would enhance the risk to the final ultimate users. In these circumstances, until the defendants comply with the undertaking the following order will serve the hands of justice: 34. Notice of Motion is made absolute in terms of prayer clause (b). Liberty is given to the defendants for vacating this order only after they comply with their undertaking on affidavit which is filed in the court on 6.9.10. There will be no order as to costs. ( S.C.Dharmadhikari, J. )