1 nms-4159-s-3117-09 mst IN THE HIGH COURT OF JUDICATURE AT BOMBAY ORDINARY ORIGINAL CIVIL JURISDICTION NOTICE OF MOTION NO.4159 OF 2009 IN SUIT NO.3117 OF 2009 M/s.Neon Laboratories Limited Plaintiff. versus M/s.Brawn Laboratories Limited Defendant. .... Mr.Virag Tulzapurkar, Sr.Counsel a/w Mr.Sunil N. Nair for plaintiff. Mr.Abhijeet Mahadeokar i/by Diwakar Gond & Gunjan Dubey for defendant. .... CORAM : S.J.KATHAWALLA, J. DATE : 25th February 2011. P.C. :- 1. In this suit the plaintiff have alleged that the defendants, by using the impugned trademark "TACIDAL" which is identical with and/or in any event deceptively similar to the plaintiffs registered trademark "CIDAL" in relation to pharmaceutical goods, are guilty of infringement and passing off. In the Notice of Motion filed in the above suit the plaintiffs have sought an injunction against the defendants from in any manner using the impugned trademark "TACIDAL" in respect of the pharmaceutical products or selling and/or using the impugned trademark "TACIDAL" or any other trademark or word or any mark deceptively similar to the plaintiffs registered trademark "CIDAL" so as to infringe the plaintiffs registered trademark bearing No.682612 and so as to pass off or enable others to pass off the defendants goods for the goods of the plaintiffs. 2 nms-4159-s-3117-09 2 Briefly set out are the relevant facts in the matter. 3. The plaintiffs are a limited company incorporated under the Companies Act, 1956. According to the plaintiffs they are one of the leading manufacturers and merchants in India, inter alia, of medicinal and pharmaceutical preparations. The plaintiffs are well known in the pharmaceutical trade as they carry on a well established business for almost three decades. Till 30th June 1996 the plaintiffs were known as "Neon Laboratories Pvt. Ltd.". With effect from 1st July 1996 the plaintiffs have become a public limited company. According to the plaintiffs, all rights of the plaintiffs in their former name vest in the plaintiff in their present name including the rights of registration of the trademark. The defendant is also a limited company and is in the business of manufacturing and marketing pharmaceutical products. 4. According to the plaintiffs in or about October 1995 they conceived and adopted and thereafter began to use the trademark "CIDAL" in respect of the pharmaceutical preparations. The plaintiffs applied for the registration of their trademark "CIDAL" which was registered under number 682612 as of 6th October 1995 in respect of pharmaceutical preparations falling in Class-5. The said registration is renewed from time to time. The plaintiffs have been exclusively using the said trademark "CIDAL", which is a word mark, extensively, throughout India. A colour photograph of the plaintiffs product bearing the registered trademark “CIDAL” is annexed and marked as Exhibit-C to the plaint. 3 nms-4159-s-3117-09 Some specimen of the invoices of the product "CIDAL" for the year 2004 onwards are annexed to the plaint and marked Exhibits-D-1 to D-27. A statement giving the sales figures of the plaintiffs product under the mark "CIDAL" for the financial years 2004-2005 to 2009-2010 (up to September 2009) is annexed and marked Exhibit-E to the plaint. Some specimen of the promotional and advertising material published by the Plaintiffs are annexed to the Plaint and marked as Exhibits F-1 to F-3. The copies of pharmaceutical journals namely CIMS wherein the plaintiffs mark has been published are annexed to the Plaint and marked Exhibits G-1 to G-3. According to the plaintiffs by reason of the aforesaid facts the plaintiffs trademark "CIDAL" has come to be associated by traders and members of the public exclusively with the plaintiffs. The plaintiffs product bearing their registered trademark "CIDAL" is presently used for a combination drug, viz. Piperacillin and Tazobactam which is an injectable antibacterial product available in "Dry Powder" form to be reconstituted with Sterile Water at the time of intravenous administration. The plaintiffs products are made under strict quality control conditions and have to undergo and meet stringent quality standards before they are put in the market for use. 5. According to the plaintiffs in or about October 2009, for the first time it came to the notice of the plaintiffs that the defendants had adopted the impugned trademark "TACIDAL" in respect of their pharmaceutical goods. According to the plaintiffs, the defendants who are in the same trade, have adopted the said trademark "TACIDAL" for medicinal and pharmaceutical products, dishonestly and with notice and knowledge, actual and/or constructive of the plaintiffs registered 4 nms-4159-s-3117-09 trademark and the plaintiffs vested rights in respect thereof with a view to trade upon the reputation acquired by the plaintiffs in respect of their trademark "CIDAL" and to mislead the pharmaceutical traders and public into believing that the defendants goods are the goods of the plaintiffs. A photograph of the defendants product bearing the impugned trademark "TACIDAL" is annexed and marked as Exhibit-H to the plaint. It is submitted on behalf of the Plaintiffs that the Defendants have in their reply alleged that the Plaintiffs’ mark ‘CIDAL’ is a descriptive mark and have therefore tried to question the validity of the registration of the Plaintiffs registered mark ‘CIDAL’. Relying on the decisions of this Court in Hindustan Embroidery Mills Pvt. Ltd. vs. K. Ravindra and Co. , (1974) 76-Bom LR-146, and in Poddar Tyres Limited vs. Bedrock Sales Corporation Limited, AIR 1993 Bombay 237, it is submitted on behalf of the Plaintiffs that the argument qua the validity of the Plaintiffs trade mark ‘CIDAL’ cannot be raised by the Defendant in the present proceedings and the Plaintiffs’ mark ‘CIDAL’ has to be considered as a valid mark until the same is removed from the register. It is further submitted on behalf of the Plaintiffs that even otherwise the impugned mark ‘TACIDAL’ is admittedly a combination of the names of two of the drugs forming the main components of the Defendants’ product. The said mark ‘TACIDAL’ is therefore also descriptive. Since the Defendants have admittedly applied for registration of the mark ‘TACIDAL’ they are estopped from raising any question qua the validity of the registration of the Plaintiffs’ mark ‘CIDAL’ as held in the case of Automatic Electric Limited Vs. R.K.Dhawan and Another, 1999-PTC(19)-81. In that case, the mark used by the plaintiff in relation to manufacture and sale of 5 nms-4159-s-3117-09 variable voltage auto transformers by them was ”DIMMERSTAT’. In an infringement suit filed by the plaintiff against the defendants for using the trademark "DIMMER DOT” in relation to manufacture and sale of variable voltage auto transformers by them it was contended on behalf of the defendants that the word “DIMMER” being a generic and descriptic word is incapable of serving a trade mark function. The Defendants had got their trade mark “DIMMER DOT” registered in Australia. The Learned Single Judge of the Delhi High Court therefore held that the fact that the defendants itself had sought to claim trade proprietary right and monopoly in “DIMMER DOT”, it does not lie in their mouth to say that the word “DIMMER” is a generic expression. User of the word “DIMMER” by others cannot be a defence available to the defendants if it can be shown that the same has been used in violation of the statutory right of the plaintiffs. 6. It is submitted on behalf of the plaintiffs that the adoption of the impugned mark "TACIDAL" by the defendants is ab-initio dishonest. By reason of the registration, the plaintiffs alone are entitled to use the said mark "CIDAL" and the defendants use of the impugned mark "TACIDAL" constitutes infringement of the plaintiffs registered trademark because the defendants impugned trademark "TACIDAL" is identical with and in any event deceptively similar to the plaintiffs registered trademark "CIDAL". It is further submitted that by use of the impugned mark which was adopted by the defendants after the registration of the plaintiffs trademark "CIDAL" and with notice of the plaintiffs vested right thereto, the defendants are also passing off their goods bearing the impugned 6 nms-4159-s-3117-09 trademark "TACIDAL" as and for those of the plaintiffs. It is submitted that the defendants have taken the whole of the registered trademark of the plaintiffs and just added the two letters "TA" in the beginning of their impugned mark. This change is immaterial and non-distinctive. It is submitted that the impugned mark as a whole is visually, phonetically and structurally similar to the plaintiffs mark. The minor difference is a subterfuge. It is therefore submitted that the defendants are indulging in the act of infringement and passing off with a malafide intention to trade upon the plaintiffs reputation and mislead the pharmaceutical traders and public at large into believing that the defendants goods are the goods of the plaintiffs. It is submitted that the defendants have adopted the impugned trademark "TACIDAL" with full knowledge of the plaintiffs proprietary and exclusive rights in their registered mark. The defendants adoption therefore is ab-initio, dishonest and malafide. In support of their above contentions the Plaintiffs have relied on several decisions of this Court and the decisions of the Hon’ble Apex Court. It is submitted that by an ex-parte ad-interim order dated 16th December 2009 this Court has restrained the defendants from using the impugned trademark "TACIDAL" in terms of prayer clause (b) of the Notice of Motion which order is continued up to the hearing and final disposal of the Notice of Motion. It is therefore submitted on behalf of the plaintiffs that the Notice of Motion be allowed in terms of prayer clauses (b) and (c). 7. The defendants have filed their affidavit-in-reply dated 29th January 2010. A perusal of the said affidavit shows that the defendants have repeated their submissions over and over again in their said 7 nms-4159-s-3117-09 affidavit. The defendants have denied having infringed any rights of the plaintiffs as alleged and have submitted that they are the bona fide users of their product "TACIDAL" which is very much different from the product of the plaintiff. The allegation pertaining to passing off are also denied and disputed by the defendants. It is submitted that the product of the defendant is in demand in the pharmaceutical market and amongst the common public. 8. It is submitted on behalf of the defendant that the word "CIDAL" is neither an invention nor a creation of the plaintiff. The word “CIDAL” is a medical dictionary word which means a suffix indicating killing e.g. Bacteriocidal (capable of killing bacteria). There are several other companies using the name "CIDAL" for e.g. there is a Contract Research Organization/Site Management Organization (CRO/SMO) in the name of "CIDAL" (a Government Organization) that implements and executes Clinical Trials in Latin America. There is also an anti-bacterial soap with the name of "CIDAL" which is manufactured and marketed by Accantia Health & Beauty Limited, London, U.K.. It is submitted that the defendants have derived the name of their product from two different names i.e. "TA" from Tazobactam and "CIDAL" from a Bacteriocidal i.e. Piperacillin. Both Tazobactam and Piperacillin are the main components of the product "TACIDAL". It is submitted that the name "TACIDAL" given by the defendant to their product is instead a creation of the defendant which it has arrived at after putting in lots of research in it. 9. It is further submitted by the defendant that in the year 2003 8 nms-4159-s-3117-09 the defendant had taken search for the availability of the brand name "TACIDAL" and also had made an application to the Trademark Registry, Okhla Industrial Estate, New Delhi vide Application No.1253978 for registering their product name "TACIDAL". According to the defendant, it was informed by the Trademark Registry, Okhla Industrial Estate, New Delhi by its search report dated 18th December 2003 that the brand name sought by the defendant was conflicting with two other registered brand names "TACID" and "TACID GEL". It is submitted that even in the search report of the Trademark Registry, Okhla Industrial Estate, New Delhi, the name of the plaintiffs product was not mentioned. It is submitted that the defendant believing that the brand name "TACIDAL" was available with the Trademark Registry, gave orders for production of packets, wrappers and other stationery in the name of its brand name "TACIDAL". It is also submitted that the defendant before launching its product in the market did an extensive market survey and only after being satisfied regarding the demand for its product in the market, the defendant started accepting orders for its product and the first lot of goods were dispatched vide invoice dated 6th May 2004 (Exhibit-D to the affidavit-in- reply). It is submitted that the product of the defendant is not phonetically similar to that of the plaintiff and in fact the product of the defendant is more popular and in demand, both in pharmaceutical firms, medical institutes and in general public all over India which can be seen from the fact that the defendant supplies the products in many States in India. The defendants have also annexed copies of the invoices raised by the defendant over a period of time and have also annexed the same as Exhibits-E-1 to E-10 to their affidavit-in-reply. It is submitted that the 9 nms-4159-s-3117-09 plaintiff started selling its product under the brand name "CIDAL" from 13th April 2004 and the defendant started selling its product under the brand name "TACIDAL" from 6th May 2004. The defendant provided the product of excellent quality to its consumers and hence the demand for the product of the defendant under its brand name of "TACIDAL" has grown over the years many folds. Even on the Internet site like Internet site of Surat Chemists and Druggists Association, the product of the defendant is recognized under its brand name of "TACIDAL" instead of the product of the plaintiff. It is submitted that the defendant is continuously and extensively promoting its product from the year 2004 under the brand name "TACIDAL" as against the plaintiffs promotion in the year 2007. It is submitted that the State Drugs Controller, Panchkula, Haryana has vide its letter dated 10th February 2004 given its permission to the defendant to prepare its products which contain Piperacillin and Tazobactam, a copy of which letter is annexed as Exhibit-F to the affidavit-in-reply. It is submitted that the said products are used by only those persons who have medical background. The question of any of the whole sellers getting confused also does not arise. The learned advocate for the defendant has therefore submitted that the defendant is neither guilty of infringement of plaintiffs trademark "CIDAL" nor is guilty of passing off its products under the name "TACIDAL" as that of the plaintiffs. In support of his contentions, the defendant relied on a decision of a Division Bench of this Court in Schering Corporation and another Vs. United Biotech (P) Ltd. and another 2011(1)-Bom.C.R.-89. 10. The Plaintiffs have by their Affidavit in Rejoinder dated 19th 10 nms-4159-s-3117-09 January 2011 dealt with the allegations/ submissions advanced on behalf of the Defendants in its Affidavit in Reply. 11. I have considered the submissions advanced by the learned advocates appearing for the parties. I have also considered the case law cited on behalf of the parties. 12. Admittedly, the trademark "CIDAL" of the plaintiffs is registered as of 6th October 1995 in respect of pharmaceutical preparations falling in Class-5. The defendants mark "TACIDAL" is not a registered mark but is pending registration. The defendants have contended that the word "CIDAL" is a medical dictionary word which means a suffix indicating killing e.g. Bacteriocidal (capable of killing bacteria). The word "CIDAL" is neither an invention nor a creation of the plaintiff. As against this, the mark "TACIDAL" is a creation from two different names i.e. "TA" from Tazobactam and "CIDAL" from a Bacteriocidal i.e. Piperacillin, both Tazobactam and Piperacillin are the main components of the product "TACIDAL". In other words, the defendants have sought to contend that the word "CIDAL" is descriptive, not distinctive and is not validly registrable. The answer to this contention is contained in the judgment of this Court in Hindustan Embroidery Mills Pvt. Ltd. (supra) wherein the learned Single Judge (Vimadalal, J.) pointed out that it is not the practice of this Court to consider the validity of the registration of a trademark on a motion for interlocutory injunction taken out by the person who has got the mark registered in his name. While the mark remains on the register (even wrongly), it is not desirable 11 nms-4159-s-3117-09 that others should imitate it. The decision in the case of Hindustan Embroidery Mills Pvt. Ltd. (supra) is followed by another Single Judge of this Court (B.N.Srikrishna, J.) in Poddar Tyres Limited (supra) (paragraph 41). Even otherwise, in the present case, admittedly, the defendant has also applied for registration of the mark "TACIDAL" under Class-5 of the Trademarks Act which admittedly is only a combination of two names of the drugs which form the main components of the product "TACIDAL" and is therefore a descriptive mark. As held in the case of Automatic Electric Limited (supra), the Defendant is therefore estopped from contending that the plaintiffs registered mark is a mere generic/ descriptive word and therefore the defendant can use the mark “TACIDAL”. 13. The defendants have next contended that though the plaintiffs mark "CIDAL" was registered as far back as on 6th October 1995 they have started using the said mark only from April 2004, whereas, the defendant has after taking search from the Trademark Registry, New Delhi and receiving the search report dated 18th December 2003 showing that the trade name sought by the defendant was conflicting with two other registered brand names "Tacid" and "Tacid Gel" and that the name of the plaintiffs product was not mentioned, started accepting the orders for its product. The defendants have relied on the search report as well as the examination report dated 18th December 2003 which is annexed and marked as Exhibit-B to the affidavit-in-reply. However, in the additional representation made to the Trademarks Registry, New Delhi dated 5th December 2003 by the defendant annexed as part of Exhibit-B to the 12 nms-4159-s-3117-09 affidavit-in-reply to the Notice of Motion, the defendants have represented that they are using the mark "TACIDAL" since 4th December 2003 i.e. even before obtaining the search report. In paragraph 6 of the affidavit-in- reply to which the very same exhibit is annexed, the defendants have stated that the first lot of goods were dispatched vide Invoice dated 6th May 2004 thereby showing that the user is from 6th May 2004. It therefore appears that the defendants, as regards the usership of the mark “TACIDAL” are making different claims at different times as it suits their convenience. Therefore, the submission of the defendants that it is only after obtaining the search report from the trademark registry and only after carrying out extensive Market Survey (of which no particulars whatsoever are provided) that they have bonafidely started using the mark "TACIDAL" without knowing that the plaintiffs were using the mark "CIDAL" cannot be accepted. 14. The defendants have also contended that the mark "TACIDAL" and the trademark "CIDAL" are not phonetically similar and therefore the plaintiffs are wrongly alleging that the defendants have infringed the registered trademark "CIDAL" and/or are guilty of passing off the defendants goods as that of the plaintiffs. It is now held by several Courts including the Apex Court in several of its decisions that it is not necessary that the mark adopted by the defendants should exactly be identical with that of the plaintiffs. In the case of F.Hoffimann La Roche and Co. Ltd. Vs. Geoffrey Manners and Co. Pvt.Ltd. (AIR-1970- SC-2062) the Apex Court has laid down the test for determining whether one mark is deceptively similar to another. It is held that the mark must be 13 nms-4159-s-3117-09 compared as a whole. It would not be correct to take a portion of the word and say that because that portion of the word differs from the corresponding portion of the word in the other case, there is no sufficient similarity to cause confusion. The true test is whether the totality of the proposed trademark is such that it is likely to cause deception or confusion or mistake in the minds of persons accustomed to the existing trademark. The Apex Court cited with approval the test formulated by Lord Parkar in Pianotist Co. Ltd's case in (1906)23-RPC-774 : "You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances, and you must further consider what is likely to happen if each of those trademarks is used in a normal way as a trademark for the goods of the respective owners of the marks. If, considering all those circumstances, you come to the conclusion that there will be a confusion - that is to say not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods then you may refuse the registration, or rather you must refuse the registration in that case." 15. In the case of Indchemie Health Specialities Pvt.Ltd. Vs. Naxpar Labs Pvt.Ltd. and another 2002(24)-PTC-341 (Bom), the appellants and the respondents were both pharmaceutical companies. The appellants were the registered owners of the mark "Cheri". The respondents were manufacturing their product bearing mark "Cherish". The appellants filed the suit seeking an injunction alleging infringement of their registered trademark and passing off. The defence of the respondents was that the marks "Cherish" and "Cheri" when compared as a whole cannot be considered to be identical or even similar to each other. 14 nms-4159-s-3117-09 It was contended that the basic composition of the formulation in the syrup sold under the mark "Cherish" contains essentially Iron Hydroxide which is different from that sold by the appellant under the mark "Cheri" containing haemoglobin. It was also contended that the search in the registry revealed marks like Cherry-tone, Chericof, Chericold and Cherryphos. However, there was no application registered nor pending for registration for the trademark "Cherish" and therefore the respondents adopted the said mark. It was also contended that the mark "Cheri" is not distinctive nor was it capable of distinguishing the appellants goods from those of other manufacturers of pharmaceutical products to describe the character and quality of their product and also rectification application has been lodged by the respondents for cancellation of the mark "Cheri". At the ad- interim stage the learned Single Judge after hearing both the sides declined to grant ad-interim injunction mainly on the ground that the possibility of any confusion is totally ruled out because the words are totally different. In the appeal preferred from the order of the learned Single Judge the Division Bench opined that the learned Single Judge was obviously not right in declining the interim injunction on the ground that the words are different. Relying on the decision of F.Hoffimann La Roche and Co. Ltd. (supra), the Appeal Court held that it is not necessary that the mark adopted by the respondent is exactly identical with that of the appellants. The Appeal Court further held that there is no manner of doubt that the respondents mark "Cherish" is deceptively similar to the appellants mark "Cheri". The phonetic similarity taken in conjunction with the fact that there is also similarity in the products would undoubtedly confuse an 15 nms-4159-s-3117-09 ordinary purchaser of average intelligence and imperfect recollection and who may even be an illiterate. This is all the more manifest because entire mark of the appellants is incorporated in the mark of the respondents. The Appeal Court, therefore, held that they have no hesitation in coming to the conclusion that the respondents mark "Cherish" is deceptively similar to the appellants mark "Chery" and is likely to deceive and/or cause confusion.