CS/1/2008 1/61 JUDGMENT IN THE HIGH COURT OF GUJARAT AT AHMEDABAD CIVIL SUITS No. 1 of 2008 For Approval and Signature: HONOURABLE MR.JUSTICE K.A.PUJ ========================================================= 1 Whether Reporters of Local Papers may be allowed to see the judgment ? 2 To be referred to the Reporter or not ? 3 Whether their Lordships wish to see the fair copy of the judgment ? 4 Whether this case involves a substantial question of law as to the interpretation of the constitution of India, 1950 or any order made thereunder ? 5 Whether it is to be circulated to the civil judge ? ========================================================= TROIKAA PHARMACEUTICALS LTD. - Plaintiff(s) Versus PRO LABORATORIES (P) LTD. & 1 - Defendant(s) ========================================================= Appearance : MR MIHIR THAKORE with MR YJ TRIVEDI for Plaintiff(s) : 1, NOTICE SERVED for Defendant(s) : 1 - 2. MR SANJAY A MEHTA for Defendant(s) : 1, ========================================================= CORAM : HONOURABLE MR.JUSTICE K.A.PUJ Date : 15/05/2008 ORAL JUDGMENT 1. The plaintiff, namely, Troikaa CS/1/2008 2/61 JUDGMENT Pharmaceuticals Ltd., has filed Regular Civil Suit No.2486 of 2007 in the City Civil Court at Ahmedabad praying for permanent injunction restraining the defendants, their servants, agents, dealers, distributors, stockists from manufacturing, marketing and using the impugned design registered under No.186992 in Class 28 on 16.10.2001 in respect of D Shape Tablet and/or any tablet, which is having similar shape and configuration or material reproduction of the plaintiff's registered design. The plaintiff has also prayed for permanent injunction restraining the defendants from printing, publishing, using, marketing, coping or imitating the impugned design of tablet, its drawings and parts thereof and restraining them from committing infringement of the design of the plaintiff. The plaintiff has also prayed for direction to the defendants to pay the sum of Rs.50,000/- for the damage caused to the plaintiff on account of infringement of the CS/1/2008 3/61 JUDGMENT plaintiff's registered design and also order the defendants to render true and correct account of the goods manufactured and sold by the defendant after notice and after verifying the same, to pass a decree of such amount of profit earned by the defendants. Lastly, the plaintiff has prayed for the direction to the defendants to hand over blocks, dyes, patterns, parts thereof and drawings of the product which are used manufactured and marketed by them, which is infringement of the registered design of the plaintiff. All such material should be given to the plaintiff for destruction. 2. The plaintiff has also moved an injunction application in the said suit praying for temporary injunction restraining the defendants, their agents, servants, dealers, distributors, stockists for manufacturing, marketing and using the impugned design registered under No.186992 in Class 28 on CS/1/2008 4/61 JUDGMENT 16.10.2001 in respect of D Shape Tablet and/or any tablet, which is having similar shape and configuration or material reproduction of the plaintiff's registered design. The plaintiff further prayed to grant temporary injunction restraining the defendants, their servants, partners, agents, dealers, distributors, stockists from printing, publishing, using, marketing, coping or imitating the impugned design of tablet, its drawings and parts thereof and restraining them from committing infringement of the design of the plaintiff. 3. The City Civil Court, Ahmedabad has issued process and granted ad-interim relief in terms of para 22(A) of the injunction application. 4. On notice being served on the defendants, the defendants moved an application for cancellation of design under Section 19 of CS/1/2008 5/61 JUDGMENT the Design Act. The plaintiff, therefore, moved an application Ex.27 before City Civil Court, Ahmedabad stating therein that in view of Section 22 of the Designs Act, 2000 the suit is required to be transferred to this Court. The City Civil Court, Ahmedabad, vide its order dated 5.2.2008 passed below an application Ex.27, transferred the said suit to this Court and it is renumbered as Civil Suit No.1 of 2008. Ad-interim relief granted by the City Civil Court and extended by this Court continued till this date. 5. It is the case of the plaintiff that the plaintiff is a company incorporated under the Companies Act, 1956 and is carrying on the business of manufacturing and marketing pharmaceutical and medicinal preparation and surgical goods. With a view to acquire a good market, the plaintiff have innovated, invented and developed a unique design for tablet sold under trademark DYNAPAR. The CS/1/2008 6/61 JUDGMENT defendant No.1 is also a company engaged in the business of manufacturing and marketing pharmaceutical and medicinal preparation at Haridwar. The defendant No.2 is selling product of defendant No.1 in the City of Ahmedabad. 6. The plaintiff with a view to distinguish its shape of product from the product of others has adopted a unique design and configuration of the tablet called D Shape Tablet and to protect the said design of the tablet, the plaintiff has applied for registration of design under the Design Act, 2000 to the Controller General of Patents & Designs. After verifying the said design the Controller General of Patents & Designs had registered the said design of the plaintiff in respect of tablet under No.186992 in Class 28 from 16.10.2001. As per the provisions of the Designs Act, 2000 the exclusive right to use the said design is granted for a period CS/1/2008 7/61 JUDGMENT of 10 years from 16.10.2001, which can be extended for a further period of 5 years. By virtue of this registration of design the plaintiff became exclusive owner of the D Shape Tablet and if any person, firm or company adopts and/or imitates the design and/or configuration of the tablet of the plaintiff, the said person, firm or company is liable for infringement of design of the plaintiff under the provisions of the Designs Act. 7. Mr.Mihir Thakore, learned Senior Counsel with Mr. Y.J.Trivedi, learned advocate for the plaintiff submitted that as per Section 22 of the Designs Act, 2000, no person, firm or company is entitled to apply or cause to be applied to any article in any class of articles in which the design is registered or obvious imitation thereof, or to import for the purpose of sale, any such article or manufacture or market any such article CS/1/2008 8/61 JUDGMENT without the license or written permission of the plaintiff, is liable for infringement of exclusive right of copyright under the Designs Act in favour of the plaintiff. The contravention of any such right by any person, firm or company, is liable to pay to the registered proprietor any damage and this Court is empowered to restrain any such infringement of the plaintiff's right granted under the said registration. 8. Mr. Thakore further submitted that the plaintiff has recently come to know that the defendant has adopted identical design, shape and configuration of the plaintiff, and the plaintiff has come to know that the defendant has substantial and material reproduction of the design of the plaintiff and thereby, has committed infringement of the registered design of the plaintiff under No.186992. Despite the fact that the plaintiff is the registered proprietor of the design, the CS/1/2008 9/61 JUDGMENT defendants with malafide intention have imitated the design and configuration of the D Shape Tablet of the plaintiff. The defendants have adopted identical design of tablet in D Shape Tablet as of the plaintiff's registered design in an identical and similar manner. From the documents produced before the Court, it is very clear that the defendants have imitated and copied the design of the plaintiff's product and have infringed the said design of the plaintiff. It is, therefore, submitted that under the provisions of the Designs Act, the defendants are required to be restrained by an order of injunction from infringing the design of the plaintiff. 9. Mr.Thakore has further submitted that for promoting the sale of the plaintiff's product as per the said registered design, the sales promotion expenses incurred by the plaintiff runs into lacs of rupees. Because of very CS/1/2008 10/61 JUDGMENT high standard quality of the product and the labour exerted by the plaintiff through their representatives, dealers, agents etc. the sale of the product of the plaintiff has increased and the same runs into crores of rupees. The defendants are well aware of the plaintiff's registered design, its market, reputation and utility. The defendants have knowingly made substantial and material reproduction and imitated the plaintiff's design with the same shape and configuration and thereby have tried to gain illegal profit and advantage of the unique design of the plaintiff. By use of similar shape of tablets with similar colour scheme, the defendants have caused injury to the business, reputation and goodwill of the plaintiff and the plaintiff has suffered great irreparable loss and injury in its business and also its reputation and goodwill, which the plaintiff has acquired by spending huge amount for promoting the sale CS/1/2008 11/61 JUDGMENT of its product. The defendant has no right to use the same design and make substantial reproduction of the registered design of the plaintiff. The defendants have, therefore, held themselves liable for infringement of the registered design of the plaintiff. 10. Mr.Thakore further submitted that the plaintiff has acquired statutory right, spent huge amount of money for preparing the said design, exerted labour and acquired statutory protection under the Designs Act, 2000. The defendants have with a view to encroach upon the market and goodwill of the plaintiff, imitated the plaintiff's design and have placed in the market identical product with identical shape and configuration and thereby committed infringement of plaintiff's registered Design No.186992 and causing great loss and injury and damaging the business, reputation and goodwill of the plaintiff. It is, therefore, submitted that the plaintiff CS/1/2008 12/61 JUDGMENT has a strong prima facie case, as the plaintiff has acquired statutory right, whereas the defendants have no right. The defendants are the imitators and are not in a position to give any explanation as to how they have adopted identical shape and configuration. It is obviously malafide attempt on the part of the defendant to encroach upon the business, reputation and goodwill of the plaintiff and thereby earn illegal profit. The defendants are, therefore, required to be restrained by order of injunction of this Court from manufacturing, marketing, advertising and promoting for sale their design of tablet, which is substantial and material reproduction of the design of tablet registered in favour of the plaintiff under No.186992. 11. On behalf of the defendant No.1 an affidavit-in-rely is filed on 4.1.2008. CS/1/2008 13/61 JUDGMENT While raising preliminary objection Mr.Sanjay Mehta, learned counsel for defendant No.1 submitted that the present suit for alleged infringement of design and for accounts as filed by the plaintiff before this Court is not maintainable and that the same deserves to be dismissed with costs. Even on merits, the objection is raised to the effect that the plaintiff has made absolutely false claims regarding it being the author/proprietor of D Shape design for its pharmaceutical product/ medicinal preparation. The registration of the plaintiff's design is not valid as the design of the plaintiff is not registrable under Section-4 of the Designs Act, 2000. The plaintiff, by misleading the Controller of Designs and suppressing material facts, regarding prior publication and application of the said D Shape by various pharmaceutical companies, has caused the D Shape design to be registered in its favour. CS/1/2008 14/61 JUDGMENT It is further submitted that the D Shape design as claimed by the plaintiff is not a new or original design and is also not new in its application to pharmaceutical products/medicinal preparation. The D Shape design referred to by the plaintiff cannot be under any circumstances called a new or original design in as much as the very design of the tablet. D Shape is in fact a reproduction of the shape of the letter 'D' of the English Alphabet which is known to the public at large and published in tangible form. The said D Shape resembles to semi- circle i.e. a half circle, it is, therefore, submitted that the D Shape design of the plaintiff is not significantly distinguishable from known designs i.e. shape of letter 'D' of English Alphabet and shape of semi-circle and, therefore, is prohibited from registration under Section 4 of the Designs Act, 2000. CS/1/2008 15/61 JUDGMENT 12. Mr.Mehta further submitted that even while considering the application of D Shape design to pharmaceutical/medicinal tablet, such D Shape design of a tablet has been published in India and abroad prior to the registration of design of the plaintiff and has been applied by various pharmaceutical companies to its pharmaceutical products/medicinal preparation much prior to the plaintiff's application of the design to its product as well as plaintiff's registration of the design. It is, therefore, submitted that such D Shape design is prohibited from registration under Section 4 of the Design Act, 2000 and thus registration of plaintiff's design is liable to be cancelled under the provision of the Designs Act, 2000. 13. Mr.Mehta further submitted that Pfizer Ltd., a reputed Multi National Company has published such D Shape design and has CS/1/2008 16/61 JUDGMENT applied the same to its pharmaceutical product/ medicinal preparation way back in the year 1956 and as per the information available with defendant No.1 the said Company as on today is applying the said design to its products. Hence, it is clear that the plaintiff is not the author or originator of the said D Shape design that is being applied to its product. The said D Shape design is also not new or original, as claimed by the plaintiff and that the said design was published and known to the public at large much prior to the registration of the design of the plaintiff. That being the case, the design of the plaintiff is liable to be cancelled as the registration of the said design is prohibited under Section 4 of the Design Act, 2000. 14. Mr.Mehta further submitted that several other pharmaceutical Companies in India are applying the said D Shape design to its CS/1/2008 17/61 JUDGMENT pharmaceutical products/ medicinal preparation and, therefore, the said design as far as pharmaceutical industry is concerned, is common to trade. The use of such design being common to trade does not necessarily relate to or cause the public at large to relate to the product of the plaintiff while purchasing the product of the defendant No.1 or any other company and hence does not constitute imitation of the plaintiff design. The D Shape design of the plaintiff is not significantly distinguishable from known designs. 15. Mr.Mehta further submitted that the defendant No.1 filed an application dated 18.12.2007 under Section 19 of the Design Act, 2000 applied for cancellation of the design of the plaintiff and the said application is as on date pending for hearing before the Controller of Designs. The plaintiff was very much aware about prior, CS/1/2008 18/61 JUDGMENT open and wide publication and application of D Shape design to pharmaceutical tablets by various pharmaceutical companies in India and abroad. However, the plaintiff intentionally with an ill-design to get D Shape design of tablet registered in its name, has suppressed material facts and has falsely claimed itself to be the author/proprietor of the said shape before the Controller of Designs and has resultantly succeeded in obtaining the same registration under No.186992. The plaintiff now in furtherance of its ill-design and to avoid genuine competition in the market, is taking undue advantage of such registration of the design to restrain and prevent other companies like the defendant, who have honestly adopted the D Shape for their tablet, from manufacturing and marketing their products with D Shape design. It is, therefore, submitted that suit as well as injunction application of the plaintiff is CS/1/2008 19/61 JUDGMENT required to be dismissed. 16. The defendant alongwith its affidavit-in- reply has produced list of documents, which inter alia contained copy of petition under Section 19 of the Designs Act, 2000 for cancellation of design, copy of relevant extract regarding Diabenese drug of Pfizer Ltd., taken from the website, copy of picture of Diabenese drug of Pfizer Ltd., copy of relevant extract regarding Amerge drug taken from the website. 17. An affidavit-in-rejoinder is filed on behalf of the plaintiff on 22.1.2008 denying the facts stated and averments made in the affidavit-in-reply and reiterating the contentions raised by the plaintiff in the suit. Over and above this, it is emphatically submitted by Mr.Thakore that by using the D Shape tablet and with a view to take advantage of the high reputation and goodwill CS/1/2008 20/61 JUDGMENT and to gain illegal profit, defendants have adopted identical shape of medicine with identical colour scheme, get up arrangement just to pass off their manufactured tablets such as DARDPAR, DOOPAR, DENPAR and DICLOFEN PLUS which looks like identical and/or deceptively similar trade mark or brand names with that of the plaintiff's DYNAPAR. All these 'D' shaped pharmaceutical products are manufactured by the defendant No.1, which is imitation or infringement of the plaintiff's registered design and hence the defendants are restrained by an order of injunction from this Court. The defendants are still continuing their unlawful activity by disobeying the order of this Court. Knowing fully well that their activity is illegal and contrary to the order of this Court, the defendants are liable for committing breach of the order of this Court. It is very clear that the activity of the defendant is malafide and contrary to law. They have CS/1/2008 21/61 JUDGMENT continued their unlawful activity inspite of the injunction from this Court. The defendants are, therefore, not required to be heard unless they purge the contempt committed by them by disobeying the order of injunction granted by this Court. 18. On behalf of the plaintiff an affidavit is filed by Sr. General Manager of the plaintiff Company on 3.3.2008 wherein it is stated that the plaintiff company's representative found the product of the defendant containing the trade mark DENPAR in strip packing with the tablets of different shape and DENPAR tablets in plastic bags with different colour scheme containing white and orange colour. It is, therefore, clear that even after the injunction, the defendants first changed the colour of the tablets and subsequently changed shape of the tablet. This clearly establishes that even if the defendants are restrained by an order of injunction, as CS/1/2008 22/61 JUDGMENT prayed for, till the disposal of the suit, the defendants will be in a position to continue their unlawful activity under different shapes of tablets than the shape registered in favour of the plaintiff company. The defendants are not likely to suffer irreparable loss and injury if the injunction is continued and the balance of convenience is in favour of the plaintiff and against the defendants. It is also stated that regarding the trade mark DENPAR, the plaintiff has already filed a suit against the defendant and the defendants have continued their unlawful activities by using the mark DENPAR even after the order of injunction of the Court. 19. The defendant has filed further affidavit- in-reply on 11.3.2008 denying the facts stated and averments made by the plaintiff in the affidavit dated 3.3.2008. It is stated in the said affidavit that the defendant was CS/1/2008 23/61 JUDGMENT manufacturing its product DENPAR in various colours and shapes prior to the institution of the suit by the plaintiff. It is not that after the plaintiff had got the injunction in its favour, the defendant No.1 has changed the colour and shape of its tablets. If the strip packing of the tablets produced by the plaintiff at Annexure-A to the affidavit is seen it is clear that the same have been manufactured in the month of September, 2007 whereas from the perusal of the bag packing of the tablets produced by the plaintiff at Annexure-B to the affidavit, it is clear that same is manufactured in the month of November, 2007. The plaintiff has instituted the Civil Suit against the defendants before the City Civil Court at Ahmedabad on4.12.2007 and an ex-parte order of injunction came to be granted by the Court in favour of the plaintiff on 5.12.2007. It is, therefore, submitted that it is absolutely false that after the injunction order was granted in CS/1/2008 24/61 JUDGMENT favour of the plaintiff, the defendant No.1 has changed the colour of the tablets and, thereafter, the shape of the tablets, as alleged. 20. It is further submitted that several multinational Pharmaceutical Companies have been manufacturing and marketing their medicinal preparation/ pharmaceutical products in D Shape tablets throughout the world even prior to the registration of the design in favour of the plaintiff. The pharmaceutical products such as FemHRT, Diabense of Pfizer Ltd., Focalin of Novartis, Amerge have been developed prior to the registration of the plaintiff's design and are available in D Shape tablets in various markets through out the world. It is, therefore, false that the plaintiff is the originator of the design or that it has developed and adopted a unique design with respect to its product as alleged. The CS/1/2008 25/61 JUDGMENT plaintiff, having adopted a design from the public domain, has deliberately and dishonestly suppressed material facts regarding the D Shape design and has thereby caused the said design to be registered in its favour. From the documents produced by the plaintiff alongwith its suit, it appears that the plaintiff was manufacturing and marketing its product DYNAPAR in D Shape design prior to its registration. In plaint of the Civil Suit No.2487 of 2007 filed by the plaintiff against the defendant before the Ahmedabad City Civil Court, alleging infringement of its mark DYNAPAR. That the D Shape design of the plaintiff was already in public domain and has been published prior to the registration of the same in favour of the plaintiff and on this ground also the registration of design in favour of the plaintiff is liable to be cancelled. It is further submitted that several companies in India and Abroad are marketing/selling their CS/1/2008 26/61 JUDGMENT medicinal preparations/ pharmaceutical products in D Shape tablets and hence the D Shape design as claimed by the plaintiff is already in public domain and has become common to trade. A schedule indicating the number of medicinal preparations / pharmaceutical products available in D Shape tablets in the market alongwith other details and relevant articles are annexed by the defendant alongwith its affidavit dated 11.3.2008. 21. The plaintiff has also filed affidavit-in- rejoinder to the reply affidavit dated 11.3.2008 filed on behalf of the defendant wherein it is reiterated that the design applied for registration by the plaintiff to the Controller of Patent and Design is new and original design created by the plaintiff Company. That no other product, namely, D Shaped Tablet was available in the market prior to the date of registration of the CS/1/2008 27/61 JUDGMENT design applied by the plaintiff. Various documents referred in the affidavit by Mr.Rajesh Chordia on behalf of the defendant Company are misleading and are made to misdirect the Court and confuse the issues involved in the matter. The said products produced with the affidavit of Mr. P.N.Sharma are the products only received in the market after the injunction order of the City Civil Court, Ahmedabad. Even if it is accepted that the statement by the defendant that the said D Shape product was already manufactured and marketed by the defendants prior to the date of injunction, then what tempted the present defendant to exactly copy the shape with the colour scheme and identical trade mark which is popular and known in the market for the product of the plaintiff sold under the trade mark DYNAPAR. It is further submitted that all the annexures produced in the application do not substantiate the stand of the defendant that similar product is used or CS/1/2008 28/61 JUDGMENT sold in the market. It is further submitted that the date of manufacture shown on the strip does not establish the case of the defendant because the product manufactured by the defendant was exempted from excise and, therefore, the