1 IN THE HIGH COURT OF JUDICATURE AT BOMBAY ORDINARY & ORIGINAL CIVIL JURISDICTION NOTICE OF MOTION NO. 1434 OF 2009 IN SUIT NO. 896 OF 2009 1. Hab Pharmaceuticals and Research Ltd. } A company Incorporated under Indian } Companies Act, 1956, having its office at } B-13, Basement, T.V. Industrial Estate, } S.K. Ahire Marg, Behind Glaxo Lab, Worli, } Mumbai – 400 030. } 2. Signature Pharmaceuticals Limited } A company incorporated under Indian } Companies Act, 1956, having its office at } B-13, Basement, T.V. Industrial Estate, } S.K. Ahire Marg, Behind Glaxo Lab, Worli, } Mumbai – 400 030. }... Plaintiffs. V/s. Pramo Life Science, } A company incorporated under Indian } Companies Act, 1956, at A-414, T.T.C. Ind. Area, } M.I.D.C., Village Mahape, Navi Mumbai-400 701 } and 4, Maruti Comp. Opp. Oxford Chambers, } Saki Vihar Road, Andheri – East, } Mumbai – 400 072, Maharashtra India. }...Defendant. Mr. Alankar Kirpekar and M.S. Khadilkar for the Plaintiffs. Mr. Virag Tulzapurkar, Sr. Counsel a/w. S.R. Page and Ashok Kumar Singh for the Defendant. CORAM : S.C. DHARMADHIKARI, J. RESERVED ON : 29th SEPTEMBER 2009. PRONOUNCED ON : 5th NOVEMBER 2009. 2 P.C. :- The Plaintiffs are two Companies both incorporated and registered under the Indian Companies Act, 1956 having their Registered Office at the addressed mentioned in the title. 2. It is stated that the Defendant is also a Company incorporated under the Indian Companies Act, 1956. It is stated that the Second Plaintiff is a sister concern of the First Plaintiff and both are engaged in the business of manufacture and marketing of medicinal and pharmaceutical preparations. The manufacturing activity is undertaken by Plaintiff No.1. 3. In paragraph 2 of the plaint it is stated that the exact constitution of the Defendant is not known. However, at the same time it is asserted that it is a sole proprietary firm engaged in and carrying on business interalia as manufacturer and/or dealer and/or exporter of pharmaceutical preparations. 4. The present Suit is filed alleging infringement of registered copy right of the Plaintiff. The copy right is claimed in the packaging of the product ‘VEGA 100’ or ‘VEGAH 100’. It is stated that the Plaintiffs’ products are sold in Cartons and/or blister pack. The Suit is filed alleging infringement of the First Plaintiffs’ registered trade mark ‘VEGAH’. The Suit is also filed alleging infringement of Plaintiff No.2’s registered trade mark “SIGNATURE”. The other relief claimed in the Suit is to restrain the Defendant from passing off their goods as that of the Plaintiffs. There is a claim for damages and incidental and 3 consequential reliefs are also sought by the Plaintiffs. 5. It is claimed that the Plaintiffs are leading producers of medicinal and pharmaceutical preparations and substances. It is stated that the Plaintiffs have been continuously striving and endeavouring to introduce new and efficacious medicinal preparations for the treatment of various ailments and dis- orders. The Plaintiffs’ range of medicinal and pharmaceutical preparations, especially of Male Erectile Dysfunction products, is widest in the country. 6. In paragraph 5 of the plaint, the Plaintiffs allege thus :- “5. The Plaintiffs state that in/or about the year 2001, the Plaintiff No.1, adopted and commenced marketing of sildenafil citrate tablets for the treatment of the Male Erectile Dysfunction under the trade mark “VEGA” and in/or about the year 2002 Plaintiff No.1 adopted and commenced marketing sildenafil citrate tablets for the treatment of the Male Erectile Dysfunction under the Trade mark “VEGAH”. Since the date of adoption, the same have been in continuous use on an extensive and growing scale. The Plaintiffs state that since long the Plaintiffs have been marketing sildenafil citrate tablets under the trade mark “VEGA” and/or “VEGAH” written in special and particular manner on a blister pack having distinctive and original 4 artistic work, colour scheme, design, lay out and get up. The said “VEGA 100” and “VEGAH 100” blister pack are essentially of yellow colour with the front panel bearing the Plaintiff No.1’s trade mark “VEGA” or trade mark “VEGAH” respectively represented in Red colour against yellow background. The said front panels also predominantly comprises of picture of space rocket shown as if it is going in the upward direction. The said front panel also comprises of words like “Rx Sildenafil Citrate Tablets” written on the top of the Plaintiff’s mark VEGA/VEGAH. At the left bottom of the blister pack, Plaintiff No.2’s mark “Signature Pharmaceuticals Limited” is depicted in a stylized manner in red colour against the yellow background. It is pertinent to mention herein that the Plaintiff No.2’s mark “Signature” has been continuously and consistently used on the said blister pack, since 4th September 2002. It is also mentioned that Plaintiff No.2 is marketer of the said tablets manufactured by Plaintiff No.1. The front panel of the blister pack is used to give the information about the composition, manufacturer and marketer and information about the manufacturing date, expiry date, etc. Hereto annexed and marked as Exhibit “A” and “A1” are specimens of VEGA 100, VEGAH 100 Blister packs thereof described hereinabove respectively. The Plaintiff No.1 stated that the said 5 “VEGA 100, “VEGAH 100” blister packs thereof were designed by one Mr. Kishore Mathkar of M/s. Graphique Zone, 6/A, Mehendale Building, 203/233, V.P. Road, Girgaon, Mumbai-400 004 for and on behalf of Mr. Sanjiv Garg and hence the ownership of copyrights in the said cartons were duly transferred in favour of Mr. Sanjiv Garg. The said Mr. Sanjiv Garg, who is one of the Directors in the Plaintiff No.1 Company, has initially licensed and/or permitted Plaintiff No.1 to use the said cartons for marketing their sildenafil citrate tables and thereafter, vide Deed of Assignment dated 30th January 2007, assigned all the rights in the said cartons and blister packs to Plaintiff No.1. Plaintiff No.1 states that the Plaintiff being lawful assignee of the rights in the blister pack annexed as Exhibit ‘A’ and Exhibit ‘A1’ hereto no one else is entitled to use, reproduce and/or cause to use or reproduce the said artistic work contained in blister pack and/or any work/mark/label which is substantially similar or colourably similar or an obvious imitation to the artistic work contained in the said blister pack being Exhibit ‘A’ and ‘A1’ hereto in any manner whatsoever without obtaining prior written permission, license and/or consent in that behalf from Plaintiff No.1. Hereto annexed and marked as Exhibit ‘B’ is a copy of the said Deed of Assignment between Mr. Sanjiv Garg and Plaintiff No.1, dated 6 30th January 2007. The Plaintiff No.1 states that Plaintiff No.1 is the owner of the copyright in the said blister pack being Exhibit ‘A’ and ‘A1’ hereto. The Plaintiffs craves leave to refer to and reply upon the Extracts of the Register of copyrights, when produced.” 7. In paragraph 6 of the plaint, the Plaintiffs have stated that the First Plaintiff is the registered proprietor of the trade mark consisting of the word “VEGAH” since 24th April 2002 and copy of the certificates are annexed as Annexures ‘C’ and ’C-1’ to the plaint. 8. It is stated that the Second Plaintiff is the registered proprietor of the trade mark consisting of the word “SIGNATURE” since 4th September 2002 annexed as Annexure ‘C-2’ is a copy of the said certificate. 9. It is stated that though Plaintiff No.1 has started using the mark “VEGA” since 2001, both Plaintiffs have started simultaneous use of the marks referred to above on their product/package more particularly depicted at annexure ‘A’ and ‘A-1’ to the plaint. These activities are going on from 2002. The Plaintiffs are sister concerns having common Directors and Shareholders. They have permitted each other to use the said marks on the Blister Packs without any payment of royalty. It is stated that the present Suit is filed jointly because on account of continuous, extensive sale of 7 the preparation, the marks and the colour scheme, get up have come to be recognized as that of the Plaintiffs alone. The Plaintiffs have acquired goodwill and reputation. They have stated that the blister packet, the design, denote to the trade and public that the said “Sildenafil Citrate Tablets” are of the Plaintiffs alone and none else. 10. The products are pharmaceutical products. They are manufactured in accordance with the required degree of safety, standard and quality. Tremendous care and caution has been exercised while manufacturing the tablets and other pharmaceutical preparations. The products have been a run away success within a short period of introduction. The demand for the said Tablets grew rapidly and continues to grow consistently not only in India but all over the world. The amount of sales of the tablets under the marks as demonstrated by annexures ‘D’ and ‘D-1’ would go to show that on account of the efforts of the Plaintiffs, their tablets have acquired enormous reputation not only in India but internationally. The sales promotion efforts are referred to in paragraph 11. 11. In paragraph 12 of the plaint, it is stated the products/tablets are sold under the said blister pack all over the country through a wide network of dealers, distributors, stockist and chemists and even exported to several countries from India. The pharmaceutical preparations are immensely popular. 8 12. In paragraph 13 an 14 of the plaint, this is what is alleged by the Plaintiffs :- “13. The Plaintiffs state that recently in the 2nd week of March 2009 through the employees in the Sales Department, it has come to the Plaintiffs’ attention that the Defendant has commenced manufacturing, marketing and selling a similar pharmaceutical preparation i.e. sildenafil citrate tablets with the identical and/or visually, phonetically and structurally similar Trade Mark ‘PRAMO VEGA’. The same is also sold in the deceptively/confusingly similar blister pack. The said mark Pramo Vega used by the Defendant is deceptively similar to the Plaintiff No.1’s registered trade mark ‘VEGAH’. The blister pack, which the Defendant has used, is also essentially of yellow colour with the front panel bearing the mark “PRAMO VEGA” represented in Red colour against yellow background. The said front also similarly comprises of picture of space rocket shown as if it is going in the upward direction. The said front panel of the Defendant’s blister pack also comprises of words like “Rx Sildenafil Citrate Tablets” written on top of the alleged mark “PRAMO VEGA”. The bottom of the Defendant’s impugned Blister pack comprise of deceptively similar mark “SIGNOUR”, which is 9 deceptively/confusingly similar to Plaintiff No.2’s Registered Mark “SIGNATURE”. The right side of Blister pack is used to give information about the manufacturing date, expiry date etc. Hereto annexed and marked as Exhibit “E” is a colour photocopy of the specimen of the Defendant’s Blister Pack “PRAMO VEGA 100”. The impugned goods are stated to be manufactured by the Defendant on the said blister pack of the Defendant. 14. Table showing the vis-a-vis comparison between the Plaintiffs’ Carton/Blister pack and Defendant’s impugned Blister pack. Plaintiffs’ Copyrighted VEGA/ VEGAH 100 blister pack Defendants’ impugned Pramo VEGA 100 blister pack * Mark The Blister pack bears the mark VEGA/VEGAH AND Signature * Mark The Blister pack the mark PRAMO VEGA and Signour written in identical manner * Colour The Blister pack is essentially of yellow colour with the front panel bearing the trade mark “VEGA” and/or “VEGAH” represented in Red Colour against yellow background. * Colour The Blister pack is also essentially of yellow colour with the front panel bearing the trade mark “PRAMO VEGA” represented in Red colour against yellow background 10 * Artistic work The front panels comprises of picture of ‘Space rocket’ shown as if it is going in the upward direction. * Artistic work The said frond panels also similarly comprises of picture of ‘space rocket’ shown as if it is going in the upward direction. * Top The front panel of the Plaintiff’s Blister Pack comprises of words “Rx Sildenafil Citrate Tablets” written on the top of the Plaintiffs’ Marks in a typical manner. * Top The front panel of the Defendant’s Blister Pack comprises of words “Rx Sildenafil Citrate Tablets” written on the top of the Defendant’s Mark in a same typical manner. * Bottom of the blister pack On bottom of the Blister pack the Plaintiff Registered mark “Signature” written is artistic manner in red colour. * Bottom of the blister pack On bottom of the Blister pack the Defendant’s written “Signour” written is artistic manner in red colour which deceptively similar to Plaintiff No.2 Registered Mark “Signature”. 13. In these circumstances, it is alleged that the Defendants blister pack is substantially similar and/or colourably similar to the Plaintiffs pack. The said blister pack bears the design, lay out, get up, schematic arrangement of various features and colour scheme, which are confusingly similar. The Defendants have imitated the blister pack of the Plaintiffs. 11 14. Thereafter, it is alleged that in the year 2008, the First Plaintiff filed a Suit being Suit No.2483 of 2008 in this Court against one S.P.B. Pharma. In this case, this Court appointed Court Receiver to seize the products bearing the mark “VEGAH” and/or similar artistic work as shown at annexures ‘A’ and ‘A-1’ to the plaint in the present Suit. The Court Receiver has seizeded the product bearing the mark “VEGA” from said S.P.B. Pharma. As per information received from the said S.P.B. Pharma, documents pertaining to the mark “VEGA” were seized from one PRAMO LIFE SCIENCE” situate at Saki Naka, Mumbai. It is stated that prima-facie the said PRAMO LIVE SCIENCE and the Defendants to this Suit are one and the same. The Plaintiffs being unaware of the link between two concerns have chosen to file a separate Suit. They are also proceeding in contempt against PRAMO LIFE SCIENCE for willful breach and violation of the order passed in the aforementioned Suit. 15. Alleging thus, it is contended that by manufacturing the selling and/or offering for sale, the pharmaceutical preparations under deceptively similar mark “PRAMO VEGA” and “SIGNOUR” packed in similar blister pack, the Defendant is violating the Plaintiffs’ valuable, intellectual and intangible proprietary rights in their registered trade marks “VEGA”. “VEGAH” AND “SIGNATURE”. These are the averments in paragraphs 17 to 27 of the plaint. 12 16. In paragraph 28 it is alleged that there is no delay in approaching the Court as the Plaintiffs have recently learnt about the impugned goods being sold by the Defendant. It is, in these circumstances, that the Suit has been filed by the Plaintiffs in this Court on 25th March 2009. 17. A Notice of Motion has been moved claiming interim injunction so as to prohibit and prevent the infringement of the copyright, registered trade mark and passing off. 18. The Motion is supported by an affidavit of one Sanjiv Surajbhan Garg. He is Director of Plaintiff No.1. 19. He has reiterated the plaint averments and has stated more particularly in paragraph 6 that the Plaintiffs’ products/tablets are for treating Male Erectile Dysfunction. The packaging is distinct and special. The blister pack is especially of yellow colour with the front panel bearing Plaintiff No.1’s trade mark represented in red colour against yellow background. The said front panel also predominantly comprises of picture of space rocket shown as if it is going in the upward direction. The front panel also comprises of words “Rx Sildenafil Citrate Tablets” written on the top of the Plaintiffs’ mark. At the left bottom of the blister packet, Plaintiff No.2’s mark “SIGNATURE” Pharmaceutical Limited is depicted in a slant manner in red colour against the yellow background. All this has been in continuous use since 4th September 2002. The blister packs were designed by one 13 Kishore Mathkar for M/s. Graphique Zone having his office at Girgaon, Mumbai for and on behalf of Mr. Sanjiv Garg. The ownership of the copyright in Cartons was duly transferred in favour of Mr. Garg. The said Garg is one of the Directors of Plaintiff No.1. He initially permitted Plaintiff No.1 to use their Cartons for marketing their Sildenafil Citrate Tablets and thereafter, by a Deed of Assignment dated 30th January 2007, assigned all the rights in the said Cartons and blister pack to Plaintiff No.1. Thus, the Plaintiffs are lawfully Assignees of all rights in the blister pack. 20. Thereafter, pointing out the infringement and acts of passing off that the deponent supports the claim for interim relief. 21. On being served with the plaint and the Motion so also the Annexures thereto, an affidavit has been filed by Mr. Pramod Singh, claiming to be the proprietor of “PRAMO LIFE SCIENCE” - Defendant above-named. He has stated that the Carton and blister pack of PRAMO VEGA 100 is entirely distinct from that of VEGA 100 or VEGAH. He has contended that the Plaintiffs have no right to file the Suit as the Defendant is selling PRAMO VEGA 100 under his own trade mark. It has a distinct identity in the market. Further, it is contended that there are numerous manufactures of the subject medicine with substantial sales. In paragraph 6 of the affidavit, it is stated by the Defendant that search was taken from the Trade Mark Registry which reveals numerous manufacturers but the 14 details do not show that the First Plaintiff is the registered trade mark owner of “VEGA”. It is stated that the mark with the word “VEGA” is registered trade mark of Vega Pharmaceutical Pvt. Ltd. who had applied for registration of the trade mark on 23rd December 1998. Further, Dr. Reddys laboratory is using trade mark “VEGAZ” since year 2000 and are registered trade mark owners. Further, it is contended that one VEE Excel Drugs and Pharmaceuticals (P) Ltd. are owners of the trade mark VEGA ASIA. Plaintiff No.1 had applied for registration of VEGA 50 which is opposed. Further, one Endolabs Limited are owners of VEGA tablets. Plaintiff No. 1 has applied for VEGA 100 (DEVICE) which is also opposed and similarly, Plaintiff No.1’s registration VEGA Label is also opposed. 22. It is then contended that it is false that one Kishore Mathkar had designed the blister packs of VEGA 100 and VEGAH or that Mr. Sanjiv Garg is the owner of the design and has assigned all rights in cartons and blister packs in favour of the Plaintiffs. It is stated that the Deed of Assignment is dated 30th January 2007 and it falsifies the claim of the Plaintiffs that they are in use of Cartons and blister packs. 23. In paragraph 10 of the affidavit it is stated that the Defendant has sold and exported Sildenafil Citrate Tablets since year 2008 under the trade mark PRAMO VEGA 50, PRAMO VEGA 100 and PRAMO VEGA 120. The sales are worth Rs. 80 lakhs approximately in the year 2008-2009 and Rs.244 15 lakh approximately in the year 2009-2010. Thus, the sales are growing and they are increasing on account of superior quality and efforts of the Defendants. Further, the Defendant has established these marks in the export market. On the other hand, the Plaintiffs have no sale or negligible sales since no data for subsequent years (after 2005-2006) is produced by the Plaintiffs. 24. It is stated that the product PRAMO VEGA, rocket and SIGNOUR has no similarity with VEGA or VEGAH, signature and rocket of the Plaintiffs. The Defendant has applied for registration of PRAMO VEGA 100 and in the year 2009 for the registration of the SIGNOUR and Rocket. The proprietor code has been issued by the trade mark registry. Further, colour of the blister packaging of PRAMO VEGA 200 is entirely different from the colour of the Plaintiffs. Even though, proprietor code has been issued to the Defendant, he has changed the design of Rocket and used the words NIGHT RIDER in place of SIGNOUR. The colour printing of blister foil is distinct from the printing of the Plaintiffs. He states that PVC film i.e. back side of the packaging is with star in blue colour and tablet was of dark blue colour. Thus, the Plaintiffs’ packaging and Defendant’s packaging are entirely distinct from each other and there is no similarity between the two. Due to the marketing efforts and quality of the product of the Defendants it is established in the market. PRAMO VEGA 100 is prescribed by the Doctors and is not meant for sale across the counter. The Plaintiffs are trying to snatch away the market of the 16 Defendant by making false statement and claim. The Defendant has annexed as Annexures ‘B’ and ‘C’ the figures of sales for the aforementioned years and copies of the packages. He has also annexed the copy of the outer carton of VEGA 100 of the Plaintiff. It is stated by him that PRAMO VEGA 100 is sold with outer carton having specific design. The copy right for all designs on outer carton are applied for and it is in the process of registration. The outer carton is of black colour with Arabic write up. Further, PRAMO VEGA 100 is sold with outer carton having single strip only. The strip without carton is not sold. 25. Finally, it is contended that the design, lay out, get up schematic arrangement of various features and colour scheme are not confusing but entirely different. Once, sildenafil citrate tablets are dispensed/sold by the Chemist and Doctors and there are numerous brands having formula of sildenafil citrate tablets and same are being sold with brand names, then, the Plaintiffs’ attempt to restrain the Defendant from selling the said tablets under his brand name should not be encouraged as the Suit is filed with ulterior motive to grab the market. 26. For all these reasons, it is stated that the Motion be dismissed. 27. In answer to the affidavit in reply filed on 12th September 2009, a rejoinder affidavit has been filed by the Plaintiffs. The 17 Plaintiffs have reiterated the plaint averments and have also relied upon orders passed in several Suits instituted by them for protection of their marks. In paragraph 3 of the affidavit in rejoinder, the Plaintiffs have pointed out that their adoption and user of the mark VEGA and VEGAH is prior than that of the Defendant. The Plaintiff No.1 enjoys copy right ownership in relation to the blister pack and statutory and common law rights in the marks VEGA and VEGAH and SIGNATURE and cartons thereof. It is stated that one “Vega Pharmaceuticals Private Limited, a company based in Tamilnadu is the first adopter of the user of the mark VEGA as a Company name. The said Company has also applied the registration of the mark VEGA and the said mark is registered vide Registration No.732414. This fact is admitted by the Defendant in his reply. Vega Pharmaceuticals Private Limited by a Deed of Assignment dated 27th April 2004 assigned all their rights, titles and goodwill in the mark VEGA to one “Aurochem Pharmaceuticals (I) Private Limited” a Company based in Mumbai. Aurochem is the owner of the mark VEGA on and from the date of Deed of Assignment. Thus, VEGA PRAMO have assigned all their rights in favour of Aurochem Pharmaceuticals (I) Pvt. Ltd. and in turn, in favour of the Plaintiffs vide a Deed of Cross Licensing dated 7th November 2007 with Aurochem Pharmaceuticals (I) Pvt. Ltd. A copy of the Deed of Cross Licensing is annexed as Annexure ‘E’ to the affidavit in rejoinder. By virtue of this Deed, Plaintiff No.1 can also claim user since 1996. At the time of the filing of the Suit, this fact is not brought on record as the Plaintiff is 18 claiming the rights through the Plaintiff’s own registered trade mark VEGAH, use of mark VEGA since 2001 and not through the Deed of Cross License. Further, Plaintiff No.1 is also a registered proprietor of the mark VEGAH vide registration No. 1098288 in class 5 with effect from 24th April 2002. It is on this basis that the claim of prior adoption and user is raised by