AO/288/2007 1/44 JUDGMENT IN THE HIGH COURT OF GUJARAT AT AHMEDABAD APPEAL FROM ORDER No. 288 of 2007 With CIVIL APPLICATION No. 10760 of 2007 In APPEAL FROM ORDER No. 288 of 2007 For Approval and Signature: HONOURABLE MR.JUSTICE M.R. SHAH ========================================================= 1 Whether Reporters of Local Papers may be allowed to see the judgment ? YES 2 To be referred to the Reporter or not? YES 3 Whether their Lordships wish to see the fair copy of the judgment ?NO 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 ? NO 5 Whether it is to be circulated to the civil judge?NO. ========================================================= LARK LABORATORIES LTD. - Appellant(s) Versus NABROS PHARMA PVT. LTD - Respondent(s) ========================================================= Appearance : MR BR GUPTA for Appellant(s) : 1, MR SN SOPARKAR, SR.ADVOCATE WITH MR YJ TRIVEDI, MR JATIN Y TRIVEDI, MR HASHIT TOLIA, MS JAYSHRI H PADHYA AND MR TEJAS TRIVEDI for Respondent(s) : 1, ========================================================= CORAM : HONOURABLE MR.JUSTICE M.R. SHAH Date : 15/12/2008 ORAL JUDGMENT AO/288/2007 2/44 JUDGMENT 1. Present Appeal from Order under Order XLIII Rule 1(r) of the Code of Civil Procedure is arising out of the impugned order dated 02.03.2007 passed by the learned Judge of the City Civil Court, Ahmedabad below Exh.6 and 7 in Civil Suit No.1735 of 2006 by which the learned Chamber Judge has allowed the said Notice of Motion granting injunction in favour of the respondent herein – original plaintiff (hereinafter referred to as 'the plaintiff') and against the appellant herein – original defendant (hereinafter referred to as 'the defendant') restraining the defendants, its proprietor, partners and directors, as the case may be, their servants, agents, dealers, stockists and distributors from manufacturing, marketing, advertising, selling and exporting its tablets used in plain, inflammation and fever under the impugned trade-mark BOLAREN along with its copyrights subsist in its artwork of the label packages etc. and any other trade-mark along with its copyrights which may be identical and/or AO/288/2007 3/44 JUDGMENT deceptively similar as that of the plaintiff's registered trade-mark DOLAREN along with its copyrights subsist in its artwork of the label, packages etc. and they are also further restrained from committing an act of passing off goods, from selling and exporting tablets used in pain, inflammation and fever as the goods of the plaintiff under the alleged trade-mark BOLAREN along with its copyrights subsist in its artwork of the label, packages etc. and they are also restrained from reproducing the copyrights consisting in the artwork in its trade-mark BOLAREN having identical style, get-up, layout and design as that of the plaintiff and they are also restrained from committing an act of infringement of the copyrights. 2. Respondent herein – original plaintiff had instituted Civil Suit No.1735 of 2006 against the appellant - original defendant in the City Civil Court, Ahmedabad for infringement of their trade-mark 'DOLAREN' and for infringement of AO/288/2007 4/44 JUDGMENT copyrights while passing of aforesaid trade-mark. It is the case on behalf of the plaintiff that the plaintiff's company is inter-alia engaged in the business of manufacturing, marketing and selling and exporting medicinal and pharmaceutical preparations and having its office at Navrangpura, Ahmedabad. The suit produce of the plaintiff is in the form of tablet under the trade-mark 'DOLAREN' with the artistic work in its copyright. Said trade-mark 'DOLAREN' and the copyright consisting the artistic work in its label, packages etc. is adopted and started using by the plaintiff's company who is using the trade-mark with the copyright consist in the artwork of label, packages etc. since 1998 continuously, extensively, exclusively and openly. That the defendant's company inter-alia seems to be engaged in the business of manufacturing, marketing, selling and exporting medicinal and pharmaceutical preparations and the defendant is also manufacturing, selling and exporting an identical product under deceptive AO/288/2007 5/44 JUDGMENT similar trade-mark 'BOLAREN' and copyright consisting the artistic work in its label, packages etc. which is an identical or rather ditto-to-ditto same as that of the plaintiff's copyright subsist in its artwork consist in its packaging and also the trade-mark 'BOLAREN' is deceptively similar to that of the plaintiff's trade-mark 'DOLAREN'. It is also the case of the plaintiff that the plaintiff is very well-known and a prime manufacturer and merchant of the medicinal and pharmaceutical preparations. The product of the plaintiff has become very famous and have acquired the tremendous reputation amongst the public for its excellent quality and in consequences thereof a very valuable goodwill accumulated therein. It the case on behalf of the plaintiff that to distinguish its product from the products of the other manufacturers, the plaintiff have adopted and using the trade-mark 'DOLAREN' and also the copyright consisting in its artwork i.e. particular style, get-up, layout, design of that of the hand of a man AO/288/2007 6/44 JUDGMENT covered with glove knocks out and to show the pain disappears with the design of zig zag and at the bottom of the packages of the plaintiff, the trade-mark 'DOLAREN' has been written and under it there has been a note written as 'KNOCKS OUT PAIN, INFLAMMATION AND FEVER', the manner of writing the trade-mark 'DOLAREN' on each packages both in English and in Russian language on the packages of the plaintiff is being continuously used by the plaintiff since 1998 in respect of the medicinal and pharmaceutical preparations uninterruptedly continuously, extensively and openly in many countries of the world and the plaintiff's mark 'DOLAREN' in Russian language with artwork of the packages is also wholly registered as a trade-mark in class 05 bearing No.810263 user dated claimed since 15.07.1998 in India and the plaintiff has also got registered the said trade-mark in Belarus, Syria and patent and trade-mark of the medicine under 'DOLAREN' in Ukraine, and also obtained produce registration certificate of the Ministry of Health of Russia AO/288/2007 7/44 JUDGMENT and Georgia also and therefore, the plaintiff have become sole exclusive registered proprietor of the trade-mark 'DOLAREN' and the copyrights subsists in the artwork on its label and on the packages. It the case on behalf of the plaintiff that the defendant have not only pirated the deceptively similar trade-mark 'BOLAREN' but very trick fully has just replaced a single word 'B' in place of 'D' so that he can easily and tactfully get an advantages of well built up reputation and goodwill of the plaintiff and moreover the defendant have also adopted and is using exactly identical copyright consist in the artistic work of the packages of its product i.e. the defendant have copied the designs and ideas of the plaintiff's product materials of that of the hand of a man covered with a glove knocks out and to show the pain disappears with the design of zig zag and at the bottom of the packages of the defendant, the trade-mark 'BOLAREN' has been written and under it there has been a note written as 'KNOCKS OUT PAIN, INFLAMMATION AND AO/288/2007 8/44 JUDGMENT FEVER' the manner of writing the trade-mark 'BOLAREN' on each packages both in English and in Russian language on the packages of the defendant are all the way same and identical to that of the plaintiff's packaging materials. Moreover, the defendant is also using the impugned trade-mark 'BOLAREN' with copyright in its artistic work with respect to the same class of goods i.e. tablets for pain, inflammation and fever and its tablets consists same quantity of the contents used by the plaintiff. Both the plaintiff and the defendant are exporting their product. Therefore, it is alleged that the plaintiff is the sole proprietor and enjoying the exclusive rights to use the said trade-mark 'DOLAREN' and the copyright subsists in the artwork of its label and on the packages under the provisions of the Trade Marks Act, 1999 and the Copyright Act, 1957. It is further averred in the plaint that recently in the international market the plaintiff came across that the defendant – Lark Laboratories Ltd. have launched the same product AO/288/2007 9/44 JUDGMENT viz. Tablet used in pain, inflammation and fever having an identical or deceptively similar rather ditto to ditto imitation of the plaintiff's popular trade-mark 'DOLAREN' along with the copyright in the artwork of its label and on packages viz. Particular style, get-up, layout and design mentioned above which is identical with that of the plaintiff's artwork of the packages which has adopted by the defendant in such a smart and tricky manner so as to customer would lead to purchase the defendant's goods under the impression that said products belongs to the plaintiff. It is averred that overall effect of the packages and the trade-mark 'BOLAREN' along with the copyright in the artwork of its label and on packages of the defendant are identical and deceptively similar rather same as that of the plaintiff's popular trade-mark 'DOLAREN' along with the copyright in the artwork of its label and on packages so as to lead the purchaser to be deceived and confused. It is also further averred in the plaint that the AO/288/2007 10/44 JUDGMENT trade-mark 'DOLAREN' along with the copyright in the artwork of its label and on packages has been imitated by the defendant in such a tricky manner which shows defendant's malafide intention to imitate the well known mark and artwork of the plaintiff on the labels and the packages. It is also further averred that to show both marks in juxtaposition likelihood of confusion and deception is to be revealed. Making above allegations along with other averments with regard to infringement of trade-mark, infringement of copyrights and passing off aforesaid registered trade-mark 'DOLAREN' the plaintiff had instituted aforesaid suit with following prayers : (a) The defendant, its successor, partners, proprietor and directors as the case may be, its servants, agents, dealers, stockiest and distributors be permanently and perpetually restrained from manufacturing, marketing, advertising and selling tablets used in pain, inflammation and fever under the impugned trademark BOLAREN along with the copyright in the artwork of its label and on packages and such other trademark having an identical and/or confusingly and/or deceptively similar AO/288/2007 11/44 JUDGMENT trademark and copyrights subsists in its artwork, be restrained permanently and perpetually from committing an act of passing off goods for selling its tablets used in pain, inflammation and fever under the impugned trademark BOLAREN along with the copyright in the artwork of its label and on packages as that of the plaintiff's trademark DOLAREN along with the copyright in the artwork of its label and on packages enable them from committing an act of passing of and infringement of trademark and copyright by selling and/or marketing or exporting tablet used in pain, inflammation and fever of the defendant for the popular trademark DOLERAN along with the copyright in the artwork of its label and on packages of the plaintiff and be restrained to claim any rights, title or interest under the impugned trademark BOLERAN along with the copyright in the artwork of its label and on packages. (b) The defendants be permanently and perpetually restrained from reproducing the copyright consisting in their trademark having identical style, get-up, layout and design as that of the plaintiff and be further restrained from committing an act of an infringement of the copyright. (c) A decree may be passed against the defendant and their properties which can be executed against the defendant and in favour of the plaintiff for the declaration that the plaintiff only is the proprietor of the trademark BOLERAN along with the copyright in the artwork of its label and on packages and the plaintiff only is entitled to sell and export tablets DOLERAN along with the copyright in the artwork of its label and on packages. (d) The defendant be restrained from AO/288/2007 12/44 JUDGMENT interfering in any manner, whatsoever with the business of the plaintiff, his agents, servants, distributors and retailers from manufacturing, marketing, selling and advertising their goods by using impugned trademark BOLERAN along with the copyright in the artwork of its label and on packages. (e) The defendant be ordered to produce accounts for the sale of BOLERAN along with the copyright in the artwork of its label and on packages illegally and be directed to pay the profit whatsoever derived from the sale of product under the illegal use of the trademark BOLERAN along with the copyright in the artwork of its label and on packages to the plaintiff with 18% interest from the date of the suit till realisation. (f) The defendant be ordered for deliver up all the infringing labels, packages, dies, blocks, molds, machinery, mark and other such materials for the destruction. 3. Necessary averments with respect to cause of action and territorial jurisdiction are in para 12 which are reproduced as under: “12.The cause of action arose when it has recently come to the knowledge of the plaintiff that the defendant has started using in the international market the trademark BOLAREN along with the copyright in the artwork of its label and on packages which is literally an identical and/or deceptively similar with the plaintiff's registered trademark DOLAREN along with the copyright in the artwork of its label AO/288/2007 13/44 JUDGMENT and on packages. Both the plaintiff and the defendant are exporting their product outside India but the plaintiff has acquired registration certificate of its trademark DOLAREN along with the copyright in the artwork of its label and on packages in India as well as in various countries and further the plaintiff is having its registered office in India at Ahmedabad and the defendant is also having its office in India. Moreover the plaintiff is the registered owner of the trademark DOLAREN along with the copyright in the artwork of its label and on packages and therefore under section 134 of the Trade Marks Act, 1999 the Hon'ble Court has territorial jurisdiction to try the present suit along with interim injunction application and therefore, the plaintiff move before this Hon'ble Court to restrain the defendant.” 4. In the said suit, the plaintiff took out Notice of Motion at Exh.6 and 7 with following prayers : (a) Till the final hearing and disposal of the suit, the Hon'ble Court may be pleased to restrain the defendant, its proprietor, partners and directors as the case may be, their servants, agents, dealers, stockiest and distributors from manufacturing, marketing, advertising, selling and exporting its tablets used in pain, inflammation and fever under the impugned trademark BOLAREN along with its copyright subsist in its artwork of the label packages etc. and any other trademark along with its AO/288/2007 14/44 JUDGMENT copyrights which may be identical and/or deceptively similar as that of the plaintiff's registered trademark DOLAREN along with its copyrights subsist in its artwork of the label packages etc. (b) the defendant be restrained from committing an act of passing off goods from selling and exporting tablets used in pain, inflammation and fever as the goods of the plaintiff under the alleged trademark BOLAREN along with its copyrights subsist in its artwork of the label packages etc. (c) The defendant be restrained from reproducing the copyright consisting in the artwork in its trademark BOLAREN having identical style, get-up, layout and design as that of the plaintiff and be further restrained from committing an act of an infringement of the copyright. 5. Vide order dated 31.08.2006 the learned Chamber Judge granted ad-interim injunction as prayed for in Para 20(a), 20(b) and 20(c), which came to be confirmed and/or made absolute till final hearing and disposal of the suit vide impugned order dated 02.03.2007 restraining the defendants, its proprietor, partners and directors, as the case may be, their servants, agents, dealers, stockists and distributors from AO/288/2007 15/44 JUDGMENT manufacturing, marketing, advertising, selling and exporting its tablets used in plain, inflammation and fever under the impugned trade- mark BOLAREN along with its copyrights subsist in its artwork of the label packages etc. and any other trade-mark along with its copyrights which may be identical and/or deceptively similar as that of the plaintiff's registered trade-mark DOLAREN along with its copyrights subsist in its artwork of the label, packages etc. and they are also further restrained from committing an act of passing off goods, from selling and exporting tablets used in pain, inflammation and fever as the goods of the plaintiff under the alleged trade-mark BOLAREN along with its copyrights subsist in its artwork of the label, packages etc. and they are also restrained from reproducing the copyrights consisting in the artwork in its trade-mark BOLAREN having identical style, get-up, layout and design as that of the plaintiff and they are also restrained from committing an act of infringement AO/288/2007 16/44 JUDGMENT of the copyrights. Being aggrieved and dissatisfied with the impugned order dated 02.03.2007 passed by the learned Chamber Judge below Exh.6 and 7 in Civil Suit No.1735 of 2006, the appellant herein – original defendant has preferred present Appeal from Order. 6. Mr.B.R.Gupta, learned Advocate for the appellant has vehemently submitted that as composite suit has been filed by the plaintiff for infringement of copyrights, infringement of trademark and for passing off, as held by the Hon'ble Supreme Court in the case of Dabur India Ltd. K.R.Industries reported in AIR 2008 SC 3123, such a composite suit for aforesaid reliefs is not maintainable. Therefore, the learned Chamber Judge has committed an error in granting injunction in favour of the plaintiff and against the defendant. It is submitted that considering provisions of Trademark Act, 1999 more particularly Section 134 of the said Act, for passing off action, the Civil Court, Ahmedabad AO/288/2007 17/44 JUDGMENT would not have any territorial jurisdiction as admittedly the defendant is carrying on its business at Delhi and admittedly tablets are being sold in Russia. Therefore, it is submitted that when composite suit for aforesaid three reliefs is not maintainable as held by the Hon'ble Supreme Court in the aforesaid decision, the learned Chamber Judge is not justified in granting injunction as prayed for. It is submitted that for relief of passing off action, suit is required to be filed in the Court where the defendant resides and carries on business and for that purpose provisions contained in Code of Civil Procedure would be applicable. It is further submitted by Mr.Gupta, learned Advocate for the appellant that even as per the case of the plaintiff both plaintiff and the defendant are selling tablets in Russia and therefore, the learned Chamber Judge has committed error in assuming jurisdiction and has materially erred in granting injunction and allowing Notice of motion. It is submitted that as such defendant AO/288/2007 18/44 JUDGMENT Company has filed suit against the plaintiff company in the Court of District Judge, Delhi for infringement of defendant company's trademark by using name of DOLAREN and therefore when the plaintiff is in breach of defendant company's trademark, the learned Chamber Judge has materially erred in granting injunction in favour of the plaintiff. It is also further submitted by Mr.Gupta, learned Advocate that even registered trademark of the plaintiff company 'DOLAREN' has been removed from the register of trademark pursuant to the order passed by the Intellectual Property Appellate Board, Ahmedabad dated 19.03.2008 and therefore, when the plaintiff is not registered trademark of DOLAREN, injunction granted by the learned Chamber Judge below Exh.6 and 7 deserves to be quashed and set aside/vacated. It is submitted by Mr.Gupta, learned Advocate that as goods / tablets are sold in Russia, the learned Chamber Judge ought not have granted injunction restraining the defendant from selling goods / tablets in Russia as the AO/288/2007 19/44 JUDGMENT Civil Court at Ahmedabad would not have any territorial jurisdiction to issue injunction restraining the defendant from selling tablets / goods in Russia. Making above submissions and relying upon the decision of the Hon'ble Supreme Court in the case of Dabur India Ltd.(supra), Mr.Gupta, learned Advocate for the appellant – original defendant has requested to allow present Appeal from Order by quashing and setting aside the impugned order passed by the learned Chamber Judge, City Civil Court, Ahmedabad below Exh.6 and 7 and vacate the injunction granted by the learned Chamber Judge. 7. Appeal from Order is opposed by Mr.Soparkar, learned Senior Advocate appearing on behalf of the defendant – original plaintiff. It is submitted that on fare reading of the decision of the Hon'ble Supreme Court in the case of Dabur India Ltd.(supra), it cannot be said that composite suit for infringement of registered trademark, infringement of copyrights and relief AO/288/2007 20/44 JUDGMENT for passing off action is not maintainable. It is submitted that said decision is required to be read in the facts of the case. It is submitted that there is no absolute proposition of law laid down by the Hon'ble Supreme Court in the said decision that composite suit for aforesaid three reliefs i.e. infringement of registered trademark, infringement of copyrights and relief for passing off action is not maintainable at all. It is submitted that in the case before the Hon'ble Supreme Court composite suit was filed by the plaintiff – Dabur India Ltd in the Delhi High Court against the defendant – K.R.Industries for copyright infringement and relief for passing off action. So far as relief for passing off action is concerned, the respondent – defendant submitted application in the suit purported to be under Order VII Rule 11 of the Code of Civil Procedure contending that as the defendant is resident of Andra Pradesh, the Delhi High Court had no jurisdiction. The learned Single Judge of the Delhi High Court accepted the said contention AO/288/2007 21/44 JUDGMENT of the defendant. That Dabur India Ltd. Preferred Intra Court appeal and the Division Bench of the Delhi High Court dismissed the said appeal by holding that the matter is covered by the decision of Hon'ble Supreme Court in the case of Dhodha House v/s. S.K.Maingi reported in (2006) 9 SCC 41. Feeling aggrieved and dissatisfied with the aforesaid two orders holding that Delhi High Court has no jurisdiction for relief of passing off action, the plaintiff – Dabur India Ltd., approached Hon'ble Supreme Court contending inter-alia that even for relief of passing off action, such a suit before the Delhi High Court would be maintainable. It is submitted that in the aforesaid fact situation, the Hon'ble Supreme Court has held that such a composite suit for copyright infringement as well as relief for passing off action before the Delhi High Court is not maintainable as admittedly the defendant was residing at Andra Pradesh, Delhi High Court would not have any jurisdiction. To that extent the Hon'ble Supreme Court observed AO/288/2007 22/44 JUDGMENT that such a composite suit would not entitle a Court to entertain a suit in respect whereof it has no jurisdiction, territorial or otherwise. Therefore, it is submitted that there is no absolute proposition of law laid down by the Hon'ble Supreme Court in the said decision as sought to be canvassed on behalf of the defendant that such a composite suit for infringement of trademark, copyright infringement and relief for passing off action is not maintainable at all and same is to be dismissed. Therefore, it is submitted that the contention on behalf of the defendant that as composite suit for aforesaid reliefs was not maintainable, the learned Chamber Judge ought not to have granted injunction, cannot be accepted. Mr.Sorparkar, learned Senior Advocate has relied upon decision of this Court in the case of Gulabchand Makanji v/s. Motaponda Vibhag Tenants Cooperative Agricultural Society Ltd. reported in AIR 1962 Guj 296. It is submitted that as held by this Court in a case where part of the plaint is triable by a Civil AO/288/2007 23/44 JUDGMENT Court, if the plaintiff does not file two separate plaints but files only one plaint, the plaintiff should be asked to amend the plaint so as to make it wholly triable by the Civil Court by deleting the portion of the plaint which is triable by another Court and the procedure of returning