1 nms-3477-s-2503-09 IN THE HIGH COURT OF JUDICATURE AT BOMBAY ORDINARY ORIGINAL CIVIL JURISDICTION jmi NOTICE OF MOTION NO. 3477 OF 2009 IN SUIT NO. 2503 OF 2009. Lupin Limited. ..Plaintiff. vs. Mahdav Biotech Private Limited. ..Defendant. .... Mr. Amit Jamsandekar, i/b. India Law Services, for Plaintiff. None for Defendant. .... CORAM : S.J. KATHAWALLA, J. DATE : 31ST JANUARY 2011. P.C. Heard the learned Advocate appearing for the Plaintiff in support of the Notice of Motion. This Court on 25th September 2009 has granted ex-parte ad-interim relief to the Plaintiff in terms of prayer clause (a) of the Notice of Motion. The papers and proceedings of the Notice of Motion and Suit are served on the Defendant. The Plaintiff has complied with the Order 39 Rule 3(a) of the Code of Civil Procedure, 1908 and the Plaintiff has filed Affidavits dated 6th October 2009 ad 16th October 2009 to that effect. In fact, the writ of summons is also served on the Defendant. Mr. R.J. Tiwari, the Bailiff and Clerk of the Office of the Sheriff of Bombay has filed his Affidavit dated 10th February 2009 proving service on the Defendant. The Defendant has not appeared in the proceedings at any point of time. The ad-interim order is operating against the Defendant. The Defendant has not applied to vacate the ad-interim order already granted. The ad-interim order granted on 25th September 2009 was extended by this Court on 12th October 2009 2 nms-3477-s-2503-09 and further relief in terms of prayer clauses (a), (b) and (c) was granted and the said order was extended from time to time. Today the Notice of Motion is listed for the hearing and final disposal. 2. The Plaintiff has filed the Suit on the cause of action of infringement of the Plaintiff’s registered trade marks RABLET, RABLET I.T. and RABLET I.V. Bearing registration nos. 1073686, 1594385 and 1303422, respectively and on the cause of action of passing off committed by the Defendant by using the mark RABET-D. The marks of the Plaintiff are registered in Class 5 of the Fourth Schedule to the Trade Marks Rules, 2002. The Plaintiff has produced the certified entries of the Registrar of Trade Marks in respect of the registered marks bearing registration nos. 1973686, 1594385 and 1303422. The Plaintiff has stated in the Plaint that the registration of the marks is valid and subsisting. 3. The Plaintiff has also applied for registration of the mark RABLET-D and the said application was pending when the Suit was filed. The Plaintiff submitted that during the pendency of the Suit, the Plaintiff’s mark RABLET-D is now registered in the name of the Plaintiff and the said registration is valid and subsisting. The Plaintiff has stated that till the end of August 2009, the Plaintiff had manufactured and sold products bearing the marks RABLET to the extent of over Rs.15925.34 lacs. It is submitted that the Plaintiff has also popularised the RABLET marks by spending tremendous amount of money, time and labour. The Plaintiff has produced statement of annual sales turnover and sales advertisement and promotional expenses in respect of the products bearing the marks RABLET for the years 2001-2002 till August 2009. The statement of annual sales turnover and sales advertisement and promotional expenses produced by the Plaintiff is certified by the Chartered Accountant. It is submitted that the Plaintiff has acquired tremendous goodwill and 3 nms-3477-s-2503-09 reputation in the RABLET marks by its extensive and continuous use and by the reason of advertisements and promotional activities undertaken by the Plaintiff and the marks RABLET are solely and exclusively associated by the members of public and the traders with the Plaintiff and none else. 4. The Defendant’s product bearing the mark RABET-D is produced on record by the Plaintiff (Exhibit- H to the Plaint). The Defendant is using the mark RABET-D in respect of pharmaceutical product. The compositions of the Defendant’s products are Rabeprazole Sodium 20 mg and Domperidone 10 mg. 5. The compositions of the Plaintiff’s product bearing the mark RABLET I.V. Is Lyophilised (injection 20 mg), the compositions of the product bearing the marks RABLET It are Rabeprazole Sodium Itopride enteric coated; 20 mg. the compositions of the product bearing the mark RABLET-D are Rabeprazole Sodium 20 mg and Demperidone BP 30 mg. 6. The marks of the Plaintiff are registered. The certified copies of the entries of the Register in respect of the registered marks of the Plaintiff are on record. By virtue of the provisions of Section 31 of the Trade Marks Act, 1999, the registration of the trade mark is prima facie evidence of the validity of the mark. The certificate provided by the Chartered Accountant shows that the marks RABLET are used by the Plaintiff extensively and continuously and the Plaintiff has spend substantial amount of money on advertisements and promotion of the products bearing the marks RABLET. The Plaintiff has made the necessary averments in paras 14 to 16 of the Plaint. Therefore, prima facie the Plaintiff has acquired goodwill and reputation in the RABLET marks. 7. The mark adopted by the Defendant RABET-D is phonetically and structurally deceptively similar to the Plaintiff’s 4 nms-3477-s-2503-09 marks RABLET. The essential and prominent features of the Plaintiff’s marks are the words RABLET the Defendant has merely deleted the letter ‘L’ and has adopted the entire mark. The rival marks are used in respect of pharmaceutical products with different compositions and therefore any confusion or deception may result in disastrous consequences. Therefore, the balance of convenience is also in favour of the Plaintiff. The Plaintiff has made out prima facie for grant of interim relief. The Defendant has not appeared in the proceedings at any point of time though served. 8. In view thereof, the Notice of Motion is made absolute in terms of prayer clauses (a), (b) ad (c). The Defendant to file its written statement on or before 7th March 2011. Stand over to 9th March 2011 for directions. [ S.J. KATHAWALLA, J. ]