BIOCHEM PHARMACEUTICAL INDUSTRIES Vs. PHARMA SYNTH FORMULATIONS LIMITED

JUDGEMENT

(1.) By this order three applications (1) I.A. No. 10735/94 under Order 39 Rules 1 & 2 CPC filed by the plaintiff, and two I.A.63/95 under Order 39 Rules 1 and 2 CPC and I.A.64/95 under Order 39 Rule 4 CPC filed by defendant are being disposed of. Briefly the facts are that the BIOCHEM Pharmaceuticals Industries, the plaintiff, a partnership firm has filed this suit for injunction in passing off action besides other ancillary reliefs. The case of the plaintiff is that it is engaged in the business of manufacturing and marketing various pharmaceutical preparations in which they have got very good goodwill and reputation, it had adopted the trade mark BIOMOX in relation to a medicinal preparation containing amoxycillin in the year, 1992 and during search for registration of their trade mark came to know that an application No. 543991 for registration of this very trade mark in Class 5 of M/s. Maxheal Pharmaceutical (India) (for short Maxheal) of Bombay had already been filed. After negotiation, the said Maxheal assigned and transferred the said trade mark alongwith their goodwill in the business to the plaintiff by means of a deed of assignment dated 15.1.1993 alongwith the benefit of the said pending application. The said Maxheal had been, using this trade mark since 1988 and as such the plaintiff being the assignee has acquired right in the said trade mark since 1988. It is also alleged that their product enjoys very good reputation and sale figures for two years, 1992-93 and 1993-94 amount to Rs. 84,98,285.95 and Rs.1,31,27,678.77. Then it is alleged that the plaintiff in the year 1993 came to know that M/s Pharmasynth Formulatons, the defendant who had also been engaged in similar business had recently adopted identical trade mark BIOMOX in relation to amoxycillin capsules which the latter had adopted fraudulently and to mislead the public and misappropriate the plaintiff's goodwill. The defendant has not stopped the use of this trade mark in spite of two notices dated 26.11.1992 and 29.4.1993 sent to which no reply even was received. It is thus alleged that this user of identical trade mark by the defendant is illegal and fraudulent and the same is liable to be stopped. Along with the suit an application I.A. 10735/94 under Order 39 Rules 1 & 2 for interim relief was filed. Whereon by ex parte order dated 14.12.94, defendant has been restrained from using the said trade mark BIOMOX. This interim order is still in operation.

(2.) Defendant has filed written statement cum counter claim and also two applications (1) I.A.64/95 under Order 39 Rule 4 CPC for vacation of the ex parte injunction and another for grant of interim injunction against the plaintiff. The case of the defendant is that they had adopted this trade mark in the 1985 when a licence dated 20.9.1985 was also obtained by them from the Drugs Controller, Delhi and thereafter after doing extensive research and development they started selling the product in August, 1988 and since then they are marketing this product and it has got very good reputation. It is denied that plaintiff or their alleged predecessor-in-interest has been using this trade mark since 1988 for which no proof also has been produced and that the deed of assignment in itself is no proof of the user since 1988. The plaintiff being the prior adopter and user is entitled to its exclusive use in preference to the use by the plaintiff. Sale figures from the years 1988-89 to 1994-95 (upto November, 1994) have also been given showing increase of sales from Rs.33,303.60 in the year 1988-89 to Rs.9,18,183/- in the year 1994-95 (upto November, 1994). Defendant as prior user has also made counter claim seeking injunction against the plaintiff for restraining use of this trade mark BIOMOX. Plaintiff in replication to the written statement cum counter claim has denied the claim made by the defendant. Thus both the parties have made claim for competing the user of the same trade mark BIOMOX.

(3.) Learned counsel for the plaintiff has contended that the plaintiff's predecessor in interest Maxheal has adopted the trade mark in June, 1988 and since by means of deed of assignment dated 15.1.1993 the trade mark with goodwill of Maxheal has been assigned to the plaintiff, the plaintiff has acquired the right and interest of their assignor hence plaintiff's user is to be deemed since June, 1988, as against the user by defendant since 22.8.1988, the documents filed by the defendant show that the first sale took place on 22.8.1988. Plaintiff thus being prior in its user is entitled to its use to the exclusion of the defendant. He has relied on Century Traders v. Roshan Lal Dugger & Co. & Ors. AIR 1978 Del 250 (DB). He has also contended that the defendant has not only set up a false case but has also withheld material document, and thereby is trying to mislead and practise fraud on the Court. The suit itself is liable to be summarily dismissed for this reason for which reliance is placed on S.P. Chengavaraya (D) v. Jaganath (D) 1994 RLR (SC) 102.