AMBA LAL SARABHAI ENTERPRISES LTD Vs. SARA PHARMACEUTICALS

JUDGEMENT

(1.) M/s Ambala Sarabhai Enterprises Ltd., the plaintiffs have brought a suit seeking inter alia permanent injunction (a) restraining the defendants, their servants, agents, stockists from using the word SARA as part of their trading/trade name SARA PHARMACEUTICALS which is deceptively similar to the plaintiffs' trading style SARABHAI CHEMICALS or SARABHAI M CHEMICALS and which includes the plaintiffs' registered trade mark SARA or part of their trade mark SARABHAI (b) restraining the defendants their agents, servants, etc. from using the trade mark SARALYTE or trade name/trading style Sara Pharmaceuticals in respect of pharmaceuticals, medicinal and veterinary preparations and chemical products which are infringements of the plaintiffs' registered trade mark and pending trade marks and (c) restraining the defendants, their agents, etc., from passing off or enabling others and causing or assisting others to pass off their goods and/or business as and for the goods and/or business of the plaintiffs by using the trade mark SARALYTE and/or the trading style SARA Pharmaceuticals and any other mark or trading style in which the word Sara forms a part. These reliefs have been claimed on the allegations that the plaintiffs were the owner of trading style/trade name Sarabhai Chemical and the goodwill pertaining thereto in respect of medicinal pharmaceutical and veterinary preparations by virtue of assignment deed dated 25.4.1978. The said trading style was being used by the plaintiffs and their predecessors in business and title for the past more than 30 years in respect of the said goods all over India. The plaintiffs are the proprietors of (a) trade mark Sara under No. 113071 in class 5 as of August 27, 1945 in respect of pharmaceutical veterinary and sanitary substances infants and invalids foods plasters material for surgical bandaging, material for stopping teeth, dental wax, disinfectants preparations for filling weeds and destroying vermin (b) trade mark containing the word Sara under No. 113072 in class 1 as of August 27, 45 in respect of chemical products used in industry, science, photographs, agriculture, horticulture, forestry, manures etc. and the above trade marks were being used since the date of registration which had been renewed from time to time and were subsisting and valid. The plaintiffs had applied for registration of trade mark SARABHAI and SARABHAI enables in respect of medicinal, pharmaceutical and veterinary preparations in class 5 under the Trade and Merchandise Marks Act and the registration certificates were awaited. They were using all these trade marks since long. The sales turn over of goods under the Sarabhai and Sarabhai enables during the period March, 77 to June 1980 was approximately Rs. 166.78 cr. and they had spent about Rs. 11.17 crores in making these products known. The plaintiffs and their predecessors had sold the above mentioned goods under the trading style SARABHAI chemicals during the last 30 years to the tune of Rs. 493.22 crores and their present annual sale is approx. Rs. 55.62 cr. The plaintiffs were also owners of trading name trading style SARABHAI M CHEMICALS and the goodwill pertaining thereto in respect of vitamin C chemicals and laboratory reagents by virtue of assignment deed dated 15.2.79 and they and their predecessors had sold and offered for sale and the above mentioned goods under the said trading style SARABHAI M CHEMICALS for the last more than 8 years to the tune of Rs. 59.81 crores. The present annual sale of the said goods under the said trading style SARABHAIM CHEMICALS was approx. Rs. 10.74 cr. They had approximately spent Rs. 0.86 cr. In making the said products and the name SARABHAI M CHEMICALS known to all concerned and the general public and by virtue of long continuous and extensive user huge sales and expenditure incurred and trading style Sarabhai chemicals and the trade mark SARA SARABHAI and SARABHAI emblems had acquired very wide reputation, goodwill and name all over India in respect of pharmaceutical, medicinal and veterinary preparations and the said trading style and trade marks were exclusively associated with the plaintiffs and no one else.

(2.) IN or about August 80 the plaintiffs came to know that the defendants had started using the trading style SARA PHARMACEUTICALS and were manufacturing offering for sale and advertising pharmaceutical goods under the trade mark SARALYTE. The adoption of the trading style SARA PHARMACEUTICAL and selling the goods under the trade mark SARALYTE it was pleaded was fraudulent and calculated to deceive and create confusion among the trade and the general public and to give an impression that the defendants were an organisation branch or a division of the plaintiffs or had some connection with the plaintiffs and that they were infringing the trade marks of the plaintiffs and were passing off their goods and trading style as that of the plaintiffs and by using the offending trading style and trade marks had made wrongful gains from the reputation, name and goodwill of the plaintiffs.

(3.) UNDER S 2(a)(d) of the Act, a mark shall be deemed to be deceptively similar to another mark if it so nearly resembles the other mark as is likely to deceive or cause confusion.