SMITHKLINE BEECHAM LTD Vs. HANISH K AJMERA

JUDGEMENT

(1.) Both the applications can be decided by a common order as one seeks grant of interim injunction pending the disposal of the suit and the other vacation of the ad interim injunction granted on 12th December, 2011 by this Court in favour of the plaintiff.

(2.) Learned counsel for the plaintiff contends that the registration of the trademark CROCIN a Paracetamol tablet in favour of the plaintiff relates back to 26th April, 1982. CROCIN is a household name used everywhere. No part of the plaintiff's mark CROCIN is derived from the Paracetamol and is a coined and adopted name. The defendant infringed the trademark of the plaintiff by adopting the trademark PIROCIN for their Paracetamol tablet. The defendant has not been able to show how it adopted the mark PIROCIN as neither the same relates to the salt in the medicine nor the diseases to be cured. Since it is a case of infringement of plaintiff's trademark the plaintiff is only required to show that the marks are similar and once the same is shown no further evidence is required to be led. The plaintiff's existence in India dates back to 1963 when it was first adopted by Dhapur Interfan Limited. The mark was then acquired by Smithkline Beecham Plc. In 2010 Smithkline Beecham Plc changed its name to Smithkline Beecham Limited and became the proprietor of mark CROCIN in India. Medicinal preparation under the mark CROCIN are extremely popular and widely consumed in India and the plaintiff's have incurred substantial expenditure in establishing their goodwill and reputation. The blister blue strip packaging of CROCIN launched since the year 2002 has acquired great recognition and thus in addition to being licensed user of the registered trademark CROCIN owned by plaintiff No.1, plaintiff No.2 is the owner of the copyright in the artistic work comprising CROCIN blue blister packaging. Not only the defendants have copied the trademark of the plaintiffs, but have also copied the phrase used "the effective relief from pain - gentle on stomach". Thus, the defendants are copying all the essential features of the plaintiff's mark. The defendants are also in the pharmaceutical business. In 2010 the plaintiff's were alerted to the sale of analgesic and anti-pyretic tablets by the defendant. The defendants have adopted the mark PIROCIN virtually identical to the plaintiffs' well-known and registered CROCIN mark and merely replaced the alphabet "C" with "PI". The members of the trade and purchasing public are likely to perceive the defendants" products as originating from the plaintiffs"; which is absolutely false. Further, the two rival marks are virtually identical. The two products with rival marks are used for identical purposes i.e. both provide relief from pain, the class of consumers directly overlap and the channel of trade is also identical. The plaintiffs sent a legal notice to the defendant. The stand of the defendant in the reply to the legal notice is different than the written statement. Even the name of the product has been mentioned wrongly. The defendant failed to mention, since when they were using the name and how they acquired the same. The defense taken is that the two marks are not similar. Both are honest and concurrent user of the marks. In case of infringement of the trademark, once marks are found to be similar then honest and concurrent use has no relevance. Secondly, the mark has to be compared as a whole and the same cannot be dissected. The principle to be applied is that of an ordinary man with imperfect recollection. The defendant's plea of want of territorial jurisdiction is also not maintainable, as the plaintiff has an office in Delhi as is mentioned in memo of parties. Thus, the plaintiff works for gain in Delhi. Further, the plaintiff's goods are extensively sold in Delhi. The plaintiff has also filed the sale invoices relating to Delhi. The case of the defendant that the registration is bad and is not valid is not relevant for the present suit, as for the same he has to file an application before the Registrar of Trade Marks. The plea of delay and latches is also unfounded. Though the defendant claim to be using PIROCIN since 1998, the plaintiff has come to know about the same now. Thus, the plaintiff immediately sent a notice to the defendant. The protection under Section 34 of the Trademarks, as claimed by the defendant, is not available to the defendant. Merely because the plaintiff has not taken action against other users of the mark "CIN" in their pharmaceutical preparation would not render any benefit to the defendant. Reliance is placed on Cadila Health Care Ltd. Vs. Cadila Pharmaceutiacals Ltd., 2001 AIR(SC) 1952, Kaviraj Pandit Durga Dutt Sharma Vs. Navratna Pharmaceutical Laboratories, 1965 AIR(SC) 980, Automatic Electricc Ltd. Vs. R.K. Dhawan & Anr., 1999 77 DLT 292; Corn Products Refining Vs. Shangrila Food Products, 1960 AIR(SC) 142, Himalaya Drug Company Vs. S.B.L. Limited, 2013 53 PTC 1; United Biotech Vs. Orchid Chemicals and Pharmaceutical Limited, 2012 50 PTC 433, Pankaj Goel Vs. Dabur India Ltd., 2008 38 PTC 49; Novartis AG Vs. Crest Pharma Pvt. Ltd. & Anr., 2009 41 PTC 57; Go Delhi Luxury Vs. Go Delhi Tours, 2012 51 PTC 273; Express Bottlers Service Vs. Pepsi Inc. & Ors., 1989 9 PTC 14; Anglo French Drugs & Industries Ltd. Vs. Eisen Pharmaceutical Company Pvt. Ltd.,1998 1 ArbLR 61; Simatul Chemical Industries Pvt. Ltd. Vs. Citabul Ltd., Amritdhara Pharmacy Vs. Satya Deo Gupta, 1963 AIR(SC) 449, M/s. Hindustan Pencils Pvt. Ltd. Vs. M/s. India Stationery Products Co. and Anr., 1990 AIR(Del) 19, Midas Hygiene Industries P. Ltd. & Anr. Vs. Sudhir Bhatia & Ors., 2004 28 PTC 121 and Laxmikant V. Patel Vs. Chetanbhat Shah & Anr., 2002 24 PTC 1.

(3.) Learned counsel for the defendant on the other hand contends that the injunction is liable to be vacated because the plaintiff has concealed material facts from this Court. The defendant is preparing ayurvedic medicine which material fact has not been stated in the plaint. Reliance is placed on S.P. Chengalvaraya Naidu Vs. Jagannath, 1994 AIR(SC) 853, T. Arivandandam Vs. T.V. Satyapal and Anr., 1977 AIR(SC) 2421 and Satish Khosla Vs. Eli Lilly Ranbaxy Ltd., 1998 71 DLT 1. Though the defendant did not state that it was manufacturing and selling ayurvedic medicine in its reply to the legal notice of the plaintiff, however in the second reply the defendant stated that it was manufacturing and selling ayurvedic medicine which reply has not been filed along with the documents by the plaintiffs. The mark CROCIN is not an invented word and is a word in the dictionary which means saffron. The plaintiffs are neither honest adopter nor the registered owner of the trademark. There are number of medicines ending with the alphabet "CIN" who are prior adopters than the plaintiff. There are number of distinctions between the two marks i.e. CROCIN and PIROCIN. CROCIN is allopathic medicine used for cold and fever only, the price of 15 tablets is Rs. 20.35/-, Overdose can potentially damage the liver, it is packed in a blue packaging, cannot be taken without the Doctor's prescription and its composition is Paracetamol 500 mg, caffeine 25 mg and Phenylephrine 5 mg, no particular course of medicine is required and is available in almost every general store and medical shops, shape and colour of the tablet is round and white, is a Schedule "H" drug, whereas PIROCIN is used in cold, fever, headache and bad throat etc., is a ayurvedic medicine, the price of 10 tablets is Rs. 125/-, there are no side effects, is packed in silver transparent packaging, is sold solely on medical prescription, the composition of drug is herbal and ayurvedic, it has a minimum course of five days, is available only in particular ayurvedic medicine shops, the tablet is not round in shape, the colour of the tablet is light brown, there is nothing written on the tablet and below PIROCIN it is written analgesic and anti-pyretic along with being an ayurvedic medicine and is sold in Madhya Pradesh and Southern Parts of India only. This Court has no territorial jurisdiction to entertain the suit as the defendant has no existence in Delhi. As per the documents filed the plaintiff's registered office is in Gurgaon. The sale invoices filed relate to the period of 2005-2006 whereas the suit has been filed in 2011. The plaintiffs have failed to show that at the time of institution of suit, the plaintiffs are carrying on business in Delhi, as is the requirement under Section 34 of the Trade Marks Act. The availability of plaintiff's goods in Delhi will not confer territorial jurisdiction on this Court as held in Archie Comic Publications Inc Vs. Purple Creations Pvt. Ltd. & Ors., 2010 44 PTC 520. Reliance is placed on M/s. Dhodha House Vs. S.K. Maingi, 2006 AIR(SC) 730, Alberto Co. Vs. R.K. Vijay & Ors., 2010 42 PTC 300 and Sholay Media Entertainment and Anr. Vs. Yogesh Patel and Ors.,2010 1 MIPR 268. Since the defendant has no existence in Delhi and the products of the defendant are not sold in Delhi, Section 20 CPC also is not attracted. Relying upon F. Hoffmann- La Roche and Co. Ltd. Vs. Geoffrey Manners and Co. Private Ltd., 1970 AIR(SC) 2062 it is contended that the Supreme Court dismissed the appeal against the order of the High Court where injunction was asked in two similar trademarks i.e. DROPOVIT and PROTOVIT. Relying upon M/S Gufic Ltd. & Anr. Vs. Clinique Laboratories, Llc & Anr., FAO (OS) No. 222/2009 decided by this Court on 29th May, 2009 it is contended that in view of the marked difference in the two medicines, the customers, price, one being ayurvedic and other allopathic and on a comparison as a whole, there is no deception and no similarity. Reliance is also placed on Apex Laboratories Ltd. Vs. Zuventus Health Care Ltd., 2006 33 PTC 492; Aviat Chemicals Pvt. Ltd. and Anr. Vs. Intas Pharmaceuticals Ltd., 2001 93 DLT 247; Astrazeneca Uk Limited and Anr. Vs. Orchid Chemicals, 2007 34 PTC 469; Shri Atul Rawal Vs. M/S S.B. Equipments, 2010 43 PTC 521; ACME Pharmaceutical Vs. Torrent Pharmaceuticals Ltd., 2010 1 MIPR 0217; B.L. & Co. Vs. Pfizer products Inc., 2001 93 DLT 346; Schering Corporation & Ors. Vs. Getwell Life Sciences India, 2008 37 PTC 487; Korpan Chemical Co. Ltd. Vs. Sigma Laboratores, 1993 13 PTC 245; East African (1) Remedies Pvt. Ltd. Vs. Wallace Pharmaceuticals Ltd. & Anr., 2003 27 PTC 18; Schering Corporation & Ors. Vs. Alkem Laboratories Ltd., 2010 42 PTC 772; Cipla Limited Vs. M.K. Pharmaceuticals, 2008 36 PTC 166; Inco-Pharma Pharmaceuticals Vs. Citadel Fine Pharmaceuticals, 1998 AIR(Mad) 347 Division Bench and Rich Products Corporation & Anr. Vs. Indo Nippon Food Limited, 2010 42 PTC 660.