HIMALAYA DRUG CO. Vs. S.B.L. LIMITED

JUDGEMENT

(1.) Plaintiff has filed this suit for permanent injunction etc. against the defendant inter alia, on the allegations that it is engaged in the business of manufacture and sale of Ayurvedic medicinal preparations since 1930 and some of its well known Ayurvedic medicines are sold under the trade mark. ABANA, CYSTONE, DIAREX, DIABECON, GASEX, GERIFORTE, HERBOLAX, LIV 52, LUKOL, MENTAT, PILEX, RUMALAYA, SEPTILIN, SPEMAN, STYPLON, TENTEX forte, BONNISAN drops, GERIFORTE syrup, KOFLET syrup, HICOLIN cream, RUMALAYA cream etc. 169LIV52170 is basically a liver tonic prescribed for liver disorder and to protect the liver against various dys-functions, damages and hepatotoxine. Trade Mark 169LIV 52170 is a mark coined in 1955 by the plaintiff and it has no dictionary meaning or any meaning in common parlance. It is alleged that the plaintiff has been incurring approximately Rs. 3 crores per annum towards promoting sale of LIV 52 and the approximate annual turnover thereof for the year 1995-96 has been Rs. 30 crores and further that plaintiff is also the registered proprietor of trade mark LIV 52 under the Trade and Merchandise Marks Act, 1958 and has, therefore, the statutory right of exclusive use of the said trade mark under the statute. It is stated that the defendant is also engaged in the business of manufacturing and marketing pharmaceutical preparations and has dishonestly and mala fide adopted trade mark Liv-T in relation to medicinal preparation meant to cure liver disorders. Trade Mark "Liv 52" and "Liv-T" are deceptively similar, the essential and distinguishable feature of both the trade marks being identical i.e., "Liv" and the defendant's product is bound to be presumed to be another liver related medicinal preparation originating from the plaintiff or having an association or nexus with the plaintiff. Suffix '52' in the plaintiff's trade mark or "T" in the defendant's trade mark are incapable of distinguish the medicinal preparations of either of the parties. Use of trade mark "Liv-T" by the defendant which is phonetically and structurally identical to the trade mark "Liv-52" of the plaintiff amounts to violation of the plaintiff's statutory right of exclusive use to the mark LIV 52 and infringement of trade mark registration Nos. 180564, 290061 and 401959 under Sec. 29(1) of the Trade and Merchandise Marks Act, 1958. Plaintiff, therefore, sent a legal notice dated 14.3.1996 to the defendant calling upon it to immediately desist from such infringing use of the trade mark "Liv-T" but the defendant has neither cared to reply to the said notice nor stopped the use thereof. Hence the necessity arose to file this suit.

(2.) Along with the plaint an application under Order 39 Rules 1 and 2 read with Sec. 151 Code of Civil Procedure (IA No. 4941/96) was also filed by the plaintiff and thereon vide order dated 23.5.1996 defendant has been restrained from using the mark Liv-T or another deceptively similar mark to that of the plaintiff's mark LIV 52 till the next date.

(3.) Thereafter on 11.6.1996 defendant filed application under Order 39 Rule 4 read with Sec. 151 Code of Civil Procedure (IA No. 5534/96) for vacating the said order dated 23.5.1996. It is alleged that the defendant is a renewed manufacturer and merchant of homeopathically pharmaceutical preparations and has collaboration with Bo iron Laboratories of France from whom it has obtained the technical know- how for many of its homeopathic formulations. It is alleged that the defendant obtained a License to manufacture "liv-T" formulation as far back in, 1987 and that product has been available right from 1987 onwards. It is stated that the organ liver in the pharmaceutical trade is often abbreviated as LIV. It is denied that this abbreviation has been invented by the plaintiff. Trade Marks with first syllable LIV were adopted in the trade well prior to 1955. Glindia Ltd. adopted and registered at least two such trade mark LIVADEX & LIVOGEN as far back as in Dec., 1942. Likewise East India Pharmaceutical Works Ltd. of Calcutta got registered trade mark LIVOTONE on 4th May, 1943, Advance Drug Manufacturing, Co. Ltd. got registered its trade mark LIVOBIN under No. 10911 on 20th Jan., 1943 Aseptic Company got registered LIVERON in Dec. 1944. In addition to that there are at least 8 other ayurvedic and homeopathic preparations which are currently available in the market relating to the organ liver with brands with the first syllable LIV, namely LIVOMAP liver tonic, LIVION Syrup, LIVANO liver tonic, LIVOTRIT LIVOSIN ayurvedic liver tonic LIVOGUARD, LIVOMYN LIVOTONE liver tonic. It is further alleged that in terms of order dated 23.5.1996 the plaintiff was required to comply with the provisions of Order 39 Rule 3 Code of Civil Procedure within three days but despite repeated telephonic calls and sending of facsimile measure dated 30.5.1996 by the defendant's attorney M/s. Lall & Sethi to Mr. Hemant Singh, advocate for the plaintiff only an incomplete set was received by the defendant by post and that too on 31.5.1996. That set does not even has a complete index and there are only 43 pages in the same. Injunction granted in favour of the plaintiff is, therefore, liable to be set aside for want of non-compliance of Rule (3) of Order 39 Code of Civil Procedure and also on merits.