DOCTOR MOREPEN LIMITED Vs. YASH PHARMA LABORATORIES LIMITED

JUDGEMENT

(1.) Plaintiff filed the present suit seeking permanent injunction against the defendant restraining the defendant from infringement of trademark of the plaintiff and from passing of its goods as that of the plaintiff and also for rendition of accounts and delivery of infringing material.

(2.) The defendant was manufacturing and marketing 'LEMOLATE' medicinal tablets. 'LEMOLATE' trademark was registered in the name of the defendant sometime in 1973 and the Registration was renewed from time to time. In 2002 plaintiff purchased 'LEMOLATE' brand from the defendant along with trademark, technical knowhow, manufacturing process etc. and entered into a Comprehensive Agreement/Memorandum of Understanding dated 4th April, 2002. As per this agreement, the defendant was paid a sum of Rs. nearly 11 crores as consideration for (i) brand acquisition (ii) copyright acquisition (iii) trademark acquisition (iv) technology transfer and (v) Inventory transfer. Thus, all rights vesting in the defendant in respect of 'LEMOLATE' tablet were transferred to plaintiff for a consideration and after the transfer and execution of the agreement, defendant under the arrangement was to continue to manufacture the product on behalf of the plaintiff on a principal to principal basis. Plaintiff was also free to purchase raw material, packaging material for the product from any person and to get the product manufactured in any of the sites in India. The defendant was also to make declaration at the time of execution of agreement about the pipeline stocks available with the retailers, dealers, Cand agents and manufacturers of product and the plaintiff was to purchase all this on principal to principal basis. Defendant had given an undertaking that after the deed of assignment and brand acquisition agreement and other related agreements having been signed, defendant shall have no claim, right, title or interest left in the brand or in the technology. Defendant also gave undertaking that it shall not use or create any trademark/brand name/logo/trade name for their product which will be deceptively similar to the brand 'LEMOLATE'. Defendant also undertook that once the agreement for transfer of brand and technical knowhow is executed plaintiff shall become the sole owner of trademark 'LEMOLATE' and shall have exclusive right to manufacture and sell the product.

(3.) Separate deeds of assignments were executed under this MoU by the parties and in the deed of assignment in respect of the trademark, it was specifically agreed by the defendant that it will not infringe the trademark nor shall create any trademark which was similar to or resembling the trademark 'LEMOLATE' as to be likely to deceive or cause confusion, in the course of trade, in relation to the goods in respect of which the said trademark is associated.