PAM PHARMACEUTICALS Vs. RICHARDSON VICKS INC

JUDGEMENT

(1.) Being aggrieved by an order dated 6-4-1999 passed below the Notice of Motion in Civil Suit No. 854 of 1999, the appellant-original defendant No. 1 has approached this Court by way of this appeal from order. For the sake of convenience, the parties to the litigation have been referred to as they have been arrayed before the trAppeal dismissed.ial Court. The appellant, defendant No. 1, has been aggrieved by the impugned order because, by virtue of the impugned order, during pendency of the suit, defendant No. 1 has been restrained from using mark 'VICAS' or any other mark, which is likely to infringe trade mark "VICKS" which is being used by the plaintiffs. Moreover, defendant No. 1 has also been restrained from manufacturing, selling or offering for sale, medicinal preparation and allied products using trade mark 'VICAS' or any other trade mark which might be deceptively similar to trade mark 'V1CKS' of the plaintiffs.

(2.) The tacts giving rise to the litigation, as stated by the plaintiffs in their plaint, in a nutshell, are as under :- Plaintiff No. 1 is a corporation incorporated under the laws of the United States of America and the said plaintiff and its subsidiary companies are engaged in the business of manufacturing and marketing various medicinal products which are manufactured and sold under the trade mark 'VICKS' and plaintiff No. 1 is a proprietor of the said trade mark in India. So far as plaintiff No. 2 is concerned, it is a subsidiary company of plaintiff No. 1, which has been incorporated under the provisions of the Companies Act, 1956 in India and it is also engaged in the business of manufacturing and marketing of medicinal products under the trade mark 'VICKS'. It is their case that plaintiff No. 2 is the originator and owner of copyright of artistic work and get up contained in label having dark and light green colour wherein the mark 'VICKS' has been written in a novel manner and cough drops manufactured by the plaintiffs are being sold under the name of ' VICKS'. Plaintiff No. 1 is using the mark 'VICKS' for last about 100 years in respect of the medicinal preparations prepared by it and plaintiff No. 2, which is the subsidiary company of plaintiff No. 1, is manufacturing the medicinal preparations including cough drops under the trade mark 'VICKS' in India since 1971. Trade mark 'VICKS' has been registered under the provisions of the Trade and Merchandise Mark Act, 1958 (hereinafter referred to as the 'Trade Mark Act'). The said mark has been registered at Regn. No. 328355 in Class V in respect of pharmaceutical, sanitary substances, infant foods, etc. It is the case of the plaintiffs that by use of the colour scheme adopted by them for the purpose of selling cough drops manufactured by them under the trade mark 'VICKS', they have tried to distinguish their product from the products which are being manufactured by other manufacturers. the label used by the plaintiffs for the purpose of sale of cough drops under trade mark 'VICKS' has been annexed to the plaint as Exh. 2/6. It has been submitted by the plaintiffs that their product 'VICKS' has got a very good reputation in the Indian market because of the superior quality of medicinal ingredients used by them in the cough drops manufactured by them. It has been also submitted by them that for the purpose of popularising their product in the market, they had been spending enormous amount on advertisements. It is their case that the product is being advertised throughout India including Gujarat, through the media like Doordarshan, Zee TV, Zee Cinema, Star Plus, Star Movies and other local media which are being used for advertising different products. The plaintiffs have also submitted that they had spent approximately Rs. 23 crores during 1993-98 for advertising their products 'VICKS' and as a result thereof, sale of their 'VICKS' products had increased from Rs. 45 crores per annum to Rs. 66 crores per annum from 1993-94 to 1997-98. Thus, they have mainly submitted that they are the owners of trade mark 'VICKS' which is very popular in the entire country on account of its high quality of medicinal ingredients and advertisement campaigns carried out by the plaintiffs or their agents from lime to time and the word 'VICKS' has been treated as one of the synonyms for cough drops.

(3.) The plaintiffs had approached the City Civil Court, Ahmedabad, by filing Regular Civil Suit No. 854 of 1999 because, somewhere in January 1999, as they had learnt that defendant No. 2 was offering for sale cough drops under trade mark 'VICAS' written in a manner similar to the manner in which their trade mark 'VICKS' was written. It has been submitted hv them that defendant No. 1 is manufacturing cough drops under mark 'VICAS' and the said mark is deceptively similar to the mark of the plaintiffs' trade mark 'VICKS'. It has been alleged in the plaint that because of the similarity in the mark and get up used by defendant No. 1, the defendants are trying to see that the product 'VICAS' is passed off to unwary customers as 'VICKS' and thereby the defendants are selling goods inferior in quality to the customers with a dishonest intention which would amount to infringement of the trade mark of the plaintiffs. Thus, it has been alleged by the plaintiffs that the defendants are trying to pass off the inferior quality of goods for the superior type of goods manufactured by the plaintiffs under the trade mark 'VICKS' and they are also violating the statutory rights of the plaintiffs under the Trade Mark Act as well as the Copyright Act, 1957 . In the circumstances stated hereinabove, the suit. has been filed by the plaintiffs with a prayer for a declaration that the defendants are not entitled to use the trade mark 'VICAS' and/or any other mark similar to the plaintiffs' trade mark 'VICKS' and any other artistic work similar to the artistic work of the plaintiffs and the defendants and their agents, servants etc. be permanently restrained from using the mark 'VICAS' or any other similar mark to the plaintiffs' trade mark 'VICKS'. It is the plaintiffs' case that defendant No. 1 is manufacturing cough drops under the mark 'VICAS' and defendant No. 2 is selling the same in the city of Ahmedabad. An averment has been made in the plaint to the effect that the product in question which is being manufactured by defendant No. 1 at Wadhwan is being sold in Ahmedabad by defendant No. 2. So as to substantiate the submissions and averments made in the plaint, the plaintiffs had prayed for appointment of a Court Commissioner so that the Court Commissioner can ascertain whether the averments and allegations made in the plaint by the plaintiffs were correct. Ultimately, the Court Commissioner appointed by the trial Court had visited the shop of defendant No. 2 on 20-2-1999 around 12-30 noon and had found that defendant No. 2 was selling cough drops named 'VICAS' manufactured by defendant No. 1. He reported to the trial Court that he had found 11 jars, each jar containing 300 sachets of cough drops under mark 'VICAS' at the shop of defendant No. 2 In reply to the Notice of Motion filed by the plaintiffs, defendant No. has filed its reply denying all the allegations and stating that defendant No. is manufacturing cough drops under mark 'VICAS' since October 1998 and it had sold cough drops worth more than Rs. 17 lacs and it is having a very effective sales network of pharmaceutical preparation named 'VICAS' under distinctive label, colour scheme and get up and it has been also submitted in the reply that the suit label 'VICAS' is not the property of plaintiff No. 1 and plaintiff No. 2 is not the proprietor of the label or trade mark 'VICKS' and plaintiff No. 2 is also not using the trade mark 'VICKS'. It has been submitted that no action for infringement would lie against defendant No. 1. It Has been specifically submitted that the registration of the plaintiffs' trade mark under No. 328355 dated 30-8-1977 was in Class V in the name of Richardson Marrel, Inc. (a corporation organised and existing under the law of the State of Belaware, U.S.A.) and the plaintiffs had suppressed certain material facts with regard to the ownership of the said label and the licence agreement and validity of the agreement which was executed between plaintiff No. 1 and plaintiff No. 2. Moreover, it has been submitted in the reply that plaintiff No. 1 is not using the label 'VICKS' whereas plaintiff No. 2 is not entitled to use the label 'VICKS' and no son of relationship between plaintiff No. 1 and plaintiff No. 2 was shown by the plaintiffs as required under the law. It is also the case of defendant No. 1 that defendant No. 1 is having necessary licence to manufacture medicinal product in question under the mark 'VICAS' in a packing of a particular colour scheme and get up since 1-10- 1998 and it is selling the cough drops since 1-10-1998 and by the time the suit was filed, the sale had exceeded Rs. 17 lacs. Moreover, defendant No. 1 is not selling the product in question in the city of Ahmedabad and it never sold the product to defendant No. 2, and therefore, the City Civil Court, Ahmedabad had no jurisdiction to entertain the suit. Moreover, it is also contended that the application for injunction filed by the plaintiffs was not legal and was contrary to the provisions of the Trade Mark Act and Copyright Act, and therefore, the said application deserved to be dismissed. Moreover, even on the ground of misjoinder of causes, the suit should have been dismissed. Several other contentions have been raised in the written statement but mainly the conten No. 1 is with regard to the jurisdiction of the City Civil Court, Ahmedabad. It has been mainly submitted that the City Civil Court had no jurisdiction as no cause of action had arisen in the city of Ahmedabad before the suit was filed. For the first time and that too after filing the suit, the cough drops under trade name 'VICAS' were sold on 20-2-1999 by defendant No. 2 whereas the suit was filed on 18-2-1999. Thus, prior to 20-2-1999, the product in question was not sold by any of the defendants in the city of Ahmedabad, and therefore, the City Civil Court, Ahmedabad, had no jurisdiction to try the suit filed by the plaintiffs. It is also the case of defendant No. 1 that material document to show how the copyright was obtained by the plaintiffs was not shown to the Court, and therefore, action under the provisions of the Copyright Act was not maintainable. According to defendant No. 1, both the marks are not similar and because of the distinctive features they have, it is not possible to pass off product of defendant No. 1 as the product of the plaintiffs. The averments made by the plaintiffs with regard to superior quality of their product are also not admitted by defendant No. 1. It is also the case of defendant No. 1 that the colour scheme and get up of the sachet of the cough drops in which the cough drops of the plaintiffs are being sold have become common to the trade and number of persons manufacturing cough drops are using either same or similar get up and colour scheme on the sachet used by them for the purpose of selling their cough drops. Moreover, the plaintiffs had made several changes in the get up of the sachet. In the circumstances, the plaintiffs have no exclusive right to use the colour scheme and get up for their trade and business. Defendant No. 1 has also raised an objection with regard to capacity of the signatories to the plaint and the injunction application. The contention of defendant No. 1 is that the signatories to the plaint and the injunction application were not authorised by the plaintiffs to file the suit or the injunction application, and therefore, also the suit is not maintainable,