UNIMED TECHNOLOGIES LTD. Vs. CADILA HEALTHCARE LTD.

JUDGEMENT

(1.) The suit was filed as a rolled-up action to restrain alleged trademark infringement and passing off. Consequential and ancillary remedies for payment of a sum of Rs.1,00,000.00 as liquidated damages, delivery of allegedly infringing materials for destruction, a preliminary decree for rendition of accounts followed by a final decree of profits and costs were prayed for.

(2.) The first Plaintiff is a manufacturer of bulk pharmaceutical drugs. The second Plaintiff is engaged in manufacturing and marketing active pharmaceutical ingredients. According to the Plaintiffs, in course of business, a company called Milmet Laboratories Private Limited adopted the mark HYVISC in the year 1997 in respect of medicinal preparations used in the treatment of dry eyes and to accelerate the healing process after cataract operations. The aforesaid company applied for registration of the above mentioned mark under the Trade Marks Act,1999 (the Trade Marks Act). While the application for registration was pending, Milmet Laboratories Private Limited merged with the second Plaintiff herein. Consequently, the second Plaintiff became the proprietor of the trademark HYVISC. Subsequently, the second Plaintiff assigned the mark to one Sholapur Organics Pvt. Ltd. under a deed of assignment dtd. 1/4/2002. Sholapur Organics Pvt. Ltd. assigned the mark HYVISC to the first Plaintiff, Unimed Technologies Ltd., under a deed of assignment dtd. 1/7/2007. In this manner, the first Plaintiff became the exclusive proprietor of the mark HYVISC. The mark HYVISC is registered under No.751852 in class 5 in respect of "medicinal, pharmaceutical and veterinary preparations and substances included in class 5". While the suit was pending, the first Plaintiff assigned various marks, including the mark, Hyvisc, to the third Plaintiff. Therefore, the third Plaintiff applied for and was impleaded in the suit by order dtd. 17/8/2021 in Application No.2624 of 2021.

(3.) The Plaintiffs state that substantial and significant sales of ophthalmic preparations under the mark HYVISC were effected between the financial years 2008 - 2009 and 2012 - 2013. The Plaintiffs assert that on account of extensive publicity, long and continuous use, the trademark HYVISC has come to be identified exclusively with the Plaintiffs. The Plaintiffs state that they came across the Defendants' medicinal preparations bearing the mark ZYVISC, which is alleged to be phonetically, structurally and ocularly almost identical to the Plaintiffs' registered trademark HYVISC. The Plaintiffs further state that their products and those of the Defendants are prescribed for treatment of dry eyes and to accelerate the healing process after cataract operations. Since both the marks are very similar and are used in respect of similar or identical products, it is stated that deception and confusion are probable and not merely likely. The Plaintiffs also state that the adoption of the mark ZYVISC by the Defendants is deliberate, mala fide and dishonest.