MACLEODS PHARMACEUTICALS LTD Vs. TIDAL LABORATORIES P LTD

JUDGEMENT

(1.) Though I am considering only the ad-interim application the matter has been argued at length by both the learned counsel and both wanted the matter to be heard at the ad-interim stage and not final. In that view of the matter I am required to grant a detailed reasoned order which I accordingly pass herein.

(2.) The present application for ad-interim is moved by the plaintiff on cause of action of passing off under the provisions of the Trade and Merchandise Marks Act, 1999. The plaintiffs are seeking an injunction from this Court restraining the defendant from in any manner using the impugned trade mark named 'Rabemax' or any other mark deceptively similar to the plaintiff trade mark of 'Rabemac' so as to pass off the plaintiff product as that of the defendant. By prayer (b) Court Receiver is sought in respect of various materials, packages, cartons and the articles and dyes. It is the case of the plaintiff that the plaintiff is entitled to injunction on the basis of passing off cause of action because the plaintiffs mark 'Rabemac' is closely similar to the defendants mark 'Rabemax'. It is the case of the plaintiff that the plaintiff is using the said mark 'Rabemac' in relation to the medicinal preparations manufactured by the plaintiff being Rabemac 10, Rabemac 20, Rabemac DSR. Sometime in or about 21.3.2002 the plaintiffs claimed to have filed an application for registration of the mark 'Rabemac' under Application No. 10899361 under Clause V of the Schedule to the Trade Marks Act. The mark of the plaintiffs have been advertised and application is pending for registration. It is further the case of the plaintiff that the plaintiffs have been using the mark from March 2002 though the application which has been produced by the plaintiff at Ex.B to the plaint purportedly indicates user since 2001. In para 7 of the plaint the explanation sought to be given is that the plaintiffs have conceived the mark in 2001 and, therefore, the user is mentioned since 2001 though infact the goods are sold in the market only from October 2002. The plaintiff has set out their sales figure in Ex.D which inter-alia states that the sales figures are from October 2002 to 31/8/2005. The plaintiff has contended that the plaintiff is the exclusive user of the mark 'Rabemac' and the defendant is not entitled to use the said mark 'Rabemac' and/or any deceptively similar mark such as 'Rabemax' used by the defendants in relation to the medicinal preparations.

(3.) The learned counsel for the defendant has resisted the said application for passing off on various grounds. Firstly it has been contended that the defendant is already a proprietor of the said mark as they are the holder of registered trade mark and registration certificate has been issued on 7.1.2005 by the Trade Mark Registry and the plaint falsely proceeds on a footing that the defendant is not a holder of the registered trade mark but his application is pending for registration. It has been contended that in view of the mark registered in favour of the defendant herein the plaintiff is not entitled to maintain the action of plassing off.