CIPLA LIMITED Vs. CIPLA INDUSTRIES PRIVATE LIMITED

JUDGEMENT

(1.) The Suit is an action in trade mark infringement combined with the cause of action in passing off. I have heard Dr. Tulzapurkar for the Plaintiff and Mr. Kamat for the Defendants briefly. The dispute is about the mark 'CIPLA' registered to the Plaintiff in Class 05 of the Fourth Schedule to the Trade Mark Rules, 2002.

(2.) In this order, I do not propose to decide this Notice of Motion. The reason is that a decision of a Division Bench of this Court has been cited before me on the central issue; although that decision is undoubtedly binding on me, I have, for the reasons that follow, expressed my reservations about its correctness. For these reasons, I have directed that the questions I have then formulated be placed before the Hon'ble the Chief Justice for his decision as to whether these should be referred to a larger Bench or not. Both sides have also addressed me on the correct procedure to be followed in such matters. I will refer to these decisions and the relevant Rules on the Original Side of this Court in that regard as well. There is no disagreement on the procedural aspect.

(3.) To put the dispute between the parties in a nutshell: The Plaintiff, a well -known manufacturer of pharmaceutical products, has been using the mark CIPLA for a long time. It is also part of its corporate name. CIPLA is in fact an abbreviation of its earlier corporate name. There is no doubt, however, that within Class 05, the Plaintiff has only ever used the mark for pharmaceutical and medicinal preparations. This is not the Defendants' use of the mark. The Defendants have the mark as part of their corporate name, and they use it in a slightly different form in respect of household articles, such as soap dishes, photo frames, ladders and so on. The Defendants claim to have a registration of a very similar mark 'CIPLA PLAST' in their favour in Class 21 of the Fourth Schedule to the Trade Mark Rules, 2002.