BIOCHEM PHARMACEUTICAL INDUSTRIES Vs. BIOCHEM SYNERGY LIMITED

JUDGEMENT

(1.) The plaintiffs have filed a suit for perpetual injunction alleging infringement of their registered trade mark and passing off and have also prayed for decree for rendition of accounts against the defendants. Along with this suit the present notice of motion has also been filed for an interim injunction against the defendants for restraining them from committing acts of infringement of the said mark and passing off.

(2.) Facts, relevant for the disposal of the notice of motion, may first be noticed. The first plaintiff Biochem Pharmaceutical Industries is a registered partnership firm and the second plaintiff Biochem Pharmaceuticals Pvt. Ltd., is a private limited company promoted by the first plaintiff. Both the plaintiffs are engaged in manufacture and sale of pharmaceutical and medicinal preparations and drugs. The plaintiff No.1 is engaged in the said business since 1961 and as far as the plaintiff No.2 is concerned, from 1976 as a licensee of the plaintiff No.1. The plaintiffs allege that the word 'Biochem' forms an integral part of the corporate name and trading style of the plaintiffs. The word Biochem is also the housemark of the plaintiffs. The plaintiffs allege that their trademark appears on all the products manufactured and marketed by them. The mark Biochem has been registered as a trademark of the plaintiff No.1 under the Trade and Merchandise Marks Act, 1958 ("Act" for short) bearing No.201091-B in Part B Register in respect of pharmaceutical and medical preparations falling under class 5 of the fourth schedule of the said Act. The plaintiffs allege that they have been using the mark Biochem for the past 33 years and by virtue of such long user, the said mark has become distinctive of the plaintiffs' goods. The plaintiffs' products bearing the said mark have acquired a vast reputation and goodwill and are associated by the traders and members of the public exclusively with the plaintiffs. The plaintiffs allege that they are incurring large expense of lakhs of rupees by way of advertisement and promotional expenses and the sale of their products under the trade name Biochem is over twenty crores.

(3.) The plaintiffs further allege that some time in October, 1989 they learnt that the defendant company, which was started for manufacture and sale of pharmaceutical and chemical preparations and drugs got itself registered as Biochem Synergy Limited under the Companies Act, 1956. The plaintiffs allege that the adoption of the word Biochem by the defendants was wilful, deliberate and with the sole and dishonest intention of exploiting and cashing upon the reputation and goodwill acquired by the plaintiffs in respect of their mark Biochem and further to suggest a common origin of goods. The plaintiffs allege that by using the trade mark Biochem as part of their trade name and trading style, the defendants were committing acts of infringement of the trade mark and passing off and when these acts came to their notice, the plaintiffs by their Advocate's notice dated 11th October, 1989 called upon the defendants to desist themselves from using the word Biochem as part of their trade name and trading style. This was followed by another notice by the plaintiffs to the defendants dated 9th February, 1990. The defendants by their letter dated 5th March, 1990 denied the plaintiffs' claim of infringement of their trade mark and passing off by the defendants. The defendants, inter alia, contended that they deal in basic drugs, drug intermediaries, chemicals etc., and not in pharmaceutical and medicinal preparations and since there was no identity or similarity between the name of the plaintiffs and the defendants, the defendants are entitled to carry on business under the name it is legally incorporated and therefore the plaintiffs are not entitled to claim any relief against the defendants by way of damages or otherwise.