RANBAXY LABROTORIES LTD Vs. UNIVERSAL TWIN LABS

JUDGEMENT

(1.) THE plaintiff is the registered proprietor of a trade mark, "volini", in respect of medicinal and pharmaceutical preparations falling in class 5 of the Schedule to the Trade Marks rules. The registration continues to be valid and to subsist on the register. VOLINI which is a word mark, is used by the plaintiff for an ointment which is stated to provide relief from pain, swelling and inflammation. The mark has been used continuously since 1994. The plaintiff has, incidental thereto, prepared and used labels and promotional material adopting the mark. The sales figures and promotional expenses between the years 2003 and 2006 are disclosed in the plaint to be thus: <FRM>JUDGEMENT_160_BCR3_2008Html1.htm</FRM> In an affidavit filed on 19th January 2008, certain additional facts have been disclosed. The plaintiff has relied upon ORG IMS data, according to which, the product in question, ranked first among topical analgesics, antirheumatics and nonsteroidal antiinflammatory drugs. The approved budget on promotional expenses for the year 2008 is Rs. 127. 3 million. The mark has been extensively advertised on the electronic and print media. The sales figures for 2007 were estimated at Rs. 404. 7 million. The product has a market share of 28. 34%.

(2.) THE sale of the product has taken place in cartons on which the mark VOLINI appears in a bold typeface. The letters constituting the mark are printed in mauve with a white background. The name of the plaintiff is inscribed on the side of the carton and along side a logo of what is described as "a running person" is printed. The words "a Multi action Topical Gel" appear on the carton. On one side of the carton, there are four line diagrams furnishing a visual indicator of a person depicted to have pain in the lower back, joint pains and a strain of a muscular nature. Each carton has a distinctive colour scheme, get up and layout. The plaintiff claims that as a result of prior adoption, long and continuous user and publicity on a significant scale, the mark together with the associated get up and colour scheme of the carton and the tube have acquired a significant reputation in the trade and among the public.

(3.) THE defendant commenced marketing a product under the word mark "vonigel". This mark is, according to the plaintiff, similar to or identical with the mark of the plaintiff visually, phonetically and structurally. The grievance of the plaintiff is that the defendant has copied the entire get up of the carton and the tube of the plaintiff. The carton used by the defendant uses, according to the plaintiff, identically placed four line diagrams containing indications of lower back pain, joint pain, sprain, strain and muscular pain and the defendant has copied the words "a multiple Action Topical Gel" with a similar posture of a person who is running. The overall effect is, according to the plaintiff, to deceive the unwary customer with imperfect recollection into confusing the mark of the defendant for the mark of the plaintiff. A comparison of the two marks is made in paragraph 10 of the plaint and is summarised thus, therein: <FRM>JUDGEMENT_160_BCR3_2008Html2.htm</FRM> Both products are used for treating the same condition. The adoption of the mark by the defendant is submitted to be dishonest and with a view to trading on the established reputation of the plaintiff. The suit has accordingly been instituted for infringement and passing off.