UNIVERSAL TWIN LABS Vs. RANBAXY LABORATORIES LIMITED

JUDGEMENT

(1.) An Appeal is directed against the order passed by this Court dt. 30.1.2008 (Hon. Dr. J. Chandrachud) whereby notice of motion filed by the Respondent-Plaintiff was made absolute in terms of prayer Clause (a) to (d) except the bracketed portion of prayer Clause (c). By consent of the advocates appearing for the parties the Appeal was heard for final disposal. The suit is filed by the Plaintiffs seeking the prayer of injunction against the Defendants in any manner manufacturing, marketing, selling offering for sale, advertising directly or indirectly dealing in or using in respect of pharmaceutical and medicinal preparations bearing the mark VONIGEL or any other descriptively similar marks so as to infringe the Plaintiffs registered trade mark "VOLINI" bearing No. 609904. In the said suit Notice of Motion No. 4429/2007 was filed by the Plaintiff-Respondent. The same was made absolute in terms of prayer Clause (a) to (d) except bracketed portion. Thereafter the Defendant-Appellant has preferred this appeal. For the sake of convenience the Appellant is referred to as Defendant and the Respondent is referred to as Plaintiff.

(2.) The contention of the Plaintiff is that the Plaintiff is a company duly registered under the Law viz. Ranbaxy Laboratories Ltd. It is further submitted that the Plaintiff company is carrying out its business in relation to preparation of medicinal and pharmaceutical preparations as well as research work. It is further contended that the Plaintiff company is having registered proprietary trade mark "Volini" bearing registration No. 609904, which is a medicinal and pharmaceutical preparation and the same is an ointment to be used for relief from pain, swelling and inflammation. The said medicinal preparation/ointment is marketed throughout India and the said mark is in continuous use since 1994. The Plaintiff company has undergone a long process to coin and promoting the word 'Volini' so as to have a unique feature and huge expenditure is incurred by the Plaintiff company to launch the product in the market with effective promotion and the product has received tremendous reputation in the market and the public. The Plaintiff submitted the sales figure of the product as well the promotional expenses incurred by the Plaintiff for the product and the description such as colour combination, logo, words, get up of the product. It is the contention of the Plaintiff that the Plaintiff company is having exclusive right of the said product Volini, which is a popular product in the market, and deceptive use of the similar mark by any one else than the Plaintiff would amount to violation of the Plaintiffs legal rights. The further contention of the Plaintiff is that the Defendants have started manufacturing a product under the trade mark 'Voni Gel' which is similar or identical to the trade mark Volini and the mark Voni Gel of the Defendant as well the carton of the ointment Voni Gel is phoneticall, visually and structurally identical with the Plaintiffs mark barring a few un-noticeable change of letters. The further contentions of the Plaintiff are that by such act, the Defendant, has copied the trade mark of the Plaintiff and has prepared carton of the ointment in such a way that the product Voni Gel looks identical and similar to the product Volini and because of the overall effect of the said product Voni Gel an unwary customer is bound to be confused. The Plaintiff has also given in detail the features such as diagram, colour scheme, words of the product Volini of the Plaintiff and product Voni Gel of the Defendant. The Plaintiff submits that by such dishonest adoption, the Defendants are causing not only confusion in the mind of public, but also causing damage to the Plaintiffs business which is fairly well in the said medicinal and pharmaceutical preparation for the relief of pain and also damage to the goodwill and reputation earned by the Plaintiff company.

(3.) The Defendant resisted the claim of the Plaintiff and submitted that the Defendants have honestly conceived and adopted the trademark 'Voni Gel' some time in late 2005. It was further submitted that on or about 10.3.2006, an application for registration of trade mark Voni Gel has been made by the Defendants to the Registrar of Trade Marks under Clause 5 and the same is pending for registration. It was further submitted by the Defendant that a firm by name and style M/s Universal Twin Labs was carrying out the business from 1992 to 2006 and because of the disputes and differences between the partners of the firm said firm M/s Universal Twin Labs was dissolved. The persons namely Satish Mehta and Jayesh Mehta who were and are the proprietors of the firm Universal Twin Labs were bearing trade mark Enac Gel Excel and the said product was being used having four diagrams appearing on the carton of the product for nearly 8 years. It was also submitted that copyrights of the product Enac Gel Excel were also registered in the name of and by the use of M/s Universal Twin Labs. The Defendants further submit that because of the disputes between the partners there is proceeding pending before this High Court and as the proceeding is pending, the Defendants started using the trade mark Voni Gel Excel having similar carton of four diagrams, colour scheme, design and get up which is appearing on Enac Gel Excel. The Defendants have taken an objection on the ground that though the Defendant is using the trade mark Voni Gel some time in the year 2005, the Plaintiffs have filed suit in the year 2006 and as such the product Voni Gel openly and extensively available in the market in the year 2005 and the Defendants have also spent considerable amount for advertisement and promotional expenses. The Plaintiffs were also aware that the Defendant is using the trade mark VONI GEL EXCEL since the year 2005. The Plaintiffs after over period of 16 months filed suit which makes the Plaintiff guilty of acquiescence to the Defendant's use of trade mark VONIGEL. It was also submitted by the Defendant that there is no similarity on the label/cartons of their product VONIGEL and the product of Plaintiff VOLINI. These two products are altogether different and distinct and as such the Plaintiff cannot claim any exclusive right. The Defendant further submitted that the colour combination/diagram/symbol picture on the carton of the product are also different and distinct. The Defendant submitted that it was the honest and bona fide creation of the product VONIGEL EXCEL by the Defendant which is unique and distinctly separate from the product VOLONI. The Defendant further submitted that there are certain other products in the market which have expression "for quick relief from pain, swelling and inflammation "and expression "multi action topical gel" by various companies and it is available in the market, but the Plaintiff has not taken any objection to the other products.