G D SEARLE Vs. MEDIGRAPHS PHARMACEUTICALS PVT LTD

JUDGEMENT

(1.) The Plaintiff who is dealing in manufacture and marketing of pharmaceutical preparations claims to be the owner of a registered trade mark by name "Lomotil". The trade mark was registered on 7th April, 1960 for medical and pharmaceuticals preparation falling in Class 5 of the Forth Schedule of the Trade and Merchandise Marks Act, 1959. Herein referred to as the said Act. It is alleged that on 9th April, 1995, the mark has been renewed for a period of 7 years and as such a mark is validly registered as a trade mark for marketing the Plaintiff's products under the name and style of Lomotil, which is a drug for treatment of diarrhoea. The suit is filed marking a grievance of infringement of the said trade mark by the Defendant using the mark which is deceptively similar to the registered trade mark of the Plaintiff. It is alleged that the Defendants are marketing drug on treatment for diarrhoea under the name and style "Slotil". The use of the said word being deceptively similar to the Plaintiff's registered trade mark "Lomotil" should be prevented by issuing appropriate prohibitory orders. In such a suit the present motion is taken out by the Plaintiffs for an order of prohibitory injunction as prayed therein. The motion is contested by filing affidavits on behalf of the Defendants.

(2.) Mr. Kadam for the Plaintiffs and Mr. Shah for Defendants have argued the motion at length. Mr. Kadam for the Plaintiffs has mainly asserted that adoption of mark as "Slotil" by the Defendants/Company is ipsofacto fraudulent and once it is established that adoption of the mark is with fraudulent intention, further inquiry into the matter need not be undertaken and on the basis of the finding that the adoption of the mark is fraudulent, he is entitled to an order of injunction against the Defendants. In support of his contentions, Mr. Kadam has asserted that in the Defendants/Company one Dr. R.N. Goel alongwith his two sons are shown to be the promoters, when the Company was registered. In support of his contentions, he has brought to my notice Article of Associations signed by the promoters, when the company was incorporated. It is pointed out by placing reliance on the memorandum of association that family of Goel always retain all effective control over the management of the Company. Various clauses pertaining to control of Goel family in the Company are pointed out. This has been stressed and is referred to by Mr. Kadam, since it is asserted that Dr. R.N. Goel was the Managing Director of Plaintiff No.2 for more than 25 years. He was in fact closely associated with numerous proceedings initiated against the persons adopting deceptively similar trade mark with that of the Plaintiff No.2. It is also asserted that the promoters and the share holders of Defendants/Comapany consist solely of Goel and his relations and after his relations with Plaintiff No.2/Company are severed in 1993, in March, 1995, the present company was floated with entire control of Goel family. This mark is actually put to use some time in March, 1997. Mr. Kadam asserts that it may be that just prior to actually launching the product with the impugned mark in the market, Mr. R.N. Goel, might have walked out of the Company, only to be substituted by other relation of Mr. Goel. The fact remains that the mark "Slotil" is conceived by Dr. Goel, who was intimately related with Plaintiff No.2/company, as his managing director and therefore, it must be held that adoption of the mark was fraudulent and on that ground alone injunction as prayed ought to be granted.

(3.) Mr. Kadam has also asserted that even on factual analysis "Lomotil" being a registered trade mark of the Plaintiffs/company, adopting mark "Slotil", which is so deceptively similar, is likely to cause a state of wonderment in the minds of the purchasers. Mr. Kadam submits that the mark of Defendants is deceptively similar to that of the Plaintiffs, verbally, phonetically and even in the manner in which is spelt. The said mark is likely to cause confusion in the minds of purchasers with imperfect and average intelligence, submits Mr. Kadam. He, therefore, contends that on these grounds, the Plaintiffs are entitled to an order of prohibitory nature as prayed for. Mr. Kadam has placed reliance on the following judgements in supports of his contentions:-