PROCTER AND GAMBLE INDIA LIMITED Vs. ENDOLABS LIMITED

JUDGEMENT

(1.) THIS action is at the instance of Procter and Gamble (India) Ltd. and Richardson-Vicks Inc. (1st and 2nd plaintiffs respectively) against Endolabs Limited (1st defendants) and Shree Mangesh Medical Stores (2nd defendants) praying for perpetual injunction against the defendants from manufacturing, selling, advertising or offering to sell any products under the Cartons and Strips, samples whereof are annexed at Exhibit I to the plaint and/or bearing the mark ACTION or under any other mark cartons or strips or packaging material resembling the plaintiffs, cartons and strips of ACTION 500, samples whereof are annexed at Exhibits E and F to the plaint or the mark ACTION 500 and from using in relation to any products the cartons and strips, samples of which are at Exhibit I and/or the mark ACTION or any other cartons/strips or packing materials or mark resembling the plaintiffs ACTION 500 cartons and strips and the mark ACTION, in any way so as to pass off or enable others to pass off the defendants goods as those of plaintiffs goods and also for restraining the defendants from in any manner infringing plaintiffs copyright in the artistic work reproduced at Exhibit E annexed to the plaint. The plaintiffs have also claimed damages in the sum of Rs. 10 lacs and for other ancillary reliefs.

(2.) THE plaintiffs have averred that 1st plaintiff is a renowned Indian listed company and is a subsidiary of 2nd plaintiff. The 2nd plaintiff in turn is a wholly owned subsidiary of The Procter and Gamble Company being one of the most reputed and largest U. S. multinational. The 1st defendant is a company registered under the Companies Act and 2nd defendant is a firm of chemists and druggists selling the products of 1st defendant. It is stated that 1st plaintiff has been established since 1966 and is engaged in several businesses including consumer products, cosmetics, detergents and pharmaceutical products. The 2nd plaintiff is the proprietor of the internationally well known and famous mark VICKS. Vicks is a household mark in respect of products providing relief from cold and various Vicks products sub-branded amongst others as Vaporub, ACTION-500, Vicks Cough drops and Vicks Senex are sold in most countries of the world internationally by Procter and Gamble group of companies, their affiliates and licensees. It is the case of the plaintiffs that sales turnover figures of the Vicks products sold internationally and its promotional expenditure figures exceeds several million dollars per year. The 2nd plaintiffs owns several Indian trade mark registrations for the mark Vicks include registration bearing No. 328355 in Class 5. Vicks products have been manufactured and marketed in India extensively by the 1st plaintiff under licence from the 2nd plaintiff at least since 1966. For the period from 1988 till 1998, the plaintiffs have given details of sales turnover of the Vicks products sold by the 1st plaintiff which runs in crores of rupees every year. Vicks pharmaceutical products sub-branded as ACTION 500 has been continuously manufactured and marketed in Indian extensively by the 1st plaintiff since 1975. For the period from 1988 till 1998 the sales turnover by the 1st plaintiff of ACTION 500 has been given in Exhibit B annexed with the plaint which from Rs. 8 crores in the year 1988-89 has increased to Rs. 53 crores in the year 1997-98. The 1st plaintiffs incur expenditure in advertising and marketing for its various Vicks products and details of expenditure from the year 1993 till 1998 have been given in Exhibit C to the plaint which also runs in millions of rupees. The promotional and advertisement expenditure in respect of ACTION 500 incurred by the 1st plaintiff has been set out in Exhibit D to the plaint from the year 1993 till 1998 which is also in millions of rupees. The case set up by the plaintiffs is that in or about October 1998, the 1st plaintiffs ACTION 500 pharmaceutical product also bearing housemark VICKS was re-launched in the market under cartons and strips having a distinctive get up and colour-scheme. The sample of distinctive carton is annexed by the plaintiffs as Exhibit E to the plaint and the sample of strips containing tablets is annexed at Exhibit F to the plaint.

(3.) 2nd plaintiff claims to be the copyright owner of the artistic work represented on the DISTINCTIVE ACTION 500 CARTONS. The plaintiffs have averred that the 1st plaintiff incurred in marketing expenditure of approximately Rs. 20 lacs in preparation of re-lanching Action 500 product under Distinctive Action 500 cartons/strips prior to October, 1998. The sales turnover of Action 500 sold under the new Distinctive Action 500 cartons/strips since its re-launch in October 1998 to January, 1999 is about Rs. 24 crores and the plaintiffs have spent about Rs. 265 lacs on advertisement, promotion and marketing of the said product. It is stated that the 1st plaintiff has been selling Action 500 by Distinctive Action 500 strips and Distinctive Action cartons extensively on all India basis and the said brand Action 500/distinctive Action cartons/distinctive Action 500 strips containing the Distinctive colour scheme, get up and lay out are associated by the traders and the members of the public and consumers exclusively with the plaintiffs and the plaintiff alone are entitled to use the mark Action 500/distinctive Action 500 cartons/distinctive Action 500 strips in respect of pharmaceutical products. It is the case of the plaintiffs that recently they came across counterfeit sub-branded as Action containing the same basic ingredients and seeking to have the same therapeutic effect as those of the plaintiffs ACTION 500 products and manufactured/sold/marketed in cartons and strips which are a colourable imitation of and in appearance deceptively similar and/or a reproduction and/or a substantial reproduction containing the features of Distinctive Action 500 cartons and Distiction Action 500 strips of the plaintiffs. The samples of the products of the defendants and cartons and strips are annexed at Exhibit I to the plaint. It is alleged by the plaintiffs that the defendants are misrepresenting their goods as those of the plaintiffs and causing damage to the goodwill and reputation of the plaintiffs businesses and is also diluting the distinctiveness of the plaintiffs mark, get up and colour scheme comprised in the Distinctive Cartons/strips and the mark Action 500. The plaintiffs have stated that the defendants have copied their products, cartons and strips from the plaintiffs copyright work and thus they have infringed and are infringing the plaintiffs copyright work as shown in Exhibit E. It is the plaintiffs case that they have suffered irreparable harm and injury and money compensation would not sufficient to redress the continuing harm resulting from the tort of passing off the defendants goods as the goods of the plaintiffs and from infringing the plaintiffs copyright. The plaintiffs have quantified the loss and damage occurred to them by the acts of defendants in the sum of Rs. 10 lacs and have claimed damages to that effect. In the background of these facts averred in the plaint, the plaintiffs have taken out Notice of Motion praying for interim reliefs during the pendency of the suit. The prayers made in the Notice of Motion read thus:-