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MERCK KGAA AND ONE ANOTHER ..... Plaintiffs
Through: Mr. Subhash Bhutoria, Advocate with Mr. Anuj Nair, Advocate
Through: Ex-parte
JUDGMENT
1. This suit for permanent injunction restraining infringement of trade mark and rendition of accounts, damages and delivery up, etc. was filed by the Plaintiffs against the Defendant with the following prayers:- “a. A decree for permanent injunction restraining the Defendant’s, by himself, his servants, agents etc. From manufacturing, selling, offering for sale, advertising directly or indirectly dealing in pharmaceutical and medicinal preparations under the trade mark ECEFLAM+ or any other trade mark deceptively and/or confusingly similar to the registered trademarks EXFLAM of the Plaintiff under Trade Mark Registration no.471455 and EMFLAM under registration no.4675968. b. A decree for delivery of all the infringing goods as 2014:DHC:5252 complained of herein above, all blocks, dies and all such articles employed by Defendants in applying the trade mark EXEFLAM+ to the offending goods to an authorized representative of the Plaintiff for destructions/erasure. c. An order for rendition of accounts of profit illegally earned by the Defendant and a decree for an amount so found due to in the alternative, a decree of Rs.20,05,000/- towards damages including conversion damages may be passed in favour of the Plaintiff and against the Defendant.”
2. As per the averments made in the Plaint, Plaintiff no.1 is a reputed pharmaceutical company established in the passed over 300 years and is engaged in manufacture and marketing of wide range of pharmaceutical preparations.
3. Plaintiff no.2 is its Indian subsidiary. It is averred that the Plaintiff no.1 is the registered proprietor of the trademark EMFLAM under registration no. 467598 dated 13.02.1987 in respect of the pharmaceutical and medicinal preparation.
4. Plaintiff no.1 is also the registered proprietor of trademark EXFLAM under registration no. 471455 dated 28.04.1987 in respect of the pharmaceutical preparation under the provisions of the Trade Marks Act, 1999. Plaintiff no.2 has significant sale of its pharmaceutical preparation EXFLAM and EMFLAM as stated in para 11 of the plaint.
5. According to the Plaintiffs sometime in August, 2010, the Plaintiff no.1 came to know that the Defendant has adopted the trademark ECEFLAM+ in respect of his pharmaceutical and medicinal preparations and so as to create an impression amongst the purchasing public and trade that the product of the Defendant actually originates from the Plaintiffs or there is some kind of association and/or nexus between the Plaintiffs and the Defendant company.
6. Thus, the Plaintiffs filed a suit with the prayers as stated earlier.
7. The Defendant preferred not to contest the suit despite service through publication and was thus, ordered to be proceeded ex-parte. In exparte evidence, the Plaintiffs filed an Affidavit of Mr. Vijay Kumar Verma and an Affidavit of Mr. Vishal Khat, who corroborated the averments made in the Plaint and testified that the trademark ECEFLAM+ has been used and adopted by the Defendant which is deceptively and confusingly similar to the registered trade mark EXFLAM and EMFLAM of the Plaintiffs.
8. I have heard learned counsel for the Plaintiffs.
9. It is well settled that while considering whether a mark is likely to deceive or to cause confusion the question has to be approached from the point of view of a man of average intelligence and imperfect recollection. In Amritdhara Pharmacy v. Satya Deo Gupta, AIR 1963 SC 449, while referring to Corn Products Refining Co. v. Skangrila Food Products Ltd., (1960) (1) SCR 968,in paras 7 and 8, the Supreme Court held as under:-
8. We agree that the use of the word “dhara” which literally means “current or stream” is not by itself decisive of the matter. What we have to consider here is the overall similarity of the composite words, having regard to the circumstance that the goods bearing the two names are medicinal preparations of the same description. We are aware that the admission of a mark is not to be refused, because unusually stupid people, “fools or idiots”, may be deceived. A critical comparison of the two names may disclose some points of difference, but an unwary purchaser of average intelligence and imperfect recollection would be deceived by the overall similarity of the two names having regard to the nature of the medicine he is looking for with a somewhat vague recollection that he had purchased a similar medicine on a previous occasion with a similar name…….”
10. In Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., 2001 (5) SCC 73, the Supreme Court after considering a large number of judgments of Foreign Courts and Indian Courts cautioned that strict measures to prevent confusion and lesser degree of proof is required for a Plaintiff to prove infringement in pharmaceutical cases if the marks are similar. In para 35, the Supreme Court observed as under:-
11. In the instant case, the Defendant’s mark in respect of his medicinal preparation ECEFLAM+ is phonetically and visibly similar to the two registered trademarks of the Plaintiffs, i.e., EMFLAM and EXFLAM.
12. It is, therefore, evident that the Defendant is infringing the registered trademarks of the Plaintiffs and he is also passing off his goods as those of the Plaintiffs.
13. The suit of the Plaintiffs is accordingly decreed in terms of prayers ‘a’ and ‘b’ of the prayer clause in the plaint with cost.
14. At the time of hearing, the reliefs of damages and rendition of accounts were given up by the learned counsel for the Plaintiffs.
15. The suit of the Plaintiffs is decreed in above terms.
16. Pending applications also stand disposed of.
17. Decree sheet be drawn accordingly.
JUDGE OCTOBER 10, 2014 vk