Full Text
HIGH COURT OF DELHI
Date of Decision: 27th August, 2024
MANKIND PHARMA LIMITED .....Plaintiff
Through: Mr. Hemant Daswani, Ms. Saumya Bajpai, Ms. Pranjal, Mr. Kunal Prakash, Advocates
Through: Mr. Bidyut Kumar Basu, Advocate
JUDGMENT
1. The present suit has been filed seeking permanent injunction restraining the defendant from manufacturing and advertising, selling, rendition of profits earned by the defendant, by selling goods under the impugned trademark ‘MANFORCE’.
2. The case canvassed by the plaintiff in the plaint, is as follows:
I. The plaintiff is engaged in delivering affordable and accessible quality medication, that satisfies urgent medical needs of the common people.
II. The plaintiff coined and adopted the mark ‘MANFORCE’ in respect of medicinal and pharmaceutical preparations, particularly, used for addressing erectile dysfunction. Subsequently, MANFORCE was very well accepted in market by the public due to its quality and affordable pricing.
III. Thus, the plaintiff, inspired by the acceptance of its mark, extended their portfolio of ‘MANFORCE’ and launched a wide range of condoms under the mark.
IV. It is the case of the plaintiff that the unique artwork/get up/label/cartons, qualifies as artistic work under Section 2(c) of the Copyrights Act, 1957.
V. It is submitted that the director of the plaintiff-company designed the said artwork as ‘Work Made for Hire’ and assigned all rights to the plaintiff with respect to the said artistic work. It is further submitted that the plaintiff has acquired tremendous goodwill and reputation in the market.
VI. The plaintiff claims to have spent substantial amount of money in extensive advertising of its product in widely circulated newspapers and famous magazines, billboards, etc. Thus, owing to the huge turnover, extensive sales throughout the country and widespread advertisement, the mark of the plaintiff would fall within the ambit of Section 2(1)(zg) of the Trade Mark Act, 1999.
VII. It is submitted that during the course of business, on or around 12th
February, 2024, the plaintiff came across a massage oil of the defendant sold under the plaintiff’s mark ‘MANFORCE’, which was being sold in a deceptively similar artwork/get up.
VIII. It is further submitted that the goods of the defendant are intended to enhance sexual performance, thus, they are targeted to the same set of customers, as that of the plaintiff.
IX. It is the case of the plaintiff that the goods of the defendants are sold across the same counters to the same class of customers, which can cause confusion between the goods of the plaintiff and defendant. Further, the adoption of the mark by the defendant was without the consent of the plaintiff.
X. Thus, the act of defendant amounts to infringement of plaintiff’s copyright held in the artwork under Section 51 of the Copyrights Act, 1957.
3. When the matter was listed for hearing on 1st March, 2024, this Court passed an ex-parte ad interim injunction against the defendant, wherein, the defendant and all those acting on its behalf, were restrained from manufacturing, selling, marketing, dealing with, advertising and or rendering any services with respect to medicinal, pharmaceutical, and ayurvedic preparations, under the trademark ‘MANFORCE’ and/or any other mark, that is identical or deceptively similar to plaintiff’s registered trademark ‘MANFORCE’, amounting to infringement thereof.
4. Subsequently, when the matter was listed for hearing on 16th July, 2024, the statement made on behalf of learned counsel appearing for the defendant was recorded, in the following manner: “xxx xxx xxx
4. At this stage, Mr. Bidyut Kumar Basu, learned counsel appearing for the defendant, puts in appearance through video conferencing, and submits that he has recently been engaged.
5. He further submits that the defendant is only a roadside vendor, and that he is neither involved in manufacturing, or sale of the medicinal and pharmaceutical preparation of the products bearing the mark „MANFORCE‟, and thus no infringement of the plaintiff‟s mark has been carried out by him.
6. Learned counsel appearing for the defendant submits that, he may be granted liberty to file an affidavit to the aforesaid effect to bring forth the fact that the defendant neither uses, or manufactures the infringing mark of the plaintiff, nor has any intention to do the same.
7. Let the needful be done by the defendant within a period of four weeks. xxx xxx xxx”
5. Pursuant to the order dated 16th July, 2024, an affidavit dated 23rd August, 2024 has been served upon the plaintiff, by way of an Email.
6. Learned counsel appearing for the defendant submits that the affidavit dated 23rd August, 2024 could not be filed since the counsel for the defendant is stationed in Kolkata, and in view of technical glitch, faced therein.
7. At this stage, learned counsel appearing for the plaintiff has handed over a copy of the affidavit on behalf of the defendant, which is taken on record.
8. As per the affidavit, the defendant has stated as follows: “xxx
1. I am the proprietor of a roadside ayurvedic medicine shop/stall having a shop room as a hawker, named M/S. MAA AYURVED BHAVAN, which is located at Narendrapur Railway Station Platform, District – South 24 Parganas, West Bengal and I am a member of Railways Hawkers‟ Union named All Bengal Trinamool Railways Hawkers‟ Union. xxx xxx xxx
2. My aforesaid roadside ayurvedic medicine shop is run by me exclusively at Narendrapur Railway Station and I deal in ayurvedic medicine of general uses and not dangerous for human consumption and/or usage. xxx xxx xxx
5. I state that I am in no way connected with the alleged process of manufacturing marketing and/or selling medicinal and/or ayurvedic preparations under the impugned Trade Mark of 'MANFORCE in an artwork/get up under the Trade Mark 'MANFORCE' amounting to infringement of the Plaintiff's copyright thereon. As I am in no way connected with such alleged infringement of trade mark of 'MANFORCE' in an artwork/get up, which is identical and/or substantially similar to the Plaintiff's artwork/get up, under the trademark „MANFORCE‟ amounting to infringement of Plaintiff's copyrights thereon, the Plaintiff is not entitled to a decree of damages or any other reliefs, as prayed for.
6. I say that from the running page nos. 114 & 115 of the Plaint, i.e. the annexed photograph of the packaging of the "impugned goods", it is abundantly clear that the alleged violator of trademark as well as copyrights is one 'MAA AYURVED BHAVAN North 24 pgs.' and I am in no way connected with the said „MAA AYURVED BHAVAN North 24 pgs.‟ Moreover, my roadside ayurvedic medicine stall is located at Narendrapur Railway Station Platform, South 24 Parganas, which is far away from the location of the said 'MAA AYURVED BHAVAN North 24 pgs.' and in a different District of the State of West Bengal. Hence, I cannot be saddled with the infringement alleged in the Plaint of the Said Suit.
7. I state and submit that, I am in no way connection and/or associated with 'MAA AYURVED BHAVAN North 24 pgs.' and the said firm is located in a different District of the State of West Bengal and my roadside ayurvedic medicine stall, i.e. MAA AYURVED BHAVAN is located in a different district, i.e. South 24 Parganas.
8. I further state and submit that, through my roadside ayurvedic medicine shop I do deal in retailing and whole selling of ayurvedic medicine of general uses and I am in no way involved in the process of manufacturing of any ayurvedic medicine.
9. I further state and submit that, I am in no way connection and/or involved in the process of manufacturing, marketing and/or selling any medicinal and/or ayurvedic preparations under the impugned trademark of "MANFORCE" or any product having the label/mark of "MANFORCE OIL", imitating the trademark of the Plaintiff, i.e. "MANFORCE" and I emphatically submit that, I never ever dealt with the "impugned goods", as mentioned in the Plaint through my aforementioned roadside ayurvedic shop and/or the imitated product namely "MANFORCE OIL, prepared and/or manufactured by 'MAA AYURVED BHAVAN North 24 pgs.'.
10. As I am not involved in the process of alleged manufacturing, marketing and/or selling of any product imitating the trademark of the Plaintiff, in view of the same no liability can be casted upon me for the payment of damage, as claimed by the Plaintiff through the instant suit. xxx xxx xxx”
9. From the perusal of the aforesaid affidavit, as well as the statement made by the learned counsel appearing for the defendant on 16th July, 2024, it is manifest that it is the clear stand of the defendant that he is in no way connected with the defendant, i.e., MAA Ayurved Bhavan, North 24, Parganas.
10. It is further noted that the defendant has categorically stated that the defendant is running a roadside Ayurvedic Medicine Shop/Stall, which is located at Narendrapur Railway Station, District – South 24, Parganas. Further, it is clearly stated that the defendant is in no way connected with the infringement of the trademark ‘MANFORCE’ in any artwork/get-up, which is identical and/or substantially similar to the plaintiff’s artwork/get-up under the trademark ‘MANFORCE’.
11. At this stage, learned counsel appearing for the plaintiff, on instructions, submits that in view of the undertaking and statement given by the defendant, the plaintiff shall give up the prayer for cost/damages.
12. Considering the aforesaid, the suit is decreed in favour of the plaintiff and against the defendant in terms of prayer 31 (a) and (b) of the plaint.
13. Decree sheet be drawn up.
14. Accordingly, the present suit, along with the pending application, stand disposed of. MINI PUSHKARNA, J AUGUST 27, 2024