Macleods Pharmaceuticals Limited v. Aareen Healthcare Private Limited

1. This order disposes of the present application, preferred by the plaintiff Macleods Pharmaceuticals Limited under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908 (CPC). An ad interim order already stands passed in favour of the plaintiff on 13th April 2022. Ms. Sahadeva prays for confirmation of the ad interim order while Mr. Umesh Mishra, appearing for defendants Aareen Healthcare Private Limited prays for its vacation thereof.

2. I have heard both learned Counsel at some length and perused the material on record.

3. The plaintiff is, admittedly, the registered proprietor of the trademark “SETFRAC”, whereunder the plaintiff manufactures and sales Cissus Quadrangularis Capsules, which are intended for healing bones and providing respite from pain and inflammation resulting from weakening of bones. The plaintiff manufactures, clears and sales the said drug both as “SETFRAC” as well as “SETFRAC PLUS”.

4. The plaintiff claims to have come to learn, in or around November 2021, that the defendant was also manufacturing and selling combination capsules containing Cissus Quadrangularis and Moninga Oleifera Tablets, as a drug providing “comprehensive support for joints” under the trademark “SAFEFRAC”. Sales of the said drug were also being made by the defendant across its website www.aareenhealthcare.com, both as “SAFEFRAC” and “SAFEFRAC PLUS”. The main ingredient in the plaintiff’s and the defendants’ formulations being Cissus Quadrangularis, which apparently is a drug which treats bone and joint inflammations and other associated ailments, the plaintiff has filed the present suit, after serving, on the defendants, an unsuccessful cease and desist notice dated 7th December 2021, seeking an injunction against the defendants from using the “SAFEFRAC” and “SAFEFRAC PLUS” marks for manufacturing or selling their products.

5. Ms. Archana Sahadeva learned Counsel appearing for the plaintiff submits that the classical triple identity test[1], which governs considerations of claims of infringement of trademark stands fully satisfied in the present case, as (i) the trade names “SAFEFRAC and SETFRAC” are phonetically nearly identical, (ii) the marks are used for identical pharmaceutical products which treat the same ailments and (iii) the products bearing the marks are available through the same trade channels and cater to the same class of consumers, namely patients suffering from bone and joint inflammatory diseases.

6. Inasmuch as the plaintiff is using its “SETFRAC and SETFRAC- PLUS” marks since 2013, and the defendant, while in its application seeking registration of its “SAFEFRAC” trademark has claimed user only from 10th July 2015, the plaintiff also claims priority of user vis-àvis the defendant. In fact, submits, Ms. Sahadeva, the defendant was apparently seeking to capitalise on the goodwill earned by the plaintiff by manufacturing and marketing identical products using a mark which was, phonetically, practically indistinguishable from the mark of the plaintiff.

7. Responding to Ms. Sahadeva, Mr. Umesh Mishra, learned Counsel for the defendants submits that the suit is highly belated and that the prayer for interlocutory injunction deserves to be dismissed even on the ground of delay. He has sought to submit that the plaintiff and the defendant had been participating in exhibitions in which both their products were exhibited and sold and that, despite having been aware of the defendant’s products, the plaintiff chose to file the suit years later. On First enunciated by the House of Lords in Reckitt & Colman Products Ltd v. Borden Inc., (1990) 1 All ER 873 and followed, thereafter, by Courts in India in various decisions the aspect of deceptive similarity, however, Mr. Mishra does not have any serious contention to urge. Ms. Sahadeva disputes this contention and submits that there is no material place on record to substantiate.

8. No other contention was urged by Mr Mishra. Analysis

9. That mere delay is not sufficient to disentitle a plaintiff, whose trademark is infringed, from interlocutory relief, stands settled by the following passage from the judgment of the Supreme Court in Midas Hygiene Industries P. Ltd. v. Sudhir Bhatia[2]:

10. Ms. Sahadeva has pointed out, to support her claim for user (i) invoices, which have been placed on record, dating back to 2013, (ii) manufacturing license granted to the plaintiff, in 2012, for its “SETFRAC” drug and (iii) a Certificate of a Chartered Accountant, vouchsafing the fact that the plaintiff is selling its “SETFRAC/SETFRAC-PLUS” products since 2013. None of these documents have been doubted or discredited by the defendant.

11. The plaintiff, therefore, clearly has priority of user vis-à-vis the defendant who, even in its application seeking registration of the “SAFEFRAC” trademark, claims user only from 10th June 2015.

12. The defendants’ mark is as yet unregistered, whereas the plaintiff has, in its favour, a registered trademark which, therefore, is also entitled to a presumption of validity in view of Section 31(1)3 of the Trade Marks Act.

13. There can be no manner of doubt that the words “SETFRAC and SAFEFRAC” are phonetically practically identical to the extent that, unless properly and clearly intoned, they are practically indistinguishable from one another. There is, therefore, every possibility of confusion, both in the trade as well as among consumers, of one brand for the other.

14. Both the brands are used in respect of pharmaceutical products containing the same principal ingredient i.e. Cissus Quadrangularis, and are used for treating the same ailments. They, therefore, cater to the same category of consumers and are also available through the same outlets, both physical as well as virtual.