Full Text
Date of Decision: 15.03.2019
ALKEM LABORATORIES LTD. ..... Plaintiff
Through Mr.Sagar Chandra, Ms. Ishani Chandra and Ms.Srijan Uppal, Advs.
Through Mr.D.Abhinav Rao, Mr.B.Shravanth Shanker and Ms.Monalisa Kosaria, Advs.
JUDGMENT
1. Present suit is filed by the plaintiff for permanent injunction restraining infringement of trademark and copyright, passing off, dilution, unfair competition, rendition of accounts, etc.
2. The case of the plaintiff is that the plaintiff adopted the mark GEMCAL in 2000 for pharmaceutical and medicinal preparations, etc. The plaintiff also applied for the registration of the said mark in Class 5 in 2000. From 2000 onwards the plaintiff has been continuously, extensively and uninterruptedly using the mark GEMCAL, GEMCAL Carton Trade Dress and GEMCAL Family of marks. The registration details regarding GEMCAL are given in para 8 of the plaint. It is pleaded that the plaintiff has the exclusive right to use the trademark GEMCAL and GEMCAL Family of 2019:DHC:1613 CS.(Comm.)1142/2018 Page 2 marks. The details of the promotional expenses and sales of GEMCAL are stated in para 15 of the plaint. It is pleaded that in 2017-2018, the plaintiff expended Rs.517.77 lakhs for sales promotional expenses and the sale of GEMCAL was Rs.145 crores. The plaint makes reference to various litigations regarding the trademark GEMCAL.
3. It is pleaded that around sometimes in September 2018, the plaintiff was shocked to learn when a representative of the plaintiff came across identical products which are clearly identical and deceptively similar to the plaintiff‟s mark GEMCAL and GEMCAL Family of marks. It is pleaded, the plaintiff found that identical logo and trade dress is also being used by the defendant who have substantially reproduced the plaintiff‟s artistic work on its impugned product, namely, GEMCAL Logo, GEM-CAL-DEC Carton and GEM-CAL-DEC Blister Strip. It is pleaded that a bare perusal of the product of the defendant would make it evident that the defendant is using the impugned mark GEM-CAL-DEC which is identical and deceptively similar to the plaintiff‟s trade mark GEMCAL and GEMCAL Family of marks.
4. Learned counsel for the plaintiff has pointed out that the defendant is a habitual offender of trademarks. Reference is made to another suit being CS(COMM) 97/2019 filed by the plaintiff against the defendant which pertains to the trademark „A TO Z TECH‟ for pharmaceutical products.
5. Defendant entered appearance but did not file the written statement despite lapse of 120 days. The right of the defendant to file written statement stands closed in view of the judgment of the Supreme Court in M/s.SCG Contracts India Pvt. Ltd. vs. K S Chamankar Infrastructure Pvt. Ltd.,
6. It was put to the learned counsel for the defendant that the mark being used by the defendant, namely, GEM-CAL-DEC is on the face of it deceptively similar to the registered trademark being used by the plaintiff. Learned counsel for the defendant however states that he can defend the suit despite not having filed the written statement. He states that he would like to submit that the mark of the defendant GEM-CAL-DEC is not deceptively similar to the plaintiff‟s mark GEMCAL. He also states that the plaintiff has to prove its own suit and the defendant should be given an opportunity to cross-examine the witnesses of the plaintiff. It is also pleaded that the defendant is using the mark GEM-CAL-DEC and „CAL‟ is a generic word. Hence, it is stated that he plaintiff cannot object to the said mark. There is no similarity otherwise in the two marks. He also states that there is an oyster symbol being used on the packets which is not being used by the plaintiff. He also states that the colour scheme being used is different.
7. Most of the pleas raised by the defendant cannot be examined as there is no pleading of the defendant on record. I have still examined the said pleas. I may first deal with the first plea of the learned counsel for the defendant, namely, that the defendant is using the mark GEM-CAL-DEC and that the word CAL is a generic word referring to Calcium. What the defendant seeks to contend is that its mark has been split and there is no visual or phonetic similarity with the mark of the plaintiff.
8. Reference may be had to the judgment of the Supreme Court in Corn Products Refining Co.vs. Shangrila Food Products Ltd., AIR 1960 SC 142 where the Supreme Court held as follows:- “13. xxx CS.(Comm.)1142/2018 Page 4 "We think that the view taken by Desai, J., is right. It is well known that the question whether the two marks are likely to give rise to confusion or not is a question of first impression. It is for the court to decide that question. English cases proceeding on the English way of pronouncing an English word by Englishmen, which it may be stated is not always the same, may not be of much assistance in our country in deciding questions of phonetic similarity. It cannot be overlooked that the word is an English word which to the mass of the Indian people is a foreign word. It is well recognised that in deciding a question of similarity between two marks, the marks have to be considered as a whole. So considered, we are inclined to agree with Desai, J., that the marks with which this case is concerned are similar. Apart from the syllable 'co' in the appellant's mark, the two marks are identical. That syllable is not in our opinion such as would enable the buyers in our country to distinguish the one mark from the other."
9. Reference may also be had to the judgment of the Supreme Court in the case of Cadila Health Care Ltd. vs. Cadila Pharmaceuticals Ltd., (2001) 5 SCC 73 where the court has held as follows:- “16.......It is important that the marks must be compared as whole. It is not right to take a portion of the word and say that because that portion of the word differs from the corresponding portion of the word in the other case there is no sufficient similarity to cause confusion. The true test is whether the totality of the proposed trade mark is such that it is likely to cause deception or confusion or mistake in the minds of persons accustomed to the existing trade mark. Thus in Lavroma case Lord Johnston said: we are not bound to scan the words as we would in a question of comparatio literarum. It is not a matter for microscopic inspection, but to be taken from the general and even casual point of view of a customer walking into a shop." On the facts of that case this CS.(Comm.)1142/2018 Page 5 Court came to the conclusion that taking into account all circumstances the words Protovit and Dropovit were so dissimilar that there was no reasonable probability of confusion between the words either from visual or phonetic point of view. xxx
32. Public interest would support lesser degree of proof showing confusing similarity in the case of trade mark in respect of medicinal product as against other non-medicinal products. Drugs are poisons, not sweets. Confusion between medicinal products may, therefore, be life threatening, not merely inconvenient. Noting the frailty of human nature and the pressures placed by society on doctors, there should be as many clear indicators as possible to distinguish two medicinal products from each other. It is not uncommon that in hospitals, drugs can be requested verbally and/or under critical/pressure situations. Many patients may be elderly, infirm or illiterate. They may not be in a position to differentiate between the medicine prescribed and bought which is ultimately handed over to them. This view finds support from McCarthy on Trade Marks, 3rd Edition, para
23.12 of which reads as under:....”
10. Hence, while comparing the trademarks the trademark has to be taken as a whole. The attempt of the learned counsel for the defendant to split the trade mark to compare the marks is a misplaced argument.
11. In the present case, the real test is to see as to whether the essential feature of the trademark of the plaintiff have been adopted by the defendant. In my opinion, the trademark adopted by the defendant, namely, GEM- CAL-DEC is phonetically, structurally similar to the trademark of the plaintiff‟s GEMCAL. The two products are related to the same medicine, namely, for calcium deficiency. CS.(Comm.)1142/2018 Page 6
12. Clearly, the defendant cannot be permitted to continue to infringe the trademark of the defendant.
13. The other issue raised by learned counsel for the defendant pertained to a difference in the trade dress being used by the two parties. It is pleaded that the colour combination being used by the defendant is different than the packets in which the drugs are being sold. It is further pleaded that the defendant also used an oyster symbol on the packet. This is completely incorrect argument. A perusal of the original packaging will show complete similarity in the trade dress being used by the parties. Defendant has copied the yellow and red colour combination being used by the plaintiff on the packet. The packets used for defendant are deceptively similar to that of the plaintiff which is not permissible.
14. In my opinion, there is no reason as to why this court cannot pass a decree under Order 8 Rule 10 CPC. The defendant cannot be allowed to burden the court with the pendency of the present suit by making technical and irrelevant submissions to somehow delay passing of a decree. Reference may be had to the judgment of this court in the case of Nirog Pharma Pvt. Ltd. v. Umesh Gupta, [(235) 2016 DLT 354] where the court held as follows: “11. Order VIII Rule 10 has been inserted by the legislature to expedite the process of justice. The courts can invoke its provisions to curb dilatory tactic, often resorted to by defendants, by not filing the written statement by pronouncing judgment against it. At the same time, the courts must be cautious and judge the contents of the plaint and documents on record as being of an unimpeachable character, not requiring any evidence to be led to prove its contents. The Supreme CS.(Comm.)1142/2018 Page 7 Court in C.N Ramappa Gowda v. C.C. Chandregowda, MANU/SC/0320/2012: (2012) 5 SCC 265 had held as under:
26. It is only when the court for recorded reasons is fully satisfied that there is no fact which needs to be proved at the instance of the plaintiff in view of the deemed admission by the defendant, the court can conveniently pass a judgment and decree against the defendant who has not filed the written CS.(Comm.)1142/2018 Page 8 statement. But, if the plaint itself indicates that there are disputed questions of fact involved in the case arising from the plaint itself giving rise to two versions, it would not be safe for the court to record an ex parte judgment without directing the plaintiff to prove the facts so as to settle the factual controversy. In that event, the ex parte judgment although may appear to have decided the suit expeditiously, it ultimately gives rise to several layers of appeal after appeal which ultimately compounds the delay in finally disposing of the suit giving rise to multiplicity of proceedings which hardly promotes the cause of speedy trial.
27. However, if the court is clearly of the view that the plaintiff's case even without any evidence is prima facie unimpeachable and the defendant's approach is clearly a dilatory tactic to delay the passing of a decree, it would be justified in appropriate cases to pass even an uncontested decree. What would be the nature of such a case ultimately will have to be left to the wisdom and just exercise of discretion by the trial court who is seized of the trial of the suit." (Emphasis Supplied)...
28. The present suit is also a commercial suit within the definition of the Commercial Courts, Commercial Division and Commercial Appellate Division of High Courts Act, 2015 and it was the clear CS.(Comm.)1142/2018 Page 9 intention of the legislature that such cases should be decided expeditiously and should not be allowed to linger on. Accordingly, if the defendant fails to pursue his case or does so in a lackadaisical manner by not filing his written statement, the courts should invoke the provisions of Order VIII Rule 10 to decree such cases.”
15. I have examined the submissions of the defendant and find that the case of the plaintiff is unimpeachable. The defendant‟s approach is merely dilatory.
16. Accordingly, under Order 8 Rule 10 CPC, a decree is passed in favour of the plaintiff and against the defendant in terms of prayer 37 (i), (ii), (iii)
(iv) and (v).
17. Regarding delivery, learned counsel for the defendant states that the defendant have stopped manufacture of the product using the impugned trade mark GEM-CAL-DEC. The above statement is taken on record. Pending products using the trade mark GEM-CAL-DEC may be destroyed by the defendant.
18. The next issue is regarding the claim for damages. It is manifest that the plaintiff would have suffered some damages on account of the illegal acts of the defendant in breach of the statutory and common law rights of the plaintiff. Learned counsel for the plaintiff does not press for actual damages but requests that some token damages may be imposed on the defendant to act as a deterrent. The plaintiff has effected sales of Rs.145 crores of the drug GEMCAL for the year 2017-18. It is also on record that the plaintiff has filed another suit against the defendant being CS(Comm.)97/2019 which pertains to trademark A TO Z Tech pharmaceutical products. These two CS.(Comm.)1142/2018 Page 10 facts clearly show that some token damages to penalise can certainly be imposed on the defendant. I accordingly pass a decree for a sum of Rs.[7] lacs in favour of the plaintiff and against the defendant. The plaintiff shall also be entitled to actual costs.
19. The suit and all pending applications stand disposed of.
MARCH 15, 2019/rb JAYANT NATH, J