m s. lupin laboratories vs m s. jain products on 24 february, 1998 (1)

7/27/2019 M S. Lupin Laboratories vs M S. Jain Products on 24 February, 1998 (1)

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Bombay High Court

Bombay High Court

M/S. Lupin Laboratories vs M/S. Jain Products on 24 February, 1998

Equivalent citations: AIR 1998 Bom 312, 1998 (3) BomCR 674, (1998) 2 BOMLR 604

Author: Y Jahagirdar

Bench: Y Jahagirdar

ORDER

Y.S. Jahagirdar, J.

1. Suit is initialed by the plaintiff lor an order of injunction restraining the defendant from in any manner

infringing the plaintiff's registered trade mark and from using in relation to any medicinal and pharmaceuticals

preparations the mark styled as PYKALFIN, which is alleged to be deceptively similar to the plaintiff's trade

mark which is registered as PYRALFIN. The present motion is taken out for interim relief of injunction and

other consequential directions.

2. The defendant has appeared in the motion and filed a reply.

3. It is alleged by the plaintiffs that they are registered owner of the word Pyralfin, as a trade mark formarketing, sale and production of the drugs for malarial treatment. It is alleged by the plaintiffs that the

communication received by one of their dealers they came to know that the defendants are indulging in use of

trade mark by name Pykalfin, which is deceptively similar to the one used by the present plaintiffs. The

plaintiffs issued notice to the defendant on 10th July, 1996 making a grievance of the said user, which was

replied on 27th July, 1996 by which it is alleged by the defendants that they are using the said name 'Pykalfin'

since 1989 and have never come across with any registered trade mark of the plaintiffs by name 'Pyralfin'. On

receipt of this correspondence the present suit is filed and the injunction claimed on the ground that the action

of the defendants as admitted in the reply amounts to infringement of the registered trade mark by using the

word 'Pykalfin', which is deceptively similar to the one owned by the plaintiffs and it also amounts to an

action by which the defendants are trying to pass off their goods, since both the parties are dealing in the

drugs, which is used in malarial treatment.

4. Mr. Shah, the learned Counsel for the plaintiffs relied on the judgment of the Apex Court Ruston and

Hornby Ltd. v. Zamindara Engineering Co., has submitted that it is sufficient to establish that the defendants

mark is similar and identical with that of the plaintiffs, and such similarity is likely to cause confusion or

deception. The learned Counsel has also placed reliance on a judgment of this Court

Astra IDL Ltd. v. TTK Pharma Limited, to emphasize the submission that the test to decide infringement is on

comparison of the two marks and the fact that the concerned drug is a schedule drug need not carry any

additional weightage as, submits the learned Counsel, the schedule drugs are available across the counter even

without the Doctor's prescription. The Counsel, has therefore, submitted that use of the two words 'Pyralfin"

and 'Pykalfin are so similar to each other so as to cause sufficient confusion in the mind of the customers and

that by itself entitles the plaintiffs to seek interim order.

5. As against this, Mr. Kadam appearing for the defendants, heavily relied on sub Clause (3) of section 12 of

the Trade and Merchandise Marks Act, 1958, which can be reproduced as follows :-

"In case of honest concurrent use or of other special circumstances which, in the opinion of the Registrar,

make it proper so to do, he may permit the registration by more than one proprietor of trade marks which are

identical or nearly resemble each other (whether any such trade mark is already registered or not) in respect of

the same goods or description of goods subject to such conditions and limitations, if any, as the Registrar may

think fit to impose."


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MR. Kadam submits that he is entitled to the protection of sub clause (3), since this is a case of honest and

concurrent user.

6. Placing reliance on Clause (b) of section 30 of the Act, Mr. Kadam submits that inaction on the part of the

plaintiffs amounts to implied consent to the user of the trade mark by the defendants. That also is a factor in

favour of the defendants.

Mr. Kadam has also relied on a decision of the Apex Court F. Hoffimann-La Roche and Co. Ltd. v. GeoffreyManners and Co. Pvt. Ltd., and the decision of the Delhi High Court Shri Swaran Singh Trading as

Appliances

Emporium v. M/s. Usha Industries (India) New Delhi and others, and the decision in the matter of the Power

Control Appliance Co. & others v. Sumeet Machines Pvt. Ltd., to emphasize

his submission that delay in initiating action coupled with acquiescence as alleged by the defendants should

result in refusal of interim order. Mr. Kadam has also emphasised that if the plaintiffs would be compensated

in terms of money by way of damages for the alleged use of the registered trade mark of the plaintiffs. The

interim order would validly be refused directing the defendants to maintain the accounts of the earning by use

of such trade mark.

7. I have heard both the sides at length. I have gone through the pleadings and the affidavits as also I have

given my anxious consideration to the judgments cited at the bar. Considering the word that is used by the

defendants as found at Exhibit 'F' to the plaint, there is little doubt about similarity of the registered trade mark

of the plaintiff and the word used by the defendants. The similarity is not only in the mark, but also in the

structure and phonetics. One of the established tests is whether the customer with average intelligence could

be confused between the two words indicating a same type of product. Let me assume for a moment, as

observed by this Court in Astra IDL Ltd. v. TTK Pharma Limited, that even the schedule drugs are available

across the counter, then the customer is entitled to ascertain whether the medicine demanded by him and

handed over to him by the salesman is one of the same. The Phonetics of both the drugs being deceptively

similar while pronouncing the words 'Pyralfin' and 'Pykalfin', it cannot be a matter of much debate thatphonetical resemble of these two words can cause confusion in the mind of the customer of average

intelligence. The only difference that can be found in verbal pronouncement is of the words 'Ra' & 'Ka', that is

however not the relevant words, which will leave lasting effect on the mind of the customer, if the words are

pronounced normally and in ordinary course of conversation. I am of the opinion that the mark used by the

defendants is phonetically so similar to the registered mark of the plaintiffs that the difference in spelling the

same is inconsequential and such similarity is bound to cause confusion in the mind of the customers of

average intelligence.

8. This takes me to the next submission of Mr. Kadam that the user is honest and concurrent disentitling the

plaintiffs from claiming any interim order. I am not impressed by the said submission. Mere concurrent user is

not sufficient in law. It must be honest. The mark is said to be in use as against the mark which is admittedly

registered. The presumption available in law in favour of the registered trade mark must necessarily flow from

the facts of the case. To establish honesty, the efforts made by the claimant, who says that the mark is

honestly used, must be such, which will satisfy the conscious of the Court that the user was honest. Such

claimant carries higher degree of obligation of being more diligent in establishing the case of honesty,

especially when such user is put against the mark which is the registered trade mark. Nothing has been

indicated by the defendants in the present case to establish such a fact. All that is asserted in the reply to the

notice which preceded the suit is as follows:--

"Our clients have/had never come across your clients product having the trade mark PYRALFIN."

This is too vague statement to derive an inference that concurrent user was honest.




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9. The next submission of Mr. Kadam that the plaintiffs must have deemed to have acquiesced in the user of

the mark also needs to be rejected. Acquiescence is not just an inaction, but is something more than that.

Inaction must continue after the knowledge of infringement of the rights, for which the action is initiated by

the plaintiffs. If, after the knowledge of infringement of such rights, by whatsoever method, the plaintiffs

refrain for initiating any action fully knowing that such action may perpetuate the infringement of the rights,

in that event, it could be asserted that there is acquiescence by the plaintiffs. Except ascertaining that the

defendants are dealing in 'Pykallin' from 1989, nothing is brought on record to indicate a set of fact, by which,

knowledge of such user of the defendants could be foisted or attributed to the plaintiffs. The bunch of billssought to be produced by the defendants are perused by me. The dealings seem to be with the firms at Ujjain,

Indore, Guwahati and Jodhpur. It is very difficult to draw an inference that the plaintiffs were aware of such

dealings and, therefore, should be prevented as a party who has acquiesced in the user by the defendants. The

argument, therefore, has to be rejected.

10. Once I come to the conclusion that the use of the word 'Pykalfin' is phonetically and structurally also

similar to the registered trade mark of the plaintiffs, the user though alleged to be concurrent, atleast, prima

facie, on the material produced before me at this stage is not established to be honest and there is nothing to

indicate acquiescence or implied consent of the plaintiffs. The plaintiffs would be entitled to an order of

injunction as prayed for.

11. Before parting with the case, the reference needs to be made to the argument of Mr. Kadam that since the

plaintiffs would be compensated in terms of money, injunction should be refused. Broadly speaking, there

could not be a dispute about the principle. However, it has to be applied to the facts of every case. The present

matter pertains to the medicinal drug which is used for treatment of malaria. The plaintiffs have obviously

achieved some status and reputation in the market. To continue and maintain such reputation is also an

integrally connected with the use of the market. If such reputation is likely to be damaged by a product not

conforming the standard of the plaintiffs product, the plaintiffs are entitled to maintain an action irrespective

of the fact as to whether financial loss could be compensated.

12. For the reasons mentioned hereinabove, the Notice of Motion is made absolute in terms of prayers (a) &

(b). The costs of the Motion shall abide by the order in that behalf in the suit.



m s. lupin laboratories vs m s. jain products on 24 february, 1998 (1)

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