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2011 Supreme(Bom) 637
High Court of Judicature at Bombay
S.J. KATHAWALLA
Serum Institute of India Limited
Versus
Green Signal Bio Pharma Pvt. Ltd. & Another
NOTICE OF MOTION NO.2696 OF 2010 IN SUIT NO.2564 OF 2010
Decided on : 14-06-2011
For the Petitioner:Himanshu Kane a/w Hiren Kamod, Ashutosh Kane, Advocates.
For the Respondents:S. Gowthaman a/w Rajiv Singh i/by Chitnis & Co., Advocates.
Headnote:
TRADEMARK - INFRINGEMENT - PASSING OFF - DECEPTIVELY SIMILAR - BALANCE OF CONVENIENCE - INTERIM INJUNCTION - [ONCO BCG] - [MEDICINAL AND PHARMACEUTICAL PREPARATIONS] - [TM REG NO. 1481471] - THE COURT HELD THAT THE RIVAL MARKS WERE DECEPTIVELY SIMILAR AND THAT THE BALANCE OF CONVENIENCE WAS IN FAVOUR OF THE PLAINTIFF. ACCORDINGLY, THE COURT GRANTED AN INTERIM INJUNCTION RESTRAINING THE DEFENDANTS FROM INFRINGING THE PLAINTIFF'S TRADEMARK AND FROM PASSING OFF THEIR PRODUCTS AS THOSE OF THE PLAINTIFF.
Fact of the Case:
THE PLAINTIFF, A COMPANY REGISTERED UNDER THE COMPANIES ACT, 1956, CARRIED ON BUSINESS INTER ALIA AS MANUFACTURER OF AND TRADER IN PHARMACEUTICAL AND MEDICINAL PREPARATIONS. THE DEFENDANT NO.1 WAS A PRIVATE LIMITED COMPANY ALSO CARRYING ON THE BUSINESS AS MANUFACTURER OF MEDICINAL AND PHARMACEUTICAL PREPARATIONS. DEFENDANT NO.2 WAS A LIMITED COMPANY REGISTERED UNDER THE COMPANIES ACT, 1956 AND CARRIED ON THE BUSINESS INTER ALIA OF MARKETING AND DISTRIBUTING THE MEDICINAL AND PHARMACEUTICAL PREPARATIONS FOR AND ON BEHALF OF DEFENDANT NO.1. THE PLAINTIFF HAD OBTAINED A REGISTERED TRADEMARK "ONCO BCG" FOR USE, IN RESPECT OF MEDICINAL AND PHARMACEUTICAL PREPARATION CONTAINING THE GENERIC DRUG "BACILLUS CALMETTE GUENN" ("BCG" FOR SHORT). THE PLAINTIFF HAD BEEN REGULARLY, OPENLY AND EXTENSIVELY USING THE SAID TRADEMARK IN RELATION TO THE SAID GOODS. THE PLAINTIFF HAD ALSO TAKEN EFFORTS TO POPULARIZE ITS SAID GOODS BEARING THE SAID TRADEMARK. THE DEFENDANT NO.1 WAS MANUFACTURING AND/OR SELLING AND THE DEFENDANT NO.2 WAS MARKETING THE MEDICINAL AND PHARMACEUTICAL PREPARATION CONTAINING THE SAME DRUG NAMELY "BACILLUS CALMETTE GUENN" UNDER THE DECEPTIVELY SIMILAR TRADEMARK "BCG ONCO" (THE IMPUGNED TRADEMARK) WITH THE ADDITION OF NON DISTINCTIVE LETTERS "B" AND "P" AT THE END OF THE SAID MARK AND BY THE USE OF THE IMPUGNED TRADEMARK THE DEFENDANTS WERE CAUSING CONFUSION AND DECEPTION IN THE MARKET AND WERE PASSING OFF THEIR GOODS AS AND FOR THOSE OF THE PLAINTIFF.
Finding of the Court:
THE COURT FOUND THAT THE RIVAL MARKS WERE DECEPTIVELY SIMILAR AND THAT THE BALANCE OF CONVENIENCE WAS IN FAVOUR OF THE PLAINTIFF. THE COURT HELD THAT THE PLAINTIFF HAD MADE OUT A PRIMA FACIE CASE OF INFRINGEMENT OF TRADEMARK AND PASSING OFF. THE COURT ALSO HELD THAT THE BALANCE OF CONVENIENCE WAS IN FAVOUR OF THE PLAINTIFF AS THE PLAINTIFF WAS THE REGISTERED OWNER OF THE TRADEMARK AND THE DEFENDANTS HAD ADOPTED THE IMPUGNED MARK WITH FULL KNOWLEDGE OF THE PLAINTIFF'S MARK.
Issues: WHETHER THE RIVAL MARKS WERE DECEPTIVELY SIMILAR? WHETHER THE PLAINTIFF HAD MADE OUT A PRIMA FACIE CASE OF INFRINGEMENT OF TRADEMARK AND PASSING OFF? WHETHER THE BALANCE OF CONVENIENCE WAS IN FAVOUR OF THE PLAINTIFF?
Ratio Decidendi: THE COURT RELIED ON THE FOLLOWING PRINCIPLES IN REACHING ITS DECISION: 1. THE TEST OF DECEPTIVE SIMILARITY IS WHETHER THE RIVAL MARKS ARE LIKELY TO CAUSE CONFUSION OR DECEPTION IN THE MINDS OF THE CONSUMERS. 2. THE BALANCE OF CONVENIENCE IS A FACTOR THAT CAN BE CONSIDERED IN DECIDING WHETHER TO GRANT AN INTERIM INJUNCTION. IN CASES OF TRADEMARK INFRINGEMENT AND PASSING OFF, THE BALANCE OF CONVENIENCE IS GENERALLY IN FAVOUR OF THE PLAINTIFF WHO IS THE REGISTERED OWNER OF THE TRADEMARK.
Final Decision: THE COURT GRANTED AN INTERIM INJUNCTION RESTRAINING THE DEFENDANTS FROM INFRINGING THE PLAINTIFF'S TRADEMARK AND FROM PASSING OFF THEIR PRODUCTS AS THOSE OF THE PLAINTIFF.
1. By this Notice of Motion the plaintiff has prayed for an order and injunction restraining the defendants from infringing the plaintiff's trade mark "ONCO BCG" bearing registration number 1481471 in class 05, by use of the impugned trade mark "BCG ONCO" with or without the addition of letters "BP" or any other trade mark deceptively similar to the plaintiff's registered trade mark "ONCO BCG" in respect of medicinal and pharmaceutical preparations or in any other manner whatsoever and to further restrain the defendants from passing off their medicinal and pharmaceutical preparations as those of the plaintiff.
2. The plaintiff is a company registered under the Companies Act, 1956 carrying on business inter alia as manufacturer of and trader in pharmaceutical and medicinal preparations. The defendant no.1 is a Private Limited company also carrying on the business as manufacturer of medicinal and pharmaceutical preparations. Defendant no.2 is a limited company registered under the Companies Act, 1956 and carries on the business inter alia of marketing and distributing the medicinal and pharmaceutical preparations for and on behalf of defendant no.1.
3. According to the plaintiff, in or about the year 2006 it conceived a trade mark "ONCO BCG" (the said "trade mark") for use, in respect of medicinal and pharmaceutical preparation containing the generic drug "BACILLUS CALMETTE GUENN" ("BCG" for short). On or about 24th August 2006 the plaintiff applied for and secured registration of the word mark "ONCO BCG" under the provisions of the Trade Marks Act, 1999 under number 1481471 in Class-5 i.e. in respect of medicinal and pharmaceutical preparations and substances. The said trade mark was advertised in Trade Marks Journal No.1377 (Regular) dated 1st October 2007. The registered trade mark is valid and subsisting. However, the registration of the said trade mark does not give right to the plaintiff to the exclusive use of the letters "BCG".
4. On or about 24th November 2006 the plaintiff obtained necessary permission from the Joint Commissioner (Pune Division) of Food and Drugs Administration, Maharashtra State to manufacture and market the aforesaid drug under the said trade mark. According to the plaintiff, since 2007 the plaintiff has been regularly, openly and extensively using the said trade mark in relation to the said goods. A copy of the certificate issued by the Chartered Accountant of the plaintiff certifying the sales figures of the plaintiff's drug SII-ONCO-BCG for the year 2006-2007 up to the year 2009-2010 is annexed as Exhibit-D to the plaint. From the said certificate it can be seen that the plaintiff for the year 2006-2007 sold the said drug worth Rs.5.80 lakhs which increased to Rs.176.44 lakhs in the year 2009-2010. The plaintiff has also annexed copies of sales bills relating to the plaintiff's said drug at Exhibits-E-1 to E-8 to the plaint. The first bill/invoice produced (Exhibit-E-1) is dated 8th August 2007. According to the plaintiff, the plaintiff has also taken efforts to popularize its said goods bearing the said trade mark. It has expended substantial sums of money on sales promotional efforts undertaken by it to make the said trade mark and the goods bearing the same, well known. The certificate issued by the Chartered Accountant of the plaintiff is annexed as Exhibit-F to the plaint which shows that an amount of Rs.7,08,575/-is spent by the plaintiff towards sales promotion, technical literature and advertisements during the period 2007 to 2010. According to the plaintiff by regular and extensive use of the trade mark ONCO BCG by the plaintiff, in relation to the said goods, and the efforts taken by it in popularizing the said goods as also by reason of high efficacy and superior quality of the medicinal preparations sold by the plaintiff under the trade mark "ONCO BCG", the plaintiff's said goods and the said trade mark "ONCO BCG" enjoyed wide and enviable reputation and goodwill amongst th
