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BOMBAY HIGH COURT
A.S. Garg, J.
WINTHROP PRODUCTS INC. - PETITIONER
v.
EUPHARMA LABORATORIES LTD. - RESPONDENT.
Notice of Motion No. 1527 of 1995 in Suit No. 1696 of 1995,
Decided on: September 2, 1997
TRADEMARK - INFRINGEMENT - PASSING OFF - PANADOL - INJUNCTION - VESTED RIGHTS - HONEST USER - DELAY - ACQUIESCENCE - COMMON LAW RIGHTS - TRADE AND MERCHANDISE MARKS ACT, 1958 - SECTIONS 33, 12(3), 25.
Fact of the Case:
Plaintiffs, a corporation organized and governed by the State of Delaware, USA, are manufacturers of drugs and pharmaceuticals, including an Antipyretic and Analgesic drug, marketed by plaintiffs on the trade mark PANADOL. Plaintiffs claimed to be the proprietor of the trade mark PANADOL, registered in several countries across the world. They sold the drug in several countries and had been using the trade mark since about 1955. The drug was an antipyretic and analgesic and was sold across the counter. Plaintiffs had received intimation of registration of their trade mark in India in February 1995. Defendants, a private limited company, manufactured and marketed a pharmaceutical product under the trade mark PANADOL since 1972. They claimed vested rights for user of the same and that plaintiffs were not operating in India. Plaintiffs filed a suit on the grounds of infringement of trade mark and passing off.
Finding of the Court:
The court held that plaintiffs were the registered proprietors of the trade mark PANADOL in India and that defendants had no vested rights to use the said trade mark. The court found that defendants' adoption of the name PANADOL in 1972 was not in good faith and that their user from 1972 would not give them any right to claim the said name as proprietor. The court also held that plaintiffs could not be non-suited on the ground of delay or acquiescence. The court granted an injunction restraining defendants from using the trade mark or name PANADOL and from passing off their product by using the trade mark PANADOL.
Issues: 1. Whether defendants had vested rights to use the trade mark PANADOL? 2. Whether defendants' adoption of the name PANADOL in 1972 was in good faith? 3. Whether plaintiffs could be non-suited on the ground of delay or acquiescence?
Ratio Decidendi: 1. The court held that defendants had no vested rights to use the trade mark PANADOL as their user from 1972 was not bona fide and honest. The court relied on the fact that defendants had abandoned their application for registration of the trade mark PANADOL in 1971 when the authority concerned pointed out that the trade mark of a similar name had been registered by another party. Despite this abandonment, defendants started using the name PANADOL to market their product. The court held that this act was dishonest and that as plaintiffs were the registered holder of the trade mark PANADOL in India, defendants were not entitled to use the trade mark PANADOL. 2. The court held that defendants' adoption of the name PANADOL in 1972 was not in good faith as they were aware that the authority concerned had rejected their request and that they had abandoned their claim for the word PANADOL. The court also noted that defendants had applied for registration of the same trade mark after plaintiffs' application for registration and that the said application was still pending. The court held that defendants' user of the word PANADOL was dishonest and that they were trying to take advantage of the goodwill earned by the trade mark PANADOL. 3. The court held that plaintiffs could not be non-suited on the ground of delay or acquiescence. The court relied on the decisions of the Apex Court, this Court, and the Delhi High Court to contend that delay would not defeat plaintiffs' rights to seek an injunction. The court also noted that defendants had not shown any ignorance or attempt to show that they were unaware of the use of this name by plaintiffs.
Final Decision: The court granted an injunction restraining defendants from using the trade mark or name PANADOL and from passing off their product by using the trade mark PANADOL.
A. Y. Sakhare, J. (Oral) - By this motion, plaintiffs are seeking order of injunction against defendants from using in any form or manner trade mark or name PANADOL and/or from passing off or attempting to pass off defendants' product in the name of PANADOL. Plaintiffs' claim is based upon infringement of trade mark and passing off.
2. Plaintiffs are corporation organised and governed by the State of Dalaware and has its head office at U.S.A. Plaintiffs are manufacturer of drugs and pharmaceuticals including an Antipyretic and Analgesic drugs, which is marketed by plaintiff on the trade mark PANADOL, a word mark invented by plaintiffs.
3. Plaintiffs claim to be the proprietor of trade mark PANADOL, which has been registered by plaintiffs in several countries across the world. Plaintiffs sell the said drug in several countries. Plaintiffs have started using this trade mark since about 1955. As per plaintiffs, said trade mark PANADOL is internationally famous mark and has acquired an extensive and valuable goodwill. Plaintiffs' annual global sales of 1994 off PANADOL was 240 million U.S. Dollers. The drug marketed under the trade mark PANADOL is an antipyretic and analgesic and is sold across the counter.
4. As per plaintiffs, word PANADOL was invented by plaintiff's predecessor in or about 1955. On 9-6-1955, a circular was issued to the staff of the plaintiffs' predecessor inviting suggestions of a short name for a new analgesic product. After suggestions were received, seven names were shortlisted. Plaintiff finally adopted PANADOL as trade mark with TRIMON as a reserve. Plaintiffs have placed reliance upon circular dated 9-6-1955, internal date on shortlisted trade mark including PANADOL, internal memo dated 27-4-1956, internal memo dated 10-10-1956 relating to questionnaire on PANADOL. Plaintiffs have also placed upon Hospital Price List of February 1968, circular dated 8-11-1968. National Health Service Dispensing Doctors' Price List dated 1-2-1968, Dispensing Doctors' Price List of January 1969, Hospital Price List of January 1970, Dispensing Doctors' Price List of January 1970, circular on price change dated 16-7-1970 and Price List of 1971. On this material, plaintiffs claim that its product is marketed under trade mark PANADOL right from 1955 or thereabout and is sold across various countries. Plaintiffs have also placed reliance upon several medical journals published between 1956 to 1962, The said journals are British Medical Journal, the Lancet Journal, the Pharmaceutical Journal, the Chemist and Druggist Journal, the Irish Chemist, Druggist Journal and the Chemist and Druggist Year Book to show that plaintiffs have used this trade mark for its product and said trade mark has a worldwide recognition.
5. On 21-10-1982, plaintiffs were registered as proprietor of the trade mark PANADOL in India under Clause 5 of IV Schedule to the Trade and Merchandise Marks Act (hereinafter referred to as the 'Act' for the sake of brevity) under No. 396820. Plaintiffs have received intimation of such registration in or about February 1995. As per plaintiffs, when its application for registration was in process, on 13-1-1992, notice of opposition was filed by the predecessor of defendant to oppose the registration of the aforesaid trade mark. The said opposition was on the basis of its alleged use of the trade mark PANADOL by defendant since 1972. In notice of opposition, defendants filed interlocutory petition, which was dismissed by the Deputy Registrar and plaintiffs were granted registration. Defendants have challenged the order passed by the Deputy Registrar by filing F.A.O. No. 187 of 1993 before Delhi High Court. The said appeal is still pending without any interim orders in defendant's favour,
6. As per plaintiff, on 7-2-1971, predecessor of defendants applied for registration of trade mark PADADOL for its user. At that time concerned authority pointed out to the defendants' predecessor that the trade mark of similar name
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