Deceptive similarity of marks, honesty of adoption, delay and acquiescence, and applicability of Section 33 of the Trade Marks Act, 1999.

G.S. Patel, J.

1. This is a suit in trademark infringement combined with a cause of action in passing off. The Plaintiff claims that its registered trade marks, OROFER and OROFER-XT, used in conjunction with medicinal products, are being infringed by the Defendant’s use of rival trade marks COROFER and COROFER-XT, and that the Defendant is attempting to pass off its goods as those of the Plaintiff. The present application is for interim reliefs, including an injunction and a Court Receiver.

2. The defence is, in brief, that the rival marks are not deceptively similar to those of the Plaintiff. They are distinct, and the differences are apparent and discernible. In any case, this is not a fit case for the grant of an injunction; the matter should proceed to trial. For, when the Defendant applied for registration, the Plaintiff’s marks were not cited as conflicting. More importantly, the Defendant claims to be using the rival marks since 2001. The Plaintiff having acquiesced in the Defendant’s use of the rival marks for over five years, the Defendant is now statutorily barred from opposing the Defendant’s use of its rival marks.

3. I have heard Dr. Saraf, learned Counsel for the Plaintiff, and Dr. Tulzapurkar, learned Senior Counsel for the Defendant, at some length. With their assistance, I have gone through the material on record. I have carefully considered their submissions, including Dr. Tulzapurkar’s submission that the provisions of Section 33 of the Trade Marks Act, 1999 (“the Act”) are not entirely restricted to a rival later registered trade mark; specifically, that Section 33(1)(b) applies also to a later unregistered trade mark. For the reasons that follow, I have found, prima facie, that the Defendant’s marks infringe the Plaintiff’s, and the Defendant’s use of the rival marks to constitute passing off. I have not found sufficient merit in the defence to deny the reliefs sought. I have made the Notice of Motion absolute.

4. The factual background is, briefly, this. On 30th October 1996, the Plaintiff’s marks OROFER and OROFER-XT were registered as word marks in Class 5 in relation to medicinal or pharmaceutical preparations for iron deficiency, anaemia, methylcobalmin deficiency, folic acid deficiency, zinc deficiency and so forth. In January 1997, the Plaintiff obtained a license from the Food & Drug Administration, Maharashtra for the manufacture of these products. Use and manufacture began in 1997. The product is a film-coated tablet or capsule, frequently prescribed by orthopaedic surgeons and consultants (for iron deficiency etc.) and by gynaecologists to address folic acid and Vitamin-B deficiencies in pregnancy. The products are also prescribed by general physicians for iron deficiency issues. Between 1997 and 2012, the Plaintiff has had sales of products under the OROFER mark in excess of Rs.95 crores. It is also widely exported, to some 34 countries worldwide. In that same period, the Plaintiff has spent handsomely on sales and promotional expenses. Certified statements of sales and expenses, sample invoices and specimen advertising and promotional material are annexed to the plaint. The Plaintiff claims that, resultantly, its products have acquired a considerable and valuable reputation and much goodwill, and that its marks are distinctive of its products to the exclusion of others. The Plaintiff thus has common law and statutory rights in both marks.

5. On 10th January 2006, the Plaintiff noticed the Defendant’s advertisement in the Trade Mark Journal No.1371, seeking registration of the mark COROFER in Class 5. On 17th December 2007, the Plaintiff’s attorneys sent a cease-and-desist notice to the Defendant. The Plaintiff then opposed the Defendant’s registration application on 20th December 2007, inter alia saying that the Plaintiff was the first and original adopter of the trade mark OROFER for medicinal and pharmaceutical preparations; that due to prolonged and extensive use, the mark was now excl