2019 Supreme(Bom) 1202

IN THE HIGH COURT OF JUDICATURE AT BOMBAY
K.R. SHRIRAM, J.
Aglowmed Limited - Appellant
Versus
Aglow Pharmaceuticals Private Limited - Respondent
Commercial IP Suit No.15 of 2005
Decided On : 30-07-2019

Headnote:

Plaintiff, a pharmaceutical company, filed a suit against defendant, also a pharmaceutical company, for infringement of its registered trademark 'AGLOWMED' and passing off of its goods as plaintiff's. Plaintiff sought permanent injunction, damages, and an account of profits.

Fact of the Case:

Plaintiff had been using the trademark 'AGLOWMED' since 1983 and had acquired a reputation and goodwill in the market. Defendant was incorporated in 1992 and adopted the name 'AGLOW' for its corporate name and used it in its pharmaceutical products. Plaintiff contended that defendant's use of the word 'AGLOW' was deceptively similar to its trademark 'AGLOWMED' and was likely to cause confusion among consumers.

Finding of the Court:

The court held that defendant's use of the word 'AGLOW' in its corporate name and products was an infringement of plaintiff's registered trademark 'AGLOWMED' and amounted to passing off of defendant's goods as plaintiff's. The court found that the two names were deceptively similar and were likely to cause confusion among consumers, especially considering that both companies were in the same pharmaceutical business. The court also noted that defendant had not provided any valid reason for adopting the name 'AGLOW' and that its use of the name was likely intended to capitalize on plaintiff's reputation and goodwill.

Issues: 1. Whether plaintiff is the registered proprietor of Trade Mark AGLOWMED in Class 5 under Registration No.415101 dated 02.01.1984? 2. Whether by use of the mark 'AGLOW' defendants have infringed plaintiff's trade mark AGLOWMED? 3. Whether plaintiffs have acquired goodwill and reputation in the trade mark AGLOWMED? 4. Whether by use of word AGLOW in the corporate name of defendant, defendants are passing off their goods and/or services as and for plaintiff's goods and/or services? 5. Whether plaintiffs is entitled to the relief of permanent injunction as prayed for? 6. Whether plaintiffs are entitled for damages or alternately accounts of profits as prayed for? 7. What relief and what order?

Ratio Decidendi: The court applied the principles of trademark infringement and passing off to reach its decision. The court held that defendant's use of the word 'AGLOW' in its corporate name and products was likely to cause confusion among consumers and that defendant had not provided any valid reason for adopting the name 'AGLOW'. The court also considered the fact that both companies were in the same pharmaceutical business and that defendant's use of the name 'AGLOW' was likely intended to capitalize on plaintiff's reputation and goodwill.

Final Decision: The court granted a permanent injunction restraining defendant from using the word 'AGLOW' in its corporate name and products. The court also directed defendant to deliver up all products, cartons, labels, goods, articles, dies, papers, and all other things bearing and/or containing reference in any manner whatsoever to the impugned name 'AGLOW' for destruction without compensation. Additionally, defendant was directed to apply to the Registrar of Companies, Patna, for a change of name within two weeks of the judgment being uploaded, and the new name was not to contain the trade name 'AGLOW'. The court awarded costs in the sum of Rs. 2 Lakhs to be paid by defendant to plaintiff within four weeks.