The court confirmed that the use of a deceitfully similar trademark ZEROVOL-P infringes the registered trademark ZERODOL, establishing liability for passing off.

JUDGMENT :

ARIF S. DOCTOR, J.

1. This present suit is instituted for infringement of trade mark combined with a cause of action of passing off. The Plaintiff in the present suit is a company incorporated under the Companies Act, 1913, having its registered office at the address mentioned in the cause title of the Plaint. The Plaint seeks a permanent injunction to restrain the Defendant from infringing the Plaintiff’s registered trade mark ZERODOL and from using the trade mark ZEROVOL–P (“impugned mark”) to pass off the Defendant’s goods as those of the Plaintiff.

2. It is the case of the Plaintiff that the impugned mark is deceptively similar to the Plaintiff’s registered trade mark ZERODOL and that both the marks are used in relation to the same goods, i.e. pain relief and/or pain management, medicinal and pharmaceutical preparations.

3. By an Order dated 29th October 2013, this Court granted ex-parte ad- interim reliefs in respect of infringement of trade mark. Thereafter, this Court, by an order dated 21st November 2013, granted leave under Clause XIV of the Letters Patent. On 9th December 2013, this Court confirmed the ad-interim order dated 29th October 2013 in favour of the Plaintiff.

4. Since, despite service of the writ of summons on 17th January 2014, the Defendant did not file any written statement, and the suit was transferred to the list of undefended suits as per the order of the Prothonotary and Senior Master dated 24th July 2017.

5. On 10th November 2025 the Advocate for the Plaintiff submitted that the Plaintiff had already led the evidence of one Mr. Harish Kamath, i.e., the Plaintiff's Company Secretary, who had filed his affidavit in lieu of examination in chief alongwith a compilation of documents and affidavit of documents. Accordingly, the Suit stood over to 17th November 2025 for the marking of the Plaintiff’s documents. Since, however, the Plaintiff’s witness was unavailable, on that date the matter was adjourned to 9th December 2025, on which day the Plaintiff’s documents were marked.

Submissions on behalf of the Plaintiff

6. It is the case of the Plaintiff that in or about September 1992, the Plaintiff coined and/or adopted the distinctive trade mark ZERODOL in respect of medicinal and pharmaceutical preparation. The said mark has been put to use in relation to the said goods in or about 2003. The Plaintiff presently markets more than 10 pharmaceutical combinations under the trade mark inter alia containing the word ‘ZERODOL’ as an essential feature thereof e.g. ZERODOL–P, ZERODOL–PT, ZERODOL–S, ZERODOL–MR, ZERODOL-TH etc.

7. The Plaintiff is registered proprietor of the mark ZERODOL in class 5 bearing No. 582203. The said registration is valid, subsisting and in force. Representative copies of the publicity material in respect of the said mark, statement of annual promotional expenditure (which includes the expenditure for promotion in respect of “ZERODOL”), and a copy of the statement of Annual Sales Turnover in respect of “ZERODOL” are annexed to the Plaint.

8. Learned Counsel for Plaintiff submits that in or about the 2nd week of October 2013, the Plaintiff came across Defendant’s product (“impugned product”) bearing the impugned mark ‘ZEROVOL–P’ being sold in the market and accordingly procured Defendant’s impugned product bearing the impugned mark ZEROVOL–P. The specimen of the impugned product bearing the impugned mark ZEROVOL–P, along with the original invoice, are annexed as Exhibit “P–10” and Exhibit “P–11” to the c