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High Court Of Calcutta
B. Bhattacharya, J.
Strassenburg Pharmaceuticals Limited : Appellant
Versus
Himalaya Drug Company : Respondent
G.A. Nos. 985 and 862 of 2001 and C.S. No. 109 of 2001
Decided On : Jun 27, 2001
TRADEMARK - INFRINGEMENT AND PASSING OFF - DECEPTIVE SIMILARITY - ESSENTIAL FEATURES OF REGISTERED TRADEMARK ADOPTED - BALANCE OF CONVENIENCE AND INCONVENIENCE - DELAY IN MOVING APPLICATION - NOT INCONSEQUENTIAL - INJUNCTION GRANTED.
Fact of the Case:
Plaintiff, the registered owner of the trademark 'EFACID' for an antacid, filed a suit for infringement of trademark and passing off against the defendant, who was selling a similar antacid under the name 'EFCID' and later 'EFCID-CA'. The plaintiff contended that the defendant's trademark was deceptively similar to its own, while the defendant argued that the addition of the suffix 'CA' and the different get-up of its product distinguished it from the plaintiff's.
Finding of the Court:
The court held that the defendant had adopted the essential features of the plaintiff's registered trademark by dropping a vowel from 'EFACID' and adding the suffix 'CA', making its trademark deceptively similar to that of the plaintiff. The court also found that the plaintiff had made out a strong prima facie case and that the balance of convenience and inconvenience was in favor of granting an injunction, as the plaintiff would suffer irreparable loss and injury if the injunction was not granted.
Issues: 1. Whether the defendant's trademark 'EFCID-CA' was deceptively similar to the plaintiff's registered trademark 'EFACID'. 2. Whether the plaintiff had made out a strong prima facie case for infringement of trademark and passing off. 3. Whether the balance of convenience and inconvenience was in favor of granting an injunction.
Ratio Decidendi: 1. The court applied the principles laid down in the case of Durga Dutt Sharma v. N.P. Laboratories, AIR 1965 SC 980, which held that in cases of infringement of registered trademarks, the fact that the get-up, packing, and other writing or marks on the goods or packets show marked differences is immaterial if the essential features of the registered trademark have been adopted by the defendant. 2. The court found that the plaintiff had made out a strong prima facie case by establishing that the defendant's trademark was deceptively similar to its own and that both drugs were antacids that could be purchased without a prescription, making the fact that one was allopathic and the other ayurvedic inconsequential. 3. The court held that the balance of convenience and inconvenience was in favor of granting an injunction, as the plaintiff would suffer irreparable loss and injury if the injunction was not granted, and that the delay in moving the application was not consequential.
Final Decision: The court granted an injunction restraining the defendant from infringing the plaintiff's trademark 'EFACID' by selling goods under the name 'EFCID' or 'EFCID-CA' till the disposal of the suit.
Bhaskar Bhattacharya, J.
1. THE question that arises for determination in these applications is whether the plaintiff, a manufacturer of anti reflux antacid, under the registered trade mark "EFACID", in an action for infringement of trade mark as well as of passing off is entitled to get an order of temporary injunction restraining the respondents their servants, agents and assigns from in any manner infringing the plaintiff's trade mark "EFACID" by selling antacid under the names "EFCID" or "EFCID-CA" or any other name deceptively similar there to.
2. THERE is no dispute that the trade mark "EFACID" has been duly registered by the Registrar of Trade Marks on June 2, 1986. By reason of the aforesaid fact, the petitioner has the sole and exclusive right to use the said trade marks to the exclusion of others.
The case made out by the petitioner in this application is that in or around October 2000 the petitioner came to learn that the respondent No. 1 had introduced an antacid formulation in tablet and in suspension form and was selling the same under the name "EFCID". The said name "EFCID" used by the respondent No. 1 was identical and/or deceptively similar to that of the petitioner's said product. By a letter dated October 25, 2000 the petitioner asked the respondent No. 1 not to infringe the said trade mark "EFACID". By a letter dated November 2, 2000 the respondent No. 1 informed the petitioner that they had already change the name of their product from "EFCID" to "EFCID-CA" and claimed that addition of the word "CA" as suffix would distinguish the same from the petitioner said trade mark.
3. ACCORDING to the petitioner, the addition of the said suffix by the respondent No. 1 was not sufficient to distinguish the respondent's product and was not in compliance with the notice dated October 25, 2000 and accordingly by a further notice dated November 16, 2000 the petitioner asked the respondent No. 1 to forthwith cease and desist from the use of the said trade mark. Inspite of service of such notice, the respondent No. 1 having failed to company with the demand the petitioner instituted the present action.
4. INITIALLY, a learned Single Judge of this Court granted an ad-interim order of injunction on the application filed by the present petitioner. Subsequently, the respondent having come up with an application for vacating the said interim injunction, another learned Single Judge of this Court varied the said interim order and passed a direction to expedite the hearing of the main injunction application by treating the application for variation of interim order as affidavit-in-opposition to the main application and asking the petitioner to file affidavit-in-opposition to the application for variation within a specified period by treating the same as affidavit-in- reply. Thus, the instant matter has come up for hearing.
The defence of the respondent is that the words "EFCID-CA", colour scheme, the get up, the layout and the allied features form a composite and compact set of features which is distinctive trade dress of the respondent's product. According to the respondent, the trade dress of plaintiff's product consists of a green plastic bottle bearing the label which is in a colour scheme of white, black and two shades of green and the label of the plaintiff's product bearing the name of the product "EFACID" in a dark block letters in black colour with the composition of the product being Sodium Aliginate, Magnesium Carbonate Suspension and Magaldrate written on the top of it in thinner version of capital letter again in black colour. The other features of the label includes the term "suspension", the aspect of flavour "Mint Flavoured", Anti Reflux Antacid ; the name of the plaintiff along with The address of its place of business ; composition in miligrammes being "Sodium Aliginate U.S.N.F.-100 mg., Light Magnesium Carbonate I.P.-40 mg., Magaldrate I.P.-500 gm., dosage" as directed by physician" and other mandatory f
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