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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 - PASSING OFF - SIMILARITY - DECEPTIVE SIMILARITY - ESSENTIAL FEATURES - BALANCE OF CONVENIENCE - DELAY - GET UP AND COLOUR OF MEDICINE - IRREPARABLE LOSS AND INJURY - "EFACID" AND "EFCID-CA" - REGISTERED TRADEMARK - ADDITION OF SUFFIX "CA" - DECEPTIVE SIMILARITY - TEMPORARY INJUNCTION GRANTED.
Fact of the Case:
The plaintiff, a manufacturer of anti-reflux antacid under the registered trademark "EFACID," filed an action 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 claimed that the defendant's trademark was deceptively similar to its registered trademark and that the defendant's actions were causing confusion among consumers.
Finding of the Court:
The court found that the defendant's trademark "EFCID-CA" was deceptively similar to the plaintiff's registered trademark "EFACID." The court held that the essential features of the plaintiff's trademark had been adopted by the defendant, and that the addition of the suffix "CA" did not sufficiently distinguish the defendant's product from the plaintiff's. The court also found that the plaintiff had made out a strong prima facie case of infringement of trademark and passing off, and that the balance of convenience and inconvenience was in favor of granting a temporary injunction.
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 of infringement of trademark and passing off. 3. Whether the balance of convenience and inconvenience was in favor of granting a temporary 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 or indicate clearly a trade origin different from that of the registered proprietor of the mark would be immaterial. 2. The court also considered the decision of the Supreme Court in Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd., 2001 PTC 300 (SC), which held that in a country like India, where there is no single common language and a large percentage of the population is illiterate, the court should consider the fact that purchasers may have no knowledge of English or the language in which the trademark is written and to whom different words with slight differences in spelling may sound phonetically the same.
Final Decision: The court granted a temporary injunction restraining the defendant, its servants, agents, and assigns from infringing in any manner 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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