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IN THE HIGH COURT OF CALCUTTA
I.P. Mukerji, J.
Sirmour Remedies Private Limited - Petitioner
Versus
Kepler Healthcare Private – Respondent
G.A. No. 3276, 3427, 3277, 3428, 3278, 3426, 3279, 3425 of 2013, C.C No. 133 of 2013 and C.S. No. 387, 388, 386, 385 of 2013
Decided on : 31-01-2014
For the Petitioner:S.K. Kapoor, Senior Advocate, Mr. Pratap Chatterjee, Senior Advocate, Debal Banerjee, Senior Advocate, S.N. Mookerjee, Senior Advocate, Tilak Bose, Senior Advocate with Ranjan Bachawat, Debnath Gosh, Advocates.
For the Respondent:Ajay Kr. Gupta, Senior Advocate with Jatin Trivedi, Ankur Jain, Tejendra Singh Jhala, Nakul Sharadalal, Heera Jain, Kaninika Ghosh, Advocates.
An employee who holds confidential information and trade secrets of an employer cannot misutilise the same for his own gain and causing loss to the employer.
Headnote:
TRADEMARK - INFRINGEMENT - PASSING OFF - CONFIDENTIAL INFORMATION - TRADE SECRET - INJUNCTION - PHARMACEUTICALS - SIMILAR MARKS - PUBLIC HEALTH - DECEPTION - PRIOR USER - MISAPPROPRIATION - EMPLOYEE - CONFIDENTIALITY - SPRINGBOARD DOCTRINE - SECONDARY MARKS - MULTIPLE BRANDS - REMEDIES - DESTRUCTION OF GOODS - JOINT SPECIAL OFFICERS - REMUNERATION - REMOVAL OF ACTIVE INGREDIENTS.
Fact of the Case:
The plaintiffs, a group of pharmaceutical companies, sued the defendants, a company promoted by a former employee of the plaintiffs and his wife, for trademark infringement, passing off, and misappropriation of trade secrets. The plaintiffs alleged that the defendants had stolen eleven of their trademarks and were using them to sell medicinal products that were deceptively similar to the plaintiffs' products. The plaintiffs sought an injunction restraining the defendants from selling the infringing products and an order for the destruction of the infringing goods.
Finding of the Court:
The court found that the plaintiffs had prior user of the eleven trademarks and that the defendants had misappropriated the plaintiffs' trade secrets. The court held that the defendants' use of the infringing marks was likely to cause confusion and deception among consumers and that the plaintiffs were entitled to an injunction restraining the defendants from selling the infringing products. The court also ordered the destruction of the infringing goods.
Issues: 1. Whether coinage of the subject trademarks could be called a trade secret or confidential information? 2. Whether the defendants were guilty of stealing this trade secret from the plaintiff? 3. Whether the defendants were guilty of passing off their goods as those of the plaintiff?
Ratio Decidendi: 1. Information regarding coinage of new trade marks can be classified as trade secrets and confidential information of an employer which may be entrusted with an employee. 2. An employee who holds confidential information and trade secrets of an employer cannot misutilise the same for his own gain and causing loss to the employer. 3. The use of deceptively similar trademarks by a former employee of the plaintiffs to sell medicinal products that were deceptively similar to the plaintiffs' products amounted to passing off.
Final Decision: The court granted the plaintiffs' application for an injunction restraining the defendants from selling the infringing products and ordered the destruction of the infringing goods.
I.P. Mukerji, J.
Each of the plaintiff companies ("the plaintiff") is a pharmaceutical company. It sells various medicinal products under different brand names. They are a group. They call themselves the Mankind Group. The second defendant was the Sales Manager of their Ahmedabad division in Gujrat. The third defendant is his wife. The first defendant is a company promoted by the husband and the wife.
2. This defendant company started selling eleven or twelve medicinal products, under eleven different trade marks, in the market. Although the marks are eleven, the medicinal products are twelve. A table showing the twelve products and the eleven marks is set out below:
SAME COMPOSITION
Sr.No.
Kepler Brand Name
Kepler Composition
Mankind Group Brand Name
Mankind Group Composition
1
KEPODIL
Cefpodomime
KEPODIL
Cefpodoxime
2
KEPREB
Rabeprazole
KEPREB
Rabeprazole
3
D3FLOW
Vitamin D3
D3FLOW
Vitamin D3
4
KEPTRON
Ondansetron
KEPTRON
Ondansetron
5
TWAGIC
Aceclofenac Paracetamol
TWAGIC
Aceclofenac +
Paracetamol6
BEE12 OD
Methylcobalamin
BEE12 OD
Methylcobala min
7
KEP-X
Terbutaline +
Guaiphenesin +
BromhexineKEP-X
Terbutaline +
Guaiphenesin
Bromhexine8
KEP-D
Dextromethorphan
Chlorpheniramine
maleate +
PhenylephrineKEP-D
Dextromethorphan +
Chlorpheniramine
maleate +
Phenylephrine
DIFFERENT COMPOSITION
Sr.No.
Kepler Brand Name
Kepler Composition
Mankind Group Brand Name
Mankind Group Composition
1
AMOKAV
Amoxicillin +
Clavulanic acidAMOKAV
Amlodipine Besilate
2
MOISER Cream
Aloe Vera + Wheat
Germ Oil + Honey
Extract + Tea Tree
Oil CreamMOISER Tablet
Metformin
3
KEPTAFINE
Terbinafine
KEPTAFINE
Fluconazole
4
NOSIER
Cetirizine +
Phenylephrine +
Paracetamol + ZincNOSIER
Cetrizine
3. One will notice that the mark KEP of the Mankind Group is also used with slight variation by the defendants by the marks KEP-X and KEP-D. What is shell shocking is that one brand is used to sell two different medicinal preparations, one by the plaintiff and the other by the defendants. This is the case with four brands tabulated in the second part of the table above. The effect of this is disastrous. Take the brand AMOKAV. The composition of the plaintiff's drug helps in reduction of hypertension whereas the composition of the defendants` drug is a powerful antibiotic used for many purposes. If a physician just wrote AMOKAV in the prescription there was every likelihood of the wrong drug being handed out by the pharmacist. I had pointed out the public danger in the sale of these kinds of drugs in the interim order made by me in this application on 8th November 2013, apart from the utter confusion that would be caused in the trade.
4. The plaintiff is seriously aggrieved. They claim that all these eleven marks were coined by them and belong to them. These marks have been allegedly stolen by these defendants (hereafter "the defendants"). They are trading on the goodwill of the plaintiff by marketing their medicinal products under those brand names and making profit, according to the plaintiff. They seek an order of injunction restraining the defendants from marketing these eleven medicinal products. They want a Receiver to take possession of those goods and destroy them so that they cannot be surreptitiously sold in the market.
5. However, none of these marks are registered, although both the plaintiff and the defendant companies have made applications for their registration.
6. There are four plaintiff companies. Mankind Pharma Ltd claims to be the proprietor of seven out of eleven trade marks. The other three plaintiff companies claims ownership of the other four marks. The group claims ownership of the mark or brand KEP. Th
