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High Court Of Delhi
NOVARTIS AG - Appellant
Versus
WANBURY LTD. - Respondent
I.A. : 3609 of 2005
Decided On : 07/04/2005
CORIMINIC - Trademark Infringement - Trade Marks Act, 1999 - Section 2(h), Section 29 - The court discussed the phonetic similarity between the marks, the nature of the goods, and the class of purchasers. It also considered the issue of delay, laches, and acquiescence in deciding the question of deceptive similarity.
Fact of the Case:
The plaintiff, a Swiss pharmaceutical company, sought an injunction against the defendants for trademark infringement. The defendants were manufacturing and selling a cough syrup under the trademark CORIMINIC, which the plaintiff alleged to be deceptively similar to their trademarks TRIAMINIC and TRIOMINIC. The defendants denied the allegations and claimed that their product was distinct.
Finding of the Court:
The court found that there was no phonetic similarity between CORIMINIC and TRIAMINIC/TRIOMINIC. It also considered the nature of the goods, the class of purchasers, and the surrounding circumstances in determining deceptive similarity. The court dismissed the plaintiff's injunction application, citing the failure to establish a prima facie case.
Issues: The main issue was whether the defendants' trademark CORIMINIC was deceptively similar to the plaintiff's trademarks TRIAMINIC and TRIOMINIC, leading to confusion or deception among consumers.
Ratio Decidendi: The court applied the principles of deceptive similarity under the Trade Marks Act, 1999, and considered factors such as phonetic similarity, nature of goods, class of purchasers, and surrounding circumstances. It also discussed the defense of delay, laches, and acquiescence in trademark infringement cases.
Final Decision: The court dismissed the plaintiff's injunction application, ruling that there was no phonetic similarity between the marks and that the plaintiff had failed to establish a prima facie case. The defendants were directed to keep a separate record of sales for future relevance.
( 1 ) I dispose of IA No. 3609/2005 filed by the plaintiff under Order 39 Rule 1 and 2, CPC praying that for the reasons stated in the affidavit accompanying the injunction application, the defendants, their representative agents, assigns, successors, dealers, servants be restrained by an interlocutory injunction restraining them from manufacturing, packing, selling, distributing, marketing, dealing with any product bearing the trade mark CORIMINIC or any other trade mark deceptively similar to the plaintiff s trade mark TRIAMINIC and/or TRIOMINIC and from using a packaging/ trade dress which is deceptively similar to the packaging/trade dress of the goods sold under the plaintiff s trade mark TRIAMINIC.
( 2 ) PLAINTIFF is a swiss company manufacturing and selling pharmaceutical preparations. First defendant is a company registered in India and upto 6. 9. 2004 was functioning as the distributor of the plaintiff in India. Second defendant, also a company registered in India is manufacturing a cough syrup for the first defendant. The syrup is being marketed under the trade mark coriminic. Plaintiff is manufacturing and selling cough syrup under the trade mark TRIAMINIC and TRIOMINIC.
( 3 ) CASE of the plaintiff is that the first defendant was a subsidiary and affiliated company of the plaintiff upto 1996 and was a licensed user of the trade mark TRIAMINIC. Post 1996, first defendant ceased to be a subsidiary of the plaintiff and the relationship between the two was purely contractual. Licence was valid upto 31. 12. 2001. In May 2001, plaintiff reminded first defendant that the licence agreement would come to an end on 31. 12. 2001. First defendant acted mala fide. It filed an application for removal of the plaintiff s registered trade mark at the office of the Registrar of Trade Marks at Mumbai and also introduced in the market an inferior product under the trade mark NUMINIC in a packaging which was deceptively similar to that of the plaintiff. Plaintiff filed a suit in this Court being suit No. 372/2002 praying that first defendant be restrained from infringing the plaintiff s registered trade mark. Parties entered into a settlement which resulted in the passing of a consent decree on 28. 8. 2002. As per the decree, first defendant agreed not to use the trade mark triaminic or any other mark deceptively similar thereto as alsp from using packaging material, label, wrapper or carton having same or similar getup, layout or colour combination as that of the plaintiff s. First defendant assigned the trade mark NUMINIC to the plaintiff. It also agreed to withdraw all litigations initiated by it. First defendant acknowledged plaintiff s proprietary right over the trade mark TRIAMINIC. Consent decree required first defendant to be appointed as a distributor and marketing agent of the plaintiff s products and accordingly plaintiff caused its subsidiary in India Novartis Consumer healthcare Pvt. Ltd. to enter into a Distribution and Marketing Agreement on 19. 12. 2002. Alleging breach by the first defendant of the agreement dated 19. 12. 2002, plaintiff terminated the agreement on6. 9. 2004 and sought execution of the consent decree.
( 4 ) IT is further pleaded by the plaintiff that it s medicine under the trade mark TRIAMINIC are manufactured by M/s. Hi Tech Pharmaceuticals Pvt. Ltd. in Andhra Pradesh and M/s. Bangalore Pharmaceuticals and Research pvt. Ltd. at Bangalore. First defendant caused a suit to be filed by its distributor, M/s. Vijay Sai Medical Distributors praying to restrain M/s. Hi tech Pharmaceuticals Pvt. Ltd. from manufacturing or selling medicines under the trade mark TRIAMINIC. An ex parte ad interim injunction was obtained. M/s. Hi Tech Pharmaceuticals Pvt. Ltd. sought vacation of the ex parte order and in the meanwhile started manufacturing the medicine under the trade mark T-MINIC . M/s. Vijay Sai Medical obtained another order restraining M/s. Hi Tech Pharmaceuticals Pvt. Ltd. from manufact
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