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High Court Of Delhi
CHARAK PHARMACEUTICALS - Appellant
Versus
DEEPHARMA LIMITED - Respondent
Decided On : 07/22/1998
TRADEMARK - INFRINGEMENT - SIMILARITY OF MARKS - DECEPTIVE SIMILARITY - LIKELIHOOD OF CONFUSION - INJUNCTION - BALANCE OF CONVENIENCE - IRREPARABLE INJURY - SECTION 29 (1) OF THE TRADE AND MERCHANDISE MARKS ACT, 1958.
Fact of the Case:
Plaintiff, the proprietor of the registered trademark ALSAREX for pharmaceutical preparations used to treat ulcers, filed a suit for permanent injunction and damages against the defendant, who had applied for registration of the trademark ULCEREX for similar pharmaceutical preparations. The plaintiff alleged that the defendant's trademark was deceptively similar to its own and would cause confusion among consumers.
Finding of the Court:
The court found that the defendant's trademark ULCEREX was phonetically similar to the plaintiff's trademark ALSAREX and that both trademarks were used for pharmaceutical preparations meant to treat ulcers. The court also noted that the defendant had claimed to have used the trademark ULCEREX since 1985, which was much later than the plaintiff's use of the trademark ALSAREX.
Issues: 1. Whether the defendant's trademark ULCEREX was deceptively similar to the plaintiff's trademark ALSAREX. 2. Whether the use of the defendant's trademark ULCEREX was likely to cause confusion among consumers. 3. Whether the plaintiff had made out a prima facie case for an injunction.
Ratio Decidendi: The court held that the defendant's trademark ULCEREX was deceptively similar to the plaintiff's trademark ALSAREX and that the use of the defendant's trademark was likely to cause confusion among consumers. The court also held that the plaintiff had made out a strong prima facie case for an injunction, as the defendant's use of the trademark ULCEREX infringed the plaintiff's registered trademark ALSAREX under Section 29 (1) of the Trade and Merchandise Marks Act, 1958.
Final Decision: The court dismissed the defendant's application to vacate the ex parte ad interim injunction and made the injunction absolute. The court also allowed the plaintiff's application for a permanent injunction, restraining the defendant from using the trademark ULCEREX or any other trademark deceptively similar to the plaintiff's trademark ALSAREX.
( 1 ) THIS order will govern the disposal of las. 6522/96 and 7562/96.
( 2 ) SUIT for permanent injunction and damages etc. was filed, inter alia, alleging that. one of the pharmaceutical preparations, namely ALSAREX manufactured and sold by the plaintiff is meant to heal ulcers and check recurrence of ulcers which normally occur in stomach, duodenum, oesophagus and Meckel s diverticulum. Plaintiff got the trade mark ALSAREX registered under No. 231783 as on 18th October, 1965 in clause 5 and the registration is valid upto 17th October, 2000. Plaintiff has spent considerable sum on promotional literature in respect of the said trade mark and the year-wise sales figure thereof for the period 1983-84 to 1993-94 are as under :-
( 3 ) IT is stated that defendant applied for registration of trade mark ULCEREX for pharmaceutical formulations vide application No. 467638. In the application defendant has claimed to have used the above trade mark ULCEREX since 9th July, 1985. Said application was advertised in the Trade Marks Journal No. 1062 dated 1st September, 1993 at page 494. Under Section 21 of the Trade and Merchandise Marks Act, 1958 (for short the Act ) the plaintiff opposed the application vide opposition No Del-8256. On completion of pleadings and evidence and hearing the parties, the Assistant Registrar of Trade Marks by the order dated 22nd March, 1986 allowed the plaintiffs opposition and refused the defendant s said application for registration mainly on the following grounds:-
(1) That the plaintiff s and the defendant s medicines are for curing same disease or disorder and they are sold through the same trade channel and that the defendant s trade mark ULCEREX so nearly resembles the plaintiff s trade mark ALSAREX whereby there will be dangerous consequences to the patient s health. Hence, under Sections 11 (a) and 12 (1) of the Act, registration of ULCEREX trade mark is prohibited,
(2) That the defendant cannot claim proprietorship of ULCEREX trade mark, under Section 18 (1) of the Act, due to the reason that although the defendant has claimed to have used that trade mark since 9. 7. 1985 yet, its evidence of use relates only to. the years 1990-91 and 1991 -92.
(3) That adoption of the defendant s trade mark ULCEREX was dishonest and that the defendant applied for registration of ULCEREX trade mark on 13. 2. 1987; but, it failed to prove use of that trade mark, on the date of the application. Hence, it is not registrable under Section 12 (3) of the Act.
( 4 ) IT is further alleged that aforesaid trade mark of the defendant is not only visually and phonetically similar but is also deceptively equivalent to the plaintiff s said trade mark ALSAREX. Defendant has thus infringed the plaintiffs aforesaid registered trade mark within the meaning of Section 29 (1) of the Act.
( 5 ) ALONGWITH suit aforementioned IA No. 6522/96 under Order XXXIX Rules 1 and 2 read with Section 151 Civil Procedure Code was filed by the plaintiff on which by the order dated 18th July, 1996 defendant was restrained from manufacturing, selling, offering for sale, advertising, directly or indirectly dealing in pharmaceutical preparations under the trade mark ULCEREX or any other trade mark which may be identical or deceptively similar to the plaintiffs trade mark ALSAREX till the next date of hearing and this order continues to operate till date.
( 6 ) IN the written statement defendant has alleged that it is the proprietor of trade mark ULCEREX in respect of pharmaceutical preparations and the same was adopted by it on 9th July. 1985: Defendant has been continuously using the trade mark till this date. It is stated that the defendant holds the registration for the aforesaid trade mark in various other countries as per details given below:-
( 7 ) IT is further pleaded that the defendant s preparation is allopathic while that of the plaintiff ayurvedic. Preparation of the defendant is schedule h drug which can only be sold on Doctor s presc
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