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1998 Supreme(Del) 541
High Court Of Delhi
SENOR LABORATORIES LIMITED - Appellant
Versus
JAGSONPAL PHARMACEUTICALS LIMITED - Respondent
Decided On : 07/28/1998
In a passing off action, prior user of a trademark has rights even over a later registered user, and to obtain an interim injunction, the party seeking the injunction must establish distinctive features, substantial user, and wide reputation of the impugned trademark.
Headnote:
TRADEMARK - PASSING OFF - PRIOR USER - INJUNCTION - DISTINCTION FEATURES - SUBSTANTIAL USER - WIDE REPUTATION - BALANCE OF CONVENIENCE - IRREPARABLE INJURY:
Fact of the Case:
Plaintiff, Jagsonpal Pharmaceuticals Ltd., filed a suit for permanent injunction and rendition of accounts, alleging that it had been using the trademark SEFLOX since April 1, 1990, and had applied for its registration in 1993. Defendant, Senor Laboratories, claimed to have adopted the trademark in 1991 and filed for registration in 1992. Both parties filed applications for interim injunctions.
Finding of the Court:
The court found that the plaintiff had not established prior user of the trademark SEFLOX, as its documentary evidence suggested that it started using the mark in 1993, not 1990. On the other hand, the defendant had established prima facie evidence of prior user since August 1992. The court also found that the defendant had established a case for grant of interim injunction, considering the substantial user, wide reputation, and distinctiveness of its trademark.
Issues: 1. Whether the plaintiff had established prior user of the trademark SEFLOX? 2. Whether the defendant had established a case for grant of interim injunction?
Ratio Decidendi: 1. In a passing off action, prior user of a trademark has rights even over a later registered user. 2. To succeed in obtaining an interim injunction in a passing off action, the party seeking the injunction must establish distinctive features, substantial user, and wide reputation of the impugned trademark. 3. Balance of convenience and irreparable injury are also relevant factors in determining whether to grant an interim injunction.
Final Decision: The court allowed the defendant's appeals, set aside the impugned order, dismissed the plaintiff's application for interim injunction, and granted the defendant's application for interim injunction, restraining the plaintiff from using the trademark SEFLOX or any deceptively similar mark.
( 1 ) BY the order dated July 18, 1996 the learned Single Judge allowed I. A. 9918/1995 and dismissed I. As. 12447/1995 and 12451/1995. FAO (OS) No. 292/1996 is directed against the order in I. As. 9918/1995 and 12447/1995 while FAO (OS) No. 293/1996 against the order in I. A. 12451/1995. Since both the appeals arise out of a common order, we propose to dispose them of by this common order.
( 2 ). Suit for permanent injunction and rendition of accounts etc. was filed by M/s. Jagsonpal Pharmaceuticals Ltd. , plaintiff/respondent, inter alia, alleging that it is an established Company engaged in the business of manufacturing and marketing of medicinal and pharmaceutical preparations. Plaintiff adopted the trade mark SEFLOX on April 1, 1990 in respect of one of its pharmaceutical preparations and has been continuously using it upto this time. Plaintiff widely advertised the said trade mark through. different medias. It has now become distinctive and associated with the plaintiff on account of long, extensive and exclusive user thereof. In order to acquire statutory rights of the said trade mark plaintiff filed an application in the office of Trade Marks Registry at New Delhi for its registration under No. 589743 in Class 5 of the fourth schedule of the Trade and Merchandise Marks Act, 1958 (for short the act ) on February 1,1993. It is further alleged that the defendant is also engaged in the business of manufacturing and marketing pharmaceutical formulations and adopted the aforesaid trade mark in relation to its goods in the first week of August, 1995 as is evident from the defendant s notice dated nil issued to the plaintiff through Counsel Shri S. Subramaniam Reddy. Defendant has been passing off its goods under the said trade mark as that of the plaintiff and has not given up the use of the trade mark despite the plaintiff s communication dated August 10, 1995. Adoption of the trade mark SEFLOX by the defendant is dishonest and the plaintiff has been suffering loss both in business and reputation.
( 3 ). Alongwith the suit aforementioned I. A. 9918/1995 under Order XXXIX, Rules 1 and 2 read with Section 151, Civil Procedure Code was filed by the plaintiff and by the order dated October 19,1995 M/s. Senor Laboratories, defendant/appellant was restrained from manufacturing, selling, offering for sale, advertising, displaying, directly or indirectly dealing in pharmaceutical formulation under the said trade mark SEFLOX or any other trade mark identical with or deceptively similar with that trade mark until further orders.
( 4 ). Defendant contested the suit by filing written statement. It also filed counter-claim for permanent injunction, rendition of accounts and damages against the plaintiff. It is alleged that the defendant coined and adopted the trade mark SEFLOX in 1991. On December 13, 1991 defendant applied for registration of the said trade mark in its name by filing application which was numbered as563781 and is pending before the Register of Trade Marks. On January 23,1992 defendant was issued adrug manufacturing licence bearing No. 980/ AP for various pharmaceutical preparations including SEFLOX. It is further alleged that the defendant has been selling the pharmaceutical preparations under the aforesaid trade mark since August, 1992. In the month of March, 1993 when the defendant came to know that the plaintiff is also manufacturing and selling its product under the above trade mark it contacted the plaintiff and the plaintiff assured that it will give up the use of said mark after exhausting the stock of the manufactured tablets. In August, 1995 when the defendant learnt that the plaintiff has not given up the use of the said trade mark it got a legal notice served on it in the first week of August, 1995. Immediately thereafter the plaintiff filed the present suit and obtained an ex-parte interim injunction on false allegations. It is stated that the alleged sales shown by the plaintiff in Annexure
