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High Court Of Delhi
S.B.L.LIMITED - Appellant
Versus
HIMALAYA DRUG COMPANY - Respondent
First Appeal (OS) 301 of 1996
Decided On : 07/15/1997
TRADEMARK - INFRINGEMENT - PASSING OFF - DECEPTIVELY SIMILAR - COMMON TO THE TRADE - GENERIC - PUBLIC JURIS - MEDICINES AND PHARMACEUTICALS - STATUTORY REGULATIONS - ADDITIONAL CONSIDERATIONS - TEST FOR JUDGING - LIKELIHOOD OF DECEPTION - BURDEN OF PROOF - DELAY IN BRINGING ACTION - MANDATORY PROVISIONS OF ORDER 39 RULE 3 CIVIL PROCEDURE CODE - NON-COMPLIANCE - EFFECT.
Fact of the Case:
The plaintiff, a manufacturer of Ayurvedic medicines, filed a suit against the defendant, a manufacturer of Homoeopathic medicines, for infringement of its trademark LIV. 52 and passing off its product LIV-T as that of the plaintiff. The plaintiff claimed that the defendant's trademark was deceptively similar to its own and was likely to cause confusion among consumers. The defendant contended that the word 'liv' was an abbreviation of 'liver', a human organ, and was therefore generic and publici juris. It also argued that the goods were sold only on prescription and by licensed dealers, which reduced the likelihood of deception or confusion.
Finding of the Court:
The court held that the word 'liv' was generic and publici juris, and that the defendant's trademark was not deceptively similar to the plaintiff's. It also held that the goods were sold only on prescription and by licensed dealers, which reduced the likelihood of deception or confusion. The court further held that the plaintiff had failed to discharge its obligation to comply with the mandatory provisions of Order 39 Rule 3 Civil Procedure Code, which required it to serve a complete set of pleadings on the defendant within three days of obtaining an ex parte injunction. As a result, the court vacated the ex parte injunction and dismissed the plaintiff's application for an injunction.
Issues: 1. Whether the defendant's trademark LIV-T was deceptively similar to the plaintiff's trademark LIV. 52? 2. Whether the word 'liv' was generic and publici juris? 3. Whether the goods were sold only on prescription and by licensed dealers, which reduced the likelihood of deception or confusion? 4. Whether the plaintiff had failed to discharge its obligation to comply with the mandatory provisions of Order 39 Rule 3 Civil Procedure Code?
Ratio Decidendi: 1. The court held that the word 'liv' was generic and publici juris, and that the defendant's trademark was not deceptively similar to the plaintiff's. It relied on the following principles: * A trademark is deceptively similar to another mark if its so nearly resembles that other mark as to be likely to deceive or cause confusion. * The test for determining whether a trademark is deceptively similar is the overall similarity of the marks, considering their visual, phonetic, and conceptual elements. * A word or phrase that is generic or publici juris cannot be appropriated as a trademark. * The likelihood of deception or confusion is reduced when the goods are sold only on prescription and by licensed dealers. 2. The court held that the plaintiff had failed to discharge its obligation to comply with the mandatory provisions of Order 39 Rule 3 Civil Procedure Code, which required it to serve a complete set of pleadings on the defendant within three days of obtaining an ex parte injunction. As a result, the court vacated the ex parte injunction and dismissed the plaintiff's application for an injunction.
Final Decision: The appeal was allowed. The impugned order of injunction granted by the learned single Judge was set aside. The plaintiff-respondent's application seeking the injunction was dismissed. Defendant-appellants' application seeking vacating of the ex parte injunction was allowed. No order as to costs.
( 1 ) THS defendants have come up in appealteclh^ a^gr. tived by the ordw dated 12-7-^c- passed by a learnedsingle Judat, of this Court (Onginal Side) confirming the ex parteorder of iahjnctionandreie:wgthe defendants applicahoil forvac . ition of the ex parts order of injunction dated 23-5-96 in alrxie mark -case.
( 2 ) THE plaintiff Himalaya Drug Co. is engaged in the manufacture and sale of Ayurvedic medical preparations since 1930. Oneof the preparations manufactured and marketed by the plaintiff isunder the trade mark Liv. 52. It is a liver tonic prescribed forliver disorder and to protect the liver against various dysfunction,damage and hepatotoxins. It is also advised for promoting appetiteand gn. wth. The trade mark Liv. 52 is registered since 10-7-57 inclass 5 as medical preparation for the treatment of disorders ofliver. The Liv. 52 label is also registered in class 5 as medicalpharmaceutical and Ayurvedic preparation and substances since25-2-87.
( 3 ) THE grievance of the plaintiff is against the use by the defendant of the trade mark LIV-T for its similar product the defendants are also manufacturers and merchants of Homoeopathic pharmaceutical preparations.
( 4 ) ACCORDING to the plaintiff the mark Liv. 52 is a coined word. It has acquired tremendous goodwill in the market and is associatedexclusively with the plaintiff. The defendants have come to themarket in 1996 with the mala ride and fraudulent intention of utilising the goodwill earned by the plaitiff The mark LIV-T isdeceptively similar with the mark Liv. 52 of the plaintiff and islikely to mislead or confuse those who are likely to purchase suchpreparations in the market. The plaintiff complains of infringementof its trade mark as also passing off by the defendants.
( 5 ) ACCORDING to the defendants they are renowned manufacturesof Homoeonathic and Ayurvedic preparations. They have a collaboration with BIRON Lab of France from whom they have obtainedthe technical know-how for many of its Homoeopathic formulations. They obtained a drug licence to manufacture its LIV-T formulationin the year 1987. They also applied for registration of the trademark LIV-T together with bits packaging carton in April, 1988. The application No. 490010 is pending with the Registrar of thetrade Marks. Ever since 1989 they have been marketing theirpreparations under their trade mark and figures of sales have risenfrom Rs. 96,843 in the year 1988-89 to Rs. 46,68,614 in 1995-96.
5. 1 The defendants have also submitted that the word liv isan abbreviation of Liver, a human organ. There are a good numberof medicines already in the market associated with treatment of liverailments/disorders using the word Liv as suggestive of liver andprefixing or suffixing words or figures so as to confer a distinctionon the name associated with the manufacturer or trade". It is submitted by the defendant that mark LIV-T is neither similar to nordeceptive with the plaintiff s mark Liv-52. Such medicines cannotbe manufactured without a drug licence nor sold in retail withoutany medical prescription. It is not likely that the prosepective customer would be deceived or confused. The defendants have alsopleaded as their defence the delay in bringing the action by theplaintiff.
5. 2 The defendants have filed a certificate issued by Charteredaccountant certifying the figures of sales relied on by them. Thedefendants have also filed search report dated 31-5-96 which goesto show hundreds of medical/pharmaceutical preparations availablein the market with trade marks, one of the components whereof is liv, used in association with other wolds or figures. It is not necessary to reproduce entire result of search. It would suffice to mentiona few trade marks which are already in the market being used byseveral companies. LIV as an abbreviaiton of LIVER is a genericterm or a descriptive word its use suggesting reference of the preparation to liver. It has become public juris on which no one cancla
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