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High Court Of Delhi
BIOFARMA - Appellant
Versus
SANJAY MEDICAL STORE - Respondent
Interim Application 11683 of 1995
Decided On : 03/31/1997
TRADEMARK - INFRINGEMENT AND PASSING OFF - SIMILARITY OF MARKS - DECEPTIVE SIMILARITY - FACTORS TO CONSIDER - SCHEDULE H DRUGS - AVAILABILITY ON DOCTOR'S PRESCRIPTION - RELEVANCE - UNDERTAKING TO PAY DAMAGES.
Fact of the Case:
Plaintiffs, owners of the registered trademark 'flavedon' for pharmaceutical preparations, filed a suit and an application for a temporary injunction against the defendants, alleging infringement and passing off of their trademark by the defendants' use of the trademark 'trivedon' for a similar product. The defendants contended that the two trademarks were visually and phonetically dissimilar and that there was no likelihood of confusion or deception.
Finding of the Court:
The court held that the two trademarks were prima facie dissimilar and that the factors to be considered in determining deceptive similarity, including the nature of the marks, the degree of resemblance, the nature of the goods, the class of purchasers, and the mode of purchase, did not support a finding of deceptive similarity. The court also noted that the products were Schedule H drugs, available only on doctor's prescription, which reduced the likelihood of confusion or deception.
Issues: Whether the defendants' trademark 'trivedon' was deceptively similar to the plaintiffs' registered trademark 'flavedon', causing infringement and passing off.
Ratio Decidendi: The court applied the principles of trademark law, including the test for deceptive similarity and the factors to be considered in determining such similarity. The court also considered the nature of the products as Schedule H drugs, available only on doctor's prescription, and the relevance of this factor in reducing the likelihood of confusion or deception.
Final Decision: The court dismissed the plaintiffs' application for a temporary injunction, subject to the condition that the defendants furnish an undertaking to pay damages if, on the merits of the case, the court ultimately decides in favor of the plaintiffs. The defendants were also directed to continue maintaining accounts of the sale and submit them quarterly to the court until the disposal of the suit.
( 1 ) IN the suit instituted by the plaintiffs praying for a permanent injunction restraining the. defendants, their servants, agents, dealers and stockists from using the trade mark trivedon or any other trade mark which isstated to bedeceptively similar with the trade mark flavedon of the plaintiffs and for infringement of trade mark and passing offdamages. The plaintiffs also filed an application under Order 39 Rules I and 2 of the Civil Procedure Code praying for grant of a temporary injunction against the defendants from manufacturing and selling, offering for sale medicinal preparations and pharmaceuticals under the trade mark trivedon or any other trade mark which is deceptively similar with the trade mark of the plaintiff s flavedon . The aforesaid application was registered as IA 11683/ 95. The defendants have filed their written statement as against the suit instituted by the plaintiffs and have also filed reply to the application. The said application was set out for hearing before me on which I have heard the learned Counsel appearing for the parties and accordingly, I propose to dispose of the said application by the present order.
( 2 ) ACCORDING to the plaintiffs, the trade mark flavedon is a registered trade mark of the plaintiff No. 1 in India having been so registered under No. 337006 dated 30. 5. 1978 in Class 5 in respect of pharmaceutical preparation and substance. The aforesaid registration of trade mark is stated to be in force and stands renewed from time to time. In view of the aforesaid registration in their favour and by virtue of use, the plaintiff No. 1 is exclusively entitled to use the said trade mark flavedon in relation to the goods for which it is registered. The plaintiff No. 1 has allowed plaintiff No. 2 to use the abovesaid trade mark in respect of the goods under register user agreement in pursuance of which the plaintiff No. 2 has been manufacturing and selling the said product flavedon in respect of the abovesaid goods which are prescribed for heart ailments.
( 3 ) THE product under the trade mark flavedon is the largest prescribed drug in the French market and the same was introduced in India for the first time in the year 1987. It is stated that the plaintiff No. 1 has also spent considerable amount by way of promotion expenditure for popularising the said trade mark. As a result of intrinsic good quality of the productmarketed, sold and dealt with by the plaintiffs, the product under the said trade mark flavedon have acquired a unique and enviable reputation and exclusive goodwill.
( 4 ) IT recently came to the knowledge of the plaintiffs that the defendants are marketing pharmaceutical products and has adopted the trade mark trivedon in respect of drugs prescribed for the treatment of heart ailments, coronery diseases. It is stated that the adoption of the trade mark trivedon by the defendants is visually and phonetically deceptively similar to the registered trade mark flavedon of the plaintiff in respect of the same or similar drugs and thereby the defendant No. 2 is infringing the trade mark of the plaintiff. Accordingly, the present suit has been instituted by the plaintiffs claiming for the aforesaid reliefs.
( 5 ) THE defendant No. 2 contested the suit as also the application under Order 39 Rules 1 and 2 and filed its reply opposing the relief sought for by the plaintiffs for grant of a temporary injunction. In the written statement and reply filed by the defendant No. 2, the following defences have been raised :
(A) That the two trade marks, namely, flavedon and trivedon are different as the opening syllable are completely different and different and the suffix vedon is commonly used by a number of other pharmaceutical manufacturers.
(B) That the pharmaceutical preparation in question being Trimetazidine being Schedule h drug and more so, being used for the treatment of ischemetic heart diseases. Any invariable purchaser is not li
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