Back
High Court Of Delhi
WIN MEDICARE LIMITED - Appellant
Versus
DUA PHARMACEUTICALS PRIVATE LIMITED - Respondent
Interim Application 2444 of 1996
Decided On : 10/01/1997
TRADEMARK - INFRINGEMENT - PASSING OFF - INTERIM INJUNCTION - DICAMOL AND DICLOMOL - SIMILARITY - CONFUSION - BALANCE OF CONVENIENCE - IRREPARABLE INJURY - DECEPTIVE SIMILARITY - INJUNCTION GRANTED.
Fact of the Case:
Plaintiff, a pharmaceutical company, filed a suit for permanent injunction, restraining passing off, rendition of accounts of profits, delivery up, etc. against the defendants, alleging that the defendants were manufacturing and selling a pharmaceutical product under a deceptively similar mark, DICAMOL, which was likely to cause confusion with the plaintiff's well-known product, DICLOMOL.
Finding of the Court:
The Court held that the two marks, DICAMOL and DICLOMOL, were deceptively similar and likely to cause confusion among the public, and that the plaintiff had established a prima facie case for the grant of an interim injunction. The Court also held that the balance of convenience was in favor of the plaintiff and that irreparable injury would be caused to the plaintiff if the injunction was not granted.
Issues: 1. Whether the marks DICAMOL and DICLOMOL are deceptively similar and likely to cause confusion among the public? 2. Whether the plaintiff has established a prima facie case for the grant of an interim injunction? 3. Whether the balance of convenience is in favor of the plaintiff? 4. Whether irreparable injury would be caused to the plaintiff if the injunction is not granted?
Ratio Decidendi: 1. The Court held that the two marks, DICAMOL and DICLOMOL, were deceptively similar and likely to cause confusion among the public, based on the following factors: * The marks have the same first three letters and the same last three letters. * The marks are pronounced in an identical manner. * The marks are used in respect of the same or similar medicinal preparations. * The overall pattern of the cartons used for marketing the products is also similar. * Both marks are in capital letters of the same size and shape and are identical except for the syllables "lo" and "a". 2. The Court held that the plaintiff had established a prima facie case for the grant of an interim injunction, based on the following factors: * The plaintiff has a well-known product under the mark DICLOMOL. * The defendants are using a deceptively similar mark, DICAMOL, for their product. * There is a likelihood of confusion among the public between the two marks. * The plaintiff would suffer irreparable injury if the injunction is not granted. 3. The Court held that the balance of convenience was in favor of the plaintiff, based on the following factors: * The plaintiff has a superior position to that of the defendants. * The defendants intend to use the trade name deceptively similar to the trade name of the plaintiff. * The plaintiff would suffer greater harm if the injunction is not granted than the defendants would suffer if the injunction is granted. 4. The Court held that irreparable injury would be caused to the plaintiff if the injunction is not granted, based on the following factors: * There is a likelihood of confusion among the public between the two marks. * The plaintiff would lose customers and goodwill if the defendants are allowed to continue using the deceptively similar mark.
Final Decision: The Court granted the plaintiff's application for an interim injunction, restraining the defendants from manufacturing, selling, offering for sale, advertising, directly or indirectly, dealing in pharmaceutical/medicinal preparations under the mark DICAMOL or any other mark as may be identical with or deceptively similar to the plaintiff's trade mark/trade name DICLOMOL or from doing any other thing as may be likely to lead to passing off the goods and/or business of the defendants as that of the plaintiff's.
( 1 ) THIS Order will dispose of plaintiff s application (IA 2444/96) filed under Order 39 Rules I and 2 read with Section 151 of the Code of Civil Procedure, 1908 (hereinafter REFERRED TO as the CPC ) with the prayer that an interim injunction be granted restraining the defendants, its partners, or proprietors, as the case may be, their officers, agents and servants from manufacturing, selling, offering for sale, advertising, directly or indirectly dealing in a pharmaceuticals/medicinal preparations under the mark DICAMOL or any other mark as may be identical with or deceptively similar to the plaintiff s trade mark DICLOMOL or from doing any other thing as may be likely to lead to passing off the goods and/or business of the defendants as that of the plaintiff s.
( 2 ) THE facts relevant for the disposal of the above mentioned application, briefly stated are that the plaintiff Company filed a suit for permanent injunction, restraining passing off, rendition of accounts of profits, delivery up etc. against the defendants, named above, averring that the plaintiff is a Company incorporated under the provisions of the Companies Act, 1956, having its registered office at 1400, Hemkunt Tower, 98, Nehru Place, New Delhi and Shri Dev Kumar Lalwani, Company Secretary and the constituted attorney of the plaintiff Company is fully authorised to sign and verify the plaint and to institute the present proceedings on behalf of the plaintiff Company. It is stated that the plaintiff Company, which was established in the year 1981, has carved a niche for itself in the field of manufacture, development and marketing of high quality pharmaceutical preparations and that the plaintiff Company has gained tremendous reputation in the medical trade/ medical profession amongst the consumers through large scale advertisement, extensive sales. innovative promotional schemes including distribution of literature among the medical circles.
( 3 ) IT is further stated that one of the well known products of the plaintiff Company is anti-inflammatory and analgesic medicines sold in the form of Diclofenac Sodium and Paracetamol tablets under the trade mark DICLOMOL which is used for treatment of various deceases like rheumatoid arthritis, osteoarthritis, ankylosing spondylitis, cervical spondylosis, intervertebral disc syndrome and sciatica, nonarticular rheumatic conditions such as fibrositis, myositis, bursitis, lower back pain, soft tissue injuries such as sprains, strains and sports injuries, painful inflammatory conditions in gynecology, post-operative and post traumatic inflammation and swelling, pain and inflammation following dental surgery and acute attacks of gout. It is stated that the said analgesic medicine under the trade mark DICLOMOL belonging to the plaintiff is also available in the form of injection and gel and is widely used to combat pain and inflammation.
( 4 ) IT is averred that the plaintiff Company adopted the trade mark DICLOMOL on 1st September, 1988 and has been in continuous use of the above said trade mark DICLOMOL since then. As per the case of the plaintiff, the plaintiff after 1st September, 1988, has taken various preparatory steps to have the labels, artwork, blocks, dies, stationery and sales, promotional material in relation to the trade mark DICLOMOL,prepared. The plaintiff, it is averred, also obtained approval from the concerned Drug authorities for the purposes of drug licenses on or about 7th January, 1989 and thereafter launched its product under the trade mark DICLOMOL in the Indian market on 25th July, 1989. It is alleged that as a result of wide publicity, involving huge expenditure the plaintiffs above said product under the trade mark DICLOMOL has gained tremendous reputation in the business market and also in the public so much so that the said product under the trade mark DICLOMOL is identified exclusively with the plaintiff. It is stated that the plaintiff s trade mark DICLOMOL appears i
An indispensable Tool for Legal Professionals, Endorsed by Various High Court and Judicial Officers
Please visit our Training & Support
Center or Contact Us for assistance
Scan Me!
India’s Legal research and Law Firm App, Download now!
For Daily Legal Updates, Join us on :
Back to top
