Back
1995 Supreme(Del) 185
High Court Of Delhi
DOLPHIN LABORATORIES LIMITED - Appellant
Versus
ARUN KUMAR BANSAL - Respondent
Interim Application 3739 of 1994
Decided On : 02/22/1995
H.P.SINGH, R.K.Sharma, Sanjiv Jaiswal, VIVEK DHOLAKIA
A plaintiff is entitled to an injunction to restrain infringement of its registered trademark and passing off its trade/corporate name if it can establish a prima facie case that its trademark has acquired a wide reputation and name, the defendant's use of the trademark is likely to cause confusion and deception among the public, and the balance of convenience lies in favor of granting the injunction.
Headnote:
TRADEMARK - INFRINGEMENT - PASSING OFF - INJUNCTION - BALANCE OF CONVENIENCE - IRREPARABLE INJURY - PUBLIC INTEREST - CORPORATE NAME - SIMILARITY - DECEPTIVE/CONFUSINGLY SIMILAR - PRIMA FACIE CASE - WELL-KNOWN TRADEMARK - REPUTATION - GOODWILL - PUBLIC ISSUE - MISREPRESENTATION - CONFUSION - LIKELIHOOD OF DECEPTION - UNFAIR COMPETITION - PRELIMINARY INJUNCTION - INTERIM RELIEF - TRADEMARKS ACT, 1958.
Fact of the Case:
Plaintiff, Dolphin Laboratories Ltd., a well-known and reputed pharmaceutical company, filed a suit for injunction to restrain the defendants from using the word "dolphin" or any other deceptively/confusingly similar word as a part of their trade/corporate name and from raising money from the public under the impugned corporate name "dolphin". The plaintiff claimed that it had been using the word "dolphin" as its corporate name and trade mark for over 40 years and had built up a substantial reputation and goodwill in the pharmaceutical industry. The defendants, Dolphin Organics Limited, were a newly incorporated company that intended to manufacture and sell bulk drugs and pharmaceutical products. The plaintiff contended that the defendants' use of the word "dolphin" in their corporate name was an infringement of its registered trademark and would cause confusion and deception among the public.
Finding of the Court:
The court found that the plaintiff had made out a strong prima facie case for the grant of an injunction. It held that the plaintiff's trading style and trademark "dolphin" had acquired a wide reputation and name in respect of drugs and pharmaceuticals. The court also found that the defendants had not yet started manufacturing or marketing their products and had not yet used the name "dolphin" but had threatened to come up in the market as a manufacturer of bulk drugs and pharmaceutical products. The court further held that the defendants' contention that they intended to manufacture only bulk drugs and supplies were to be made only to the companies and not to small consumers at this stage could not be accepted in view of the main objects of the defendant company enumerated in the prospectus.
Issues: 1. Whether the plaintiff had made out a prima facie case for the grant of an injunction? 2. Whether the defendants' use of the word "dolphin" in their corporate name was an infringement of the plaintiff's registered trademark? 3. Whether the defendants' use of the word "dolphin" was likely to cause confusion and deception among the public?
Ratio Decidendi: The court held that the plaintiff had made out a strong prima facie case for the grant of an injunction. It relied on the following factors: (a) the plaintiff's trading style and trademark "dolphin" had acquired a wide reputation and name in respect of drugs and pharmaceuticals; (b) the defendants had not yet started manufacturing or marketing their products and had not yet used the name "dolphin" but had threatened to come up in the market as a manufacturer of bulk drugs and pharmaceutical products; (c) the defendants' contention that they intended to manufacture only bulk drugs and supplies were to be made only to the companies and not to small consumers at this stage could not be accepted in view of the main objects of the defendant company enumerated in the prospectus; (d) the defendants' use of the word "dolphin" in their corporate name was likely to cause confusion and deception among the public.
Final Decision: The court granted the plaintiff's applications for injunction and restrained the defendants from using the word "dolphin" or any other word deceptively/confusingly similar thereto as a part of the trade or corporate name of defendant No. 4 and from raising money from public under the impugned corporate name through the proposed publication opening on 28th February, 1995.
( 1 ) IN the first application (I. A. 9739/94), the plaintiff prays for an injunction during the pendency of the suit restraining the defendants from using the word "dolphin or any other word deceptively /confusingly similar thereto as a part of the trade/corporate name of defendant No. 4 and by the other application (I. A. 1268/95), a prayer has been made by the plaintiff for restraining the defendants from raising money from the public under the impugned corporate name "dolphin" and to stay their proposed public issue opening on 28th February, 1995.
( 2 ) THE plaintiff has filed the suit for injunction to restrain infringement of registered trade mark and passing off its trade/corporate name and rendition of accounts etc. It is alleged that plaintiff Dolphin Laboratories Ltd. is a well known and reputed public limited company engaged since 1951, in the business of manufacturing and making of various types of drugs and pharmaceutical products. Its registered office is,at Calcutta with branches in Bombay and A medabad and sales offices in Calcutta, Hyderabad, Patna, New Delhi, Lucknow and Ahmedabad.
( 3 ) IT is alleged that the plaintiff was incorporated on 9th July, 1951 and in 1952 it adopted its present corporate name (Dolphin Laboratories Ltd. ). The range of products which the plaintiff manufactures/mercantise, inter alia, covers anti-biotics, anti haemorrhagics, haemostatics, lipotropic drugs, appetite stimulants, natural enzymes and amoebicides. Plaintiff claims that it is the proprietor of more than 100 trade marks including" Dolphin" which is also the house mark of the plaintiff. Considerable amount has been spent over the years towards sale promotional activities to acquaint the medical trade and profession with its developments and innovations and in all such activities the word "dolphin" being the corporate name, trade mark and house mark of the plaintiff has prominently been identified. Plaintiff s turn over exceeds Rs. 22 crores. The word "dolphin" constitute the key name and distinguishing feature of the plaintiff s corporate name duly registered with the Registrar of Companies and is in use in the course of trade continuously for the last 42 years. As a result of the plaintiff s effort, in the course of trade the word "dolphin" has become distinctive and exclusively indentified with the plaintiff. Dolphin as trade mark and Dolphin as device is duly registered under Class 5 of the Trade and Merehandis Marks Act, 1958, (hereinafter REFERRED TO to as "the Act"),
( 4 ) THE plaintiff also alleges that an application for recording its name as proprietor of mark "dolphin" in Class 10 of the Fourth Schedule of the Act is pending. By virtue of wide spread use the plaintiff s mark/ name "dolphin" has become inextricably linked with the plaintiff in the eyes of the consumers and the pharmaceutical trade and the consumers associate the said mark/name exclusively with the plaintiff. The plaintiff is registered proprietor altogether of more than 100 trade marks, many of these trade marks have the prefix "dolphin". In order to partly finance its activities, the plaintiff in the month of May, 1994 entered the capital market with a public issue of 18,25,000 equity shares aggregating to Rs. 3,65,00,000 which was over subscribed by 77. 80 times by the Indian Public and 5. 26 time by Non-resident Indians. It reflects on the reputation and goodwill enjoyed by the plaintiff and the level of public confidence. The plaintiff also claims that it has pioneered the introduction of several drugs in India, including Ethansylate formulation (a haemostatic drug) and Arooxycillin, (a broad spectrum anti-biotic ). The plaintiff also enjoys 40% market share in India of anti-hemorrages medicines administered for the purpose of controlling bleeding. Plaintiff claims that its share are widely held by more than 12,000 share holders in India and abroad and are listed and traded in Calcutta, Bombay and Ahmedabad Stock Exchanges. The pla
