2007 Supreme(Del) 1208

IN THE HIGH COURT OF DELHI
Honble Judges: Gita Mittal, J.
Pfizer Products Inc.- Appellants
Vs.
Rajesh Chopra and Ors. - Respondent
I.A. Nos. 1879/2005 and 8252/2006 in CS (OS) No. 311/2005
Decided On: 31.05.2007

Headnote:

In a suit for infringement of a registered trademark, the court held that the plaintiff had made out a prima facie case for infringement of its registered trademark as well as dishonest passing off their products as those associated with the plaintiff entitling the plaintiff to grant of ad-interim injunction. Grave and irreparable loss shall ensure to the plaintiff in case interim protection is not granted. The injunction is also necessitated in the larger interests of the consumers of the products of the plaintiff, inasmuch as disastrous and irreversible consequences can result from an error made in purchase of the products of the defendants as if they were the drugs produced and manufactured by the plaintiffs. Balance of convenience, interest of justice and equity are clearly in favor of the plaintiff and against the defendants.

Fact of the Case:

The plaintiff, a corporation constituted under the laws of the United States of America, filed a suit for infringement of its registered trademarks and on grounds of dishonest passing off its products as those having an association with those of the plaintiff. The plaintiff claimed that it is a wholly owned subsidiary of Pfizer Inc. - a global research based pharmaceutical company claiming responsibility and credit for discovery and development of innovative value-added medicines which improve the quality of life of people around the world. Amongst the various drugs developed and sold by the plaintiff after investment of enormous sums of money on research and development worldwide, the plaintiff developed an antidepressant drug and coined the trademark Zoloft in 1989 for use in its respect. The earliest registration for the trademark Zoloft relates to 1989 and the plaintiff claims to have applied for and obtained registration of this mark in over 90 counties around the world. This drug has received the approval of the United States Food and Drug Administration (FDA for short) for its manufacture in marketing in December, 1991 and is stated to be sold in over 90 counties worldwide. Apart from the expenditure incurred on development of this medication, since 1991 the plaintiff has expended millions of dollars to promote and educate patients and medical professionals about the product sold under the trademark Zoloft. This product is stated to have received enormous media attention. According to the plaintiff it has also achieved instant fame and recognition in the medical community as also members of the general public. This drug is utilized as an anti-depression drug and the plaintiffs product sold under the trademark Zoloft is the first and only medicine approved by the United States Food and Drug Administration for the treatment of post chromatic stress disorder. The plaintiff submits that it applied for registration of the trademark Zoloft in India on the 18th of November, 1992 in class 5 under the Schedule to the Trademark & Merchandise Marks Act, 1958. This trademark has been registered by the Trademark Registry and the plaintiff is thus the registered proprietor thereof having exclusive statutory rights to use the same in respect of its goods. This registration is stated to be subsisting and valid even on date. The registration certificate dated 4th June, 2005 of the trademark Zoloft in favor of the plaintiff, which was issued on 4th of June, 2005 related back to its application dated 18th November, 1992. The same has been placed on record. The plaintiff has complained that the defendant dishonestly made an application bearing No. 1165372 B in class-5 in respect of an identical trademark Zoloft which was advertised for acceptance in the Trademark Journal No. Megha VI dated 25th November, 2003 wherein the defendant was claiming proprietorship of the trademark Zoloft which was identical to the plaintiffs well-known prior trademark Zoloft. The defendant has also claimed use of this mark since 1st January, 2003. The plaintiff also filed a notice of objection against the defendants trademark application seeking registration of the trademark Zoloft. This opposition was filed on the 8th of June, 2004. The plaintiffs attorney again reminded the defendant by a communication dated 10th August, 2004 to comply with the requisitions contained in the previous letter. Instead of abiding by the notice demand, by a communication dated 16th August, 2004 the defendant sought proof of use by the plaintiff of the trademark Zoloft. Despite responses from the plaintiffs attorney on the 20th of August, 2004 and a reminder on 24th September, 2004, nothing further was received from the defendant.

Finding of the Court:

The court found that the plaintiff had made out a prima facie case for infringement of its registered trademark as well as dishonest passing off their products as those associated with the plaintiff entitling the plaintiff to grant of ad-interim injunction. Grave and irreparable loss shall ensure to the plaintiff in case interim protection is not granted. The injunction is also necessitated in the larger interests of the consumers of the products of the plaintiff, inasmuch as disastrous and irreversible consequences can result from an error made in purchase of the products of the defendants as if they were the drugs produced and manufactured by the plaintiffs. Balance of convenience, interest of justice and equity are clearly in favor of the plaintiff and against the defendants.

Issues: Whether the plaintiff has made out a prima facie case for infringement of its registered trademark as well as dishonest passing off their products as those associated with the plaintiff entitling the plaintiff to grant of ad-interim injunction.

Ratio Decidendi: The court held that the plaintiff had made out a prima facie case for infringement of its registered trademark as well as dishonest passing off their products as those associated with the plaintiff entitling the plaintiff to grant of ad-interim injunction. Grave and irreparable loss shall ensure to the plaintiff in case interim protection is not granted. The injunction is also necessitated in the larger interests of the consumers of the products of the plaintiff, inasmuch as disastrous and irreversible consequences can result from an error made in purchase of the products of the defendants as if they were the drugs produced and manufactured by the plaintiffs. Balance of convenience, interest of justice and equity are clearly in favor of the plaintiff and against the defendants.

Final Decision: The court granted the plaintiff's application for an ad-interim injunction restraining the defendants from using the plaintiff's registered trademarks Zoloft and Geodon, or any other trademark or name similar to the plaintiff's trademarks, in any manner whatsoever so as to pass off its goods or business as and for the goods or business of the plaintiff.