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IN THE HIGH COURT OF DELHI AT NEW DELHI
JUSTICE S. MURALIDHAR
HIMALAYA DRUG CO. ..... Plaintiff
Versus
SBL LIMITED..... Defendant
CS (OS) No. 111 of 2006
Decision on : 3rd June 2010
B) Trade and Merchandise Marks Act, 1958 - Sections 29(1), 78, 79 - Civil Procedure Code, 1908 - Order 30 Rule 1, Order 39 Rules 1, 2 – In view of a specific pleading in the plaint that the defendant is infringing trade mark of the plaintiff firm by using the words “LIV”, plea of the defendant that no cause of action is shown by the plaintiff is not sustainable.
C) Trade and Merchandise Marks Act, 1958 - Sections 29(1), 78, 79 - Civil Procedure Code, 1908 - Order 30 Rule 1, Order 39 Rules 1, 2 :- Suit for infringement of trade mark LIV 52 by usage of LIV T was held to be within limitation.
D) Trade and Merchandise Marks Act, 1958 - Sections 29(1), 78, 79 - Civil Procedure Code, 1908 - Order 30 Rule 1, Order 39 Rules 1, 2 – In the suit filed for infringement of trade marks LIV 52 by use of words LT, defendant failed to prove any principle of estopel or waiver.
E) (v) Trade and Merchandise Marks Act, 1958 - Sections 29(1), 78, 79 - Civil Procedure Code, 1908 - Order 30 Rule 1, Order 39 Rules 1, 2 – Plaintiff is a manufacturer of ayurvedic medicine Live 52 whereas the defendant is the manufacturer of Homeopathy drug. – Nevertheless there is no bar for a shop holding license for both Homeopathy and Ayurvedic drugs.
F) Trade and Merchandise Marks Act, 1958 - Sections 29(1), 78, 79 - Civil Procedure Code, 1908 - Order 30 Rule 1, Order 39 Rules 1, 2 –Plaintiff in the present case had proved he is the proprietor of trade mark Liv. 52
G) Trade and Merchandise Marks Act, 1958 - Sections 29(1), 78, 79 - Civil Procedure Code, 1908 - Order 30 Rule 1, Order 39 Rules 1, 2 – On facts it is held that there is infringement violation of trade mark Liv.52 in usage of LIV-T since there is no phonetic similarity or any other probable possibility of homeopathic drug being administered in stead of ayurvedic medicine
H) Trade and Merchandise Marks Act, 1958 - Sections 29(1), 78, 79 - Civil Procedure Code, 1908 - Order 30 Rule 1, Order 39 Rules 1, 2 – Defendant’s contention the trade marks LIV is public juris and in fact it is an abbreviation of the human organ liver and there are many drugs in the market with the prefix Liv. Hence the suit is dismissed.
1. The Plaintiff, which is the manufacturer of an Ayurvedic medicine "Liv.52", seeks a permanent injunction restraining infringement of its said trademark by the Defendant which is manufacturing a Homeopathic drug "LIV-T".
2. The case has been entirely presented and argued as a suit for infringement. The incidental reliefs are for delivery up of all the infringing goods and rendition of accounts by the Plaintiff.
Pleadings
3. The Plaintiff is a registered partnership firm engaged in the business of manufacturing and marketing Ayurvedic medicinal preparations and formulations since 1930. It claims to have gained tremendous reputation in the field of medicine and amongst consumers through large-scale advertising, extensive sales and innovative promotional schemes. Liv.52 is stated to be among several well-known ayurvedic medicines manufactured and marketed by the Plaintiff.
4. Liv.52 is a liver tonic prescribed for liver disorders. It is further advised for promoting appetite and growth, the two biological phenomenon directly related to liver. It is stated that the trademark "Liv.52" is a coined mark. According to the Plaintiff, the prefix "Liv" has no dictionary meaning or any meaning in common parlance. The said trademark is stated to have been coined and adopted by the Plaintiff in 1955 and has been used by it continuously and exclusively all over India since then.
5. It is claimed that at or around the time of the filing of the present suit in 1996, the approximate turnover for sales of ‘Liv.52? for the year 1995-96 was over Rs. 30 crores and the promotional expenditure during the same period was Rs. 3 crores. This, according to the Plaintiff, was reflective of the goodwill that the trademark Liv.52 commands in medical circles and in the public. It is stated that the trademark Liv.52, apart from having inherent distinctiveness on account of its being a coined mark, has also become distinctive on account of its extensive use by the Plaintiff in relation to liver related preparations and medicines since 1955. The Plaintiff states that it is the proprietor of the trademark Liv.52 under the common law having exclusive right to the use thereof in relation to the pharmaceutical and medicinal preparations.
6. The Plaintiff states that it holds the following trademark registrations in Class 5:
"Trade Mark Regn. No. Class Date Goods
LIV.52 180564 5 10.7.57 Medicinal reparations for the treatment of Disorders of liver
LIV.52 290061 5 10.8.73 -do-
LIV.52 401959 5 25.2.87 Medicinal, pharma- (Label) ceutical and ayurvedic preparations and substances"
It is stated that all the above registrations have been kept renewed till date.
7. The Defendant, M/s. SBL Limited, having its headquarters at Sahibabad, District Ghaziabad, U.P., is engaged in the business of manufacturing and marketing homoeopathic preparations. The Plaintiff alleges that the Defendant has dishonestly and malafide adopted the trademark "LIV-T" in relation to homeopathic preparations meant to cure liver disorders. The Plaintiff states that Liv.52 and LIV-T are deceptively similar. In the plaint, it is stated that "the essential and distinguishable feature of both the trademarks being identical, i.e., "LIV". The Defendant?s medicinal preparation is bound to be presumed to be another liver related medicinal preparation originating from the Plaintiff or having an association or nexus with the Plaintiff, which being false is a misrepresentation leading to passing off of the Defendant?s goods/business as those of the plaintiff. It is stated that "the suffix "52" in the Plaintiff?s trademark or "T" in the Defendant?s trademark are incapable of distinguishing any medicinal preparations of either of the parties or sufficient to prevent the likelihood of confusion or deception that is bound to occur on account of the essential feature "LIV" being identical."
8. It is submitted that the u
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