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IN THE HIGH COURT OF DELHI
V.K. Jain, J.
Ranbaxy Laboratories Limited
Vs.
Intas Pharmaceuticals Ltd. and Ors.
IA No. 10148/2009 (u/O 39 R 1 and 2 CPC) in CS (OS) 1457/2009
Decided On: 23.08.2011
TRADEMARK - Passing off - Section 28(3) of the Trade Marks Act, 1999 - Summary of Acts and Sections: Section 28(3) of the Trade Marks Act, 1999 - The court discussed the provisions of passing off under the Trade Marks Act, 1999 and emphasized the importance of similarity between competing marks and the likelihood of causing confusion. The court also highlighted the need for greater protection in cases involving medicinal products due to the potential for physically harmful results to purchasers. The judgment also addressed the issue of delay and laches in seeking interlocutory injunctions, emphasizing that unjustified delay is fatal to such applications.
Fact of the Case:
The Plaintiff, a pharmaceutical company, alleged that the Defendant's trademark NIFTAS was similar to its trademark NIFTRAN, causing confusion and deception among the purchasing public. The Plaintiff sought an interim injunction against the use of the mark NIFTAS by the Defendant.
Finding of the Court:
The court found that the Defendant's use of the trademark NIFTAS did not constitute infringement under Section 28(3) of the Trade Marks Act, 1999, but was based on passing off alone. The court emphasized the importance of similarity between competing marks and the likelihood of causing confusion. It also considered the delay and laches in seeking interlocutory injunctions, ultimately denying the injunction to the Plaintiff.
Issues: The issues involved the similarity between the trademarks NIFTRAN and NIFTAS, the likelihood of confusion and deception, and the delay in seeking interlocutory injunctions.
Ratio Decidendi: The court's decision was influenced by the provisions of passing off under the Trade Marks Act, 1999, emphasizing the importance of similarity between competing marks and the likelihood of causing confusion. The court also considered the delay and laches in seeking interlocutory injunctions, which led to the denial of the injunction to the Plaintiff.
Final Decision: The court directed the Defendant to keep complete and accurate accounts of the sales and profit made from the drug sold under the name NIFTAS. It also prohibited the Defendant from launching the drug in packaging other than ALU-ALU (blister pack) without prior permission of the Court. No other injunction was granted to the Plaintiff.
V.K. Jain, J.
1. The Plaintiff is a large pharmaceutical company manufacturing and marketing a number of medicinal products including a drug for urinary tract infection, which it is selling under the registered trademark NIFTRAN The word NIFTRAN is alleged to be a coined, unique and an invented word. The compound used in the drug NIFTRAN is Nitrofurantoin. The Plaintiff had a sale of Rs. 30.4 million, Rs. 42.9 million and Rs. 11.47 million in the year 2007, 2008 and first quarter of the year 2009 respectively from NIFTRAN alone. It claims to have incurred approximate expenses of Rs. 5.6 million, Rs. 5.2 million and Rs. 2.7 million respectively during the aforesaid period.
The Defendant No. 1 is manufacturing and marketing a drug under the trademark NIFTAS which is alleged to be similar/identical with the trademark NIFTRAN of the Plaintiff. NIFTAS also is prescribed in the treatment of urinary tract infection. The case of the Plaintiff is that the trademark NIFTAS has been adopted by the Defendant with the intention of encashing upon the goodwill and reputation in the trademark NIFTRON and is bound to cause confusion and deception amongst the purchasing public in the trade, which would be induced into believing that the products being sold by the Defendant also originates from the Plaintiff company. IA No. 10148/2009 has been filed by the Plaintiff seeking interim injunction against use of the mark NIFTAS by Defendants during pendency of the suit.
2. Defendant No. 1 has contested the suit and has claimed that the trademarks and NIFTASare based on the drug NITROFURANTOIN, the words NIFTRAN and NIFTAS representing the molecule or drug represented by the names and no one can claim a monopoly over these names. It is also alleged that suffix in the marks NIFTRAN and NIFTAS are altogether different phonetically as well as visually and represent the names of the manufacturing companies, i.e. "RANBAXY" AND "INTAS" respectively. It is claimed that the adoption of the mark "INTAS" is in line with Defendants policy to use the word "TAS" as a suffix in most of its products. It is also claimed that the suit suffers from the vice of delay, laches and estoppels since the Plaintiff became aware of Defendants product in April, 2009. It is claimed that the Defendant applied for registration of the trademark NIFTAS in March, 2008 and launched the drug in the marked on 23rd January, 2009. The Defendant has also pointed out that the product of the Plaintiff is a hard gelatin capsule, whereas the product of the Defendant is a sustained release tablet; the product of the Plaintiff is packed in a plastic bottle containing 20 capsules, whereas the product of the Defendant is sold in aluminum foil. It is also alleged that since it is launched in January, 2009, NIFTAS had a sale of Rs 70.18 lakh till the date written statement was filed on 20th November, 2008
3. It is an admitted case that the trademark NIFTRAN of the Plaintiff as well as NIFTAS of Defendant No. 1 are their respective registered trademarks. Defendant No. 1 applied for registration of the trademark NIFTAS claiming user since February 29, 2008 based upon the preparatory steps undertaken by it towards creation of NIFTAS logos and artwork. Defendant No. 1 has placed on record the copy of the invoice dated 29.02.2008 whereby it paid design charges for the logo design NIFTAS to ONE Advertising and Communication Services Limited. The application of Defendant No. 1 was advertised in trademark Journal No. 1414 dated 16.04.2009, to which no objection was filed. The registration was accordingly granted to Defendant No. 1 on 03.05.2010 with effect from 10.03.2008.
4. Section 28(3) of the Trade Marks Act, 1999 to the extent it is relevant provides that where two or more persons are registered proprietors of trademarks, which are identical with or nearly resemble each other, the exclusive right to the use of any of those trademarks shall not (except so far as their respective rights are subject to
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