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IN THE HIGH COURT OF DELHI AT NEW DELHI
PRADEEP NANDRAJOG, MANMOHAN SINGH, JJ.
THE HIMALAYA DRUG COMPANY - Appellant
Versus
M/S. S.B.L. LIMITED - Respondent
RFA (OS) No.90/2010
Decided on : November 9, 2012
The Court held that the word 'LIV' is an essential feature of the registered trademark 'Liv.52' and the defendant's use of the mark 'LIV-T' is deceptively similar to the plaintiff's mark. The Court also held that the word 'LIV' is not a generic word and has not become publici juris.
Fact of the Case:
The plaintiff, the owner of the trademark 'Liv.52' registered under registration No.180564 in class 5 as of 10th July, 1957 in respect of medicinal preparation for treatment of liver disorder, filed a suit against the defendant for infringement of trade mark Liv.52 by use of trade mark LIV-T by the defendant in relation to medicinal preparation for curing liver disorder.
Finding of the Court:
The Court held that the word 'LIV' is an essential feature of the registered trademark 'Liv.52' and the defendant's use of the mark 'LIV-T' is deceptively similar to the plaintiff's mark. The Court also held that the word 'LIV' is not a generic word and has not become publici juris.
Issues: Whether the word 'LIV' is an essential feature of the registered trademark 'Liv.52' and the defendant's use of the mark 'LIV-T' is deceptively similar to the plaintiff's mark. Whether the word 'LIV' is a generic word and has become publici juris.
Ratio Decidendi: The Court held that the word 'LIV' is an essential feature of the registered trademark 'Liv.52' and the defendant's use of the mark 'LIV-T' is deceptively similar to the plaintiff's mark. The Court also held that the word 'LIV' is not a generic word and has not become publici juris. The Court relied on the following principles: 1. The entire scheme of the Act is that a mark shall be deemed to be deceptively similar to another mark if it so nearly resembles that other mark as to be likely to deceive or cause confusion. 2. By virtue of registration under Section 28 of the Trade and Merchandise Marks Act, 1958, if valid, the registered proprietor of the trade mark gets the exclusive right to use the trade mark in relation to the goods in which the said trade mark is registered and to obtain relief in respect of infringement of the trade mark in the manner provided. 3. Section 32 of the Act provides that subject to the provisions of section 35 and 46, in all legal proceedings relating to a trade mark registered in Part A of the register including applications under section (56), the original registration of the trade mark shall, after the expiry of seven years from the date of such registration, be taken to be valid in all respects unless it is proved- (a) that the original registration was obtained by fraud; or (b) that the trade mark was registered in contravention of the provisions of section 11 or offends against the provisions of that section on the date of commencement of the proceedings; or (c) that the trade mark was not, at the commencement of the proceedings, distinctive of the goods of registered proprietor. 4. The said provisions of the registration of the trade mark and conclusiveness of the registration unless based on some specific grounds is mandate of the statute and ought to be respected. 5. The rival marks are to be compared as a whole. Where two rival marks are identical, it is not necessary for the plaintiff to prove further that the use of defendant’s trade mark is likely to deceive and cause confusion as the registration shows the title of the registered proprietor and the things speak for themselves. 6. In an infringement action, once a mark is used as indicating commercial origin by the defendant, no amount of added matter intended to show the true origin of the goods can effect the question.
Final Decision: The Court allowed the appeal, set aside the judgment and decree dated 3rd June, 2010, and decreed the suit of the plaintiff with regard to infringement of trade mark. The defendant was restrained from using the mark LIV as part of its trade mark LIV-T while dealing with the medicinal preparations. The defendant was granted six months time to liquidate its pending stock.
MANMOHAN SINGH, J.
1. The above mentioned appeal has been filed by the appellant (hereinafter referred to as plaintiff) against the judgment and decree dated 3rd June, 2010 passed by the learned Single Judge in CS(OS) No. 111/2006 (old Suit No.1305/1996) whereby the suit against the respondent (hereinafter referred to as defendant) for infringement of trade mark Liv.52 by use of trade mark LIV-T by the defendant was dismissed and it was held that there is no case made out of infringement of registered trade mark.
2. The facts leading to filing of abovementioned appeal are that the plaintiff is the owner of the trademark ‘Liv.52’ registered under registration No.180564 in class 5 as of 10th July, 1957 in respect of medicinal preparation for treatment of disorder of liver. The said trade mark has been used since the year 1955. The case of the plaintiff is that the use of the trade mark LIV-T by the defendant in relation to medicinal preparation for curing liver disorder amounting to infringement of plaintiff‘s trade mark Liv.52 as the essential and distinguishable feature LIV which is distinctive and is used by the defendant. The trade mark LIV-T used by the defendant is phonetically and structurally identical with or deceptively similar to Liv.52 thus the same is in violation of statutory and exclusive rights granted in favour of the appellant under Section 29(1) of the Trade and Merchandise Marks Act, 1958.
3. The case set up by the defendant is that the word ‘LIV’ is generic and common to the trade as the medicines in question manufactured and marketed by both the parties are meant for treatment of liver. Two products of parties are different products; one is an ayurvedic medicine and the other homeopathic preparation. The ayurvedic proprietary medicine is not sold through homeopathic outlets. Packaging and colour combination of two labels are different so as all other features. The composition of two products is also different. It is submitted that the organ liver in the pharmaceutical trade is often abbreviated as LIV and is used as a first syllable of over 50 pharmaceutical companies, include trademarks such as LIV CARD, LIV-UP, LIV-RIL-z, LIVO, LIVO-10, al, LIVAPLEX, LIVOFIT, LIVA, LIVOL, LIVDRO, LIVAZOL, LIVERITE, LIVERJET, LIVERNUT, LIVERPOL, LIVUP, LIVEX, LIVIVRON, LIVIBEE, LIVINA, LIVINOL, LIVINOL, LIVIPREP, LIVIRILE, LIVIRONVITA, LIVIRUBRA and LIVITA. Furthermore, LIV has been adopted as a first syllabus by various companies from a period prior to the claimed adoption of Liv.52 by the plaintiff itself which they claim since 1955. There are over 100 registrations in the record of the trademark registry as per the search reports obtained which show that many traders have applied for registration or obtained the registration containing the word LIV. Therefore, there can be no monopoly of the word LIV.
4. From the pleadings of the parties, the following issues were framed by way order dated 30th November, 1998: ?
“1. Whether the plaint is signed, verified and the suit is instituted by a duly competent and authorized person?
2. Whether this Court has no territorial jurisdiction to entertain the present suit? OPD
3. Whether the suit is maintainable in its present form?
4. Whether there is no cause of action for institution of the present suit? OPD
5. Whether the suit is barred by limitation? OPD
6. Whether the suit is bad for non-joinder of necessary parties? OPD
7. Whether the suit is barred by principles of estoppel and waiver? OPD
8. Whether the products of the defendant company can be sold only through homeopathic outlets? OPD
9. Whether the Plaintiff is the proprietor of the trade mark “Liv.52” in respect of drugs and Pharmaceuticals? OPP
10. Whether the use of trade mark “LIV-T” by the defendant amounts to infringement of trade mark registration numbers 180564, 290061 and 401959 in class 5? OPP
11. Whether the use of trade mark “LIV-T” by the defendant amounts to passing off the goods of the defendant as that
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