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IN THE HIGH COURT OF DELHI AT NEW DELHI
V.K. JAIN, J.
RANBAXY LABORATORIES LTD – Plaintiff
Versus
CRYSTAL PHARMACEUTICALS – Defendant
CS(OS) 104/2011
Decided on : 17.12.2012
TRADEMARK INFRINGEMENT - PHARMACEUTICALS - Trademarks Act, Section 29(1) - The court discussed the infringement of the registered trademark PENTAGESIC by the defendant in relation to analgesic preparations. It highlighted the legal provisions of Section 29(1) of the Trademarks Act and emphasized the importance of protecting the registered mark from unauthorized use in connection with identical or deceptively similar goods.
Fact of the Case:
The plaintiff, a pharmaceutical company, owned the trademark PENTAGESIC for analgesic preparations. The defendant was accused of manufacturing and marketing a drug under the same trademark, leading to confusion and deception among the public and in the trade.
Finding of the Court:
The court found that the defendant's use of the registered trademark PENTAGESIC for similar goods constituted infringement and posed a risk of confusion and harm to the public. It also noted the lack of evidence for actual damages but acknowledged the defendant's dishonest intention to encash upon the plaintiff's goodwill.
Issues: The key issues involved trademark infringement, potential harm to public health, and the defendant's mala fide adoption of the trademark.
Ratio Decidendi: The court's decision was based on the infringement of the registered trademark, the potential confusion and harm to the public, and the defendant's dishonest intention to benefit from the plaintiff's reputation.
Final Decision: The court granted a permanent injunction against the defendant from using the trademark PENTAGESIC and awarded damages to the plaintiff, emphasizing the importance of protecting the registered mark and deterring dishonest practices.
V.K. JAIN, J.
1. The plaintiff is a large pharmaceutical company and owns several trademarks, including the mark PENTAGESIC, which is registered in its name in Class 5 in respect of analgesic preparations. The plaintiff-company claims the following sale figures in respect of the medicine being sold by it under the name PENTAGESIC:-
2004 - 1.16 million 2005 - 1.54 million 2006 - 1.69 million 2007 - 1.48 million
2008 - 1.25 million
2009 - 0.71 million
2. It is alleged in the plaint that the defendant is manufacturing and marketing its drug under the registered trademark PENTAGESIC of the plaintiff. The drug being sold by the plaintiff under the name PENTAGESIC is an anti-inflammatory drug used for management of pain, fever, etc. The drug being sold by the defendant under the said trademark is also an anti-inflammatory tablet being used for the same purpose. It is alleged that the adoption of the mark PENTAGESIC by the defendant is dishonest, actuated with an intention of encashing upon the goodwill and reputation of the plaintiff and is bound to create confusion and deception amongst the purchasing public as well as in the trade. The plaintiff has accordingly sought an injunction restraining the defendant from manufacturing, marketing or selling any medicine under the name PENTAGESIC or any other mark which is identical or deceptively similar to its registered trademark. The plaintiff has also sought delivering up of all the medicines, dies, blocks, cartons, labels, unfinished products, besides damages amounting to Rs 20 lakh.
3. The defendant was proceeded ex parte on 17.03.2011 as no one appeared for it despite service on 10.02.2010.
4. The plaintiff has filed affidavit of its attorney Shri Shaibal Sen Gupta by way of evidence. In his affidavit, Mr Sen has supported, on oath. the case set out in the plaint and has also proved the documents relied upon by the plaintiff.
5. Ex.PW-1/2 is the copy of the certificate of registration of the trademark PENTAGESIC in favour of the plaintiff-company. The registration is effective from 30.01.1974 and covers analgesic preparations comprised in class 5. Ex.PW-1/3 is the photocopy of the packaging of the plaintiff-company in which it is selling drug using the trademark PENTAGESIC-MR as also of the packaging in which the defendant is selling drug under the name PENTAGESIC. Ex.PW-1/4 is the sale figures of the plaintiff-company in respect of the product PENTAGESIC and it shows that the sale of PENTAGESIC which was Rs 1.16 million in the year 2004 has grown to Rs 5.75 million in the year 2011.
6. As noted earlier, the plaintiff-company is registered owner of the trademark PENTAGESIC in respect of analgesic preparations. Therefore, the defendant has no legal right to sell analgesic preparations under the name PENTAGESIC or any other name which is identical or deceptively similar to the said registered mark of the plaintiff- company. A perusal of the photocopy of the packaging in which drug is being sold by the defendant under the name PENTAGESIC would show that this drug is an anti-inflammatory preparation, being a combination of paracetamol and ibuprofen. Section 29(1) of Trademarks Act, to the extent it is relevant for our purpose, would show that a registered mark is infringed when a person who is neither its owner nor a registered user uses an identical or deceptively similar mark in relation to the goods which are covered by the registered mark. Since the defendant is using the registered trademark of the plaintiff in respect of those very goods which are covered by the said mark, it is a clear cut case of infringement of the registered trademark PENTAGESIC of the plaintiff.
7. Though the plaintiff has been selling drug under the name PENTAGESIC-MR that would make no difference since PENTAGESIC is the registered mark of the plaintiff and same is the mark being used by the defendant. If injunction is not granted against use of the mark PENTAGESIC by the defendant, i
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