The main legal point established in the judgment is the application of the Trade Marks Act, 1999, to determine infringement and passing off claims, emphasizing deceptive similarity, extensive use of the mark, and territorial jurisdiction.

1. This suit has been filed Sun Pharmaceuticals Industries Limited (‘SPIL’) against Mr. P. Mukesh Kumar, the proprietor of M/s. Idalis (a division of Marx Remedies) (Defendant No.1), M/s. Marx Remedies (Defendant No.2), Invision Medi Sciences Pvt. Ltd. (Defendant No.3), M/s. Chimak Health Care located at Solan in Himachal Pradesh (Defendant No.4) and M/s. Visions located at New Delhi (Defendant No.5) for a permanent injunction restraining the Defendants from infringing the Plaintiff’s trade mark AMLOBET, passing off, rendition of accounts and delivery of the infringing goods of the Defendants etc.

2. The case of the Plaintiff is that it coined the mark AMLOBET from the salt Amlodipine and Atenolol used in treatment of high blood pressure and prevention of chest pain. Exhibit PW 1/4 is a photograph of the Plaintiff’s medicine being sold and marked as AMLOBET. On 14th October 1996 the Plaintiff obtained a drug licence to manufacture medicines under the aforementioned mark. It has been extensively and commercially used since then. Exhibit PWs 1/6, 1/7 and 1/8 are invoices of the Plaintiff for the years 1998 to 2011 which show sales of AMLOBET. The certificate from the Chartered Accountant (‘CA’) certifying the annual sales and promotional expenses for the period 2000 to 2011 has been exhibited as PW 1/11. The original literature and packaging material has been exhibited as PW 1/5. Trade mark registration was granted for the mark AMLOBET in favour of the Plaintiff under No. 745615 in Class 5 on 18th June 1997. The registration certificate is marked as Exhibit PW 1/10.

3. The case of the Plaintiff is that Defendants 1 to 3 who are located in Bangalore are marketing a similar medicine under the mark AMLOVATE. The said medicine is manufactured by Defendant No.4 at Solan in Himachal Pradesh. The printing of the promotional material of the product, and in particular the leaflets, is being carried out by Defendant No.5 located in New Delhi. The Plaintiff states that it came across an application for registration of the trade mark AMLOVATE in favour of Defendant No.1 under No. 1964725 published in the Trade Mark Journal No. 1463 dated 20 th December 2010. The application was on ‘proposed to be used’ basis. The Plaintiff tried to locate the Defendants’ medicine under the aforementioned mark AMLOVATE. However, it could not find said medicine selling in any market or advertised in any trade journal. Accordingly, on 8th January 2011 the Plaintiff requested Defendant No.1 to withdraw its trade mark application. The Plaintiff then filed a notice of opposition in Form TM-5 dated 11th March 2011 before the Trade Mark Registry stating that the Defendant’s mark was in breach of Sections 9(1)(a), 9(2)(a), 11(1) and 11(3)(a) of the Trade Marks Act, 1999 (‘TM Act’). Defendant No.1 filed a counter affidavit dated 15th July 2011 in Form TM-6 in the Trade Marks Registry. It contended that the Plaintiff was seeking a monopoly on the prefix ‘AMLO’. Defendant No.1 filed two invoices of sales and a pamphlet along with one invoice issued by Defendant No.5 for printing of the leaflets.

4. The case of the Plaintiff is that the adoption by Defendant No.1 of the mark AMLOVATE is dishonest since it knew that the Plaintiff was using the trade mark AMLOBET since 1996. It is pointed out that the Defendants have adopted AMLOVATE with combination of alphabet of numerals being ‘L’, ‘A’ and ‘5’ such as AMLOVATE-5, AMLOVATE-L and AMLOVATE-A which is generic and indicative of the salt and/or quantity of salt. It is submitted that the trademark AMLOVATE is ‘non-distinctive’. A cease and desist notice was issued by the Plaintiff to the Defendant on 2 nd December 2011 asking it to stop using the trade mark AMLOVATE and to withdraw its trade mark application. By reply dated 7th December 2011, Defendant No.1 has refused to comply with the terms of the said legal notice. In the aforementioned circumstances, the present suit was filed on 20th December 2011. The case of