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2014 Supreme(Del) 1192
High Court of Delhi
JAYANT NATH, J.
Glaxo Group Ltd. & Another
Versus
United Biotech P. Ltd.
IA Nos. 13265 of 2011 & 14230 of 2011 in CS(OS) No. 2037 of 2011
Decided on: 25-04-2014
For the Plaintiffs:Manav Kumar, Advocate.
For the Defendant:Gaurav Pachnanda, Senior Advocate with Mohit Goel, Siddhant Goel, Rahul Sharma, Ms. Sangeeta Goel, Advocates.
The main legal point established in the judgment is that the defendant's mark 'HEPROTEC' was deceptively similar to the plaintiff's registered trademark 'HEPITEC', leading to the grant of an injunction in favor of the plaintiff.
Headnote:
TRADEMARK INFRINGEMENT - MEDICINAL PRODUCTS - The Trade Marks Act, 1999, Section 29(1) - The defendant's mark 'HEPROTEC' is deceptively similar to the registered trademark of the plaintiff 'HEPITEC'. The defendant's contentions regarding differences in products and delay in filing the suit were rejected. The court granted an injunction in favor of the plaintiff.
Fact of the Case:
The plaintiff sought a permanent injunction to restrain the defendant from using the mark 'HEPROTEC' or any deceptively similar mark. The defendant denied the allegations, claiming differences in products and delay in filing the suit.
Finding of the Court:
The court found that the defendant's mark 'HEPROTEC' was deceptively similar to the plaintiff's registered trademark 'HEPITEC'. The defendant's contentions regarding product differences and delay were rejected. The court granted an injunction in favor of the plaintiff.
Issues: The main issue was whether the defendant's use of the mark 'HEPROTEC' infringed the plaintiff's registered trademark 'HEPITEC'. The court also considered the defendant's contentions regarding product differences and delay in filing the suit.
Ratio Decidendi: The court held that the defendant's mark 'HEPROTEC' was deceptively similar to the plaintiff's registered trademark 'HEPITEC', satisfying the requirements of Section 29(1) of The Trade Marks Act, 1999. The court rejected the defendant's contentions regarding product differences and delay, emphasizing the likelihood of confusion among consumers.
Final Decision: The court granted an injunction restraining the defendant from using the mark 'HEPROTEC' or any deceptively similar mark until the pendency of the accompanying suit.
Jayant Nath, J.
1. The present suit is filed by the plaintiff seeking a decree of permanent injunction to restrain the defendant from manufacturing, selling, offering for sale, advertising, etc. the medicinal products or other related goods under the trade mark ‘HEPROTEC’ or any mark deceptively similar to the plaintiffs’ trade mark ‘HEPITEC’ and for other connected reliefs.
2. IA No.13265/2011 is an application filed under Order 39 Rules 1 and 2 CPC by the plaintiff seeking interim injunction to restrain the defendant etc. from manufacturing, selling, offering for sale or dealing in medicinal products or other related products under the trade mark ‘HEPROTEC’ or any mark deceptively similar to the plaintiffs’ trade mark ‘HEPITEC’.
3. The matter came up for hearing on 23.08.2011 when this court passed ex parte injunction restraining the defendant, its directors, principals, officers, agents, employees and representatives from manufacturing, selling and advertising directly or indirectly medicinal products under the trade mark ‘HEPROTEC’. The defendant has now filed IA No. 14230/2011 under Order 39 Rule 4 CPC for vacation of the stay. The two applications IA No.13265/2011 and IA No.14230/2011 are being disposed of together.
4. It is the case of the plaintiffs that plaintiff No. 1 is a company incorporated under the laws of England and Wales and plaintiff No.2 is a company incorporated under the Companies Act, 1956. The plaintiffs are said to be the members of GlaxoSmithKline Group of Companies and engaged in worldwide business of manufacturing and marketing of a wide range of pharmaceutical and medicinal preparations and healthcare products of the highest quality. The word ‘HEPITEC’ is said to have been adopted and conceived by the plaintiffs in and around the year 1998. It is stated that the word ‘HEPITEC’ is an invented word having no dictionary meaning and thus having the highest degree of distinctiveness, connoting the goods of the plaintiffs. The plaintiffs/their subsidiaries/affiliated companies have obtained registration of the said mark ‘HEPITEC’ in several countries including India. In India, the said mark was registered under No. 802647 in Class 5 since 18.05.1998 in respect of pharmaceutical preparations and substances. Plaintiff No. 1-Glaxo Group Limited is said to be the proprietor of the mark. The registration is still subsisting and in force. The said mark is in the use since 2000 for treatment of Hepatitis. It is stated that the mark has now become a well known pharmaceutical product in India. The excellent quality and proven efficacy of the medicine has it is averred made ‘HEPITEC’ highly popular and the medicine has acquired a high level of reputation and goodwill in India. The plaintiffs are identified with the said trade mark ‘HEPITEC’. The said medicinal preparations are sold and distributed in India by plaintiff No.2. The sales figures for the period 2006 and 2010 for India have been reproduced and are stated to be as follows:-
Year Revenue in US Dollars
2006 120,320
2007 88,300
2008 65,280
2009 76,800
2010 72,960
5. It is stated that in July 2010 the plaintiffs became aware of the defendant’s mark ‘HEPROTEC’ which was advertised in the Trademarks Journal No.1443 dated 01.07.2010. The plaintiff has filed a notice of opposition against the defendant’s application. It is further stated that cease and desist letter dated 12.10.2010 was served on the defendant requesting it to withdraw its application for the mark ‘HEPROTEC’ as the mark was deceptively and confusingly similar to the plaintiffs’ mark ‘HEPITEC’. However, it is stated that the defendant responded to the same by raising frivolous contentions and refused to settle the matter amicably. It is further stated that enquires have revealed to the plaintiffs that the defendant is using the medicine ‘HEPROTEC’ for treatment of liver related ailments. Hence, it is averred that the defendant’s adoption of the mark is clearly identical and is an attempt to tak
