A suit for infringement of a registered trademark is maintainable against another registered proprietor of an identical or similar trademark, and an action for passing off would be maintainable even if a proprietor cannot claim infringement under specific sections of the Trade Marks Act.

Jayant Nath, J.

I.A. No.23086/2012

1. The present application is filed under Order 39 Rules 1 and 2 CPC seeking injunction to restrain the defendants etc. from manufacturing or offering for sale medicinal or pharmaceutical preparations under the trademark ‘AMAFORTEN’or any other mark deceptively similar to the plaintiff’s registered trademark ‘ANAFORTAN’. Other connected reliefs are also sought for. The accompanying plaint is filed by the plaintiff stating that it is a wholly owned subsidiary of Abbott Laboratories, Chicago, USA which was founded in the year 1888. The trademark ‘ANAFORTAN’ is stated to be an invented mark having no dictionary meaning. It is also not derived from any principal ingredient/formulation of the drug. The said mark has the active ingredient of ‘Camylofin Dihydrochloride with Paracetamol’. The said mark was originally stated to be owned by Khandelwal Laboratories Pvt.Ltd. (KLPL) who was stated to be registered proprietor of the said mark in respect of medicinal and pharmaceutical veterinary preparations since 1.12.1998. On 15.4.2008 the said Khandelwal Laboratories Private Limited entered into an agreement of ‘Brand Transfer and Knowhow License Agreement’ with Nicholas Piramal India Ltd. (NPIL) whose name was later on changed to Piramal Healthcare Limited. The said Piramal Healthcare Limited assigned the trademark to the plaintiff vide Agreement dated 8.9.2010. The plaintiff vide application dated 21.2.2011 had sought to bring on record the change of proprietor of the trademark registered with the Trade Marks Registry.

2. It is stated that the plaintiff’s medicinal preparations with the mark ‘ANAFORTAN’ are extremely popular and widely distributed all over India. It is stated that the said mark was used by the plaintiff’s predecessor for decades and now the plaintiff by way of extensive use has acquired a considerable reputation as a quality pharmaceutical product. It is stated that the sales figures from September 2010 to December 2010 was Rs.7.840 crores and from January to December 2011 the sales figures are said to be Rs.23.047 crores. Hence, on the basis of the above facts it is stated that the superior quality of the products sold and marketed by the plaintiff under the said trademark ‘ANAFORTAN’ has acquired valuable goodwill and reputation which extends throughout India. The plaintiff’s trademark is said to be recognised and associated extensively with the plaintiff.

3. Regarding the defendants it is stated that defendant No.1 is the sole proprietorship concern of Birani Pharmaceuticals and is said to be carrying on business from Patna, Bihar and is a marketer of pharmaceutical and medicinal preparations. The said defendant No.1 is stated to be marketing the drug containing ‘Camylofin Dihydrochloride with Paracetamol’ in the form of Tablets under the brand name ‘AMAFORTEN’ which is similar to the plaintiff’s product ‘ANAFORTAN’. Defendant No.2 is stated to be a private limited company which is stated to be engaged in manufacturing of the drug for defendant No.1. Plaintiff states that in July 2012 through market enquiries it came to know about the unauthorised use of the ‘AMAFORTEN’ mark by the defendants. It also came to know that defendant No.1 has surreptitiously registered the similar mark ‘AMAFORTEN’ in Class 5. It is stated that the plaintiff intends to file rectification proceedings against the aforesaid registration of defendant No.1 as the said mark is said to have been registered in bad faith and the mark has invalidly remained on the Register. It is stated that a lot of efforts were made by the plaintiff to locate the identity of the person manufacturing and selling the drug with the impugned trademark as the product that was being sold was on a very small scale and was not in an organised manner.

4. The trademark of the defendant ‘AMAFORTEN’ is stated to be deceptively similar to the plaintiff’s registered trademark. The mark is phonetically, visually and structurally simila