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IN THE HIGH COURT OF DELHI AT NEW DELHI
MANMOHAN, J.
Walter Bushnell Pvt. Ltd. & Others – Plaintiffs
Versus
Wonder Products & Others – Defendants
C.S. (OS) No. 96 of 2014
Decided On : 30.6.2015
TRADE MARK - INFRINGEMENT - The court found that the use of the trade mark DRORIT constituted an act of infringement and passing off as it was deceptively similar to the trade mark DROTIN and used in respect of the same goods, i.e. pharmaceutical preparations. The plaintiffs were deemed to be the prior adopters and users of the trade mark DROTIN, and the defendants' actions were deemed to have admitted the averments made in the plaint.
Fact of the Case:
The plaintiffs filed a suit for infringement of registered trade mark DROTIN and passing off. They claimed to be the registered proprietor of the trade mark and had acquired common law rights to its exclusive use.
Finding of the Court:
The court found that the use of the trade mark DRORIT constituted an act of infringement and passing off. The plaintiffs were deemed to be the prior adopters and users of the trade mark DROTIN, and the defendants' actions were deemed to have admitted the averments made in the plaint. The court decreed the suit in favor of the plaintiffs.
Issues: Infringement of registered trade mark, passing off, deceptive similarity of competing marks, and prior adoption and use of the trade mark.
Ratio Decidendi: The court relied on the provisions of the Trade Marks Act, 1999, and the principles established in previous judgments to determine deceptive similarity of competing marks and establish the plaintiffs' exclusive statutory right to the trade mark DROTIN.
Final Decision: The court decreed the suit in favor of the plaintiffs in terms of the prayers made in the plaint along with costs.
MANMOHAN, J.
1. Present suit has been filed for infringement of registered trade mark, passing off and other ancillary reliefs.
2. It is stated that as of 3 February, 1997 the plaintiff No. 1 is the registered proprietor of trade mark DROTIN under number 732349 in Clause 5 in respect of medicinal and pharmaceutical preparation.
3. In the plaint it is averred that the plaintiffs have adopted and used the trade mark DROTIN since 1997.
4. The medicinal preparation under the trade mark DROTIN are being manufactured by plaintiff No. 2 and plaintiff No. 3 under a licence from plaintiff No. 1. It is stated in the plaint that the trade mark DROTIN has extensively been used in the course of trade and has acquired enviable goodwill and reputation.
5. It is further stated that on account of priority in adoption, use and registration, the plaintiffs have acquired common law rights to the exclusive use of the trade mark DROTIN. The said rights are duly protected under the provisions of Trade Marks Act, 1999 (for short Act, 1999).
6. Learned counsel for the plaintiffs stated that the defendants had dishonestly adopted a deceptively similar trade mark DRORIT in respect of medicinal and pharmaceutical preparation. Plaintiff found an application No. 2269687 in Class 5 for the trade mark DRORIT was advertised in Journal dated 2 September, 2013. The plaintiffs filed opposition to the said application and also filed the present suit.
7. By order dated 15 January, 2014, this Court restrained the defendants, by way of ex parte interim injunction, from manufacturing, selling, advertising directly or indirectly the pharmaceutical preparation under the impugned trade mark DRORIT.
8. The defendants were duly served. The suit was decreed against defendant No. 4 by the order dated 18 March, 2014. Though the defendant Nos. 1, 2, 3 sought time to file the written statement, yet they did not file the same. Accordingly, the said defendants were proceeded ex-parte by order 15 April, 2014.
9. The plaintiffs have filed their evidence by way of affidavit of Mr. Surender Kumar Jangir as PW 1 and Mr. Bharat Bhushan as PW 2. The plaintiffs have proved the documents establishing their common law as well as statutory rights in the trade mark DROTIN in particular the drug licences, sale invoices, manufacturing licence, registration certificate etc. The statement of sales is contained in the certificate, issued by the Chartered Accountant, a copy of which is Ex.PW1/8. Specimen of the plaintiffs’ product and defendants’ infringing product is Ex.PW1/9.
10. In addition, the plaintiffs have relied upon various orders in which the plaintiffs’ rights in the trade mark DROTIN have duly been protected by the courts. Ex.PW1/10 is the order passed by the Intellectual Property Appellant Board (IPAB) whereby the plaintiffs succeeded in getting the registration of trade mark DROT rectified. Ex.PW1/11 is the order passed by Bombay High Court dismissing the writ petition challenging the order of IPAB. Other ex parte orders or the decrees passed in favour of the plaintiffs are Ex.PW1/13 (trade mark DROTIS), PW1/14 (trade mark DROTOVIN), PW1/15 (trade mark DROTON), PW1/16 (trade mark DROTIS) and PW1/17 (trade mark DROTEE).
11. In the opinion of this Court, the use of the trade mark DRORIT constitutes an act of infringement as well as passing off. The trade mark DRORIT is deceptively similar to the trade mark DROTIN and is used in respect of same goods, i.e. pharmaceutical preparations. Under Section 28 of the Act, 1999 the plaintiffs have exclusive statutory right to the trade mark DROTIN and restrain the use of any identical or deceptively similar mark in respect of the same or similar goods constituting an act of infringement under Section 29 of the Act, 1999.
12. The plaintiffs have proved themselves to be the prior adopters and users of the trade mark DROTIN. The defendants have neither denied the averments made in the plaint nor filed any written statement. Accordingly, th
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